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EXHIBIT 10.4
FORM OF
TECHNOLOGY AND INTELLECTUAL PROPERTY OWNERSHIP
AND
LICENSE AGREEMENT
BETWEEN
THE SOUTHERN COMPANY
AND
SOUTHERN ENERGY, INC.
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TECHNOLOGY AND INTELLECTUAL PROPERTY OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
Page
ARTICLE I DEFINITIONS...................................................................................1
1.1 AFFILIATED COMPANY...............................................................................1
1.2 ALLOCATED PATENT ASSETS DATABASE.................................................................1
1.3 ASSIGNED PATENTS.................................................................................1
1.4 CHANGE OF CONTROL DATE...........................................................................2
1.5 COPYRIGHTS.......................................................................................2
1.6 CORPORATE IDENTITY MATERIALS.....................................................................2
1.7 DATABASE RIGHTS..................................................................................2
1.8 DISTRIBUTION DATE................................................................................3
1.9 FIRST EFFECTIVE FILING DATE......................................................................3
1.10 IMPROVEMENTS....................................................................................3
1.11 INVENTION DISCLOSURE............................................................................3
1.12 LICENSED MARKS..................................................................................3
1.13 LICENSED SOUTHERN ENERGY TECHNOLOGY.............................................................3
1.14 LICENSED SOUTHERN TECHNOLOGY....................................................................3
1.15 XXXX............................................................................................4
1.16 MASTER SEPARATION AGREEMENT.....................................................................4
1.17 PATENTS.........................................................................................4
1.18 PERSON..........................................................................................4
1.19 SELL............................................................................................4
1.20 SEPARATION DATE.................................................................................4
1.21 SOUTHERN ENERGY SERVICES........................................................................4
1.22 SOUTHERN ENERGY OWNED TECHNOLOGY................................................................5
1.23 SOUTHERN PATENTS................................................................................5
1.24 SOUTHERN SERVICES...............................................................................5
1.25 SUBLICENSED SOUTHERN ENERGY TECHNOLOGY..........................................................5
1.26 SUBLICENSED SOUTHERN TECHNOLOGY.................................................................5
1.27 SUBSIDIARY......................................................................................5
1.28 TECHNOLOGY......................................................................................6
1.29 THIRD PARTY.....................................................................................6
1.30 TRADEMARK USAGE GUIDELINES......................................................................6
ARTICLE II - TECHNOLOGY ALLOCATION OF OWNERSHIP AND LICENSE GRANTS.......................................6
2.1 ASSIGNMENT.......................................................................................6
2.2 PRIOR GRANTS.....................................................................................6
2.3 ASSIGNMENT DISCLAIMER............................................................................7
2.6 IDENTIFICATION OF LICENSED TECHNOLOGY............................................................9
2.7 IMPROVEMENTS.....................................................................................9
2.8 DURATION OF LICENSE.............................................................................10
2.9 NO PATENT LICENSES..............................................................................10
2.10 THIRD PARTY TECHNOLOGY.........................................................................10
2.11 TERMINATION....................................................................................10
ARTICLE III - TRADEMARKS ALLOCATION OF OWNERSHIP AND LICENSE GRANTS.....................................11
3.1 ASSIGNMENT......................................................................................11
3.2 LICENSE GRANT...................................................................................11
3.3 LICENSE RESTRICTIONS............................................................................11
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3.4 LICENSEE UNDERTAKINGS...........................................................................11
3.5 NON-TRADEMARK USE...............................................................................12
3.6 RESERVATION OF RIGHTS...........................................................................12
3.7 SUBLICENSES.....................................................................................12
3.8 ENFORCEMENT OF AGREEMENTS.......................................................................12
3.9 ROYALTIES.......................................................................................13
3.10 TRADEMARK USAGE GUIDELINES.....................................................................13
3.11 OWNERSHIP AND RIGHTS...........................................................................13
3.12 PROTECTION OF MARKS............................................................................13
3.13 SIMILAR MARKS..................................................................................13
3.14 INFRINGEMENT PROCEEDINGS.......................................................................14
3.15 TERMINATION....................................................................................14
3.16 USE OF MARKS FOLLOWING TERMINATION.............................................................14
ARTICLE IV - PATENTS ALLOCATION OF OWNERSHIP AND LICENSE GRANTS.........................................14
4.1 PATENT OWNERSHIP................................................................................14
4.2 LICENSE GRANTS TO SOUTHERN......................................................................15
4.3 LICENSE GRANTS TO SOUTHERN ENERGY...............................................................15
4.4 IDENTIFICATION OF LICENSED PATENTS..............................................................15
4.5 SUBLICENSE RIGHTS...............................................................................15
4.6 DURATION........................................................................................15
4.7 ROYALTIES.......................................................................................15
4.8 PATENT APPLICATIONS AND INVENTION DISCLOSURES...................................................15
4.9 ADDITIONAL OBLIGATIONS WITH REGARD TO SOUTHERN PATENTS..........................................16
4.10 DEFENSIVE PROTECTION MEASURES..................................................................16
4.11 STANDARDS BODIES...............................................................................16
4.12 ASSIGNMENT OF PATENTS..........................................................................16
4.13 RESPONSE TO REQUESTS...........................................................................16
4.14 RECORDATION OF LICENSES........................................................................17
ARTICLE V CONFIDENTIALITY...............................................................................17
ARTICLE VI DISPUTE RESOLUTION...........................................................................17
ARTICLE VII LIMITATION OF LIABILITY.....................................................................18
ARTICLE VIII MISCELLANEOUS PROVISIONS...................................................................18
8.1 DISCLAIMER......................................................................................18
8.2 NO IMPLIED LICENSES.............................................................................18
8.3 INFRINGEMENT SUITS..............................................................................18
8.4 NO OTHER OBLIGATIONS............................................................................19
8.5 ENTIRE AGREEMENT................................................................................19
8.6 GOVERNING LAW...................................................................................19
8.7 DESCRIPTIVE HEADINGS............................................................................19
8.8 NOTICES.........................................................................................19
8.9 NONASSIGNABILITY................................................................................20
8.10 SEVERABILITY...................................................................................20
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE..........................................21
8.12 AMENDMENT......................................................................................21
8.13 COUNTERPARTS...................................................................................21
8.14 GOVERNMENTAL APPROVAL..........................................................................21
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TECHNOLOGY AND INTELLECTUAL PROPERTY OWNERSHIP AND LICENSE AGREEMENT
This Technology and Intellectual Property Ownership and License
Agreement (the "Agreement") dated as of September 1, 2000 (the "Effective
Date"), between The Southern Company, a Delaware corporation ("Southern"),
having an office at 000 Xxxxxxxxx Xxxxxx, X.X., Xxxxxxx, Xxxxxxx 00000, and
Southern Energy, Inc., a Delaware corporation ("Southern Energy"), having an
office at 000 Xxxxxxx Xxxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000-0000.
WHEREAS, the Board of Directors of Southern has determined that it is
in the best interest of Southern and its stockholders to separate Southern's
existing businesses into two independent businesses;
WHEREAS, as part of the foregoing, Southern and Southern Energy have
entered into a Master Separation Agreement (as defined below), which provides,
among other things, the initial public offering of Southern Energy stock, the
distribution of such stock and the execution and delivery of certain other
agreements in order to facilitate and provide for the foregoing; and
WHEREAS, also as part of the foregoing, Southern and Southern Energy
desire to resolve and assign ownership of certain technology and intellectual
property and each party desires to license to the other party certain of its
technology and intellectual property.
NOW, THEREFORE, in consideration of the mutual promises of the
parties, and of good and valuable consideration, it is agreed by and between
the parties as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article I and shall have the meaning specified herein:
1.1 AFFILIATED COMPANY. "Affiliated Company" shall have the same
meaning as defined in the Master Separation Agreement.
1.2 ALLOCATED PATENT ASSETS DATABASE. "Allocated Patent Assets
Database" means the Allocated Patent Assets Database as set forth on the
attached Exhibit A, as it may be updated by the parties upon mutual agreement
from time to time to add Patents, patent applications and Invention
Disclosures.
1.3 ASSIGNED PATENTS. "Assigned Patents" means only those;
(a) Patents, patent applications and Invention Disclosures
allocated to Southern Energy in the Allocated Patent Assets Database;
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(b) Patent applications filed on the foregoing Invention
Disclosures described in Section (a);
(c) continuations, continuations-in-part, divisions and
substitutions of any of the foregoing Patent applications described in Sections
(a) and (b);
(d) Patents which may issue on any of the foregoing Patent
applications described in Sections (a)-(c);
(e) renewals, reissues, reexaminations and extensions of the
foregoing Patents described in Sections (a) and (d); and
(f) foreign Patent applications and Patents that are counterparts
of any of the foregoing Patent applications or Patents described in Sections
(a)-(e), including any Patent application or Patent to the extent that it
claims priority from any of the foregoing Patent applications or Patents
described in Sections (a)-(e); but
(g) excluding from any Patent or Patent application described in
Sections (c)-(f) any claim (i) directed to subject matter that does not appear
in any Patent application having a First Effective Filing Date prior to the
Separation Date and (ii) of which neither Southern Energy nor any person having
a legal duty to assign his/her interest therein to Southern Energy is entitled
to be named as an inventor.
1.4 CHANGE OF CONTROL DATE. "Change of Control Date" means the earlier
of: (a) the Distribution Date, or (b) the first date on which Southern ceases
to control at least 33 1/3% of the common stock of Southern Energy then
outstanding.
