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EXHIBIT 2.6
INTELLECTUAL PROPERTY AGREEMENT
THIS INTELLECTUAL PROPERTY AGREEMENT having an Effective Date of
_________, 200_ is made by and among Quantum Corporation, a Delaware
corporation, with offices located in Milpitas, California ("Quantum"), Maxtor
Corporation, a Delaware corporation with offices located in Milpitas, California
("Maxtor") and Insula Corporation, a Delaware corporation, with offices located
in Milpitas, California ("Spinco").
RECITALS:
Whereas, Quantum, Spinco, Maxtor and a wholly owned subsidiary of Maxtor
are parties to a certain AMENDED AND RESTATED AGREEMENT AND PLAN OF MERGER AND
REORGANIZATION dated as of October 3, 2000 (the "Merger Agreement") pursuant to
which the hard disk drive business of Quantum will be transferred to Spinco and
Spinco will merge with and into Maxtor (the "Merger" as defined in the Merger
Agreement);
Whereas, in connection with such transaction, Spinco wishes to acquire
the absolute ownership of certain proprietary and intellectual property rights
in and associated with the hard disk drive business of Quantum, and to acquire a
license to other proprietary and intellectual property rights in and associated
with the hard disk drive business of Quantum; and,
Whereas, in connection with such transaction, Quantum wishes to retain a
license to certain proprietary and intellectual property rights in and
associated with the hard disk drive business of Quantum that is being
transferred herein to Spinco.
NOW, THEREFORE, in consideration of the Merger Agreement and the mutual
covenants, promises and representations set forth herein, and for other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows:
AGREEMENT
1. Definitions.
1.1 "Assigned Agreements" shall mean the agreements to which
Quantum is a party listed and shown in Exhibit E.
1.2 "Documentation" means written materials (and machine-readable
text subject to display and printout) which relates to and/or describes a
Program.
1.3 "Derivative Work" means a work (i) which is based upon one or
more pre-existing works, such as a revision, modification, translation,
abridgement, condensation, expansion or any other form in which such
pre-existing works may be recast, transformed or adapted; and (ii) which, if
prepared without authorization of the owner of the copyright in such
pre-existing work, would constitute a copyright infringement. Derivative Work
includes any compilation that incorporates such a pre-existing work.
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1.4 "HDD Business" shall have the meaning ascribed thereto in the
Merger Agreement.
1.5 "HDD Copyrights" shall mean the copyrights, registered and
unregistered, in or to artistic and literary works (including Materials,
Programs and Documentation) listed and shown in Exhibit B.
1.6 "HDD Intellectual Property Rights" shall mean HDD Patents,
HDD Copyrights, HDD Trade Secrets and HDD Trademarks.
1.7 "HDD Patents" shall mean the patents, patent applications,
registered designs, registered utility models, and applications therefor, and
inventions listed and shown in Exhibit A, including without limit any reissues,
divisionals, continuations, continuations in part, extensions, reexaminations or
foreign counterparts thereof, and any and all of the foregoing having primary
utility in the HDD Business that are conceived or reduced to practice after the
Effective Date and prior to the Separation Date and are reflected in an updated
Exhibit A as of the Separation Date.
1.8 "HDD Products" shall mean rotating computer data storage
memory devices primarily designed to record and/or read digital information on
or from a rotating disk, including but not limited to, a magnetic or
magneto-optic disk, components or combinations thereof, including but not
limited to, storage area networks and network attached storage apparatus, and
processes and apparatus for the manufacture or assembly thereof.
1.9 "HDD Trademarks" shall mean the trademarks, registered and
unregistered, servicemarks and tradenames listed and shown in Exhibit D.
1.10 "HDD Trade Secrets" shall mean the materials and
documentation listed and shown in Exhibit C.
1.11 "Licensable" means, with respect to intellectual property,
that a party has the right to grant the other party a license to such
intellectual property of the scope set forth in Section 3 hereof without payment
of a fee or any other consideration to any third party (except for payments
among such party and its Subsidiaries, and payments to former employees of such
party or any of its Subsidiaries for intellectual property created by said
former employees while employed by such party or any of its Subsidiaries).
1.12 "Materials" shall mean literary works or other works of
authorship, including but not limited to, Programs and Documentation, fixed in
any tangible medium of expression.
