Exhibit 2.3
MASTER TECHNOLOGY OWNERSHIP AND
LICENSE AGREEMENT
BETWEEN
3COM CORPORATION
AND
PALM, INC.
EFFECTIVE AS OF FEBRUARY 26, 2000
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
PAGE
ARTICLE 1 DEFINITIONS.................................................................................................1
1.1 ANCILLARY AGREEMENTS................................................................................1
1.2 COPYRIGHTS..........................................................................................1
1.3 DATABASE RIGHTS.....................................................................................1
1.4 DISTRIBUTION DATE...................................................................................2
1.5 GALAHAD PROJECT.....................................................................................2
1.6 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT.........................................................2
1.7 INVENTION DISCLOSURE................................................................................2
1.8 IPO REGISTRATION STATEMENT..........................................................................2
1.9 JOINT TECHNOLOGY....................................................................................2
1.10 MASK WORK RIGHTS....................................................................................2
1.11 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT............................................................2
1.12 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT....................................................2
1.13 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........................................................2
1.14 PALM BUSINESS.......................................................................................3
1.15 PALM COMPUTING PLATFORM.............................................................................3
1.16 PALM OS.............................................................................................3
1.17 PALM PRODUCTS DATABASE..............................................................................3
1.18 PALM TECHNOLOGY.....................................................................................3
1.19 PALM TECHNOLOGY DATABASE............................................................................3
1.20 PATENTS.............................................................................................3
1.21 PERSON..............................................................................................3
1.22 SELL................................................................................................3
1.23 SEPARATION DATE.....................................................................................3
1.24 SUBSIDIARY..........................................................................................4
1.25 TDC.................................................................................................4
1.26 TECHNOLOGY..........................................................................................4
1.27 THIRD PARTY.........................................................................................4
ARTICLE 2 OWNERSHIP...................................................................................................4
2.1 OWNERSHIP OF PALM TECHNOLOGY........................................................................4
2.2 JOINT TECHNOLOGY....................................................................................5
2.3 PRIOR GRANTS........................................................................................5
2.4 ASSIGNMENT DISCLAIMER...............................................................................6
ARTICLE 3 LICENSES AND RIGHTS.........................................................................................6
3.1 PALM COMPUTING PLATFORM.............................................................................6
3.2 GALAHAD PROJECT AND TDC.............................................................................6
-i-
TABLE OF CONTENTS
(CONTINUED)
3.3 RIGHTS TO JOINT TECHNOLOGY..........................................................................6
3.4 NO PATENT LICENSES..................................................................................7
3.5 THIRD PARTY TECHNOLOGY..............................................................................8
ARTICLE 4 CONFIDENTIALITY.............................................................................................8
ARTICLE 5 NO TERMINATION..............................................................................................8
ARTICLE 6 DISPUTE RESOLUTION..........................................................................................8
6.1 MEDIATION...........................................................................................8
6.2 ARBITRATION.........................................................................................9
6.3 COURT ACTION........................................................................................9
6.4 CONTINUITY OF SERVICE AND PERFORMANCE...............................................................9
ARTICLE 7 LIMITATION OF LIABILITY.....................................................................................9
ARTICLE 8 MISCELLANEOUS PROVISIONS...................................................................................10
8.1 DISCLAIMER.........................................................................................10
8.2 NO IMPLIED LICENSES................................................................................10
8.3 INFRINGEMENT SUITS.................................................................................10
8.4 NO OTHER OBLIGATIONS...............................................................................10
8.5 ENTIRE AGREEMENT...................................................................................11
8.6 GOVERNING LAW......................................................................................11
8.7 DESCRIPTIVE HEADINGS...............................................................................11
8.8 NOTICES............................................................................................11
8.9 NONASSIGNABILITY...................................................................................12
8.10 SEVERABILITY.......................................................................................12
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE..............................................12
8.12 AMENDMENT..........................................................................................12
8.13 COUNTERPARTS.......................................................................................12
-ii-
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the
"Agreement") is effective as of February 26, 2000 (the "Effective Date"),
between 3Com Corporation, a Delaware corporation ("3Com"), having an office at
0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx, 00000 and Palm, Inc., a Delaware
corporation ("Palm"), having an office at 0000 Xxxxx Xxxxxxx Xxxxxxx, Xxxxx
Xxxxx, Xxxxxxxxxx, 00000.
