INTELLECTUAL PROPERTY MATTERS AGREEMENT between AGILENT TECHNOLOGIES, INC. and KEYSIGHT TECHNOLOGIES, INC. Dated as of August 1, 2014
Exhibit 10.4
INTELLECTUAL PROPERTY MATTERS AGREEMENT
between
AGILENT TECHNOLOGIES, INC.
and
Dated as of August 1, 2014
TABLE OF CONTENTS
ARTICLE |
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DESCRIPTION |
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I |
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DEFINITIONS AND RULES OF CONSTRUCTION |
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1 |
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II |
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TRANSFERRED INTELLECTUAL PROPERTY RIGHTS AND TECHNOLOGY |
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2 |
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III |
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LICENSES FROM AGILENT TO KEYSIGHT |
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4 |
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IV |
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LICENSES FROM KEYSIGHT TO AGILENT |
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8 |
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V |
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ADDITIONAL INTELLECTUAL PROPERTY RELATED MATTERS |
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11 |
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VI |
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CONFIDENTIAL INFORMATION |
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13 |
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VII |
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LIMITATION OF LIABILITY AND WARRANTY DISCLAIMER |
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15 |
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VIII |
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TRANSFERABILITY AND ASSIGNMENT |
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15 |
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IX |
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REVOCATION AND TERMINATION OF LICENSE RIGHTS |
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17 |
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X |
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MISCELLANEOUS |
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18 |
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EXHIBIT |
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DESCRIPTION |
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A |
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DEFINITIONS |
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B |
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COMPOSITE INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENTS |
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B1 |
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PATENT ASSIGNMENT AGREEMENT |
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B2 |
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TRADEMARK ASSIGNMENT AGREEMENT |
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B3 |
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COPYRIGHT AND MASK WORK ASSIGNMENT AGREEMENT |
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B4 |
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TRADE SECRET ASSIGNMENT AGREEMENT |
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C |
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SCHEDULE OF TRANSFERRED PATENTS |
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D |
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SCHEDULE OF TRANSFERRED INTELLECTUAL PROPERTY RIGHTS |
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E |
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TRADEMARK LICENSE AGREEMENT |
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INTELLECTUAL PROPERTY MATTERS AGREEMENT
THIS INTELLECTUAL PROPERTY MATTERS AGREEMENT (this βAgreementβ) is dated as of August 1, 2014 (βEffective Dateβ), by and between Agilent Technologies, Inc., a Delaware corporation (βAgilentβ), and Keysight Technologies, Inc., a Delaware corporation (βKeysightβ). Agilent and Keysight are each a βPartyβ and collectively, the βPartiesβ. Each reference to the words βPartyβ or βPartiesβ herein shall refer collectively to such Party or Parties on its or their own behalf and on behalf of each of its or their Affiliates.
WHEREAS, pursuant to the Separation and Distribution Agreement entered into by and between Keysight and Agilent (the βSeparation Agreementβ), the Parties have agreed to separate the Keysight Business from Agilent; and
WHEREAS, it is the intent of the Parties, in accordance with the Separation Agreement and the other agreements and instruments provided for therein, that Agilent convey, and cause its Affiliates to convey, to Keysight and its Affiliates substantially all of the business and assets of the Keysight Business and that Keysight and its Affiliates assume certain of the liabilities related to the Keysight Business; and
WHEREAS, it is the intent of the Parties that Agilent convey, and cause its Affiliates to convey, certain intellectual property rights and certain technology to Keysight, to license certain other intellectual property rights to Keysight, and for Keysight and its Affiliates to grant a license back to Agilent of the Transferred Intellectual Property Rights subject to the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants and agreements set forth below, and other good and valuable consideration, the receipt and adequacy of which is hereby acknowledged, the Parties hereby agree as follows:
ARTICLE I
DEFINITIONS AND RULES OF CONSTRUCTION
1.1 Definitions. Unless otherwise defined in this Agreement, including Exhibit A hereto, capitalized terms used in this Agreement shall have the meanings ascribed to them in the Separation Agreement. In the event of any conflict between the definitions in this Agreement and in the Separation Agreement, the terms of this Agreement shall control.
(a) This Agreement shall be construed without regard to any presumption or rule requiring construction or interpretation against the Party drafting or causing any instrument to be drafted.
(b) The words βhereof,β βhereinβ and βhereunderβ and words of similar import when used in this Agreement will refer to this Agreement as a whole (including any
annexes, exhibits and schedules to this Agreement) and not to any particular provision of this Agreement, and section and subsection references are to this Agreement unless otherwise specified. The words βinclude,β βincluding,β or βincludesβ when used herein shall be deemed in each case to be followed by the words βwithout limitationβ or words having similar import. The headings and table of contents in this Agreement are included for convenience of reference only and will not limit or otherwise affect the meaning or interpretation of this Agreement. The meanings given to terms defined herein will be equally applicable to both the singular and plural forms of such terms.
ARTICLE II
TRANSFERRED INTELLECTUAL PROPERTY RIGHTS AND TECHNOLOGY
2.1 Assignment of Intellectual Property Rights. Agilent agrees to, and agrees to cause its Affiliates to, grant, assign and convey to Keysight all of Agilentβs and its Affiliatesβ rights, title and interest in and to the Transferred Intellectual Property Rights and Transferred Trademarks. For the avoidance of doubt, the Transferred Intellectual Property Rights are transferred subject to the licenses granted to Agilent in Article IV below and all other licenses granted under any such Intellectual Property Rights existing and in force as of the Effective Date (subject to the terms and conditions contained in each such license agreement). The Transferred Intellectual Property Rights and Transferred Trademarks include all of Agilentβs and its Affiliatesβ right, title, and interest in and to any and all proceeds, causes of action, and rights of recovery against Third Parties for past and future infringement, misappropriation, or other violation or impairment of any of the Transferred Intellectual Property Rights or Transferred Trademarks. The Parties shall execute intellectual property assignments in a form substantially similar to that attached hereto as Exhibit B, Composite Intellectual Property Assignment Agreements (namely: B1 (patent) (the βPatent Assignment Agreementβ); B2 (trademark) (the βTrademark Assignment Agreementβ); B3 (copyright and mask works) (βThe Copyright and Mask Work Assignment); and B4 (trade secret) (β The Trade Secret Assignmentβ) as well as such additional case specific assignments as deemed appropriate to carry out the intent of the parties, (collectively the βIntellectual Property Assignment Agreementsβ). Agilent shall cause its Affiliates to do so as appropriate, to document the transfer of the Transferred Intellectual Property Rights and Transferred Trademarks.
(a) Recording Change of Ownership of the Transferred Intellectual Property Rights and Transferred Trademarks. Keysight shall have the sole responsibility, at its sole cost and expense, to file the Intellectual Property Assignment Agreements and any other forms or documents as required to record the assignment of the Transferred Intellectual Property Rights and Transferred Trademarks from Agilent and its Affiliates to Keysight; provided, however, that, upon request, Agilent shall provide reasonable assistance to Keysight to record the assignment, at Keysightβs sole cost and expense.
(b) Responsibility for Transferred Patents. Agilent shall provide on or before the Effective Date a listing of all actions and fees due up to ninety (90) days after the Effective Date for the Transferred Patents in all relevant jurisdictions. Agilent shall pay all fees incurred and respond to all office actions due up to and including the Effective Date. Keysight shall, in its sole discretion, pay all fees incurred and respond to all office actions due
subsequent to the Effective Date. Agilent shall forward to Keysight via electronic mail sent to xxxxxx.xxxxx@Xxxxxxxx.xxx and xxxxxxxxxxxx@xxxxxxxxx.xxx copies of all patent office correspondence received by Agilent and copies of all patent attorney and agent correspondence received by Agilent related to the Transferred Patents for ninety (90) days after the Distribution Date. Agilent shall provide on or before the Effective Date a copy of all digitally stored files relating to the Transferred Patents, and shall retain in accordance with Agilentβs retention policy for Agilent patents, any hard-copy records related to the Transferred Patents (βKeysight Patent Recordsβ) in Agilentβs possession as of the Effective Date, and Agilent shall provide Keysight with timely access to the Keysight Patent Records during normal business hours upon Keysightβs reasonable request. The foregoing notwithstanding, in no case shall Agilentβs obligation to retain any Keysight Patent Records extend beyond ten (10) years from the Effective Date. The provisions in this Section 2.1(b) recite the only responsibilities of Agilent for the Transferred Patents after the Effective Date.
2.2 Assignment of Intellectual Property Licenses. Agilent agrees to, and agrees to cause its Affiliates to, assign and convey to Keysight, the Transferred Licenses, subject to the terms, conditions, and restrictions of each Transferred License. Keysight acknowledges and agrees that it shall have sole responsibility to seek and obtain the consent of any Third Party necessary for the transfer of any of the Transferred Licenses, and shall bear sole responsibility for any consideration necessary for their transfer; provided, however, that upon request Agilent will provide reasonable assistance in obtaining such consent, at Keysightβs (or its Affiliatesβ) sole expense. For the avoidance of doubt, and subject to the terms and conditions of the Transferred Licenses, upon the assignment and conveyance of the Transferred Licenses to Keysight, Keysight shall succeed to all of the rights, responsibilities, duties, obligations, and liabilities of Agilent and Agilentβs Affiliates under each such Transferred License, including, without limitation, any liabilities arising under such Transferred License prior to the date of such assignment and conveyance, which liabilities shall be the responsibility of Keysight.
2.3 Transfer of Business Technology. For the avoidance of doubt, the transfer of the Business Technology as set forth in the Separation Agreement does not include the transfer of any Intellectual Property Rights in or to the Business Technology; such Intellectual Property Rights are either transferred to Keysight as Transferred Intellectual Property Rights in Section 2.1 above or are licensed to Keysight in Section 3.1 below.
2.4 Common Heritage Copyrights. Common Heritage Copyrights (e.g., photos from the Agilent business archives) shall be deemed to be co-authored and co-owned by Agilent and Keysight. Upon Keysight written request, Agilent and its Affiliates shall execute documents confirming the assignment of such co-ownership interest to Keysight. Each co-owner shall be free to exercise full rights to the Common Heritage Copyrights without consent and without accounting to the other co-owner.