1.13 "Program" shall mean a plurality of instructions capable of
being executed by a machine, whether or not such instructions are in a
machine-readable form.
1.14 "Quantum Copyrights" shall mean any and all copyrights, both
registered and unregistered, in or to artistic and literary works (including
Materials, Programs and Documentation) owned or Licensable by Quantum or any of
its Subsidiaries as of the Separation Date, and which would be infringed by
anyone developing, using, manufacturing, selling,
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marketing, licensing, creating Derivative Works of, reproducing, displaying,
performing or distributing HDD Products.
1.15 "Quantum Intellectual Property Rights" shall mean Quantum
Patents, Quantum Trademarks, Quantum Copyrights and Quantum Trade Secrets.
1.16 "Quantum Patents" shall mean all patents, registered
designs, registered utility models, and applications therefor, including without
limit any reissues, divisionals, continuations, continuations in part,
extensions, reexaminations or foreign counterparts thereof whether in whole or
in part, owned or Licensable by Quantum or any of its Subsidiaries as of the
Separation Date, that may be infringed (including by direct, contributory, or
inducing infringement) by anyone making, selling, using, importing, offering for
sale, leasing and/or otherwise transferring HDD Products.
1.17 "Quantum Products" shall mean (i) tape drives, tape media,
cartridges and storage systems, tape libraries and solid state storage systems,
and devices, apparatus, systems and software for network attached storage and
storage area networks applications, (ii) any related product or services, (iii)
components or combinations of any of the foregoing, and (iv) processes and
apparatus for the manufacture or assembly of any of the foregoing. Quantum
Products shall not include hard disk drives, per se, or the processes or
apparatus for the manufacture or assembly of hard disk drives.
1.18 "Quantum Trade Secrets" shall mean all technology, ideas,
inventions, designs, proprietary information, manufacturing and operating
specifications, know-how, formulae, trade secrets, technical data, computer
programs, hardware, software and processes owned or Licensable by Quantum as of
the Separation Date and related to, or required for, the development, use,
manufacturing, sales and marketing, or licensing of HDD Products (other than
storage area networks and network attached storage apparatus, and processes and
apparatus for the manufacture or assembly thereof). Quantum Trade Secrets, may
be in tangible form, such as but not limited to, blue prints, manufacturing
process instruction, product flow charts, written specifications or product
samples. Quantum Trade Secrets may also be in intangible form, such as but not
limited to, oral conversations or the performance of technical training.
1.19 "Separation Date" shall have the meaning ascribed thereto in
the Merger Agreement.
1.20 "Subsidiary" or "Subsidiaries" shall mean any corporation,
limited liability company, general or limited partnership, joint venture,
business trust, unincorporated association or other business enterprise or
entity controlled by a person, directly or indirectly through one or more
intermediaries.
1.21 Any capitalized term not defined herein but defined in the
Merger Agreement shall have the meaning ascribed thereto in the Merger
Agreement.
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2. Assignment and Rights. Effective as of the Separation Date:
2.1 Quantum hereby transfers, assigns and conveys to Spinco any
and all of its right, title and interest in and to HDD Patents and the rights to
recover past damages for the infringement of such HDD Patents.
2.2 To the extent that any employee of Quantum following the
Merger is a named inventor on any patent application constituting an HDD Patent,
in accordance with Section 2.5 below, Quantum will use reasonable commercial
efforts to cause such employee to provide Spinco or its designee with reasonable
assistance in the prosecution of such application.
2.3 Quantum hereby transfers, assigns and conveys to Spinco any
and all of its right, title and interest in and to HDD Copyrights.
2.4 Quantum hereby transfers, assigns and conveys to Spinco any
and all of its right, title and interest in and to HDD Trademarks and all
goodwill of the HDD Business appurtenant thereto.
2.5 Quantum hereby transfers, assigns and conveys to Spinco any
and all of its right, title and interest in and to HDD Trade Secrets. With
respect to inventions embodied in such HDD Trade Secrets, Spinco shall have, and
Quantum hereby grants to Spinco, the exclusive right, to file or have filed on
its behalf or on behalf of its designees, and to own applications for patents
and the patents issuing thereon. In exercising its exclusive right, Spinco will
consider input from Quantum relative to the protection of inventions originated
by Quantum.