WHEREAS, the Board of Directors of 3Com has determined that it is in
the best interest of 3Com and its stockholders to separate 3Com's existing
businesses into two independent businesses;
WHEREAS, as part of the foregoing, 3Com and Palm's predecessor, Palm
Computing, Inc., a California Corporation, have entered into a Master Separation
and Distribution Agreement (as defined below), which provides, among other
things, for the separation of certain Palm assets and Palm liabilities, the
initial public offering of Palm 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, the parties desire to confirm
Palm's ownership or joint ownership of certain technology.
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 1
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 ANCILLARY AGREEMENTS. "Ancillary Agreements" shall have the meaning
set forth in the Master Separation and Distribution Agreement.
1.2 COPYRIGHTS. "Copyrights" mean (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
rights under the laws of any jurisdiction.
1.3 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.
1.4 DISTRIBUTION DATE. "Distribution Date" shall have the meaning set
forth in the Master Separation and Distribution Agreement.
1.5 GALAHAD PROJECT. "Galahad Project" means the development effort
within 3Com's Wireless Connectivity Division (WCD) currently known internally as
the Galahad Project.
1.6 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT. "General Assignment
and Assumption Agreement" means the General Assignment and Assumption Agreement
between the parties.
1.7 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.
1.8 IPO REGISTRATION STATEMENT. "IPO Registration Statement" means the
registration statement on Form S-1 pursuant to the Securities Act of 1933, as
amended, to be filed with the Securities and Exchange Commission registering the
shares of common stock of Palm to be issued in the initial public offering,
together with all amendments thereto.
1.9 JOINT TECHNOLOGY. "Joint Technology" means the manufacturing
Technology indicated to be jointly owned in the Palm Technology Database, and
Technology which has been jointly developed by the parties prior to the
Separation Date that is incorporated into Current Palm Products (as defined in
the Master Patent Ownership and Assignment Agreement); provided, however, that
Joint Technology shall not include any Technology developed under the Galahad
Project or work done by TDC, except as otherwise agreed by the parties in
writing.
1.10 MASK WORK RIGHTS. "Mask Work Rights" means (i) any rights in mask
works, as defined in 17 U.S.C. Section 901, whether registered or unregistered,
including applications for registration thereof, and (ii) any foreign rights in
semiconductor topologies under the laws of any jurisdiction, whether registered
or unregistered, including applications for registration thereof.
1.11 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT. "Master Confidential
Disclosure Agreement" means the Master Confidential Disclosure Agreement between
3Com and Palm.
1.12 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT. "Master Patent
Ownership and Assignment Agreement" means the Master Patent Ownership and
Assignment Agreement between 3Com and Palm.
1.13 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation
and Distribution Agreement" means the Master Separation and Distribution
Agreement between 3Com and Palm.
2
1.14 PALM BUSINESS. "Palm Business" means the business and operations
of Palm as described in the IPO Registration Statement.
1.15 PALM COMPUTING PLATFORM. "Palm Computing Platform" means the Palm
OS and other related software and hardware technology and documentation
generally licensed by Palm to third party developers of handheld computing or
communication products.
1.16 PALM OS. "Palm OS" means the Palm operating system software files
and build tools.
1.17 PALM PRODUCTS DATABASE. "Palm Products Database" means the
mutually agreed Palm Products Database as of the Separation Date, as it may be
updated by the parties upon mutual agreement (signed by authorized officers) of
the parties to add Palm products as of the Separation Date.
1.18 PALM TECHNOLOGY. "Palm Technology" means (i) all Technology
developed solely by Palm or Subsidiaries of Palm or by its subcontractors for
Palm or its Subsidiaries, (ii) all Technology for which the direct costs were
solely paid for by Palm, (iii) the Palm Computing Platform, (iv) the
manufacturing technology that is indicated as to be owned by Palm in the Palm
Technology Database, and (v) all Technology developed or being developed solely
by the Palm Business as of the Separation Date. For the avoidance of doubt, the
parties agree that 3Com owns all right, title and interest in and to any
Technology that may have been jointly developed by the parties in the Galahad
Project and any projects with the TDC and any Technology either developed solely
by 3Com or for which the direct costs were solely paid for by 3Com.
1.19 PALM TECHNOLOGY DATABASE. "Palm Technology Database" means the
mutually agreed Palm Technology Database as of the Separation Date, as it may be
updated by the parties upon mutual agreement (signed by authorized officers) of
the parties to add Palm Technology as of the Separation Date.