1.5 COPYRIGHTS. "Copyrights" mean collectively (i) any copyright in
any original works of authorship fixed in any tangible medium of expression as
set forth in 17 U.S.C. Section 101 et seq., whether registered or unregistered,
including any applications for registration thereof, (ii) any corresponding
foreign copyrights under the laws of any jurisdiction, in each case, whether
registered or unregistered, and any applications for registration thereof, and
(iii) moral, common law or other rights in creative works however vested under
the laws of any jurisdiction.
1.6 CORPORATE IDENTITY MATERIALS. "Corporate Identity Materials" means
materials that are not products or product-related and that Southern Energy may
now or hereafter use to communicate its identity, including, by way of example
and without limitation, business cards, letterhead, stationery, paper stock and
other supplies, signage on real property, buildings, fleet and uniforms.
1.7 DATABASE RIGHTS. "Database Rights" means any rights in databases
under the laws of the United States or any other jurisdiction, whether
registered or unregistered, and any applications for registration thereof. As
used in this Agreement, Database Rights shall not include any databases needed
to provide the Services provided for in the Master Services Agreement, and the
Ancillary Agreements as provided therein.
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1.8 DISTRIBUTION DATE. "Distribution Date" shall have the meaning set
forth in the Master Separation and Distribution Agreement.
1.9 FIRST EFFECTIVE FILING DATE. "First Effective Filing Date" means
the earliest effective filing date in the particular country for any Patent or
any application for any Patent. By way of example, it is understood that the
First Effective Filing Date for a United States Patent is the earlier of (i)
the actual filing date of the United States Patent application which issued
into such Patent, (ii) the priority date under 35 U.S.C. Section 119 for such
Patent, or (iii) the priority date under 35 U.S.C. Section 120 for such Patent.
1.10 IMPROVEMENTS. "Improvements" to Technology means (i) with respect
to Copyrights, any modifications, derivative works, and translations of works
of authorship, (ii) with respect to Database Rights, any database that is
created by extraction or re-utilization of another database, and (iii) with
respect to trade secrets and other intellectual property rights included within
the definition of Technology and not covered by Sections (i) - (ii) herein, any
improvements of Technology. For the purposes of clarification, an item of
Technology will be deemed to be an Improvement of another item of Technology
only if it is actually derived from such other item of Technology and not
merely because it may have the same or similar functionality or use as such
other item of Technology.
1.11 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure
of an invention (i) written for the purpose of allowing legal and business
people to determine whether to file a Patent application with respect to such
invention and (ii) recorded with a control number in the owning party's
records.
1.12 LICENSED MARKS. "Licensed Marks" means the Marks set forth on
Exhibit B hereto as mutually amended by the parties hereto from time to time.
1.13 LICENSED SOUTHERN ENERGY TECHNOLOGY. "Licensed Southern Energy
Technology" means, specifically including without limitation as listed on
Exhibit C as mutually amended by the parties hereto from time to time pursuant
to the procedure set forth in Article II herein, any Technology:
(a) which, as of the Separation Date, Southern Energy or any
Subsidiary or Affiliated Company of Southern Energy (i) owns or controls or
(ii) otherwise has the right to grant any licenses of the type and on the terms
herein granted to Southern without the obligation to pay royalties or other
consideration to Third Parties;
(b) which is in the possession of Southern or its Subsidiaries or
Affiliated Companies as of the Separation Date and necessary to the ongoing
business operation of Southern; and
(c) the competitive harm to Southern Energy resulting from the
license granted in Article II herein does not greatly outweigh the benefit to
Southern resulting from the license.
1.14 LICENSED SOUTHERN TECHNOLOGY. "Licensed Southern Technology"
means, specifically including without limitation as listed on Exhibit D as
mutually amended by the
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parties from time to time pursuant to the procedure set forth in Article II
herein, any Technology:
(a) which, as of the Separation Date, Southern or any Subsidiary
or Affiliated Company of Southern (i) owns or controls or (ii) otherwise has
the right to grant any licenses of the type and on the terms herein granted to
Southern Energy without the obligation to pay royalties or other consideration
to Third Parties;
(b) which is in the possession of Southern Energy, its
Subsidiaries or Affiliated Companies as of the Separation Date and necessary to
the ongoing business operation of Southern Energy; and
(c) the competitive harm to Southern resulting from the license
to Southern Energy granted in Article II herein, does not greatly outweigh the
benefit to Southern Energy resulting from the license.
1.15 XXXX. "Xxxx" means any trademark, service xxxx, trade name, and
the like, or other word, name, symbol or device, or any combination thereof,
used or intended to be used by a Person to identify and distinguish the
products or services of that Person from the products or services of others and
to indicate the source of such goods or services, including without limitation
all registrations and applications therefor throughout the world and all common
law and other rights therein throughout the world.
1.16 MASTER SEPARATION AGREEMENT. "Master Separation Agreement" means
the Master Separation and Distribution Agreement between the parties executed
simultaneously herewith.
1.17 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions or industrial designs anywhere in the world
and all reissues, renewals, re-examinations and extensions of any of the
foregoing.
1.18 PERSON. "Person" means an individual, a partnership, a
corporation, a limited liability company, an association, a joint stock
company, a trust, a joint venture, an unincorporated organization, and a
governmental entity or any department, agency or political subdivision thereof.
1.19 SELL. To "Sell" a product means to sell, transfer, lease or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
1.20 SEPARATION DATE. "Separation Date" shall have the same meaning as
used in the Master Separation Agreement.
1.21 SOUTHERN ENERGY SERVICES. "Southern Energy Services" means any
and all services which Southern Energy or any of its Subsidiaries or Affiliated
Companies provide as of the Separation Date.
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1.22 SOUTHERN ENERGY OWNED TECHNOLOGY. "Southern Energy Owned
Technology" means as listed on Exhibit E (i) all Technology developed solely by
Southern Energy, its Subsidiaries or its subcontractors for Southern Energy or
its Subsidiaries, (ii) all Technology for which the direct costs were solely
paid by Southern Energy.
1.23 SOUTHERN PATENTS. "Southern Patents" mean the Patents:
(a) identified on the Allocated Patent Assets Database as owned
by Southern and licensed to Southern Energy; and
(b) which are in the possession of Southern Energy, its
Subsidiaries or Affiliated Companies as of the Separation Date and necessary to
the ongoing business operation of Southern Energy; and
(c) the competitive harm to Southern resulting from the license
to Southern Energy granted in Article IV herein, does not greatly outweigh the
benefit to Southern Energy resulting from the license.
1.24 SOUTHERN SERVICES. "Southern Services" means any and all services
and products which Southern or any of its Subsidiaries or Affiliated Companies
provide as of the Separation Date.
1.25 SUBLICENSED SOUTHERN ENERGY TECHNOLOGY. "Sublicensed Southern
Energy Technology" means, specifically including, without limitation, the
Technology set forth on Exhibit F as mutually amended from time to time, any
Technology:
(a) which as of the Separation Date, Southern Energy or any
Subsidiary or Affiliated Company of Southern Energy (i) is licensed to use
pursuant to a license agreement from any Third Party Person; and
(b) which is in the possession of Southern, its Subsidiaries or
Affiliated Companies as of the Separation Date.
1.26 SUBLICENSED SOUTHERN TECHNOLOGY. "Sublicensed Southern
Technology" means, specifically including without limitation, the Technology
set forth on Exhibit G as mutually amended from time to time, any Technology:
(a) which as of the Separation Date, Southern or any Subsidiary
or Affiliated Company of Southern: (i) is licensed to use pursuant to a license
agreement from any Third Party; and
(b) which is in the possession of Southern Energy, its
Subsidiaries or Affiliated Companies as of the Separation Date.
1.27 SUBSIDIARY. "Subsidiary" means the same as defined in the Master
Separation Agreement.
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1.28 TECHNOLOGY. "Technology" means Copyrights, Database Rights, trade
secrets and any other intellectual property right, but expressly does not
include (i) any Xxxx, trademark, trade name, trade dress or service xxxx, or
applications for registration thereof, or (ii) any Patents or applications
therefor but does include trade secret rights in and to inventions disclosed in
such Patent applications and Invention Disclosures.
1.29 THIRD PARTY. "Third Party" means a Person other than Southern and
its Subsidiaries and Affiliated Companies and Southern Energy and its
Subsidiaries and Affiliated Companies.
1.30 TRADEMARK USAGE GUIDELINES. "Trademark Usage Guidelines" means
the guidelines for proper usage of the Licensed Marks, as in use immediately
prior to the Separation Date, as such guidelines may be revised and updated in
writing by Southern from time to time.
ARTICLE II - TECHNOLOGY
ALLOCATION OF OWNERSHIP AND
LICENSE GRANTS
2.1 ASSIGNMENT. Subject to Sections 2.2 and 2.3 below, Southern hereby
grants, conveys and assigns (and agrees to cause its appropriate Subsidiaries
to grant, convey and assign) to Southern Energy, by execution hereof (or, where
appropriate or required, by execution of separate instruments of assignment),
all its (and their) right, title and interest in and to the Southern Energy
Owned Technology, to be held and enjoyed by Southern Energy, its successors and
assigns. Southern further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Southern Energy all
its (and their) right, title and interest in and to any and all causes of
action and rights of recovery for past infringement of Copyrights and Database
Rights in and to the Southern Energy Owned Technology, and for past
misappropriation of trade secrets in and to the Southern Energy Owned
Technology. Southern further covenants that Southern will, without demanding
any further consideration therefor, at the request and expense of Southern
Energy (except for the value of the time of Southern employees), do (and cause
its Subsidiaries to do) all lawful and just acts that may be or become
necessary for evidencing, maintaining, recording and perfecting Southern
Energy's rights to such Southern Energy Owned Technology consistent with
Southern's general business practice as of the Separation Date, including but
not limited to, execution and acknowledgment of (and causing its Subsidiaries
to execute and acknowledge) assignments and other instruments in a form
reasonably required by Southern Energy for each Copyright or Database Right
jurisdiction. Southern Energy hereby waives any and all claims of any right,
title and interest in and to any Technology not within the definition of
Southern Energy Owned Technology subject to the licensees granted in this
Article.