2.5 Common Infrastructure Copyrights. Common Infrastructure Copyrights shall be co-owned by Agilent and Keysight. Upon Keysight written request, Agilent and its Affiliates shall execute documents confirming the assignment of such co-ownership interest to Keysight. Subject to Article 6, below, each co-owner shall be free to exploit the Common Infrastructure Copyrights without further consent and without accounting to the other co-owner.
(a) The parties acknowledge that some of the materials associated with Common Infrastructure Copyrights (e.g., documents, PowerPoint slides, photo libraries, etc.) may also contain Third Party-owned copyrighted material (β3POCMβ) such as fonts, images and graphics, which are licensed to Agilent. This provision therefore does not extend to such 3POCM, and Keysight is solely responsible for obtaining its own licenses to the 3POCM. Keysight shall also indemnify and hold Agilent harmless from all claims by Third Parties arising out of or relating to Keysightβs unlicensed use of the 3POCM.
(b) Notwithstanding the foregoing, the use of any Common Infrastructure Copyrights by or for Keysight, and any works related to, or based upon, any of the Common Infrastructure Copyrights, may not contain any references to Agilent (or any of Agilentβs marks, names, trade dress, logos or other source or business identifiers, including the Agilent Name and Agilent Marks), Agilentβs publications, Agilentβs personnel (including senior management), Agilentβs management structures or any other indication (other than the verbatim or paraphrased reproduction of the content) that such works are based upon any of Common Infrastructure Copyrights that originated with Agilent.
(c) Neither Agilent nor Keysight shall have any obligation to the other to (i) notify of any changes or proposed changes to any of the Common Infrastructure Copyrights, (ii) include the other in any consideration of proposed changes to any of the Common Infrastructure Copyrights, (iii) provide draft changes of any of the Common Infrastructure Copyrights to the other for review and/or comment, or (iv) provide the other with any updated materials relating to any of the Common Infrastructure Copyrights.
2.6 Common Infrastructure Trade Secrets. Common Infrastructure Trade Secrets shall be co-owned by Agilent and Keysight. Upon Keysight written request, Agilent and its Affiliates shall execute docments confirming the assignment of such co-ownership interest to Keysight. Subject to Article 6, below, each co-owner shall be free to exploit the Common Infrastructure Trade Secrets without further consent and without accounting to the other co-owner. Neither of the joint owners (Keysight, Agilent) shall make a Common Infrastructure Trade Secret public or otherwise destroy or impair the trade secret status of Common Infrastructure Trade Secret without the express, advance, written consent of the other joint owner.
ARTICLE III
LICENSES FROM AGILENT TO KEYSIGHT
3.1 License Grants. Agilent grants, agrees to grant, and agrees to cause its Affiliates to, grant to Keysight and its Affiliates the following personal, irrevocable (except as set forth in Article VIII and IX below), non-exclusive, worldwide, royalty-free and non-transferable (except as specified below in Article VIII below) licenses under Licensed Agilent IPR subject to the terms of this Agreement as follows:
(a) Patents. Under the patents included in Licensed Agilent IPR, to do the following with regard to Keysight Products solely within the Keysight Field: (i) to make (including the right to practice methods, processes, and procedures), (ii) to have made (subject
to Section 3.2), and (iii) to use, lease, sell, offer for sale, and import. The Agilent Patent licenses set forth in this Section 3.1(a) shall expire, with respect to each individual licensed Patent, upon the expiration of the term of each such Agilent Patent.
(b) Trademarks. As to certain Trademarks owned by Agilent or its Affiliates as of the Effective Date, Agilent agrees to grant Keysight a license as set forth in the Trademark License Agreement (TLA), a copy of which is attached hereto as Exhibit E. To the extent there is a conflict between the terms of this Agreement and the TLA, the terms of the TLA shall control.
(c) Copyrights. Under the copyrights that are included in Licensed Agilent IPR, (i) to reproduce and have reproduced the works of authorship included therein and derivative works thereof prepared by or on behalf of Keysight, in whole or in part, solely as part of Keysight Products in the Keysight Field, (ii) to prepare derivative works or have derivative works prepared for it based upon such works of authorship solely to create Keysight Products in the Keysight Field, (iii) to distribute (by any means and using any technology, whether now known or unknown) copies of the works of authorship included therein (and derivative works thereof prepared by or on behalf of Keysight) to the public by sale or other transfer of ownership or by rental, lease or lending, solely as part of Keysight Products in the Keysight Field, (iv) to perform (by any means and using any technology, whether now known or unknown, including electronic transmission) and display the works of authorship included therein (and derivatives works thereof prepared by or on behalf of Keysight), in all cases solely as part of Keysight Products in the Keysight Field, and (v) to use such works of authorship (and derivative works thereof prepared by or on behalf of Keysight) to design, develop, manufacture and have manufactured (subject to Section 3.2), sell and support Keysight Products in the Keysight Field.
The parties acknowledge that some of the materials licensed under this provision (e.g., documents, PowerPoint slides, photo libraries, etc.) also contain 3POCM such as fonts, images and graphics, which are licensed to Agilent but that are not sub-licensable to Keysight. The license granted under this provision, therefore, does not extend to the use of such 3POCM, and Keysight is solely responsible for obtaining its own licenses to the 3POCM. Keysight shall also indemnify and hold Agilent harmless from all claims by Third Parties arising out of or relating to Keysightβs unlicensed use of the 3POCM.
(d) Database Rights. Under Database Rights included in Licensed Agilent IPR, to extract data from the databases included therein and to re-utilize such data (and Improvements thereof prepared by or on behalf of Keysight) solely to design, develop, manufacture and have manufactured (subject to Section 3.2), sell and support Keysight Products in the Keysight Field.
(e) Mask Works Rights. Under Mask Work Rights included in Licensed Agilent IPR, (i) to reproduce and have reproduced (subject to Section 3.2), by optical, electronic or any other means, mask works and semiconductor topologies included in the Business Technology and embodied in Keysight Products solely in the Keysight Field, (ii) to import or distribute a product in which any such mask work or semiconductor topology is embodied, and (iii) to permit Third Parties to do any of the foregoing.
(f) Trade Secrets and Industrial Designs. Under Agilent and its Affiliates Trade Secrets and Industrial Designs included in Licensed Agilent IPR, solely to design, develop, manufacture and have manufactured (subject to Section 3.2), sell and maintain Keysight Products in the Keysight Field. Since laboratory notebooks being retained by Agilent may contain information about a mix of Agilent and Keysight IPR, Agilent shall retain such laboratory notebooks in accordance with Agilentβs current retention policy for Agilent laboratory notebooks, and Agilent shall provide Keysight with timely access to such laboratory notebooks during normal business hours upon reasonable request.
(g) Third-Party Licenses. With respect to Intellectual Property Rights licensed to Agilent or its Affiliates by a Third Party, the license grants set forth in this Article III shall be subject to all of the conditions set forth in the relevant license agreement between Agilent (or its Affiliate, as the case may be) and such Third Party, in addition to all of the terms, conditions, and restrictions set forth herein. Licenses to Keysight under Intellectual Property Rights owned by a Third Party shall expire on the expiration of the term of the corresponding license agreement between such Third Party and Agilent (or its Affiliate, as the case may be).
(h) Access Methods. Keysight acknowledges and agrees that, subsequent to the Distribution Date, Keysight and its Affiliates may no longer use de-encryption algorithms or other access methods that were previously provided by Agilent to internal Agilent users to enable those internal Agilent users to use locked or encrypted copies of Agilent Commercial Software or other software, except to the extent necessary to continue using those copies rightfully in use before the Distribution Date. Any access after the Distribution Date by Keysight, or a Keysight Affiliate, to additional copies of such Agilent Commercial Software beyond those copies rightfully in use before the Distribution Date, or to support, updates, revisions or service, shall be as separately agreed with Agilent or with an appropriate Third Party software vendor.
(i) Software. Without limiting the generality of the foregoing licenses granted in this Section 3.1, or transfer of rights with respect to software transferred to Keysight pursuant to Section 2.3 above, such licenses include the right to use, modify, and reproduce in source code and object code for such software (and Improvements thereof made by or on behalf of Keysight) solely to create Keysight Products in the Keysight Field, and to sell and maintain such software, in source code and object code form, as part of such Keysight Products; provided, however, that with respect to Agilent Commercial Software, Keysight shall be limited to using no more than ten percent (10%) of the lines of code of any Agilent Commercial Software in any Keysight Product sold or maintained by Keysight or its Affiliates to a Third Party after the Distribution Date (it being understood that such restriction shall not apply, however, to Keysightβs use of any software code contained in any Keysight Commercial Software to the extent that Keysight desires to continue to sell such Keysight Product in a form containing such software code or Improvements thereto).
(j) Termination of Licenses to a Non-Affiliate. Any and all licenses granted by Agilent to an Affiliate of Keysight hereunder shall terminate immediately at the time such entity is no longer an Affiliate of Keysight.
3.2 Have Made Rights. The licenses to Keysight and its Affiliates in Section 3.1 above shall include the right to have contract manufacturers and foundries manufacture Keysight Products for Keysight or its Affiliates (including private label or OEM versions of such products) solely within the Keysight Field, and are not intended to include foundry or contract manufacturing activities that Keysight or any of its Affiliates may undertake on behalf of Third Parties, whether directly or indirectly.
3.3 Sublicenses. The licenses granted to Keysight in Section 3.1 above shall not include any right to grant any sublicenses except as follows:
(a) Affiliates. Keysight may grant sublicenses to its Affiliates, even if they become Keysight Affiliates after the Distribution Date, within the scope of its licenses in Section 3.1 above with no right for such Affiliates to grant further sublicenses other than, (i) to another Affiliate of Keysight, even if it become an Affiliate of Keysight after the Distribution Date; provided, however, that sublicensing shall not be allowed to any entity which acquires Affiliate status as the result of a Change of Control, and any such sublicense shall only be effective for such time as such entity remains an Affiliate of Keysight, and (ii) as provided in Section 3.3(c), below.
(b) Retroactivity. Any sublicense granted pursuant to Section 3.3(a) above may be made effective retroactively, but shall not be effective for any time prior to the sublicenseeβs becoming an Affiliate of Keysight, and shall only be effective for such times that such entity remains an Affiliate of Keysight.