1.20 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.
1.21 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.
1.22 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.
1.23 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
February 26, 2000, or such other date as may be fixed by the Board of Directors
of 3Com.
3
1.24 SUBSIDIARY. "Subsidiary" of any Person means a corporation or
other organization, whether incorporated or unincorporated, of which at least a
majority of the securities or interests having by the terms thereof ordinary
voting power to elect at least a majority of the board of directors or others
performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by such Person or by
any one or more of its Subsidiaries, or by such Person and one or more of its
Subsidiaries; provided, however, that no Person that is not directly or
indirectly wholly-owned by any other Person shall be a Subsidiary of such other
Person unless such other Person controls, or has the right, power or ability to
control, that Person. For purposes of this Agreement, Palm shall be deemed not
to be a subsidiary of 3Com.
1.25 TDC. "TDC" means the 3Com Technology Development Center.
1.26 TECHNOLOGY. "Technology" means technological models, algorithms,
manufacturing processes, design processes, behavioral models, logic diagrams,
schematics, test vectors, know-how, computer and electronic data processing and
other apparatus programs and software (object code and source code), databases
and documentation thereof, trade secrets, technical information, specifications,
drawings, records, documentation, works of authorship or other creative works,
websites, ideas, knowledge, data or the like. The term Technology includes
Copyrights, Database Rights, Mask Work Rights, trade secrets and any other
intellectual property right, but expressly does not include (i) any trademark,
trade name, trade dress or service xxxx, or applications for registration
thereof or (ii) any Patents or applications therefor, including any of the
foregoing that may be based on Invention Disclosures that are covered by the
Master Patent Ownership and License Agreement between the parties, but does
include trade secret rights in and to inventions disclosed in such Patent
applications and Invention Disclosures.
1.27 THIRD PARTY. "Third Party" means a Person other than 3Com and its
Subsidiaries and Palm and its Subsidiaries.
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF PALM TECHNOLOGY. The parties hereby confirm that
Palm owns all right, title and interest in and to the Palm Technology.
Subject to Sections 2.3 and 2.4 below, to the extent that 3Com has any
ownership rights in and to the Palm Technology, 3Com hereby grants, conveys
and assigns (and agrees to cause its appropriate Subsidiaries to grant,
convey and assign) to Palm, 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 Palm Technology, to be held
and enjoyed by Palm, its successors and assigns. 3Com further grants, conveys
and assigns (and agrees to cause its appropriate Subsidiaries to grant,
convey and assign) to Palm 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, Database Rights and Mask Work Rights in and to
the Palm Technology, and for past misappropriation of trade secrets in and to
the Palm Technology. 3Com further covenants that 3Com will, without demanding
any further consideration therefor, at the request and expense of Palm
(except for the value of the time of 3Com employees), do (and cause its
4
Subsidiaries to do) all lawful and just acts that may be or become
necessary for evidencing, maintaining, recording and perfecting Palm's rights to
such Palm Technology consistent with 3Com's general business practice as of the
Separation Date, including but not limited to, execution and acknowledgement of
(and causing its Subsidiaries to execute and acknowledge) assignments and other
instruments in a form reasonably required by Palm for each Copyright, Mask Work
Right or Database Right jurisdiction.
2.2 JOINT TECHNOLOGY. The parties hereby confirm that 3Com and Palm
jointly own all right, title and interest in and to the Joint Technology.
(a) Subject to Sections 2.3 and 2.4 below, 3Com hereby
grants, conveys and assigns (and agrees to cause its appropriate Subsidiaries
to grant, convey and assign) to Palm an undivided one-half interest in and to
the Joint Technology to be held and enjoyed by Palm, its successors and
assigns. 3Com further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Palm an undivided
one-half interest in and to any and all causes of action and rights of
recovery for past infringement of Copyrights, Database Rights and Mask Work
Rights in and to the Joint Technology, and for past misappropriation of trade
secrets in and to the Joint Technology. 3Com further covenants that 3Com
will, without demanding any consideration therefor, at the request and
expense of Palm (except for the value of the time of 3Com employees), do (and
cause its Subsidiaries to do) all lawful and just acts including the
execution and acknowledgement of instruments, that may be or become necessary
for evidencing, maintaining and perfecting Palm's rights to such Joint
Technology consistent with 3Com's general business practice as of the
Separation Date, including but not limited to, execution and acknowledgement
of (and causing its Subsidiaries to execute and acknowledge) assignments and
other instruments in a form reasonably required by Palm for each Copyright,
Mask Work Right or Database Right jurisdiction.