2.2 PRIOR GRANTS. Southern Energy acknowledges and agrees that the
foregoing assignment is subject to any and all licenses or other rights that
may have been granted by Southern or its Subsidiaries with respect to the
Southern Energy Owned Technology prior to the Separation Date. Southern shall
respond to reasonable inquiries from Southern Energy regarding any such prior
grants.
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2.3 ASSIGNMENT DISCLAIMER. SOUTHERN ENERGY ACKNOWLEDGES AND AGREES
THAT THE FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT
NEITHER SOUTHERN NOR ANY SUBSIDIARY OR AFFILIATED COMPANY OF SOUTHERN HAS MADE
OR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING
WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
2.4 LICENSE TO SOUTHERN.
(a) Southern Energy grants (and agrees to cause its appropriate
Subsidiaries or Affiliated Companies to grant) to Southern and its Subsidiaries
and Affiliated Companies, the following personal, nonexclusive, worldwide,
fully paid up, royalty-free and non-transferable (except as specified in
Section 8.9 below) licenses:
(i) under its and their Copyrights in and to the
Licensed Southern Energy Technology, (A) to reproduce and have
reproduced the works of authorship included in the Licensed Southern
Energy Technology and Improvements thereof prepared by or for
Southern, in whole or in part, as part of Southern Services, (B) to
prepare Improvements or have Improvements prepared for it based upon
the works of authorship included in the Licensed Southern Energy
Technology in order to provide Southern Services, (C) to distribute
(by any means and using any technology, whether now known or unknown,
including without limitation electronic transmission) copies of the
works of authorship included in the Licensed Southern Energy
Technology and Improvements thereof prepared by or for Southern to the
public by sale or other transfer of ownership or by rental, lease or
lending, as part of Southern Services, and (D) to perform (by any
means and using any technology, whether now known or unknown,
including without limitation electronic transmission) and display the
works of authorship included in the Licensed Southern Energy
Technology and Improvements thereof prepared by or for Southern, as
part of Southern Services;
(ii) under its and their Database Rights in and to the
Licensed Southern Energy Technology, to extract data from the
databases included in the Licensed Southern Energy Technology and to
re-utilize such data to design, develop, Sell and offer for sale
Southern Services and to Sell such Southern Services that incorporate
such data, databases and Improvements thereof prepared by or for
Southern; and
(iii) under its and their trade secrets and other
intellectual property rights in and to the Licensed Southern Energy
Technology (except the intellectual property rights excluded from the
definition of Technology), to use the Licensed Southern Energy
Technology and Improvements thereof prepared by or for Southern to
design, develop, Southern Services.
(b) Without limiting the generality of the foregoing licenses
granted in Section 2.4 (a)
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above, with respect to software included within the Licensed Southern Energy
Technology, such licenses include the right to use, modify, and reproduce such
software and Improvements thereof made by or for Southern as part of the
Southern Services, in source code and object code form, and to Sell such
software and Improvements thereof made by or for Southern, in source code and
object code form, solely as part of the Southern Services.
(c) Southern, its Subsidiaries and Affiliated Companies may not
grant sublicenses under Sections (a) and (b) above.
(d) The license granted in this Section may be assigned to a
Person that succeeds to all or substantially all of the assets of Southern or
its Subsidiaries or Affiliated Companies, but may not be sublicensed by such
future assigns.
2.5 LICENSE TO SOUTHERN ENERGY.
(a) Southern grants (and agrees to cause its appropriate
Subsidiaries or Affiliated Companies to grant) to Southern Energy and its
Subsidiaries and Affiliated Companies the following personal, nonexclusive,
worldwide, fully paid up, royalty-free and non-transferable (except as
specified in Section 8.9 below) licenses:
(i) under its and their Copyrights in and to the
Licensed Southern Technology, (A) to reproduce and have reproduced the
works of authorship included in the Licensed Southern Technology and
Improvements thereof prepared by or for Southern Energy, in whole or
in part, as part of Southern Energy Services, (B) to prepare
Improvements or have Improvements prepared for it based upon the works
of authorship included in the Licensed Southern Technology in order to
create Southern Energy Services, (C) to distribute (by any means and
using any technology, whether now known or unknown, including without
limitation electronic transmission) copies of the works of authorship
included in the Licensed Southern Technology and Improvements thereof
prepared by or for Southern Energy to the public by sale or other
transfer of ownership or by rental, lease or lending, as part of
Southern Energy Services, and (D) to perform (by any means and using
any technology, whether now known or unknown, including without
limitation electronic transmission) and display the works of
authorship included in the Licensed Southern Technology and
Improvements thereof prepared by or for Southern Energy, as part of
Southern Energy Services;
(ii) under its and their Database Rights in and to the
Licensed Southern Technology, to extract data from the databases
included in the Licensed Southern Technology and to re-utilize such
data to design, develop, manufacture and have manufactured Southern
Energy Services and to Sell such Southern Energy Services that
incorporate such data, databases and Improvements thereof prepared by
or for Southern Energy; and
(iii) under its and their trade secrets and other
intellectual property rights in and to the Licensed Southern
Technology (except the intellectual property rights excluded from the
definition of Technology), to use the Licensed Southern Technology and
Improvements
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thereof prepared by or for Southern Energy to Sell such Southern
Energy Services.
(b) Without limiting the generality of the foregoing licenses
granted in Section 2.5(a) above, with respect to software included within the
Licensed Southern Technology, such licenses include the right to use, modify,
and reproduce such software and Improvements thereof made by or for Southern
Energy as part of the Southern Energy Services, in source code and object code
form, and to Sell such software and Improvements thereof made by or for
Southern Energy, in source code and object code form, solely as part of the
Southern Energy Services.
(c) Southern Energy, its Subsidiaries and Affiliated Companies
may not grant sublicenses under Sections (a) and (b) above.
(d) The license granted in this Section may be assigned to a
Person that succeeds to all or substantially all of the assets of Southern
Energy or its Subsidiaries or Affiliated Companies, but may not be sublicensed
by such future assigns.
2.6 IDENTIFICATION OF LICENSED TECHNOLOGY. Prior to the Separation
Date, and thereafter from time to time as the parties identify applicable
Technology, Southern Energy shall use reasonable best efforts to identify to
Southern the Licensed Southern Technology, and Southern shall use reasonable
best efforts to identify to Southern Energy the Licensed Southern Energy
Technology. The parties shall also identify to each other the Technology each
believes should be specifically excluded from Licensed Southern Technology and
Licensed Southern Energy Technology. As thereafter mutually agreed upon by the
parties, the Licensed Southern Energy Technology and Licensed Southern
Technology shall be set forth on Exhibit C and Exhibit D, respectively, as
amended from time to time. The tangible copies of all documents or other
materials embodying excluded Technology shall either be returned to its owner
or destroyed, as directed by its owner. In the absence of an express exclusion,
Technology within the definition of Southern Licensed Technology and Southern
Energy Licensed Technology shall be licensed pursuant to Sections 2.4 and 2.5
herein, even if not listed in Exhibit C or Exhibit D. The parties' senior
executives responsible for intellectual property, or their designees, shall
mutually agree upon such procedures as necessary or helpful to comply with the
requirements of this Section. Disputes between the parties regarding this
Section which cannot be resolved by such procedures shall follow the procedures
for disputes as set forth in the Master Separation Agreement.
2.7 IMPROVEMENTS. As between the parties, after the Separation Date,
Southern Energy hereby retains all right, title and interest, including all
intellectual property rights, in and to any Improvements to Licensed Southern
Technology made by or for Southern Energy in the exercise of the licenses
granted to it hereunder, subject only to the ownership of Southern in the
underlying Licensed Southern Technology, and Southern hereby retains all right,
title and interest, including all intellectual property rights, in and to any
Improvements to Licensed Southern Energy Technology made by or for Southern in
the exercise of the licenses granted to it hereunder, subject only to the
ownership of Southern Energy in the underlying Licensed Southern Energy
Technology. Upon the request of the licensing party, the licensee shall grant
the licensing party a license in and to any such Improvements pursuant to the
terms of Section 2.4 or 2.5 herein as applicable.
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2.8 DURATION OF LICENSE. The licenses granted above to the Licensed
Southern Technology and Licensed Southern Energy Technology shall continue in
perpetuity (or, in the case of Copyrights and Database Rights, until the
expiration of the term thereof).
2.9 NO PATENT LICENSES. Nothing contained in this Agreement shall be
construed as conferring to either party by implication, estoppel or otherwise
any license or right under any Patent or applications therefor, whether or not
the exercise of any right herein granted necessarily employs an invention of
any existing or later issued Patent. The applicable licenses granted between
Southern and Southern Energy with respect to Patents are set forth in Article
IV herein.