(c) For Resale and End Users. Keysight and its Affiliates may grant sublicenses to its distributors, resellers, OEM customers, VAR customers, VAD customers, systems integrators and other channels of distribution and to its end user customers solely with respect to Keysight Products and solely within the scope of the licenses set forth in Section 3.1 above; provided, however, that any such sublicense by an Affiliate shall only be effective for such times that such sublicensing entity remains an Affiliate of Keysight.
3.4 Improvements. As between Agilent and its Affiliates on the one hand, and Keysight and its Affiliates on the other hand, Keysight hereby retains all right, title and interest, including all Intellectual Property Rights, in and to any Improvements made by or on behalf of Keysight from and after the Effective Date (a) to any of the Transferred Intellectual Property Rights or Business Technology, or (b) in the exercise of the licenses granted to it by Agilent and its Affiliates in this Article III, subject in each case only to the ownership interests of Agilent, its Affiliates, and Third Parties in the underlying Intellectual Property Rights that are improved. Keysight shall not have any obligation under this Agreement to notify Agilent or its Affiliates of any such Improvements made by or on behalf of it or its Affiliates or to disclose or license any such Improvements to Agilent or its Affiliates.
3.5 Agilent Restricted Patents. Agilent hereby covenants on its own behalf and on behalf of its Affiliates that, unless obligated to do so by any Third Party agreement existing as of the Effective Date, it will not assert against Keysight or a Keysight Affiliate any Agilent Restricted Patent that would have been licensed hereunder but for the restriction against Agilent or its Affiliates licensing such Patent to Keysight contained in a Third Party agreement.
Such covenant shall be with respect to any conduct that would have otherwise been licensed hereunder. Such covenant shall be effective to the extent permitted by the Third Party agreement.
ARTICLE IV
LICENSES FROM KEYSIGHT TO AGILENT
4.1 License Grants. Keysight grants, agrees to grant, and agrees to cause its Affiliates to grant, to Agilent and its Affiliates the following personal, irrevocable (except as set forth in Article VIII and IX below), non-exclusive, worldwide, royalty-free and non-transferable (except as set forth in Article VIII below) licenses under the Licensed Keysight IPR subject to the terms of this Agreement as follows:
(a) Patents. Under the patents included in Licensed Keysight IPR, to do the following with regard to Agilent Products in the Agilent Field: (i) to make (including the right to practice methods, processes and procedures), (ii) to have made (subject to Section 4.2), and (iii) to use, lease, sell, offer for sale and import. The Keysight Patent licenses set forth in this Section 4.1(a) shall expire, with respect to each individual licensed Patent, upon the expiration of the term of each such Keysight Patent.
(b) Copyrights. Under the copyrights included in Licensed Keysight IPR, (i) to reproduce and have reproduced (subject to Section 4.2) the works of authorship included therein and derivative works thereof prepared by or on behalf of Agilent, in whole or in part, solely as part of Agilent Products in the Agilent Field, (ii) to prepare derivatives or have derivative works prepared for it based upon such works of authorship solely to create Agilent Products in the Agilent Field, (iii) to distribute (by any means and using any technology, whether now known or unknown) copies of the works of authorship included therein (and derivative works thereof prepared by or on behalf of Agilent) to the public by sale or other transfer of ownership or by rental, lease or lending, solely as part of Agilent Products in the Agilent Field, (iv) 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 therein (and derivative works thereof prepared by or on behalf of Agilent), in all cases solely as part of Agilent Products in the Agilent Field, and (v) to use such works of authorship (and derivative works thereof prepared by or on behalf of Agilent) solely to design, develop, manufacture and have manufactured (subject to Section 4.2), sell and support Agilent Products in the Agilent Field.
The parties acknowledge that some of the materials licensed under this provision (e.g. documents, PowerPoint slides, photo libraries, etc.) also contain 3POCM such as fonts, images and graphics, which are licensed to Keysight that are not sub-licensable to Agilent. The license granted under this provision, therefore, does not extend to the use of such 3POCM, and Agilent is solely responsible for obtaining its own licenses to the 3POCM. Agilent shall also indemnify and hold Keysight harmless from all claims by Third Parties arising out of or relating to Agilentβs unlicensed use of the 3POCM.
(c) Database Rights. Under the Database Rights included in Licensed Keysight IPR, to extract data from the databases included therein and to re-utilize such data (and Improvements thereof prepared by or on behalf of Agilent) solely to design, develop, manufacture and have manufactured (subject to Section 4.2), sell and support Agilent Products in the Agilent Field.
(d) Mask Work Rights. Under the Transferred Mask Work Rights included in Licensed Keysight IPR, (i) to reproduce and have reproduced (subject to Section 4.2), by optical, electronic or any other means, mask works and semiconductor topologies included in the Business Technology and embodied in Agilent Products solely in the Agilent Field, (ii) to import or distribute a product in which any such mask work or semiconductor topology is embodied, and (iii) to induce or knowingly to cause a Third Party to do any of the acts described in subclauses (i) and (ii) above.
(e) Trade Secrets and Industrial Designs. Under the Transferred Trade Secrets and Industrial Designs included in Licensed Keysight IPR solely to design, develop, manufacture and have manufactured (subject to Section 4.2), sell and maintain Agilent Products in the Agilent Field.
(f) Third-Party Licenses. With respect to Intellectual Property Rights licensed to Keysight or its Affiliates by a Third Party, the license grants set forth in this Article IV shall be subject to all of the conditions set forth in the relevant license agreement between Keysight or the Keysight Affiliate and such Third Party, in addition to all of the terms, conditions and restrictions set forth herein. Licenses to Agilent under Intellectual Property Rights owned by a Third Party shall expire on the expiration of the term of the corresponding license agreement between such Third Party and Keysight or the Keysight Affiliate, as the case may be.
(g) Termination of Licenses to a Non-Affiliate. Any and all licenses granted by Keysight to an Affiliate of Agilent shall terminate immediately at the time such entity is no longer an Affiliate of Agilent.
(h) Access Methods. Agilent acknowledges and agrees that, subsequent to the Distribution Date, Agilent and its Affiliates may no longer use de-encryption algorithms or other access methods that were previously provided by the Keysight Business to internal Agilent users to enable those internal Agilent users to use locked or encrypted copies of Keysight Commercial Software, except to the extent necessary to continue using those copies rightfully in use before the Distribution Date. Any access after the Distribution Date by Agilent, or an Agilent Affiliate, to additional copies of such Keysight Commercial Software beyond those copies rightfully in use before the Distribution Date, or to support, updates, revisions or service, shall be as separately agreed with Keysight or with an appropriate Third Party software vendor.
(i) Software. Without limiting the generality of the foregoing licenses granted in this Section 4.1, such licenses include the right to use, modify, and reproduce in source code and object code form such software (and Improvements thereof made by or on behalf of Agilent) solely to create Agilent Products in the Agilent Field, and to sell and
maintain such software, in source code and object code form, as part of such Agilent Products; provided, however, that with respect to Keysight Commercial Software, Agilent shall be limited to using no more than ten percent (10%) of the lines of code of any Keysight Commercial Software in any Agilent Product sold or maintained by Agilent or its Affiliates to a Third Party after the Distribution Date (it being understood that such restriction shall not apply, however, to Agilentβs use of any software code contained in any Agilent Commercial Software to the extent that Agilent desires to continue to sell such Agilent Product in a form containing such software code or Improvements thereto).
4.2 Have Made Rights. The licenses to Agilent and its Affiliates in Section 4.1 above shall include the right to have contract manufacturers and foundries manufacture Agilent Products for Agilent or its Affiliates (including private label or OEM versions of such products) and are not intended to include foundry or contract manufacturing activities that Agilent or any of its Affiliates may undertake on behalf of Third Parties, whether directly or indirectly.
4.3 Sublicenses. The licenses granted to Agilent in Section 4.1 above shall not include any right to grant any sublicenses except as follows:
(a) Affiliates. Agilent may grant sublicenses to its Affiliates, even if they become Affiliates after the Distribution Date, within the scope of its licenses in Section 4.1 above with no right for such Affiliates to grant further sublicenses other than, (i) to another Affiliate of Agilent, even if it becomes an Affiliate of Agilent after the Distribution Date; provided, however, that sublicensing shall not be allowed to any entity which acquires Affiliate status as the result of a Change of Control, and any such sublicense shall only be effective for such time as such entity remains an Affiliate of Agilent, and (ii) as provided in 4.3(c), below.
(b) Retroactivity. Any sublicense granted pursuant to Section 4.3(a) above may be made effective retroactively, but shall not be effective for any time prior to the sublicenseeβs becoming an Affiliate of Agilent, and shall only be effective for such times that such entity remains an Affiliate of Agilent.
(c) For Resale and End Users. Agilent and its Affiliates may grant sublicenses to its distributors, resellers, OEM customers, VAR customers, VAD customers, systems integrators and other channels of distribution and to its end user customers solely with respect to Agilent Products and solely within the scope of the licenses set forth in Section 4.1 above, provided, however, that any such sublicense by an Affiliate shall only be effective for such times that such sublicensing entity remains an Affiliate of Agilent.
4.4 Improvements. As between Agilent and its Affiliates on the one hand, and Keysight and its Affiliates on the other hand, Agilent and its Affiliates hereby retain all right, title and interest, including all Intellectual Property Rights, in and to any Improvements made by or on behalf of Agilent or its Affiliates from and after the Effective Date in the exercise of the licenses granted to it by Keysight and Keysightβs Affiliates in this Article IV, subject only to the ownership of Keysight, Keysight Affiliates or any Third Parties in the underlying Intellectual Property Rights improved thereby. Agilent shall not have any obligation under this
Agreement to notify Keysight of any such Improvements made by or on behalf of it or to disclose or license any such Improvements to Keysight or any Keysight Affiliates.
4.5 Keysight Restricted Patents. Keysight hereby covenants on its own behalf and on behalf of its Affiliates that, unless obligated to do so by any Third Party agreement existing as of the Effective Date, it will not assert against Agilent or an Agilent Affiliate any Keysight Restricted Patent that would have been licensed hereunder but for the restriction against Keysight or its Affiliate licensing such Patent to Agilent contained in a Third Party agreement. Such covenant shall be with respect to any conduct that would have otherwise been licensed hereunder. Such covenant shall be effective to the extent permitted by the Third Party agreement.