2.6 Quantum hereby transfers, assigns and conveys to Spinco any
and all of its right, title and interest in and to the Assigned Agreements to
the extent such transfer, assignment or conveyance will not constitute a breach
of, or be contrary to the terms of such agreement or require any payment by
Quantum to any third party.
3. Licenses. Effective as of the Separation Date:
3.1 Spinco hereby grants to Quantum, a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the HDD Patents to make,
use, import, offer for sale, lease, sell and otherwise transfer Quantum
Products.
3.2 Spinco hereby grants to Quantum, a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the HDD Copyrights to
prepare Derivative Works of Quantum Products, and to reproduce, display, perform
and distribute the Quantum Products and Derivative Works thereof.
3.3 Spinco hereby grants to Quantum, a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the HDD Trade Secrets to
develop, manufacture, use, import, sell and otherwise transfer, Quantum
Products.
3.4 Quantum hereby grants to Spinco a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the Quantum Patents to make,
use, import, offer for sale, lease, sell and otherwise transfer, HDD Products
and related services.
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3.5 Quantum hereby grants to Spinco a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the Quantum Copyrights to
prepare Derivative Works of the Materials included in the Quantum Copyrights,
and to reproduce, display, perform and distribute such Materials and Derivative
Works thereof as part of HDD Products.
3.6 Quantum hereby grants to Spinco a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the Quantum Trade Secrets to
develop, manufacture, use, import, sell and otherwise transfer, HDD Products and
related services.
3.7 The licenses granted to Quantum and Spinco in this Section 3
shall be transferable and sublicensable, in whole or in part, to any entity
including without limitation, to Maxtor and Subsidiaries of Maxtor or to any
successor to any part of the business of Maxtor or any of its Subsidiaries, and
Subsidiaries of Quantum or to any successor to any part of the business of
Quantum or any of its Subsidiaries.
4. Nonassertion.
4.1 For a period of ten (10) years from the Separation Date,
Spinco agrees that with respect to any patents owned or Licensable by Spinco or
its affiliates, neither Spinco nor its affiliates will assert against Quantum or
any of its Subsidiaries or any successor to a business of Quantum or its
Subsidiaries, any claims of infringement based on the manufacture, importation,
use or sale of any Quantum Products by Quantum, its Subsidiaries, or any
successor to a business of Quantum or its Subsidiaries, or any of their
respective distributors, customers or end users.
4.2 For a period of ten (10) years from the Separation Date,
Quantum agrees that with respect to any patents owned or Licensable by Quantum
or its affiliates, neither Quantum nor its affiliates will assert against Maxtor
or any of its Subsidiaries or any successor to a business of Maxtor or its
Subsidiaries, any claims of infringement based on the manufacture, importation,
use or sale of any Maxtor HDD Products by Maxtor, its Subsidiaries or any
successor to a business of Maxtor or its Subsidiaries, or any of their
respective distributors, customers or end users.
5. Assignment. Except as otherwise provided herein, neither party
may assign its rights under this Agreement without the prior written approval of
the other party, except that either party may assign this Agreement, in whole or
in part, without consent in connection with a merger or acquisition of or by
such party, or in connection with the transfer of a business, whether such
transfer is structured as a transfer of assets or of stock. Subject to the
preceding sentence, this Agreement shall be binding upon and shall inure to the
benefit of the parties hereto and their respective successors and permitted
assigns.
6. Confidentiality Obligation. The parties acknowledge that in
connection with the transactions contemplated herein, each party will have
access to certain trade secrets and confidential information of the other party.
As used herein, "Spinco Confidential Information" shall mean confidential
information embodied in the HDD Trade Secrets including confidential software
code, algorithms, structure, sequence and organization of any materials
contained
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therein. "Quantum Confidential Information" shall mean confidential information
embodied in the Quantum Trade Secrets including confidential software code,
algorithms, structure, sequence and organization of any materials contained
therein. Each party will use reasonable efforts to maintain in confidence and to
not disclose or use the other party's Confidential Information, whether or not
it is in written form, except pursuant to rights and licenses granted in this
Agreement or except as may be authorized by the other party. Each party will
immediately give notice to the other party of any unauthorized use or disclosure
of the other party's Confidential Information that such party becomes aware of.