2.10 THIRD PARTY TECHNOLOGY.
(a) Southern hereby agrees to sublicense or to use reasonable
commercial efforts to obtain, or to cause to be obtained any consent, approval
or amendment required to convey a license or sublicense in the Sublicensed
Southern Technology to Southern Energy pursuant to the same or substantially
the same terms as Southern's license.
(b) Southern Energy hereby agrees to sublicense or to use
commercially reasonable efforts to obtain or cause to be obtained any consent,
approval or amendment required to obtain a license or sublicense in the
Sublicensed Southern Energy Technology to Southern pursuant to the same or
substantially the same terms as Southern Energy's license.
2.11 TERMINATION.
2.11.1 VOLUNTARY TERMINATION. By written notice to the other
party, each party may voluntarily terminate all or a specified portion of the
licenses and rights granted to it hereunder by such other party. Such notice
shall specify the effective date of such termination and shall clearly specify
any affected Technology, product or service.
2.11.2 SURVIVAL. Any voluntary termination of licenses and
rights of a party under Section (a) herein shall not affect such party's
licenses and rights with respect to any licensed product made or service
furnished prior to such termination, and shall not affect the licenses and
rights granted to the other party hereunder.
2.11.3 NO OTHER TERMINATION. Each party acknowledges and
agrees that its remedy for breach by the other party of the licenses granted to
it hereunder or of any other provision hereof shall be, subject to the
requirements of Article VI, to bring a claim to recover damages subject to the
limits set forth in this Agreement and to seek any other appropriate equitable
relief, other than termination of the licenses granted by it in this Agreement.
ARTICLE III - TRADEMARKS
ALLOCATION OF OWNERSHIP AND LICENSE
GRANTS
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3.1 ASSIGNMENT. Southern Energy hereby grants, conveys and assigns
(and agrees to cause its appropriate Subsidiaries to grant, convey and assign)
to Southern, by execution hereof (or, where appropriate or required, by
execution of separate instruments of assignment), all its (and their) right,
title and interest in and to the xxxx "Southern Energy" and any and all
variants incorporating the xxxx "Southern Energy," including all applications
and registrations therefor, and goodwill associated therewith, to be held and
enjoyed by Southern, its successors and assigns and waives any and all claims
to such Xxxx, subject to the license granted herein.
3.2 LICENSE GRANT. Southern grants (and agrees to cause its
appropriate Subsidiaries to grant) to Southern Energy a personal, nonexclusive,
worldwide, fully-paid up and non-transferable (except as set forth in Section
8.9) license to use the Licensed Marks solely in connection with the
advertisement, promotion and Sale of the Southern Energy Services.
3.3 LICENSE RESTRICTIONS.
(a) Once Southern Energy abandons the use of a Licensed Xxxx for
the Southern Energy Services, then Southern Energy agrees that its license
granted hereunder with respect to that Licensed Xxxx shall thereupon terminate.
(b) Southern Energy may not use any Licensed Xxxx in direct
association with another non-Licensed Xxxx such that the two Marks appear to be
a single Xxxx or in any other composite manner with any Marks of Southern
Energy or any Third Party (other than the Southern Energy Business Marks as
permitted herein).
(c) In all respects, Southern Energy's usage of the Licensed
Marks pursuant to the license granted hereunder shall be in a manner consistent
with the high standards, reputation and prestige represented by the Licensed
Marks, and any usage by Southern Energy that is inconsistent with the foregoing
shall be deemed to be outside the scope of the license granted hereunder. As a
condition to the license granted hereunder, Southern Energy shall at all times
present, position and promote the Southern Energy Business when using one or
more of the Licensed Marks in a manner consistent with the high standards and
prestige represented by the Licensed Marks.
3.4 LICENSEE UNDERTAKINGS. As a condition to the licenses granted
hereunder, Southern Energy undertakes to Southern that:
(a) Southern Energy shall not use the Licensed Marks (or any
other Xxxx of Southern) in any manner contrary to public morals, in any manner
which is deceptive or misleading, which ridicules or is derogatory to the
Licensed Marks, or which compromises or reflects unfavorably upon the goodwill,
good name, reputation or image of Southern or the Licensed Marks, or which
might jeopardize or limit Southern's proprietary interest therein.
(b) Southern Energy shall not use the Licensed Marks in
connection with any products or services other than in connection with the
Southern Energy Services.
(c) Southern Energy shall not (i) misrepresent to any Person the
scope of its authority
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under this Agreement, (ii) incur or authorize any expenses or liabilities
chargeable to Southern, or (iii) take any actions that would impose upon
Southern any obligation or liability to a Third Party other than obligations
under this Agreement, or other obligations which Southern expressly approves in
writing for Southern Energy to incur on its behalf.
(d) All press releases and corporate advertising and promotions
that embody the Licensed Marks and messages conveyed thereby shall be
consistent with the high standards and prestige represented by the Licensed
Marks.
3.5 NON-TRADEMARK USE. Each party may make appropriate and truthful
references to the other party, the party's services and affiliation between the
parties.
3.6 RESERVATION OF RIGHTS. Except as otherwise expressly provided in
this Agreement, Southern shall retain all rights in and to the Licensed Marks,
including without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of Southern's
Subsidiaries and Affiliated Companies to use) the Licensed Marks, either alone
or in combination with other Marks, in connection with the marketing, offer or
provision of any product or service, including any product or service which
competes with Southern Energy Business products or services; and
(c) The right to license Third Parties to use the Licensed Marks.
3.7 SUBLICENSES.
Subject to the terms and conditions of this Agreement, including all
applicable Trademark Usage Guidelines and other restrictions in this Agreement,
Southern Energy may grant sublicenses to its Subsidiaries and Affiliated
Companies to use the Licensed Marks in accordance with the license grant above;
provided, that (i) Southern Energy enters into a written sublicense agreement
with each such Subsidiary or Affiliated Company sublicensee, and (ii) such
agreement does not include the right to grant further sublicenses other than,
in the case of a sublicensed Subsidiary or Affiliated Company of Southern
Energy, to another Subsidiary or Affiliated Company of Southern Energy.
Southern Energy shall provide copies of such written sublicense agreements to
Southern upon request. If Southern Energy grants any sublicense rights pursuant
to this Section (a) and any such sublicensed Subsidiary or Affiliated Company
ceases to be a Subsidiary or Affiliated Company, then the sublicense granted to
such Subsidiary pursuant to this Section shall terminate one hundred eighty
(180) days from the date of such cessation.
3.8 ENFORCEMENT OF AGREEMENTS. Southern Energy shall take all
appropriate measures at Southern Energy's expense promptly and diligently to
enforce the terms of any sublicense agreement or other agreement with any
Subsidiary or Affiliated Company, and shall restrain any such Subsidiary or
Affiliated Company from violating such terms, including without limitation (i)
monitoring the Subsidiaries' and Affiliated Companies' compliance with the
relevant Trademark Usage Guidelines and causing any noncomplying Subsidiary or
Affiliated
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Company promptly to remedy any failure, (ii) terminating such agreement and/or
(iii) commencing legal action, in each case, using a standard of care
consistent with Southern's practices as of the Separation Date. In the event
that Southern determines that Southern Energy has failed promptly and
diligently to enforce the terms of any such agreement using such standard of
care, Southern reserves the right to enforce such terms, and Southern Energy
shall reimburse Southern for its fully allocated direct costs and expenses
incurred in enforcing such agreement, plus all out-of-pocket costs and
expenses, plus five percent (5%) (or, if such costs and expenses are incurred
more than two (2) years after the Separation Date, ten percent (10%)).
3.9 ROYALTIES. The license granted in this Article III shall be
royalty-free.
3.10 TRADEMARK USAGE GUIDELINES. Southern Energy and its Subsidiaries
and Affiliated Companies shall use the Licensed Marks only in a manner that is
consistent with the Trademark Usage Guidelines.
3.11 OWNERSHIP AND RIGHTS. Southern Energy agrees not to challenge the
ownership or validity of the Licensed Marks. Southern Energy shall not
disparage, dilute or adversely affect the validity of the Licensed Marks.
Southern Energy's use of the Licensed Marks shall inure exclusively to the
benefit of Southern, and Southern Energy shall not acquire or assert any rights
therein. Southern Energy recognizes the value of the goodwill associated with
the Licensed Marks, and that the Licensed Marks may have acquired secondary
meaning in the minds of the public.
3.12 PROTECTION OF MARKS. Southern Energy shall assist Southern, at
Southern's request and expense, in the procurement and maintenance of
Southern's intellectual property rights in the Licensed Marks. Southern Energy
will not grant or attempt to grant a security interest in the Licensed Marks,
or to record any such security interest in the United States Patent and
Trademark Office or elsewhere, against any trademark application or
registration belonging to Southern. Southern Energy agrees to, and to cause its
Subsidiaries and Affiliated Companies to, execute all documents reasonably
requested by Southern to effect further registration of, maintenance and
renewal of the Licensed Marks, recordation of the license relationship between
Southern and Southern Energy, and recordation of Southern Energy as a
registered user. Southern makes no warranty or representation that trademark
registrations have been or will be applied for, secured or maintained in the
Licensed Marks throughout, or anywhere within, the world. Southern Energy shall
cause to appear on all documents, instruments or other materials bearing the
Licensed Marks, such legends, markings and notices as may be required by
applicable law or reasonably requested by Southern.