ARTICLE V
ADDITIONAL INTELLECTUAL PROPERTY RELATED MATTERS
5.1 Assignments and Licenses. No Party may assign or grant a license under any of such Partyβs Intellectual Property Right which it has licensed to the other Party in Articles III or IV above, unless such assignment or grant is made subject to the licenses granted herein. For the avoidance of any doubt, a non-exclusive license grant shall be deemed subject to the licenses granted herein.
5.2 Assistance By Employees. Each Party agrees that its employees and contractors have a continuing duty to assist the other Party with the prosecution of, and other patent or trademark office proceedings (e.g., reissue, reexamination, interference, inter partes review, post-grant review, etc.) regarding, the other Partyβs Patent applications, Patents. Trademarks, and other Intellectual Property Rights (all of the foregoing, collectively, βAdministrative IP Proceedingsβ). Accordingly, each Party agrees to reasonably make available to the other Party and its counsel (i) inventors and other reasonably necessary persons employed by it for the other Partyβs reasonable needs regarding execution of documents, interviews, declarations, and testimony, and (ii) documents, materials, and information for the other Partyβs reasonable good faith needs regarding such Administrative IP Proceedings. Any actual and reasonable out-of-pocket expenses associated with such assistance shall be borne by the Party involved in the Administrative IP Proceeding, expressly excluding the value of the time of the other Partyβs personnel (regarding which the Parties shall agree on a case by case basis with respect to reasonable compensation).
5.3 Inventor Compensation. Each Party will be responsible for providing inventor incentive compensation to its employees under its own internal policies. To the extent that a Party bases an inventorβs incentive compensation on a Patent or a Patent application of the other Party, the Parties will reasonably cooperate by providing to each other relevant information about their Patents for which one or more inventors are employees of the other Party. To the extent that inventor compensation is specified by local law, such as in Germany and Japan, the Parties will reasonably cooperate in providing information to each other in order to enable each Party to calculate inventor compensation. No Party shall have any obligation to provide any inventor incentive compensation to an employee of the other Party except as required by law. Any information provided under this Section 5.3 shall be subject to Section 6.1.
5.4 No Implied Licenses. Nothing contained in this Agreement shall be construed as conferring any rights by implication, estoppel or otherwise, under any Intellectual Property Rights, other than as expressly granted in this Agreement, and all other rights under any Intellectual Property Rights licensed to a Party or its Affiliates hereunder are expressly reserved by the Party granting the license. The Party receiving the license hereunder acknowledges and agrees that the Party (or its applicable Affiliate) granting the license is the sole and exclusive owner of the Intellectual Property Rights so licensed.
5.5 No Field Restrictions For Patent Licensing. Except as expressly set forth elsewhere in this Agreement, including in the Exhibits, each Party shall be free to grant licenses of any sort under any of its owned Keysight Patents or Agilent Patents (as the case may be) to any Third Party without restriction as to field of use.
5.6 No Obligation to Prosecute Patents. Except as expressly set forth elsewhere in this Agreement, including in the Exhibits, no Party shall have any obligation to seek, perfect, or maintain any protection for any of its Intellectual Property Rights. Without limiting the generality of the foregoing, except as expressly set forth elsewhere in this Agreement, including in the Exhibits, no Party shall have any obligation to file any Patent application, to prosecute any Patent, or secure any Patent rights or to maintain any Patent in force.
5.7 Reconciliation. The Parties acknowledge that, as part of the transfer of the Transferred Intellectual Property Rights, the Transferred Licenses and the Business Technology, Agilent or its Affiliates may inadvertently retain Technology or Intellectual Property Rights that should have been transferred to Keysight pursuant to Article II of this Agreement, and Keysight may inadvertently acquire Technology or Intellectual Property Rights that should not have been transferred. Each Party agrees to resolve such errors using the procedures set forth in Section 5.12, Dispute Resolution.
5.8 Technical Assistance. Except as expressly set forth elsewhere in this Agreement (including in the Exhibits), in the Separation Agreement, or any other mutually executed agreement between the Parties, no Party shall be required to provide the other Party with any technical assistance or to furnish any other Party with, or obtain on their behalf, any documents, materials or other information or Technology.
5.9 Third-Party Infringement. No Party shall have any obligation hereunder to institute or maintain any action or suit against Third Parties for infringement or misappropriation of any Intellectual Property 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 Intellectual Property Rights or which claims that any Technology licensed to the other Party hereunder infringes or constitutes a misappropriation of any Intellectual Property Rights of any Third Party. Each Party (the βNotifying Partyβ) has the continuing obligation to promptly notify the other Party in writing upon learning of a Third Party likely infringing, misappropriating, or other violating or impairing any Intellectual Property Rights of the other Party which are licensed to the Notifying Party under this Agreement. Such notification shall set forth in reasonable specificity the identity of the suspected infringing Third Party and the nature of the suspected infringement. The Party to whom the Intellectual Property
Right is licensed shall not take any steps to contact any such Third Party without the other Partyβs prior written permission, and such other Party shall have the sole discretion to determine whether and in what manner to respond to any such unauthorized Third-Party use and shall be exclusively entitled to any remedies, including monetary damages, related thereto or resulting therefrom. In the event that the Party granting the license hereunder decides to initiate any claim against any Third Party, the Party to whom the Intellectual Property Right is licensed shall cooperate fully with Licensor, subject to Section 5.4.
5.10 Copyright Notices. Notwithstanding anything to the contrary herein, as to works in which Keysight owns the copyright, to the extent any such works contain copyright notices which indicate Agilent as the copyright owner, Keysight may, but shall not be required, to change such notices.
5.11 No Challenge to Title. Each Party agrees that it shall not (and shall cause its Affiliates not to), for any reason, after the Effective Date (regardless of whether this Agreement is subsequently terminated), either itself do or authorize any Third Party to do any of the following anywhere in the world with respect to any Intellectual Property Rights licensed to such Party or its Affiliates hereunder: (a) represent to any Third Party in any manner that it owns or has any ownership rights in such Intellectual Property Rights; (b) apply for any registration of such Intellectual Property Rights (including federal, state, and national registrations); or (c) impair, dispute or contest the validity or enforceability of the other Partyβs (or any of such other Partyβs Affiliates) right, title and interest in and to such Intellectual Property Rights.
5.12 Dispute Resolution. In the event of any controversy, dispute or claim (a βDisputeβ) arising out of or relating to any Partyβs rights or obligations under this Agreement (whether arising in contract, tort or otherwise) (including the interpretation or validity of this Agreement), such Dispute shall be resolved in accordance with the dispute resolution process referred to in Article VII of the Separation Agreement.
ARTICLE VI
6.1 Confidential Information. Each Party shall (and shall cause its Affiliates to) hold all confidential or proprietary information licensed to it hereunder and any other confidential or proprietary information disclosed to it or any other member of its Affiliates hereunder in confidence in accordance with Section 6.2 of the Separation Agreement.
6.2 Contract Manufacturing. Notwithstanding anything to the contrary herein, each Party agrees that, in exercising its βHave-Madeβ rights (by Keysight, pursuant to Section 3.2, or by Agilent, pursuant to Section 4.2), each Party may only disclose Trade Secrets or Industrial Designs licensed from the other Party in Articles III and IV above if it has executed a written confidentiality agreement with the Third Party contract manufacturer with appropriate, industry standard terms, and in all cases containing terms and conditions pertaining to the
protection of proprietary and confidential information no less restrictive than those set forth in Section 6.1.
6.3 Source Code. In addition to the provisions of Section 6.2 of the Separation Agreement, Agilent shall maintain the confidentiality all information and documents related to all Licensed Keysight Source Code and Keysight shall maintain the confidentiality of all information and documents related to all Licensed Agilent Source Code until the expiration of any copyright therein. Each Party shall use the same degree of care as it uses to protect its own proprietary source code, but in any case no less than a reasonable degree of care, to prevent unauthorized use, dissemination or publication of the source code. Any Third Party disclosure necessary to make commercial use of the source code shall be made only under a confidentiality agreement with terms no less restrictive than those of this Article VI. Source code shall cease to qualify as confidential information if it (a) becomes publicly available without breach of this Agreement, or (b) is obtained by the licensed party from a Third Party lawfully in possession of the source code and which provides the source code without breach of any duty of confidentiality owed directly or indirectly to the source code owner (either Agilent and/or Keysight, as may be applicable). Notwithstanding the provisions of this Section 6.3, each Party may disclose the other Partyβs source code if required by law, regulation, or court order provided that the Party seeking to disclose provides notice and a reasonable opportunity to object to, limit, or condition the disclosure (e.g., to limit the disclosure to the minimum necessary to comply with the law, regulation, or court order and for the disclosure to be made under protective order or other order of confidentiality).
6.4 Trade Secrets. In addition to the provisions of Section 6.2 of the Separation Agreement, Agilent shall maintain the confidentiality of the Transferred Trade Secrets and the Common Infrastructure Trade Secrets, and Keysight shall maintain the confidentiality of the Trade Secrets licensed under Section 3.1(f), above, and of the Common Infrastructure Trade Secrets. Each Party shall use the same degree of care as it uses to protect its own trade secrets, but in any case no less than a reasonable degree of care, to prevent unauthorized use, dissemination or publication of the trade secrets. Any Third Party disclosure necessary to exploit the trade secrets shall be made only under a confidentiality agreement with terms no less restrictive than those of this Article VI. Trade secrets shall cease to qualify as confidential information if it (a) becomes publicly available without breach of this Agreement, or (b) is obtained from a Third Party lawfully in possession of the trade secret and which provides the trade secret without breach of any duty of confidentiality owed directly or indirectly to the trade secret owner (either Agilent and/or Keysight, as may be applicable). Notwithstanding the provisions of this Section 6.4, each Party may disclose the other Partyβs trade secret information if required by law, regulation, or court order provided that the Party seeking to disclose provides notice and a reasonable opportunity to object to, limit, or condition the disclosure (e.g., to limit the disclosure to the minimum necessary to comply with the law, regulation, or court order and for the disclosure to be made under protective order or other order of confidentiality).