(b) Subject to Sections 2.3 and 2.4 below, Palm hereby
grants, conveys and assigns (and agrees to cause its appropriate Subsidiaries
to grant, convey and assign) to 3Com an undivided one-half interest in and to
the Joint Technology to be held and enjoyed by 3Com, its successors and
assigns. Palm further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to 3Com an undivided
one-half interest in and to any and all causes of action and rights of
recovery for past infringement of Copyrights, Database Rights and Mask Work
Rights in and to the Joint Technology, and for past misappropriation of trade
secrets in and to the Joint Technology. Palm further covenants that Palm
will, without demanding any consideration therefor, at the request and
expense of 3Com (except for the value of the time of Palm employees), do (and
cause its Subsidiaries to do) all lawful and just acts including the
execution and acknowledgement of instruments, that may be or become necessary
for evidencing, maintaining and perfecting 3Com's rights to such Joint
Technology consistent with Palm's general business practice as of the
Separation Date, including but not limited to, execution and acknowledgement
of (and causing its Subsidiaries to execute and acknowledge) assignments and
other instruments in a form reasonably required by 3Com for each Copyright,
Mask Work Right or Database Right jurisdiction.
2.3 PRIOR GRANTS.
5
(a) Palm acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have
been granted by or to 3Com or its Subsidiaries with respect to the Palm
Technology prior to the Separation Date. 3Com shall respond to reasonable
inquiries from Palm regarding any such prior grants.
(b) 3Com acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have
been granted by or to Palm or its Subsidiaries with respect to the 3Com
Technology prior to the Separation Date. Palm shall respond to reasonable
inquiries from 3Com regarding any such prior grants.
2.4 ASSIGNMENT DISCLAIMER. THE PARTIES ACKNOWLEDGE AND AGREE THAT
THE FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT
NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER PARTY 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. FURTHER, THE
PARTIES ACKNOWLEDGE AND AGREE THAT NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER
PARTY SHALL HAVE ANY OBLIGATION UNDER THIS AGREEMENT TO MAINTAIN OR SUPPORT
ANY OF THE TECHNOLOGY ASSIGNED UNDER THIS AGREEMENT OR TO PROVIDE ANY
UPGRADES OR ENHANCEMENTS THERETO TO THE OTHER PARTY.
ARTICLE 3
LICENSES AND RIGHTS
3.1 PALM COMPUTING PLATFORM. In recognition of the fact that 3Com
and Palm were affiliated entities prior to the Separation Date, Palm agrees
to grant a license (i) to 3Com with respect to the Palm Computing Platform on
favorable terms, and (ii) to 3Com (IAD) with respect to certain portions of
the Palm OS on favorable terms. The parties agree to negotiate such licensing
agreements reasonably and in good faith as promptly as they can reasonably
accomplish, but in no event later than the Distribution Date.
3.2 GALAHAD PROJECT AND TDC. The parties agree to negotiate reasonably
and in good faith joint development and licensing agreements with respect to
Technology developed in the Galahad Project and TDC (with respect to Palm
related projects) as promptly as they can reasonably accomplish, but in no event
later than the Distribution Date.
3.3 RIGHTS TO JOINT TECHNOLOGY.
(a) Each party has the right to (i) use and exploit the Joint
Technology, (ii) license the Joint Technology to Third Parties, and (iii)
transfer its ownership interest in any or all Joint Technology to any Third
Party, in each case (x) without restriction, (y) without the consent of the
other party, and (z) without the obligation to account to the other party for
profits derived therefrom.
6
(b) Should either party (the "Registering Party") desire at
any time to register Copyrights, Database Rights or Mask Work Rights in and to
the Joint Technology in any jurisdiction, such party shall notify the other
party (the "Non-Registering Party") in writing of its intent and the reasons
therefor. The Non-Registering Party promptly shall communicate in writing any
objections it may have. In the absence of any written objections within thirty
(30) days after the date of its notice, the Registering Party shall be free to
proceed with the desired registration in the name of both 3Com and Palm. In the
event of any such objections by the Non-Registering Party, the parties shall
discuss and negotiate reasonably and in good faith to resolve the objections
based on each party's business objectives with respect to the relevant item of
Joint Technology. The parties shall share equally any actual and reasonable
out-of-pocket expenses (expressly excluding the value of the time of either
party's employees) incurred in connection with any such registration. The
Registering Party promptly shall provide the Non-Registering Party with copies
of each application and issued registration under this Section 3.3(b).