3.13 SIMILAR MARKS. Southern Energy agrees not to use or register in
any country any Xxxx that infringes Southern's rights in the Licensed Marks, or
any element thereof. If any application for registration is, or has been, filed
in any country by Southern Energy which relates to any Xxxx that infringes
Southern's rights in the Licensed Marks, Southern Energy shall immediately
abandon any such application or registration or assign it to Southern. Southern
Energy shall not challenge Southern's ownership of or the validity of the
Licensed Marks or any application for registration thereof throughout the
world. Southern Energy shall not use or register in any country any copyright,
domain name, telephone number or any other intellectual
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property right, whether recognized currently or in the future, or other
designation which would create a likelihood of confusion or otherwise affects
the ownership or rights of Southern in and to the Licensed Marks, or otherwise
to take any action which would adversely affect any of such ownership rights,
or assist anyone else in doing so. Southern Energy shall cause its
Subsidiaries, Affiliated Companies and Authorized Dealers to comply with the
provisions of this Section.
3.14 INFRINGEMENT PROCEEDINGS. In the event that Southern Energy
learns of any infringement or threatened infringement of the Licensed Marks, or
any unfair competition, passing-off or dilution with respect to the Licensed
Marks, Southern Energy shall notify Southern or its authorized representative
giving particulars thereof, and Southern Energy shall provide necessary
information and assistance to Southern or its authorized representatives at
Southern's expense in the event that Southern decides that proceedings should
be commenced. Notwithstanding the foregoing, Southern Energy is not obligated
to monitor or police use of the Licensed Marks by Third Parties other than any
sublicenses granted by it. Southern shall have exclusive control of any
litigation, opposition, cancellation or related legal proceedings. The decision
whether to bring, maintain or settle any such proceedings shall be at the
exclusive option and expense of Southern, and all recoveries shall belong
exclusively to Southern. Southern Energy shall not and shall have no right to
initiate any such litigation, opposition, cancellation or related legal
proceedings in its own name, but, at Southern's request, agrees to be joined as
a party in any action taken by Southern to enforce its rights in the Licensed
Marks. Southern shall incur no liability to Southern Energy or any other Person
under any legal theory by reason of Southern's failure or refusal to prosecute
or by Southern's refusal to permit Southern Energy to prosecute, any alleged
infringement by Third Parties, nor by reason of any settlement to which
Southern may agree.
3.15 TERMINATION.
(a) By written notice to Southern, Southern Energy may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by Southern. Such notice shall specify the effective
date of such termination and shall clearly specify any affected Licensed Marks.
(b) The licenses, sublicenses and rights granted to Southern
Energy hereunder shall terminate on the Change of Control Date unless extended
in Southern's sole discretion and confirmed in writing.
3.16 USE OF MARKS FOLLOWING TERMINATION. Southern shall not use the
marks "Southern Energy," "Southern Company Energy Marketing" or any xxxx
incorporating "Southern Energy" for eighteen (18) months from the date Southern
Energy ceases use of such marks, unless shortened in Southern Energy's sole
discretion and confirmed in writing.
ARTICLE IV - PATENTS
ALLOCATION OF OWNERSHIP
AND LICENSE GRANTS
4.1 PATENT OWNERSHIP. Southern Energy hereby waives any and all claims
of any
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right, title and interest in and to any Patents not within the definition of
Assigned Patents, subject to the licenses granted in this Article.
4.2 LICENSE GRANTS TO SOUTHERN. Southern Energy grants (and agrees to
cause its appropriate Subsidiaries or Affiliated Companies to grant) to
Southern, under the Southern Energy Patents, a personal, irrevocable,
nonexclusive, worldwide and non-transferable (except as set forth in Section
8.9) license solely to Sell and offer for sale Southern Services.
4.3 LICENSE GRANTS TO SOUTHERN ENERGY. Southern grants (and agrees to
cause its appropriate Subsidiaries or Affiliated Companies to grant) to
Southern Energy, under the Southern Patents, a personal, irrevocable,
nonexclusive, worldwide, and non-transferable (except as set forth in Section
8.9) license solely to Sell and offer for sale Southern Energy Services.
4.4 IDENTIFICATION OF LICENSED PATENTS. Prior to the Separation Date,
and thereafter from time to time upon additions to the Allocated Patent Assets
Database, (a) Southern Energy shall use reasonable best efforts to identify to
Southern the Southern Patents, and (b) Southern shall use reasonable best
efforts to identify to Southern Energy the Southern Energy Patents. The parties
shall also identify to each other the Patents specifically excluded from
Southern Patents and Southern Energy Patents. As thereafter mutually agreed
upon by the parties, the Southern Patents and Southern Energy Patents shall be
identified on Exhibit A, as amended from time to time. In the absence of an
express exclusion, the Patents within the definition of Southern Patents and
Southern Energy Patents shall be licensed pursuant to Article IV herein. The
parties' senior executives responsible for intellectual property shall mutually
agree upon such procedures as necessary or helpful to comply with the
requirements of this Section. Disputes between the parties regarding this
Section which cannot be resolved by such procedures shall follow the procedures
for disputes as set forth in the Master Separation Agreement.
4.5 SUBLICENSE RIGHTS.
(a) Southern Energy may grant sublicenses to its Subsidiaries and
Affiliated Companies within the scope of its license hereunder (with no right
to grant further sublicenses other than, in the case of a sublicensed
Subsidiary or Affiliated Companies, to another Subsidiary or Affiliated Company
of such party).
(b) the license granted in this Section may be assigned to a
Person that succeeds to all or substantially all of the assets of Southern
Energy or its Subsidiaries or Affiliated Companies, but may not be sublicensed
by such future assigns.
4.6 DURATION. All licenses granted herein with respect to each Patent
shall expire upon the expiration of the term of such Patent.
4.7 ROYALTIES. The licenses granted in this Article shall be subject
to the same royalties (if any) as paid by Southern for the subject Patent.
4.8 PATENT APPLICATIONS AND INVENTION DISCLOSURES. Each party agrees,
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at its own expense, to provide to the other party copies of any Patents, Patent
applications and Invention Disclosures that are listed in the Allocated Patent
Assets Database in the form that such Patents, Patent applications and
Invention Disclosures exist as of the Separation Date. Neither party has any
obligation to disclose or provide copies to the other party any other Patents,
Patent applications or Invention Disclosures. The licenses granted under this
Agreement cover only statutory rights under Patents and statutory rights (if
any) under Patent applications. Trade secret and other non-Patent licenses with
respect to inventions described in Invention Disclosures and Patent
applications shall be solely as set forth in Article IV herein.
4.9 ADDITIONAL OBLIGATIONS WITH REGARD TO SOUTHERN PATENTS. Southern
Energy acknowledges that its employees and contractors who are former Southern
employees and contractors have a continuing duty to assist Southern with the
prosecution of Southern Patent applications and, accordingly, Southern Energy
agrees to make available, to Southern or its counsel, inventors and other
persons employed by Southern Energy for interviews and/or testimony to assist
in good faith in further prosecution, maintenance or litigation of the Southern
Patents, including the signing of documents related thereto. Any actual and
reasonable out-of-pocket expenses associated with such assistance shall be
borne by Southern, expressly excluding the value of the time of such Southern
Energy personnel; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of Southern Energy for the value of the time of Southern Energy's
employees as reasonably required in connection with such litigation.
4.10 DEFENSIVE PROTECTION MEASURES. The parties shall cooperate
reasonably and in good faith to the extent consistent with each party's own
business objectives in the event that either party is involved in Patent
litigation or controversies in which it would be helped in some way by the
other party's Patents or relevant knowledge. Such cooperation may include, by
way of example, (i) cooperation with respect to knowledge of prior art (whether
the other party's or a Third Party's), (ii) consent to the granting of licenses
to such other party's Patents, and (iii) assignment to such party of such other
party's Patents for the purpose of bringing a counterclaim against a Third
Party. The party requesting such cooperation shall bear the actual and
reasonable out-of-pocket expenses of the cooperating party (except for the
value of the time of the cooperating party's employees).
4.11 STANDARDS BODIES. The parties agree to cooperate reasonably and
in good faith with each other with respect to the licensing of each party's
Patents in the context of standards bodies, to the extent consistent with each
party's own business objectives.
4.12 ASSIGNMENT OF PATENTS. Southern shall not assign or grant any
rights under any of the Southern Patents unless such assignment or grant is
made subject to the licenses granted in this Agreement. Southern Energy shall
not assign or grant any rights under any of the Southern Energy Patents unless
such assignment or grant is made subject to the licenses granted in this
Agreement.
4.13 RESPONSE TO REQUESTS. Each party shall, upon a request from the
other party sufficiently identifying any Patent or Patent application, inform
the other party as to the extent to which said Patent or Patent application is
subject to the licenses and other rights granted
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hereunder. If such licenses or other rights under said Patent or Patent
application are restricted in scope, copies of all pertinent provisions of any
contract or other arrangement creating such restrictions shall, upon request,
be furnished to the party making such request, unless such disclosure is
prevented by such contract or other arrangement, and in such event, a statement
of the nature of such restriction shall be provided.