ARTICLE VII
LIMITATION OF LIABILITY AND WARRANTY DISCLAIMER
7.1 Limitation of Liability. IN NO EVENT SHALL ANY PARTY BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND BASED 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. THE FOREGOING SHALL NOT, HOWEVER, LIMIT THE DAMAGES AVAILABLE TO A PARTY FOR (A) INFRINGEMENT OR MISAPPROPRIATION OF ITS INTELLECTUAL PROPERTY RIGHTS BY ANOTHER PARTY OR (B) BREACHES OF ARTICLE VI.
7.2 Warranties Disclaimer. Except as otherwise set forth herein, (a) EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL INTELLECTUAL PROPERTY RIGHTS, TECHNOLOGY, INFORMATION, AND PROPRIETARY RIGHTS TRANSFERRED, ASSIGNED, LICENSED, OR GRANTED HEREUNDER ARE TRANSFERRED, ASSIGNED, LICENSED, AND GRANTED WITHOUT ANY WARRANTIES WHATSOEVER, WHETHER 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, (b) no Party 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 or misappropriation of any Patent or other Intellectual Property Right of any Third Party, (c) Agilent makes no warranty or representation as to the validity and/or scope of any Agilent Patent or any of the Transferred Patents, and (d) Keysight makes no warranty or representation as to the validity and/or scope of any Keysight Patent.
ARTICLE VIII
TRANSFERABILITY AND ASSIGNMENT
8.1 No Assignment Or Transfer Without Consent. Except as otherwise provided in this Article VIII, no Party may assign or transfer any of the Intellectual Property Rights licenses granted pursuant to this Agreement, nor this Agreement as a whole, whether by operation of law or otherwise, without the prior written consent of the non-transferring Party. The non-transferring Party may, in its sole and absolute discretion, grant or withhold such consent. Any purported assignment or transfer without such consent shall be void and of no effect. Unless otherwise agreed in connection with consent to an assignment or transfer, no assignment or transfer made pursuant to this Section 8.1 shall release the transferring Party from any of its rights, responsibilities, duties, obligations, and liabilities under this Agreement. For the avoidance of doubt, Section 8.2, rather than this Section 8.1, shall apply to any assignment, transfer or sublicensing of the Intellectual Property licenses granted pursuant to this Agreement, or this Agreement as a whole, in connection with a Change Of Control.
8.2 Change Of Control. In the event of a Change of Control of a Party (or any of its respective Subsidiaries or Affiliates), neither this Agreement as a whole nor any of the Intellectual Property Rights or licenses or sublicenses granted pursuant to this Agreement may be assigned, transferred, licensed, or sublicensed, whether expressly, by operation of law, or otherwise, to a Third Party in connection with that Change of Control without first obtaining the prior written consent of the other (non-transferring) Party. The non-transferring Party may not unreasonably withhold its consent. Any purported assignment or transfer without such consent shall be void and of no effect.
8.3 Sale of Part of the Business.
(a) If any Party (the βTransferring Partyβ), after the Effective Date either (i) transfers, disposes of or otherwise divests a going business (but not all or substantially all of such Partyβs business or assets) and such transfer includes at least one (1) marketable product and tangible assets having a net value of at least twenty-five million U.S. dollars ($25,000,000) to a Third Party and (ii) assigns, sublicenses or transfers any of the Intellectual Property Rights licenses granted pursuant to this Agreement to a Third Party, in any case other than in connection with a Change of Control (the Third Party in any of the foregoing transactions referred to as the βTransfereeβ and any such transaction referred to as the βTransferβ), then, upon the joint written request of the Transferring Party and the Transferee to the other Party (the βNon-Transferring Partyβ) not later than sixty (60) days following the closing of the Transfer, the Non-Transferring Party shall grant a royalty-free license to the Transferee under the same terms as the license granted to the Transferring Party under this Agreement subject to all of the following conditions and restrictions:
(i) the effective date of such license shall be the closing date of the Transfer;
(ii) the products, services and processes of the Transferee that are subject to such license shall be limited to the products, services and processes that are commercially released or for which substantial steps have been taken to commercialize as of the closing date of the Transfer by the Transferring Party, and for new extensions and versions of such products, services and processes;
(iii) the Intellectual Property Rights of the Non-Transferring Party that are subject to the license to be granted to the Transferee shall be limited to Intellectual Property Rights licensed to the Transferring Party pursuant to Articles III or IV above, as the case may be; and
(iv) the license to the Transferee shall terminate in the event that during the term of the license the Transferee (A) becomes engaged with the Non-Transferring Party in litigation, arbitration or other formal dispute resolution proceedings involving assertion of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights (pending in any court, tribunal, or administrative agency or before any appointed or agreed upon arbitrator in any jurisdiction worldwide) (any of the foregoing proceedings referred to as βFormal IP Proceedingsβ) or (B)(1) makes a written allegation of infringement,
misappropriation, or other violation or impairment of Intellectual Property Rights against the Non-Transferring Party, (2) makes a written request that the Non-Transferring Party license or otherwise offer to the Non-Transferring Party a license to Intellectual Property Rights in connection with an allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights, or (3) engages in discussions or negotiations with the Non-Transferring Party for the settlement or compromise of any actual or alleged infringement, misappropriation, or other violation or impairment of Intellectual Property Rights (any of the foregoing in (1), (2) and (3) referred to as βInformal IP Discussionsβ), in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties.
(b) Notwithstanding anything to the contrary herein, the Non-Transferring Party, shall have no obligation to enter into a license with any Transferee under this Section 8.3 in the event that (i) at the time that the Transferring Party and Transferee make a joint request for a license from the Non-Transferring Party pursuant to this Section 8.3, the Non-Transferring Party and the Transferee are engaged in Formal IP Proceedings or (ii) at any time in the twelve (12) months prior to the date of the joint request that the Transferee has engaged in Informal IP Discussions with the Non-Transferring Party, in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties.
(c) There shall be no more than eight (8) license granted to a Transferee pursuant to this Section 8.3 as a result of a request by Seller and its Affiliates on the one hand, and Buyer and its Affiliates on the other hand, as the Transferring Party; provided, however, that if the Transferring Party elects to relinquish its license under this Agreement in the field of use covered by the license granted by a Non-Transferring Party to the Transferee under this Section 8.3, then the license to the Transferee shall not count toward the above limit. In making such election, the Transferring Party shall promptly notify the Non-Transferring Party, and the Transferring Party and the Non-Transferring Party shall enter into a written amendment to this Agreement to reflect the relinquishment of its license in that field of use.
ARTICLE IX
REVOCATION AND TERMINATION OF LICENSE RIGHTS
ARTICLE X
10.1 MISCELLANEOUS. Article VIII of the Separation Agreement is hereby incorporated into this Agreement by this reference.
[SIGNATURE PAGES FOLLOW]
IN WITNESS WHEREOF, the Parties have caused this Intellectual Property Matters Agreement to be duly executed as of the Effective Date.
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[Signature Page to Intellectual Property Matters Agreement]
EXHIBIT A
The following terms, as used in this Agreement, have the following meanings:
βAffiliateβ means an entity that, as of the Distribution Date (except where expressly provided otherwise elsewhere in this Agreement), meets the definition of βAffiliateβ set forth in the Separation Agreement.
βAgilent Commercial Softwareβ means software products commercially released by Agilent or its Affiliates and listed on an Agilent CPL as of the Effective Date, or (if applicable) that has been released by Agilent or any of its Affiliates to Third Parties for beta testing as of the Effective Date.
βAgilent Fieldβ means the design, development, research, manufacture, supply, distribution, sale (directly or through third parties), support (including consulting, repair, upgrade, calibration and other services), and maintenance (including the supply of components (including integrated circuits, subassemblies, accessories, parts, or software (including firmware, programs and applications)) of any products that are: (a) within the Agilent Primary Field; or (b) within the Overlap Field; or (c) outside of the Keysight Primary Field. For the avoidance of doubt, the Agilent Field excludes any products that are within the Keysight Primary Field unless those products are within the Agilent Primary Field or Overlap Field.
βAgilent Future Products and Servicesβ mean new products and services that, as of the Effective Date, Agilent or an Agilent Affiliate has a business plan to bring to market before November 1, 2017, provided that such new products and services would not be a reasonable extension of 1) Agilent Products listed on Agilentβs published corporate price list as of the Effective Date; or of 2) Agilent Legacy Products.
βAgilent Labs Projectsβ means projects underway before the Effective Date within the central laboratories of Agilentβs Life Sciences and Diagnostics Group or Agilentβs Chemical Analysis Group, that, as of the Effective Date are expected to result in new products and services being brought to market before November 1, 2019, provided that such new products and services would not be reasonable extensions of 1) Agilent Products listed on Agilentβs published corporate price list as of the Effective Date; or of 2) Agilent Legacy Products.
βAgilent Legacy Productsβ means products which 1) are not on Agilentβs or Keysightβs published corporate price list as of the Effective Date; 2) were at one time sold by Agilent, or a predecessor-in-interest, and 3) will be supported by Agilent after the Effective Date, including, but not limited to, providing warranty support or meeting contractual support obligations.
βAgilent Patentsβ means every Patent other than design patents or the Transferred Patents, with a First Effective Filing Date prior to the first anniversary of the Distribution Date that is (i) owned by Agilent or any of its Affiliates as of or after the Distribution Date, or for which (ii) Agilent or any of its Affiliates has the right as of or after the Distribution Date under such Patent to grant licenses to Keysight of the scope granted by Agilent to Keysight in Section 3.1 of this Agreement without the payment of royalties or other consideration to any Third
Parties (excluding employees of Agilent or its Affiliates) provided, however, that no Patent shall be considered an Agilent Patent if it is an Agilent Restricted Patent.
βAgilent Primary Fieldβ means: 1) products and services listed on Agilentβs published corporate price list as of the Effective Date; 2) Agilent Future Products and Services which are either actually sold by Agilent before November 1, 2017 or during a Development Extension, if granted by Keysight, or listed for sale on Agilentβs published corporate price list before November 1, 2017 or during a Development Extension, if granted by Keysight; 3) Agilentβs new products and services which are both: a) developed from an Agilent Labs Project, and b) either actually sold by Agilent before November 1, 2019 or during a Development Extension, if granted by Keysight, or listed for sale on Agilentβs published corporate price list before November 1, 2019 or during a Development Extension, if granted by Keysight; 4) Agilent Legacy Products; and 5) reasonable extensions of the all of the foregoing items within this definition.