(c) Should either party become aware of any actual
infringement or misappropriation of Joint Technology, such party shall
promptly communicate the details to the other party and the parties will meet
and confer regarding any enforcement action with respect to such Joint
Technology. If the parties decide jointly to bring an action for infringement
or misappropriation of such Joint Technology, the parties shall equally share
all actual and reasonable expenses associated therewith (except for the value
of the time of each party's employees in connection with the action; each
party shall alone bear its employee expenses) and any resulting damages or
compensation, including any amounts paid in settlement. If the parties decide
not to jointly bring such an action, either party or any of its Subsidiaries
may, at its own expense (including, as the parties shall agree on a case by
case basis, compensation, if any, of the other party for the value of time of
the other party's employees as reasonably required in connection with the
action), enforce any Joint Technology against any Third Party infringer or
misappropriating Person without the consent of the other party, subject to
the following: (i) neither party shall have any obligation to be joined as a
party plaintiff in such action without its prior written consent, which may
be granted or withheld in its sole discretion, regardless of whether such
joinder is required in order to confer jurisdiction in the jurisdiction in
which the action is to be brought, (ii) if either party brings any such
action on its own, including cases in which the other party consents to be
named as party plaintiff, the party bringing the action agrees to defend,
indemnify and hold harmless the other party for all losses, costs,
liabilities and expenses arising out of or related to the bringing of such
action, and (iii) the party bringing such action may not take any action, or
make any admissions, that may affect the validity of any registration for
Copyrights, Database Rights or Mask Work Rights covering Joint Technology
without the prior written consent of the other party. If the enforcing party
or its Subsidiaries recovers any damages or compensation for any action the
enforcing party or the Subsidiaries of the enforcing party takes hereunder,
including any settlement, the enforcing party or the Subsidiaries of the
enforcing party shall retain one hundred percent (100%) of such damages. If
the parties cooperate in any such enforcement action, then any recovery of
damages or compensation shall be allocated pursuant to mutual agreement.
3.4 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
7
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 by 3Com to Palm with respect
to Patents are set forth in a separate Master Patent Ownership and License
Agreement.
3.5 THIRD PARTY TECHNOLOGY. The assignment of any applicable license
agreements with respect to Third Party Technology are set forth in the General
Assignment and Assumption Agreement.
ARTICLE 4
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 5
NO TERMINATION
Each party acknowledges and agrees that its remedy for breach by the
other party of any provision hereof shall be, subject to the requirements of
Article 6, 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 this Agreement. For the avoidance of doubt, the parties intend
that this Agreement continue in perpetuity.
ARTICLE 6
DISPUTE RESOLUTION
6.1 MEDIATION. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement appropriate senior executives (e.g. director or V.P. level) of each
party who shall have the authority to resolve the matter shall meet to attempt
in good faith to negotiate a resolution of the Dispute prior to pursuing other
available remedies. The initial meeting between the appropriate senior
executives shall be referred to herein as the "Dispute Resolution Commencement
Date." Discussions and correspondence relating to trying to resolve such Dispute
shall be treated as Confidential Information developed for the purpose of
settlement and shall be exempt from discovery or production and shall not be
admissible. If the senior executives are unable to resolve the Dispute within
thirty (30) days from the Dispute Resolution Commencement Date, and either party
wishes to pursue its rights relating to such Dispute, then the Dispute will be
mediated by a mutually acceptable mediator appointed pursuant to the mediation
rules of JAMS/Endispute within thirty (30) days after written notice by one
party to the other demanding non-binding mediation. Neither party may
unreasonably withhold consent to the selection of a mediator or the location of
the mediation. Both parties will share the
8
costs of the mediation equally, except that each party shall bear its own
costs and expenses, including attorneys' fees, witness fees, travel expenses,
and preparation costs. The parties may also agree to replace mediation with
some other form of non-binding or binding alternate dispute resolution
("ADR").
6.2 ARBITRATION. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days of the Dispute Resolution Commencement Date,
unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), by three (3) arbitrators in Santa Xxxxx County,
California. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall be
entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior negotiation or mediation). The decision
of the arbitrator shall be final and non-appealable and may be enforced in any
court of competent jurisdiction. The use of any ADR procedures will not be
construed under the doctrine of laches, waiver or estoppel to adversely affect
the rights of either party.