4.14 RECORDATION OF LICENSES.
(a) For any country, now or in the future, that requires the
express consent of all inventors or their assignees to the grant of licenses or
rights under Patents issued in such countries for joint inventions:
(i) each party shall give such consent, or shall obtain
such consent from its employees, its Subsidiaries or employees of any
of its Subsidiaries, as required to make full and effective any such
licenses and rights respecting any joint invention granted to a
grantee hereunder by such party; and
(ii) each party shall take steps that are reasonable
under the circumstances to obtain from Third Parties whatever other
consents are necessary to make full and effective such licenses and
rights respecting any joint invention purported to be granted by it
hereunder. If, in spite of such reasonable steps, such party is unable
to obtain the requisite consents from such Third Parties, the
resulting inability of such party to make full and effective its
purported grant of such licenses and rights shall not be considered to
be a breach of this Agreement.
(b) Each party agrees, without demanding any further
consideration, to execute (and to cause its Subsidiaries or Affiliated
Companies to execute) all documents reasonably requested by the other party to
effect recordation of the license relationship between the parties created by
this Agreement.
ARTICLE V
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
ARTICLE VI
DISPUTE RESOLUTION
The parties shall make a good faith attempt to resolve any dispute or
claim arising out of or related to this Agreement through negotiation. Within
thirty (30) days after notice of a dispute or claim is given by either party to
the other party, the parties' senior executive responsible for intellectual
property (or his or her delegate) shall meet to attempt to resolve the matter.
Such meeting shall constitute the vice president meeting required in Section
5.7(c) of the Master Separation Agreement. If the parties' representatives are
unable to resolve the dispute, the
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dispute resolution procedures set forth in the Master Separation Agreement
shall be followed.
ARTICLE VII
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES, AFFILIATED
COMPANIES, DIRECTORS, OFFICERS OR EMPLOYEES BE LIABLE TO THE OTHER PARTY OR ITS
SUBSIDIARIES OR AFFILIATED COMPANIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY
THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS
AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT
DAMAGES FOR INFRINGEMENT AVAILABLE TO EITHER PARTY UNDER APPLICABLE LAW IN THE
EVENT OF BREACH BY THE OTHER PARTY OF THE LICENSES GRANTED HEREIN AND SHALL NOT
LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN THE MASTER SEPARATION
AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY
IN ANY EVENT.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
8.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL
TECHNOLOGY, INTELLECTUAL PROPERTY AND ANY OTHER INFORMATION OR MATERIALS
LICENSED OR PROVIDED HEREUNDER IS LICENSED OR PROVIDED ON AN "AS IS" BASIS, AND
THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES OR AFFILIATED COMPANIES MAKES
ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
foregoing, neither party nor any of its Subsidiaries or Affiliated Companies
makes any warranty or representation that any manufacture, use, importation,
offer for sale or sale of any product or service will be free from infringement
of any intellectual property right of any Third Party.
8.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in
this Agreement. Neither party is required hereunder to furnish or disclose to
the other any technical or other information (including copies of the Licensed
Southern Energy Technology and the Licensed Southern Technology), except as
specifically provided herein.
8.3 INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for
infringement of any technology or intellectual property licensed to the other
party hereunder, or to defend any action or suit brought by a Third
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Party which challenges or concerns the validity of any of such rights or which
claims that any technology or intellectual property assigned or licensed to the
other party hereunder infringes any technology or other intellectual property
right of any Third Party or constitutes a misappropriated trade secret of any
Third Party. Southern shall not have any right to institute any action or suit
against Third Parties for infringement of any technology or intellectual
property of Southern Energy and Southern Energy shall not have any right to
institute any action or suit against Third Parties for infringement of any of
the technology or intellectual property of Southern.
8.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES
OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries or Affiliated Companies, is obligated to provide
any technical assistance.
8.5 ENTIRE AGREEMENT. This Agreement, the Master Separation Agreement
and the other Ancillary Agreements (as defined in the Master Separation
Agreement) constitute the entire agreement between the parties with respect to
the subject matter hereof and shall supersede all prior written and oral and
all contemporaneous oral agreements and understandings with respect to the
subject matter hereof. To the extent there is a conflict between this Agreement
and the Master Separation Agreement between the parties, the terms of this
Agreement shall govern.
8.6 GOVERNING LAW. This Agreement shall be governed by and construed
and enforced in accordance with the laws of the State of Georgia as to all
matters regardless of the laws that might otherwise govern under principles of
conflicts of laws applicable thereto.
8.7 DESCRIPTIVE HEADINGS. The descriptive headings herein are inserted
for convenience of reference only and are not intended to be part of or to
affect the meaning or interpretation of this Agreement.
8.8 NOTICES. All notices and other communications hereunder shall be
in writing and shall be deemed to have been duly given when delivered in
person, by telecopy with answer back, by express or overnight mail delivered by
a nationally recognized air courier (delivery charges prepaid), by registered
or certified mail (postage prepaid, return receipt requested) to the respective
parties as follows:
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if to Southern:
The Southern Company
000 Xxxxxxxxx Xxxxxx, X.X.
Xxxxxxx, Xxxxxxx 00000
Attention: General Counsel
Telecopy: (000) 000-0000
if to Southern Energy:
Southern Energy, Inc.
000 Xxxxxxx Xxxxxxx
Xxxxx 000
Xxxxxxx, Xxxxxxx 00000-0000
Attention: General Counsel
Telecopy: (000) 000-0000
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing in the manner set forth above. Any
notice or communication delivered in person shall be deemed effective on
delivery. Any notice or communication sent by telecopy or by air courier shall
be deemed effective on the first Business Day following the day on which such
notice or communication was sent. Any notice or communication sent by
registered or certified mail shall be deemed effective on the third Business
Day following the day on which such notice or communication was mailed. As used
in this Section 8.8, "Business Day" means any day other than a Saturday, a
Sunday or a day on which banking institutions located in the State of Georgia
are authorized or obligated by law or executive order to close.
8.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its permitted successive assignees or transferees
hereunder) may assign or transfer this Agreement as a whole without consent to
a Person that succeeds to all or substantially all of the business or assets of
such party. Without limiting the foregoing, this Agreement will be binding upon
and inure to the benefit of the parties and their permitted successors and
assigns.
8.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a nonappealable decision of a court, administrative agency or
arbitrator to be invalid, illegal or incapable of being enforced by any rule of
law or public policy, all other conditions and provisions of this Agreement
shall nevertheless remain in full force and effect so long as the economic or
legal substance of the transactions contemplated hereby is not affected in any
manner materially adverse to either party. Upon such determination that any
term or other provision is invalid, illegal or incapable of being enforced, the
parties hereto shall negotiate in good faith to modify this Agreement so as to
effect the original intent of the parties as closely as possible in an
acceptable manner to the end that the transactions contemplated hereby are
fulfilled to the fullest extent possible.
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8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure
or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement
herein, nor shall any single or partial exercise of any such right preclude
other or further exercise thereof or of any other right. All rights and
remedies existing under this Agreement are cumulative to, and not exclusive of,
any rights or remedies otherwise available.
8.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
8.13 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, all of which, taken together, shall be considered to be one and
the same instrument.
8.14 GOVERNMENTAL APPROVAL. The parties acknowledge that in the past
they have licensed Technology to each other in accordance with certain existing
regulatory authority. The parties intend to implement this Agreement to the
fullest extent permissible under such existing regulatory authority and to
cooperate toward obtaining and maintaining in effect such governmental agency
approvals as may be required in order to implement this Agreement as fully as
possible in accordance with its terms, and to cooperate so as to revise and
mutually agree on such revisions as become necessary in the event regulatory
approval is withheld.
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WHEREFORE, the parties have signed this Technology and Intellectual
Property Ownership and License Agreement effective as of the date first set
forth above.
THE SOUTHERN COMPANY SOUTHERN ENERGY, INC.:
By: By:
----------------------------- ------------------------------
Name: H. Xxxxx Xxxxxxxx Name: S. Xxxxx Xxxxxx
Title: President and Chief Title: President and Chief
Operating Officer Executive Officer
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EXHIBIT A
"ALLOCATED PATENT ASSETS DATABASE"
(SECTION 1.2)
A. Southern Energy, Inc.
None.
B. Southern Company
1. 5,968,254, Oct. 19, 1999, Concrete mix containing coal ash and
organic plant ash, Xxxxxx, Xxxxxx Xxxx, Xxxxx, Xxxxxxx Xxxxxxxxx,
Xxxxxxx Xxxxx, Birmingham, Alabama, Southern Company Services,
Birmingham, Alabama. (LICENSED)
2. 5,951,200, Sep. 14, 1999, Enclosement to shield structure which
secures entrance-deterring cap to manhole opening from water and dirt
containments, Xxxxxx, Xxxxx X., Avondale Estates, Georgia, Xxxxxx
Southern Company, Inc., Conyers, Georgia.
3. 5,912,916, Jun. 15, 1999, Electric furnace with insulated electrodes
and process for producing molten metals, Xxxxxxx, Xxxxxxx X., Pell
City, Alabama, Alabama Power Company, Birmingham, Alabama.
4. 5,882,374, Mar. 16, 1999, Process for producing foundry iron with an
insulated electrode, Xxxxxxx, Xxxxxxx X., Pell City, Alabama, Alabama
Power Company, Birmingham, Alabama.