βAgilent Productsβ means all products and services of the businesses in which Agilent or any of its Affiliates is now or hereafter engaged, including the business of making (but not having made) Third Party products for Third Parties when Agilent or any of its Affiliates is acting as a contract manufacturer or foundry for such Third Parties. The term Agilent Products includes the Technology embodied in and/or used to manufacture or deliver the products and services referred to in the preceding sentence as well as marketing and other collateral materials related thereto.
βAgilent Restricted Patentβ means any Patent under which Agilent is restricted from granting a license to Keysight pursuant to an agreement with a Third Party.
βBusiness Technologyβ means all Technology used in designing, developing, manufacturing, selling, providing or supporting products and services of the Keysight Business as they exist as of the Effective Date.
βChange of Controlβ means with respect to a Party, a transaction in which any of the following occurs, whether directly or indirectly: (a) a Third Party acquires all or substantially all of such Partyβs assets; or (b) a Third Party acquires greater than fifty percent (50%) ownership interest, direct or indirect, in the outstanding shares or stock entitled to vote for the election of directors of such Party, or (c) a Third Party otherwise acquires the ability to control or direct the management, policies, or affairs of such Party.
βCPLβ means a Partyβs published corporate price list as of the Effective Date. Without limiting the foregoing, references to the Keysight CPL shall be deemed to include products listed in the Agilent CPL that the parties intend to transfer to Keysight as part of the Keysight Business, and references to the Agilent CPL shall be deemed to exclude any such products to the extent that such transfer is intended by the parties to be exclusive.
βCommon Heritage Copyrightsβ means copyrights that are owned by Agilent or its Affiliates as of the Effective Date in works that relate to the common heritage of Agilent and Keysight including back to the formation of Hewlett-Packard Co. or to the common infrastructure of Agilent and the Keysight Business as of the Effective Date.
βCommon Infrastructure Copyrightsβ means copyrights that relate to the common infrastructure of Agilent and the Keysight Business as of the Effective Date, including, for example, Agilent corporate policies, manuals, and employee training materials.
βCommon Infrastructure Trade Secretsβ means trade secrets that relate to the common infrastructure of Agilent and the Keysight Business as of the Effective Date.
βDevelopment Extensionβ means an extension of the period related to the portion of a partyβs Primary Field relating to the sale or listing on the corporate price list of future products and services. A party seeking a Development Extension must make a request to the other party in writing. Such request must be made before the expiration of the initial term and must provide a detailed description of the future product or service and the duration of the requested extension. The party receiving a request for a Development Extension must review in good faith and reply within thirty (30) days of receiving the request. Failure to reply will be deemed approval of the request.
βDistribution Dateβ means Distribution Date as defined in the Separation Agreement.
βFirst Effective Filing Dateβ means the earliest effective filing date in the particular country for any Patent or any Patent application. By way of example, it is understood that the First Effective Filing Date for a United States Patent is the earlier of (a) the actual filing date of the application which issued into the Patent or (b) the priority date under 35 U.S.C. Β§119 or Β§120 for such Patent.
βImprovementβ to any Intellectual Property Right or Technology means (a) with respect to Copyrights, any modifications, derivative works and translations of works of authorship in any medium, (b) with respect to Database Rights, any database that is created by extraction or re-utilization of another database, and (c) with respect to Technology, any improvement or modification to the Trade Secrets, Industrial Designs and Mask Works that cover or are otherwise incorporated into Technology.
βIntellectual Property Rightsβ or βIPRβ means the rights associated with the following anywhere in the world: (a) patents and utility models, and applications therefore (including any continuations, continuations-in-part, divisionals, reissues, renewals, extensions or modifications for any of the foregoing) (βPatentsβ); (b) trade secrets and all other rights in or to confidential business or technical information (βTrade Secretsβ); (c) copyrights, copyright registrations and applications therefore, moral rights and all other rights corresponding to the foregoing (βCopyrightsβ); (d) uniform resource locators and registered internet domain names (βInternet Propertiesβ); (e) industrial design rights and any registrations and applications therefore (βIndustrial Designsβ); (f) databases and data collections (including knowledge databases, customer lists and customer databases) under the laws of any jurisdiction, whether registered or unregistered, and any applications for registration therefor (βDatabase Rightsβ); (g) mask works, and mask work registrations and applications therefor (βMask Work Rightsβ); (h) trademarks and service marks, whether registered or unregistered, and the goodwill appurtenant to each of the foregoing (βTrademarksβ); and (i) any similar, corresponding or equivalent rights to any of the foregoing. Intellectual Property Rights specifically excludes contractual rights (including license
grants from Third Parties) and also excludes the tangible embodiment of any of the foregoing in subsections (a) β (i).
βKeysight Businessβ has the meaning set forth in the Separation Agreement.
βKeysight Commercial Softwareβ means software products commercially released by Keysight or its Affiliates and listed on a Keysight CPL as of the Effective Date, or (if applicable) that has been released by Keysight or any of its Affiliates to Third Parties for beta testing as of the Effective Date.
βKeysight Fieldβ means the design, development, research, manufacture, supply, distribution, sale (directly or through third parties), support (including consulting, repair, upgrade, calibration and other services), and maintenance (including the supply of components (including integrated circuits, subassemblies, accessories, parts, or software (including firmware, programs and applications)) of any products that are: (a) within the Keysight Primary Field; or (b) within the Overlap Field; or (c) outside of the Agilent Primary Field. For the avoidance of doubt, the Keysight Field excludes any products that are within the Agilent Primary Field unless those products are within the Keysight Primary Field or Overlap Field.
βKeysight Future Products and Servicesβ mean new products and services that, as of the Effective Date, Keysight or a Keysight Affiliate has a business plan to bring to market before November 1, 2017, provided that such new products and services would not be a reasonable extension of 1) Keysight Products listed on Keysightβs published corporate price list as of the Effective Date; or of 2) Keysight Legacy Products.
βKeysight Legacy Productsβ means products which 1) are not on Keysightβs or Agilentβs published corporate price list as of the Effective Date; 2) were at one time sold by Agilent, or a predecessor-in-interest, and 3) will be supported by Keysight after the Effective Date including, but not limited to, providing warranty support or meeting contractual support obligations.
βKeysight Patentsβ means (a) the Transferred Patents, and (b) every other Patent other than design patents, with a First Effective Filing Date prior to the first anniversary of the Distribution Date which is (i) owned by Keysight or any Keysight Affiliate as of or after the Distribution Date, or for which (ii) Keysight or any Keysight Affiliate has the right as of or after the Distribution Date under such Patent to grant licenses to Agilent of the scope granted by Keysight to Agilent in Article IV of this Agreement without the payment of royalties or other consideration to any Third Parties (excluding employees of Keysight or its Affiliates); provided, however, that no Patent shall be considered a Keysight Patent if it is a Keysight Restricted Patent.
βKeysight Primary Fieldβ means: 1) products and services listed on Keysightβs corporate price list as of the Effective Date; 2) Keysight Future Products and Services which are either actually sold by Keysight before November 1, 2017 or during a Development Extension, if granted by Agilent, or listed for sale on Keysightβs published corporate price list before November 1, 2017 or during a Development Extension, if granted by Agilent; 3) Keysight Legacy Products; and 4) reasonable extensions of the all of the foregoing items within this definition.
βKeysight Productsβ means all products and services of the businesses in which Keysight or any of its Affiliates is now or hereafter engaged, including the business of making (but not having made) Third Party products for Third Parties when Keysight or any Keysight Affiliates is acting as a contract manufacturer or foundry for such Third Parties. The term Keysight Products includes the Technology embodied in and/or used to manufacture or deliver the products and services referred to in the preceding sentence as well as marketing and other collateral materials related thereto.
βKeysight Restricted Patentβ means any Patent under which Keysight is restricted from granting a license to Agilent pursuant to an agreement with a Third Party.
βLicensed Agilent IPRβ means (a) the Agilent Patents and (b) all Intellectual Property Rights other than Patents and Trademarks (i) which are owned by Agilent or an Agilent Affiliate as of the Distribution Date or (ii) for which Agilent or any Agilent Affiliate has as of the Distribution Date the right to grant licenses to Keysight of the scope granted by Agilent to Keysight in the corresponding sections of Article III without the payment of royalties or other consideration to any Third Parties (excluding employees of Agilent or its Affiliates); provided, however, that no Intellectual Property Right shall be considered Licensed Agilent IPR if Agilent is restricted from granting Keysight a license under any such Intellectual Property Right pursuant to an agreement with a Third Party.
βLicensed Agilent Source Codeβ means source code versions of Agilent software included in Licensed Agilent IPR.
βLicensed Keysight IPRβ means Transferred Intellectual property rights, including: (a) the Keysight Patents and (b) all Intellectual Property Rights other than Patents and Trademarks (i) which are owned by Keysight or a Keysight Affiliate as of the Distribution Date or (ii) for which Keysight or any Keysight Affiliate has the right as of the Distribution Date to grant licenses to Agilent of the scope granted by Keysight to Agilent in the corresponding sections of Article IV without the payment of royalties or other consideration to any Third Parties (excluding employees of Keysight, or any Keysight Affiliates); provided, however, that no Intellectual Property Right shall be considered Licensed Keysight IPR if Keysight is restricted from granting Agilent a license under any such Intellectual Property Right pursuant to an agreement with a Third Party.
βLicensed Keysight Source Codeβ means source code versions of Keysight software included in Licensed Keysight IPR.
βOverlap Fieldβ means products, components, or services relating to microscopy (including, but not limited to optical, scanning electron and Atomic Force).
βPartyβs Primary Fieldβ means the Agilent Primary Field or the Keysight Primary Field as the case may be.
βSubsidiaryβ shall have the meaning set forth in the Separation Agreement.