6.3 COURT ACTION. Any Dispute regarding the following is not required
to be negotiated, mediated or arbitrated prior to seeking relief from a court of
competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute shall make a good faith effort to negotiate and mediate such
Dispute, according to the above procedures, while such court action is pending.
6.4 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement during the course of dispute resolution
pursuant to the provisions of this Article 6 with respect to all matters not
subject to such dispute, controversy or claim.
ARTICLE 7
LIMITATION OF LIABILITY.
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES 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 EACH PARTY'S
OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE MASTER SEPARATION AND
DISTRIBUTION AGREEMENT;
9
PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES
SHALL APPLY IN ANY EVENT.
ARTICLE 8
MISCELLANEOUS PROVISIONS
8.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY
AND ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER IS PROVIDED ON AN "AS
IS" BASIS, AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES 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 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 Patent or other
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 with respect to the Palm Technology and the Joint Technology. Neither
party is required hereunder to furnish or disclose to the other any technical or
other information, 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 Copyrights, Database Rights or Mask Work Rights or misappropriation of
any trade secret rights in or to any Technology licensed to the other party
hereunder, or to defend any action or suit brought by a Third Party which
challenges or concerns the validity of any of such rights or which claims that
any Technology assigned or licensed to the other party hereunder infringes any
Patent, Copyright, Database Right, Mask Work Right or other intellectual
property right of any Third Party or constitutes a misappropriated trade secret
of any Third Party. 3Com shall not have any right to institute any action or
suit against Third Parties for infringement of any of the Copyrights, Database
Rights or Mask Work Rights in or to the Palm Technology.
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, is obligated under this Agreement to provide any
technical assistance.
10
8.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements and the Exhibits
and Schedules referenced or attached hereto and thereto constitute the entire
agreement between the parties with respect to the subject matter hereof and
thereof and shall supersede all prior written and oral and all
contemporaneous oral agreements and understandings with respect to the
subject matter hereof and thereof. This Agreement shall prevail in the event
of any conflicting terms or legends which may appear on any portion of the
Palm Technology or the Joint Technology. To the extent there is a conflict
between this Agreement and the Master Assignment and Assumption Agreement
between the parties, the terms of this Agreement shall govern. To the extent
that the parties enter into specific agreements regarding specific projects
such as the Galahad Project or the Palm Computing Platform license, such
agreements shall supersede this Agreement with respect to any common subject
matter.
8.6 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Santa Xxxxx County and/or the United States District Court for the Northern
District of California shall have jurisdiction and venue over all Disputes
between the parties that are permitted to be brought in a court of law pursuant
to Article 6 above.
8.7 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in
any Exhibit or Schedule hereto and in the table of contents to this Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
8.8 NOTICES. Notices, offers, requests or other communications required
or permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to 3Com :
3Com Corporation
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
Fax: (000) 000-0000
if to Palm:
Palm, Inc.
0000 Xxxxx Xxxxxxx Xxxxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
11
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance or renewal shall be sent by hand delivery, recognized
overnight courier or, within the United States, may also be sent via certified
mail, return receipt requested. All other notices may also be sent by fax,
confirmed by first class mail. All notices shall be deemed to have been given
and received on the earlier of actual delivery or three (3) days from the date
of postmark.
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 successive assignees or transferees hereunder)
may, without such consent, assign this Agreement to an entity that succeeds to
all or substantially all of the business or assets of such party as long as such
Person agrees to accept all of the terms set forth herein; provided, however,
that the rights and obligations set forth in Sections 3.1 and 3.2 may not be
assigned or transferred in any event (except in the case of a reincorporation of
such party in another state). 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 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.
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, including the Ancillary
Agreements and the Exhibits and Schedules hereto and thereto and the other
documents referred to herein or therein, may be executed in counterparts,
each of which shall be deemed to be an original but all of which shall
constitute one and the same agreement.
12
WHEREFORE, the parties have signed this Master Technology Ownership
and License Agreement effective as of the date first set forth above.
3COM CORPORATION PALM, INC.
By: By:
------------------------- ----------------------------
Name: Name:
---------------------- --------------------------
Title: Title:
---------------------- -------------------------
13