Each party agrees to provide reasonable assistance to the other party in
remedying any such unauthorized use or disclosure. This obligation shall not
apply to information to the extent a party can demonstrate that such
information:
(a) at the time of disclosure is part of the public
domain, without breach of this Agreement;
(b) became part of the public domain, by publication or
otherwise, except by breach of the provisions of this Agreement;
(c) was independently developed by such party without
reference to the other party's Confidential Information; or
(d) is received from a third party without similar
restrictions and without breach of this Agreement.
The rights and obligations of this Section 6 shall prevail over
any other agreement with respect to the disclosure and use of HDD Trade Secrets
and Quantum Trade Secrets.
7. Further Assurances and Delivery. Each party hereto agrees to
cooperate fully with the other party and to execute and deliver such further
instruments, documents and agreements, and to give such further written
assurances, as may be reasonably requested by the other party or any other party
to better evidence and reflect the transactions described herein and
contemplated hereby and to carry into effect the intent and purposes of this
Agreement. Reasonably promptly after the Separation Date, Quantum shall use
reasonable efforts to deliver, to the extent practical, documents and other
tangible embodiments of the HDD Intellectual Property Rights and Assigned
Agreements, and copies of tangible embodiments of the Quantum Intellectual
Property Rights in the form which such embodiments are currently held by Quantum
in the ordinary course of its business as of the Separation Date. Quantum shall
provide such other information concerning the Assigned Agreements, HDD
Intellectual Property Rights and Quantum Intellectual Property Rights as may be
in Quantum's possession that Spinco shall reasonably request.
8. General Provisions.
8.1 Counterparts. This Agreement may be executed simultaneously
in two or more counterparts, each of which will be considered an original, but
all of which together will constitute one and the same instrument.
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8.2 Amendments. This Agreement may be amended or supplemented
only by a writing that is signed by duly authorized representatives of both
parties.
8.3 Notices. All notices permitted or required under this
Agreement shall be in writing and shall be delivered as follows with notice
deemed given as indicated: (i) by personal delivery when delivered personally,
(ii) by overnight courier upon written verification of receipt, (iii) by
telecopy or facsimile transmission when confirmed by telecopier or facsimile
transmission, or (iv) by certified or registered mail, return receipt requested,
five (5) days after deposit in the mail. All notices must be sent to the
addresses first described above or to such other address that the receiving
party may have provided for the purpose of notice in accordance with this
Paragraph 8.3.
8.4 Choice of Law. This Agreement will be governed by and
construed in accordance with the laws of the United States and the State of
California as applied to agreements entered into and to be performed entirely
within California between California residents.
8.5 Choice of Forum. The parties hereby submit to the
nonexclusive jurisdiction of, and waive any venue objections against, the United
States District Court for the Northern District of California, San Xxxx Xxxxxx
and the Superior and Municipal Courts of the State of California, Santa Xxxxx
County, in any litigation arising out of the Agreement.
8.6 Waiver. No term or provision hereof will be considered waived
by either party, and no breach excused by either party, unless such waiver or
consent is in writing signed on behalf of the party against whom the waiver is
asserted. No consent by either party to, or waiver of, a breach by either party,
whether express or implied, will constitute a consent to, waiver of, or excuse
of any other different or subsequent breach by either party.
8.7 Severability. In the event that any provision of this
Agreement shall be unenforceable or invalid under any applicable law or be so
held by applicable court decision, such unenforceability or invalidity shall not
render this Agreement unenforceable or invalid as a whole.
8.8 Entire Agreement. This Agreement is entered into in
connection with the Merger Agreement; provided, however, that this Agreement
shall prevail over the Merger Agreement with respect to the subject matter
hereof. Subject to the foregoing, this Agreement, including all Exhibits to this
Agreement, collectively constitute the entire agreement between the parties
relating to this subject matter and supersedes all prior or simultaneous
representations, discussions and agreements, whether written or oral.
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IN WITNESS WHEREOF, the parties have affixed their signatures to this
Agreement.
INSULA CORPORATION: QUANTUM CORPORATION:
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By: By:
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Title: Title:
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Date: Date:
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MAXTOR CORPORATION
By:
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Title:
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Date:
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