βTechnologyβ means tangible embodiments, whether in electronic, written or other media, of copyrightable works, technology, including designs, design and manufacturing documentation (such as xxxx of materials, build instructions and test reports), sales documentation (such as marketing materials, installation manuals, service manuals, user manuals) schematics, algorithms, routines, software, databases, lab notebooks, development and lab equipment, processes, prototypes and devices. Technology does not include Intellectual Property Rights, including any Intellectual Property Rights in any of the foregoing.
βThird Partyβ means any Person other than a Party.
βTransferred Copyrightsβ means copyright in and to the Business Technology, whether registered or unregistered, that are owned by Agilent or by an Agilent Affiliate as of the Effective Date and that are primarily used in the Keysight Business, specifically including the Copyrights (if any) listed in Exhibit D. For the avoidance of doubt, Transferred copyrights do not include 1) copyrights in Agilent Commercial Software; 2) copyrights in works that are used exclusively in or relate exclusively to Agilent Products; or 3) Common Heritage Copyrights.
βTransferred Database Rightsβ means database right in and to the Business Technology that are owned by Agilent or by an Agilent Affiliate as of the Effective Date and that are primarily used in the Keysight Business including the Database Rights (if any) listed in Exhibit D.
βTransferred Industrial Designsβ means industrial design right in and to the Business Technology that are owned by Agilent or by an Agilent Affiliate as of the Effective Date and that are primarily used in the Keysight Business including the Industrial Designs (if any) listed in Exhibit D.
βTransferred Intellectual Property Rightsβ means (a) the Transferred Patents, (b) the Transferred Copyrights, (c) the Transferred Internet Properties, (d) the Transferred Industrial Designs, (e) The Transferred Database Rights,(f) the Transferred Mask Work Rights, (g) the Transferred Trade Secrets, and (h) the Transferred Trademarks.
βTransferred Internet Propertiesβ means internet properties (including domain names) that are owned by Agilent or by an Agilent Affiliate as of the Effective Date and that are listed in Exhibit D.
βTransferred Licensesβ means the agreements between Agilent or its Affiliates and a Third Party that provide a license to Intellectual Property Rights and that are primarily used in the Keysight Business or license Transferred Intellectual Property Rights.
βTransferred Mask Work Rightsβ means mask work rights, whether registered or unregistered, in and to the Business Technology that are owned by Agilent or by an Agilent Affiliate as of the Effective Date and that are primarily used by the Keysight Business, specifically including the Mask Work Rights (if any) listed in Exhibit D. For the avoidance of doubt, Transferred Mask Work Rights do not include any mask work rights that are used exclusively in or relate exclusively to Agilent Products.
βTransferred Patentsβ means the Patents identified on Exhibit C hereto which shall include any related Patent applications, continuations, continuations-in-part, divisionals, reissues, renewals, extensions or modifications for any of the foregoing.
βTransferred Trade Secretsβ means the trade secrets known to the Parties that are owned by Agilent or by an Agilent Affiliate as of the Effective Date and that are primarily used by the Keysight Business, specifically including the Trade Secrets listed in Exhibit D. For the avoidance of any doubt Transferred Trade Secrets do not include: 1) any trade secrets that are used exclusively in or relate exclusively to Agilent Products or 2) Common Infrastructure Trade Secrets.
βTransferred Trademarksβ means all trademarks, registered or unregistered, including common law marks, trade names, business name, designs, logos, and trade dress, which prior to the Effective Date were used solely with regard to Keysight Products, specifically including but not limited to those trademarks identified on Exhibit D hereto, EXCEPT for trademarks containing βAgilent,β or βAgilent Technologiesβ or any transliteration or translation thereof; any version of the βSparkβ logo; or the βAgilent Signatureβ; all of which are and shall remain own by Agilent.
EXHIBIT B
Composite Intellectual Property Assignment Agreements
Patent Assignment Agreement
This Patent Assignment is effective as of the 1st day of August, 2014 (βEffective Dateβ), between Agilent Technologies, Inc. a corporation incorporated under the laws of Delaware (βAssignorβ), and Keysight Technologies, Inc., a corporation organized under the laws of Delaware (βAssigneeβ).
WHEREAS, pursuant to the Intellectual Property Matters Agreement dated as of August 1, 2014 between Assignor and Assignee (the βIP Matters Agreementβ), Assignor agreed to assign or cause to be assigned to Assignee all of Assignorβs right, title and interest in and to certain patent rights.
Capitalized terms used in this Patent Assignment Agreement which are not otherwise defined herein shall have the meanings set forth in the IP Matters Agreement.
1. Assignor hereby grants, conveys and assigns to Assignee, by execution hereof, the Patents listed on Schedule A hereto (the βAssigned Patentsβ).
2. Assignor further grants, conveys and assigns to Assignee all its right, title and interest in and to any and all proceeds, causes of action and rights of recovery for past and future infringement or misappropriation of any of the Assigned Patents.
3. Assignor further grants, conveys and assigns to Assignee all its right, title and interest in and to any and all rights of Assignor to obtain reissues, re-examinations, continuations, continuations-in-part, divisions, extensions or other legal protections arising solely from the Assigned Patents that are or may be secured in any relevant jurisdiction anywhere in the world, including but not limited to the United States, its territories and possessions, now or hereinafter in effect.
4. The Assigned Patents are conveyed subject to any and all licenses, permissions, consents or other rights that may have been granted by Assignor or its predecessors-in-interest with respect thereto prior to the Effective Date.
5. This Patent Assignment Agreement may be executed in counterparts, each of which will be deemed an original, but all of which together constitute one and the same original.
[SIGNATURE PAGE FOLLOWS]
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Xxxxxxx X. Xx | ||
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Vice President | ||
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SCHEDULE A
The Assigned Patents, subject to the terms and conditions of this Agreement, are those assocated with the following Agilent patent families:
190579 |
10010745 |
10020825 |
10030979 |
10040644 |
190596 |
10010816 |
10020851 |
10030985 |
10040670 |
191257 |
10010835 |
10020880 |
10031023 |
10040678 |
191528 |
10010869 |
10020917 |
10031048 |
10040679 |
191610 |
10010880 |
10020981 |
10031075 |
10040748 |
490051 |
10010980 |
10021061 |
10031166 |
10040886 |
10001804 |
10011095 |
10021089 |
10031220 |
10040907 |
10001940 |
10011122 |
10021092 |
10031229 |
10040927 |
10002352 |
10011125 |
10021116 |
10031230 |
10040959 |
10003329 |
10011162 |
10021119 |
10031276 |
10041015 |
10003336 |
10011201 |
10021216 |
10031298 |
10041025 |
10003342 |
10011219 |
10021250 |
10031301 |
10041043 |
10003680 |
10011269 |
10021270 |
10031315 |
10041052 |
10003845 |
10011298 |
10030041 |
10031355 |
10041057 |
10003879 |
10011300 |
10030042 |
10031555 |
10041086 |
10003880 |
10011302 |
10030056 |
10031556 |
10041127 |
10003976 |
10011338 |
10030059 |
10031564 |
10041143 |
10004017 |
10011355 |
10030061 |
10040010 |
10041158 |
10004048 |
10011387 |
10030094 |
10040025 |
10041159 |
10004095 |
10020043 |
10030114 |
10040032 |
10041239 |
10004195 |
10020076 |
10030186 |
10040033 |
10041240 |
10004221 |
10020111 |
10030268 |
10040054 |
10041242 |
10004222 |
10020154 |
10030335 |
10040055 |
10041244 |
10004384 |
10020205 |
10030362 |
10040070 |
10041248 |
10004402 |
10020206 |
10030379 |
10040101 |
10041249 |
10010023 |
10020245 |
10030469 |
10040152 |
10041253 |
10010048 |
10020278 |
10030523 |
10040173 |
10041307 |
10010051 |
10020340 |
10030530 |
10040181 |
10041313 |
10010090 |
10020389 |
10030543 |
10040210 |
10041314 |
10010274 |
10020417 |
10030610 |
10040292 |
10041315 |
10010323 |
10020454 |
10030611 |
10040321 |
10041316 |
10010334 |
10020524 |
10030612 |
10040352 |
10041325 |
10010400 |
10020532 |
10030724 |
10040476 |
10041328 |
10010403 |
10020610 |
10030762 |
10040481 |
10041329 |
10010493 |
10020611 |
10030838 |
10040492 |
10041333 |
10010512 |
10020668 |
10030882 |
10040511 |
10041348 |
10010591 |
10020681 |
10030906 |
10040536 |
10041371 |
10010657 |
10020693 |
10030919 |
10040569 |
10041382 |
10010689 |
10020725 |
10030972 |
10040580 |
10041390 |
10010709 |
10020819 |
10030978 |
10040581 |
10041470 |
10041504 |
10051506 |
10060349 |
10070124 |
1093738 |
10041556 |
10051635 |
10060353 |
10070146 |
1093804 |
10041568 |
10051689 |
10060354 |
10070147 |
1093811 |
10041598 |
10051691 |
10060356 |
10070162 |
1093854 |
10041666 |
10051694 |
10060358 |
10070176 |
1094280 |
10041675 |