5. 5,834,686, Nov. 10, 1998, Insulated electrical equipment, Xxxxxxx,
Xxxxxx Xxxxxxxxxxx, Swindon, England Xxxx, Xxxxxxx Xxxxxx, Swindon,
England Xxxxxxxx, Xxxxxxx, Newark, Delaware, Raychem Limited,
Swindon, United Kingdom (03), Date Transaction Recorded: May 17, 1999
ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). GEORGIA
POWER COMPANY 000 XXXXXXXX XXXXXX XXXXXXX, XXXXXXX 00000 Reel & Frame
Number: 009974/0524. (LICENSED)
6. 5,821,656, Oct. 13, 1998, Magnetic bearing with reduced
control-flux-induced rotor loss, Xxxxx, Xxx X., Tariffville,
Connecticut Xxxxx, Xxxxxxxx, X. Xxxxxxx, Connecticut, United
Technologies Corporation, Hartford, Connecticut (02), Date
Transaction Recorded: Mar. 31, 1999 ASSIGNMENT OF ASSIGNOR'S INTEREST
(SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC.
241 XXXXX XXXXXX XXXXXXXXX
00
XXXXXXX, XXXXXXX 00000 Reel & Frame Number: 009857/0726. (LICENSED)
7. 5,747,907, May 5, 1998, Backup bearings for positive re-centering of
magnetic bearings, Xxxxxx, Xxxxx X., Xxxxxxxxx, Connecticut, United
Technologies Automotive, Inc., Dearborn, Michigan (02), Date
Transaction Recorded: Jul. 09, 1998 ASSIGNMENT OF ASSIGNOR'S INTEREST
(SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC.
000 XXXXX XXXXXX XXXXXXXXX XXXXXXX, XXXXXXX 00000 Reel & Frame
Number: 9297/0204. (LICENSED)
8. 5,682,015, Oct. 28, 1997, Squirrel shield device, Xxxxxx, Xxxxxxx,
Acworth, Georgia, Georgia Power Company, Atlanta, Georgia. (LICENSED)
9. 5,679,922, Oct. 21, 1997, Squirrel shield device, Xxxxxx, Xxxxxxx,
Woodstock, Georgia, Georgia Power Company, Atlanta, Georgia.
(LICENSED)
10. 5,654,976, Aug. 5, 1997, Method for melting ferrous scrap metal and
chromite in a submerged arc furnace to produce a chromium containing
iron, Xxxx, Xxxxx, Oslo, Norway Rognsaa, Hjalte, Oslo, Norway, Elkem
Technology a/s, Norway (03), Date Transaction Recorded: Jun. 16, 1998
ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). ALABAMA
POWER COMPANY, AN ALABAMA CORPORATION BIRMINGHAM, ALABAMA Reel &
Frame Number: 009289/0025 Date Transaction Recorded: Feb. 12, 1999
FREE FORM TEXT GRANT-BACK LICENSE ELKEM ASA HOFFSVEIEN 65 B OSLO,
NORWAY N-0303 Reel & Frame Number: 009746/0756.
11. 5,640,472, Jun. 17, 1997, Fiber optic sensor for magnetic bearings,
Xxxxxxx, Xxxxxxx X., Glastonbury, Connecticut Xxxxxxxxxx, Xxxxxx X.,
Glastonbury, Connecticut Xxxxxx, Xxxx X., Hartford, Connecticut,
United Technologies Corporation, Hartford, Connecticut (02), Date
Transaction Recorded: Mar. 31, 1999 ASSIGNMENT OF ASSIGNOR'S INTEREST
(SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC.
000 XXXXX XXXXXX XXXXXXXXX XXXXXXX, XXXXXXX 00000 Reel & Frame
Number: 009857/0726. (LICENSED)
12. 5,634,960, Jun. 3, 1997, Scrap melting in a submerged arc furnace,
Xxxx, Xxxxx, Oslo, Norway, Elkem A/S, Norway (03), Date Transaction
Recorded: Jun. 16, 1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE
DOCUMENT FOR DETAILS). ALABAMA POWER COMPANY, AN ALABAMA CORPORATION,
BIRMINGHAM, ALABAMA Reel & Frame Number: .009289/0025 Date
Transaction Recorded: Feb. 12, 1999 FREE FORM TEXT GRANT-BACK LICENSE
ELKEM ASA HOFFSVEIEN 65 B OSLO, NORWAY N-0303 Reel & Frame Number:
009748/0756.
2
28
13. 5,590,569, Jan. 7, 1997, Energy storage flywheel device, Xxxxxxx,
Xxxxxxx X., South Windsor, Connecticut Xxxxxxxx, Xxxx X., Xxxxxx,
Connecticut Xxxxx, Xxxxxx X., Lebanon, Connecticut, United
Technologies Corporation, Hartford, Connecticut, Date Transaction
Recorded: Mar. 13, 1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE
DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 000
XXXXX XXXXXX XXXX. XXXXXXX, XXXXXXX 00000 Reel & Frame Number:
9027/0701 Date Transaction Recorded: Apr. 29, 1998 ASSIGNMENT OF
ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY
ENERGY SOLUTIONS, INC. 000 XXXXX XXXXXX XXXX. XXXXXXX, XXXXXXX 00000
Reel & Frame Number: 9138/0243 Date Transaction Recorded: Aug. 26,
1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS).
SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 000 XXXXX XXXXXX XXXX.
XXXXXXX, XXXXXXX 00000 Reel & Frame Number: 9405/0733. (LICENSED)
14. 5,588,982, Dec. 31, 1996, Process for producing foundry iron,
Xxxxxxx, Xxxxxxx X., Pell City, Alabama, Alabama Power Company,
Birmingham, Alabama, Date Transaction Recorded: Jun. 16, 1998
ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). ALABAMA
POWER COMPANY, AN ALABAMA CORPORATION BIRMINGHAM, ALABAMA Reel &
Frame Number: 009289/0025 Date Transaction Recorded: Feb. 12, 1999
FREE FORM TEXT GRANT-BACK LICENSE ELKEM ASA HOFFSVEIEN 65 B OSLO,
NORWAY 1-0303 Reel & Frame Number: 009748/0756.
15. 5,588,754, Dec. 31, 1996, Backup bearings for extreme speed touch
down Applications, Xxxxxx, Xxxxx X., Xxxxxxxxx, Connecticut, United
Technologies Automotive, Inc., Dearborn, Michigan, Date Transaction
Recorded: Jul. 9, 1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE
DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 000
XXXXX XXXXXX XXXXXXXXX XXXXXXX, XXXXXXX 00000 Reel & Frame Number:
9297/0204. (LICENSED)
16. 5,586,471, Dec. 24, 1996, Energy storage flywheel device, Xxxxxxx,
Xxxxxxx X., South Windsor, Connecticut Xxxxxxxx, Xxxx X., Xxxxxx,
Connecticut Xxxxx, Xxxxxx X., Lebanon, Connecticut, United
Technologies Corporation, Hartford, Connecticut, Date Transaction
Recorded: Mar. 13, 1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE
DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 000
XXXXX XXXXXX XXXX. XXXXXXX, XXXXXXX 00000 Reel & Frame Number:
9027/0701 Date Transaction Recorded: Apr. 29, 1998 ASSIGNMENT OF
ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY
ENERGY SOLUTIONS, INC. 000 XXXXX XXXXXX XXXX. XXXXXXX, XXXXXXX 00000
Reel & Frame Number: 9138/0243 Date Transaction Recorded: Aug. 26,
1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS).
SOUTHERN COMPANY ENERGY
3
29
SOLUTIONS, INC., 000 XXXXX XXXXXX XXXX. XXXXXXX, XXXXXXX 00000 Reel &
Frame Number: 9405/0733. (LICENSED)
17. 5,481,198, Jan. 2, 1996, Method and device for measuring corrosion on
a portion of a metallic path carrying an undetermined load current,
Xxxxx, Xxxxxxxxxx X., Atlanta, Georgia, The Georgia Power Company,
Atlanta, Georgia.
18. 5,479,059, Dec. 26, 1995, Thin film superconductor magnetic bearings,
Xxxxxxxxxx, Xxxxxxx X., Avon, Connecticut, United Technologies
Corporation, Hartford, Connecticut (02), Date Transaction Recorded:
Apr. 29, 1996 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR
DETAILS). UNITED TECHNOLOGIES AUTOMOTIVE INC. DEARBORN, MICHIGAN Reel
& Frame Number: 7921/0516 Date Transaction Recorded: Jun. 22, 1998
ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS) -
SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 000 XXXXX XXXXXX XXXXXXXXX
XXXXXXX, XXXXXXX 00000 Reel & Frame Number: 9257/0724. (LICENSED)
19. 5,460,240, Oct. 24, 1995, Stabilized ladder and platform, Xxxxx,
Xxxxx X., Gulfport, Mississippi, Mississippi Power Company, Gulfport,
Mississippi. (LICENSED)
20. 5,452,625, Sep. 26, 1995, Energy storage flywheel device, Xxxxxxx,
Xxxxxxx X., South Windsor, Connecticut Xxxxxxxx, Xxxx X., Xxxxxx,
Connecticut Xxxxx, Xxxxxx X., Lebanon, Connecticut, United
Technologies Corporation, Hartford, Connecticut, Date Transaction
Recorded: Apr. 29, 1996 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE
DOCUMENT FOR DETAILS). UNITED TECHNOLOGIES AUTOMOTIVE, INC. DEARBORN,
MICHIGAN Reel & Frame Number: 7921/0524 Date Transaction recorded:
Oct. 22, 1996 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR
DETAILS). THE SOUTHERN COMPANY, ATLANTA, GEORGIA Reel & Frame Number:
8194/0658 Date Transaction Recorded: Nov. 18, 1997 ASSIGNMENT OF
ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN DEVELOPMENT
AND INVESTMENT GROUP, INC., THE 000 XXXXXXXX XXXXXX XXXXXXX, XXXXXXX
00000 Reel & Frame Number: 8800/0972 Date Transaction Recorded: Apr.
29, 1998 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR
DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 000 XXXXX XXXXXX
XXXX. XXXXXXX, XXXXXXX 00000 Reel & Frame Number: 9138/0243.
(LICENSED)
21. 5,387,451, Feb. 7, 1995, Flywheel containment device, Xxxxxx, Xxxxx
X., Xxxxxxxxx, Connecticut, United Technologies Corporation,
Hartford, Connecticut, Date Transaction Recorded: Sep. 18, 1995
ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS) - UNITED
TECHNOLOGIES AUTOMOTIVE, INC. DEARBORN, MICHIGAN Reel & Frame Number:
4
30
7658/0048 Date Transaction Recorded: Oct. 22, 1996 ASSIGNMENT OF
ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). THE SOUTHERN COMPANY,
ATLANTA, GEORGIA Reel & Frame Number: 8186/0791 Date Transaction
Recorded: Nov. 18, 1997 ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE
DOCUMENT FOR DETAILS) SOUTHERN DEVELOPMENT AND INVESTMENT GROUP,
INC., THE 000 XXXXXXXX XXXXXX XXXXXXX, XXXXXXX 00000 Reel & Frame
Number: 8800/0972 Date Transaction Recorded: Apr. 29, 1998 ASSIGNMENT
OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY
ENERGY SOLUTIONS, INC. 000 XXXXX XXXXXX XXXX. XXXXXXX, XXXXXXX 00000
Reel & Frame Number: 9138/0243. (LICENSED)
22. 5,058,272, Oct. 22, 1991, Tool apparatus for applying large forces,
Xxxxxx, Xxxx X., Pass Xxxxxxxxx, Mississippi, Mississippi Power
Company, Gulfport, Mississippi.
23. 4,868,547, Sep. 19, 1989, Transformer alarm annunciator, Xxxxxx,
Xxxxxxxx .1 Hephzibah, Xxxxxxx Xxxxxxx, Xxxx X., Evans, Georgia,
Georgia Power Company, Atlanta, Georgia. (LICENSED)
24. 4,833,917, May 30, 1989, Three-component velocity probe for large
scale application, Xxxxxx, Xxxxx X., Birmingham, Alabama, Southern
Company Services, Inc., Birmingham, Alabama. (LICENSED)
25. 4,828,943, May 9, 1989, Battery having indicia for correcting
specific gravity determination at varying electrolyte levels,
Xxxxxxxxx, Xxx X., Birmingham, Alabama, Southern Company Services,
Inc., Atlanta, Georgia. (LICENSED)
26. 4,776,180, Oct. 11, 1988, Updraft integrated heat pump, Xxxxxx, Sr.,
Xxxxx X., Gulfport, Mississippi Xxxxxxxxx, Xxxxxx X., Dunwoody,
Xxxxxxx Xxxx, Xxxxxxx X., Atlanta, Georgia Xxxxxxxx, Xxx X., Decatur,
Georgia Xxxxx, Xxxxx X., Roswell, Georgia XxXxxxxx, Xxxxx X., Stone
Mountain, Georgia, Mississippi Power Company, Gulfport, Mississippi.
27. 4,647,296, Mar. 3, 1987, Spacers for straightening warped
precipitator curtains, Xxxx, Xxxxxx X., Pascagoula, Mississippi,
Mississippi Power Company, Gulfport, Mississippi. (LICENSED)
28. 4,598,557, Jul. 8, 1986, Integrated heat pump water heater, Xxxxxxxx,
Xxxx X., Atlanta, Georgia Xxxxxxxxx, Xxxxxx X., Dunwoody, Georgia,
Southern Company Services, Inc., Atlanta, Georgia.
29. 4,497,630, Feb. 5, 1985, Kit for teaching characteristics and use of
Electrical devices, Xxxxxx, Xxxxxx A. G., Tuscaloosa, Alabama,
Alabama Power Company, Birmingham, Alabama.
5
31
30. 4,252,398, Feb. 24, 1981, Electric power meter, Xxxxx, Xxxxx X.,
Clinton, Michigan Xxxxx, Xxxxx X., Xxxxxxx, Michigan, Mississippi
Power and Light Company, Jackson, Michigan a part interest.
C. Joint Patents
None.
6
32
EXHIBIT B
"LICENSED MARKS"
(SECTION 1.12)
SOUTHERN ENERGY
All marks incorporating "SOUTHERN ENERGY"
TRIANGLE LOGO
ENERGY TO SERVE YOUR WORLD
SOUTHERN COMPANY ENERGY MARKETING
SOUTHERN COMPANY
33
EXHIBIT C
"LICENSED SOUTHERN ENERGY TECHNOLOGY"
(SECTION 1.13)
None.
34
EXHIBIT D
"LICENSED SOUTHERN TECHNOLOGY"
(SECTION 1.14)
EXHIBIT D
SOFTWARE DESCRIPTION
75 Check Environmental software
ACCC Sort PSSE (application) results sorting software
AVM Account Validation for STARS
CFM Consolidated financial modeling software
CHEM RTK Chemical analysis software
Howler Weather regression analysis model
Load Forecast Viewer Load forecasting software
Mobius Document Direct Viewing SCS reports
PeopleNet/JobNet Custom web application
PPAT Financial performance projection tool
SHIPS HUMAN RESOURCES
INFORMATION SYSTEM
STARS Timekeeping system
METHODS, MANUALS, OTHER DESCRIPTION
Corporate Welding Manual SCS welding procedure
Corporate Auditing Manual SCS auditing procedure
General Specification for Boiler Tubes & Tube
Sections
Performance Management Philosophy
Personal Leadership Questionnaire 360 degree feedback survey
Vision Progress Survey Survey, feedback, action & follow-up
process
Skills Training
GPC Positive Discipline Program
Workforce Planning
Soco College Individual Development Planning
Workboook
Action Forum Process Power plant problem-solving process
SRCM Workstation Streamlined Reliability-Centered
Maintenance
New Generation Power Island
Technical Specifications for Condenser &
Auxiliaries
Technical Specifications for Combined Cycle
Power Plants
Technical Specifications for Steam Turbine for
Combined Cycle Power Plants
General Specifications for Unit Reserve
Auxiliaries Transformers
General Specifications for Generator Step-Up
Power Transformers
Technical Specifications for Instrumentation &
Control Equipment
35
GENERAL PROCEDURE #2075 PLANT CLEARANCE AND
TAGGING PROCEDURE
Contractor Control Manual
SCS Compliance Support Documents
SC Audit Program Overview and Safety & Health
Protocols
SC Environmental Audit Protocols
GPC Safety & Health Programs
Development Methodology
Maintenance Methodology
Development Project Plan Template & supporting SCS IR methodology
methodology
Maintenance Project Plan Template & supporting SCS IR methodology
methodology
Vision Progress Survey Survey, feedback, action & follow-up
process
Skills Training
GPC Positive Discipline Program
Workforce Planning
Soco College Individual Development Planning
Workbook
Performance Management Philosophy
Personal Leadership Questionnaire 360 degree feedback survey
Coal Gasification Studies performed for SEI
projects in Florida and Europe
Action Forum Process Power plant problem-solving process
36
EXHIBIT E
"SOUTHERN ENERGY OWNED TECHNOLOGY"
(SECTION 1.23)
1. Southern Company Energy Marketing Technology
37
EXHIBIT F
"SUBLICENSED SOUTHERN ENERGY TECHNOLOGY"
(SECTION 1.26)
None.
38
EXHIBIT G
"SUBLICENSED SOUTHERN TECHNOLOGY"
(SECTION 1.27)
SYSTEM: SOFTWARE & HARDWARE DESCRIPTION
3Com Hubs, data switches
ACCS Sort Sorts PSSE (see below) software results
ACL for Windows Audit software
CEMS Emission monitoring system
Corp Tax / Corp Int'l Tax Tax reporting software
E-monitor Odyssey Vibration monitoring analytic software
Enerlink Energy Management software for C&I accounts
Entek Vibration monitoring software
Environmental Compliance Tracking of plant's compliance activities
Management System
Express Options Employee stock grant option software
Front Page Web editing software (Microsoft)
GRS Web Page* Governmental Resources System web page
Xxxxxxx suite of dispatching products Dispatching tool
Hewlett Packard Operating System
IBM Server Servers
Internet Router
IPP database Independent Power Producer reports
LDIS Legal Department Information System
Maximo Work order management system
Meta Group Technology research service
Micro Gads NERC GADS reporting software
ss. Microsoft Desktop suite of Microsoft products
ss. Microsoft contract for CEPA's Home Run
environment
MV90 Meter data collection software
Myriad Electronic document viewer
Nortel VPN Boxes VPN Boxes
Oracle database Database license
Oracle Financials (incl. Purchasing) Financial (ERP) suite
Paragon Construction scheduling and budgeting
software
PI Plant historian/ plant information system
Pivotal Relationship 99 Customer relationship management suite
Polycom VC Equipments Video conference equipment
Power Dat, Coal Dat, Gas Dat, Base Case, Power Map Historical power market database,
Power Player Tax credit / modeling calculation software
Prism Compensation market pricing software
PSSE Transmission planning study software
Xxxxxx Vibration Analysis Vibration monitoring system
Secretariat SoCo Corporate Secretary function database
39
Siemens 3 Com switches, PABX
Toxic Release Inventory Environmental reporting software
Visio Graphics software
Wonderware Plant historian/plant information system
WRQ Billing system