10051738 |
10060360 |
10070192 |
1094336 |
10041676 |
10051739 |
10060365 |
10070194 |
1094401 |
10050020 |
10051740 |
10060366 |
10070219 |
1094470 |
10050034 |
10051743 |
10060368 |
10070220 |
1094576 |
10050041 |
10060031 |
10060374 |
10070239 |
1094643 |
10050124 |
10060044 |
10060412 |
10070251 |
1094669 |
10050125 |
10060051 |
10060426 |
10070262 |
1094725 |
10050132 |
10060059 |
10060448 |
10070265 |
1094750 |
10050137 |
10060075 |
10060449 |
10070276 |
1094752 |
10050156 |
10060101 |
10060459 |
10070290 |
1094769 |
10050196 |
10060122 |
10060463 |
10070292 |
1094855 |
10050203 |
10060135 |
10060491 |
10070328 |
1094862 |
10050204 |
10060138 |
10060493 |
10070329 |
1094892 |
10050214 |
10060146 |
10060501 |
10070330 |
1094956 |
10050216 |
10060157 |
10060521 |
10070331 |
1094957 |
10050388 |
10060158 |
10060545 |
10070448 |
1094958 |
10050450 |
10060160 |
10060577 |
10070531 |
1094961 |
10050515 |
10060174 |
10060637 |
10070632 |
10950612 |
10050516 |
10060175 |
10060640 |
10070633 |
10950679 |
10050517 |
10060185 |
10060642 |
10070701 |
10950745 |
10050518 |
10060186 |
10060644 |
10070702 |
10950804 |
10050557 |
10060190 |
10060653 |
10070709 |
10950818 |
10050572 |
10060191 |
10060660 |
10070726 |
10950855 |
10050573 |
10060202 |
10060666 |
10070727 |
10950881 |
10050827 |
10060205 |
10060669 |
10070752 |
10950983 |
10050859 |
10060298 |
10060688 |
10070760 |
10951149 |
10050866 |
10060301 |
10060699 |
10070764 |
10951180 |
10050942 |
10060302 |
10060700 |
10080004 |
10951224 |
10050995 |
10060303 |
10060701 |
1092062 |
10951228 |
10050997 |
10060304 |
10060717 |
1092251 |
10960204 |
10051012 |
10060305 |
10060762 |
1092286 |
10960205 |
10051175 |
10060311 |
10060767 |
1092537 |
10960463 |
10051278 |
10060322 |
10070027 |
1092728 |
10960472 |
10051348 |
10060324 |
10070036 |
1093029 |
10960572 |
10051349 |
10060332 |
10070050 |
1093349 |
10960581 |
10051358 |
10060341 |
10070076 |
1093451 |
10960700 |
10051390 |
10060342 |
10070091 |
1093492 |
10960967 |
10051391 |
10060343 |
10070097 |
1093573 |
10960975 |
10051400 |
10060344 |
10070107 |
1093609 |
10961057 |
10051435 |
10060346 |
10070112 |
1093674 |
10961060 |
10051439 |
10060347 |
10070115 |
1093714 |
10961061 |
10961063 |
10991077 |
20080333 |
20090227 |
20100245 |
10961131 |
10991088 |
20080338 |
20090242 |
20100263 |
10961156 |
10991315 |
20080345 |
20090293 |
20104183 |
10961161 |
10991384 |
20080346 |
20090299 |
20104184 |
10961221 |
10991497 |
20080353 |
20090300 |
20110004 |
10961281 |
10991652 |
20080412 |
20090301 |
20110008 |
10961334 |
10992455 |
20080546 |
20090316 |
20110011 |
10961374 |
10992580 |
20080570 |
20090348 |
20110012 |
10961375 |
10992632 |
20080573 |
20090376 |
20110053 |
10961394 |
10992787 |
20080579 |
20100023 |
20110056 |
10970169 |
20003003 |
20080580 |
20100037 |
20110063 |
10970368 |
20010438 |
20080589 |
20100038 |
20110074 |
10970623 |
20010440 |
20080590 |
20100039 |
20110084 |
10970629 |
20010490 |
20080594 |
20100040 |
20110094 |
10970754 |
20010575 |
20080599 |
20100041 |
20110095 |
10970859 |
20010577 |
20080600 |
20100043 |
20110119 |
10971126 |
20010625 |
20080605 |
20100047 |
20110140 |
10971436 |
20010698 |
20081033 |
20100048 |
20110147 |
10971781 |
20011286 |
20081159 |
20100056 |
20110158 |
10971961 |
20011450 |
20081160 |
20100057 |
20110178 |
10971963 |
20020366 |
20081163 |
20100058 |
20110180 |
10971974 |
20020480 |
20081169 |
20100059 |
20110189 |
10980009 |
20020534 |
20081171 |
20100063 |
20110192 |
10980010 |
20020565 |
20081200 |
20100064 |
20110193 |
10980085 |
20020728 |
20081215 |
20100065 |
20110199 |
10980102 |
20031035 |
20081238 |
20100093 |
20110200 |
10980244 |
20040623 |
20081252 |
20100117 |
20110214 |
10980262 |
20050068 |
20081260 |
20100118 |
20110221 |
10980306 |
20051342 |
20081275 |
20100136 |
20110228 |
10980345 |
20060292 |
20081283 |
20100138 |
20110255 |
10980630 |
20060707 |
20081302 |
20100141 |
20110258 |
10980908 |
20070059 |
20081322 |
20100159 |
20110281 |
10981286 |
20070751 |
20081330 |
20100160 |
20110299 |
10981397 |
20080011 |
20081346 |
20100175 |
20110304 |
10981436 |
20080012 |
20081350 |
20100180 |
20110308 |
10981471 |
20080123 |
20090009 |
20100181 |
20110319 |
10982159 |
20080139 |
20090011 |
20100185 |
20110337 |
10982344 |
20080142 |
20090044 |
20100186 |
20110339 |
10990135 |
20080144 |
20090096 |
20100191 |
20110351 |
10990287 |
20080181 |
20090144 |
20100207 |
20110361 |
10990370 |
20080222 |
20090173 |
20100209 |
20110362 |
10990531 |
20080253 |
20090191 |
20100218 |
20110363 |
10990545 |
20080255 |
20090204 |
20100220 |
20110370 |
10990602 |
20080294 |
20090211 |
20100221 |
20110371 |
10991074 |
20080297 |
20090219 |
20100228 |
20120018 |
10991075 |
20080312 |
20090222 |
20100235 |
20120024 |
20120026 |
20130019 |
20140069 |
30070305 |
40070043 |
20120028 |
20130025 |
20140070 |
3093027 |
4093018 |
20120036 |
20130037 |
20140076 |
3093066 |
4093022 |
20120040 |
20130048 |
20140093 |
30960012 |
4094001 |
20120062 |
20130054 |
20140096 |
30960031 |
4094005 |
20120067 |
20130055 |
20140097 |
30960075 |
4094008 |
20120085 |
20130056 |
20140102 |
30960138 |
4094009 |
20120090 |
20130069 |
20140115 |
30980096 |
40950005 |
20120091 |
20130070 |
20140121 |
31011113 |
40950006 |
20120100 |
20130071 |
20140124 |
31020091 |
40950011 |
20120101 |
20130073 |
20140125 |
31021290 |
40960001 |
20120105 |
20130075 |
20140129 |
31030445 |
40990004 |
20120108 |
20130084 |
20140141 |
31030614 |
70060212 |
20120125 |
20130085 |
20140142 |
31031360 |
70060246 |
20120130 |
20130086 |
20140152 |
31051560 |
70060269 |
20120139 |
20130087 |
20140161 |
31060195 |
70060677 |
20120157 |
20130119 |
20140167 |
31060367 |
70060838 |
20120161 |
20130131 |
20140170 |
31060558 |
70070065 |
20120162 |
20130134 |
20140172 |
31060559 |
70070067 |
20120167 |
20130139 |
20140199 |
31060560 |
70070221 |
20120168 |
20130153 |
20140209 |
31070733 |
70070692 |
20120198 |
20130159 |
20140221 |
32070164 |
70070693 |
20120199 |
20130161 |
20140225 |
32070168 |
70070761 |
20120249 |
20130168 |
20140239 |
32070169 |
9094004 |
20120260 |
20130171 |
2094021 |
40011316 |
|
20120262 |
20130187 |
2094029 |
40011444 |
|
20120264 |
20130194 |
20960013 |
40030494 |
|
20120284 |
20130210 |
20970001 |
40031201 |
|
20120290 |
20130211 |
20980026 |
40031253 |
|
20120291 |
20130213 |
20990037 |
40040376 |
|
20120292 |
20130235 |
30003829 |
40040469 |
|
20120303 |
20130247 |
30004025 |
40040487 |
|
20120310 |
20130301 |
30004036 |
40040570 |
|
20120312 |
20130315 |
30004066 |
40040572 |
|
20120317 |
20130322 |
30010535 |
40041090 |
|
20120318 |
20130329 |
30020258 |
40050538 |
|
20120319 |
20130359 |
30020382 |
40050565 |
|
20120331 |
20130360 |
30020533 |
40050918 |
|
20120351 |
20140022 |
30020913 |
40051089 |
|
20120354 |
20140033 |
30021158 |
40060170 |
|
20120356 |
20140034 |
30031118 |
40060196 |
|
20120359 |
20140038 |
30041688 |
40060228 |
|
20120360 |
20140045 |
30050710 |
40060229 |
|
20120393 |
20140058 |
30050715 |
40060252 |
|
20120398 |
20140059 |
30050988 |
40060339 |
|
20120402 |
20140068 |
30051152 |
40060535 |
|
EXHIBIT B2
Trademark Assignment Agreement
This Agreement is made between Agilent Technologies, Inc., a Delaware corporation whose address is 0000 Xxxxxxx Xxxxx Xxxx, Xxxxx Xxxxx, XX 00000 (βAssignorβ), and Keysight Technologies, Inc., a Delaware corporation whose address is 0000 Xxxxxxxxxxxxx Xxxx, Xxxxx Xxxx, XX 00000 (βAssigneeβ). These parties are also parties to an Intellectual Property Matters Agreement (βIPMAβ).
The Trademarks are: (a) the trademarks listed in Exhibit A to this Assignment, including those that are registered and those that are pending registration, and (b) certain common law marks, trade names, business names, designs, logos, and trade dress that are used exclusively by Keysight or relate exclusively to the Keysight Primary Field as defined in the IPMA.
For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor hereby assigns, transfers, and conveys to Assignee, on a worldwide basis, all of its right, title and interest in and to the Trademarks together with the associated goodwill in the Trademarks and in the business, products, and services symbolized by the Trademarks, including any and all rights, priorities, and privileges of Assignor under the laws of the United States and any of its states, the laws of any other jurisdiction, multinational law, and any compact, treaty, protocol, convention, or organization, subject to such currently outstanding license or use rights to the Trademarks as currently exist, if any.
Assignor also assigns to Assignee (a) all of its right, title, and interest in and to all proceeds or damages past, present, or future, (b) the right to bring suit and recover damages for past claims or causes of action arising from or relating to the Trademarks, including infringement, and misappropriation, and (c) all applications and registrations for the Trademarks that Assignor holds or controls, including the right to file trademark additional applications and to all resulting registrations.
Assignor will sign such additional documents as may be necessary to perfect or record the assignment and to carry out the intent of the parties as reflected in this Assignment.
This assignment is effective as of August 1, 2014.
[SIGNATURE PAGE FOLLOWS]
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AGILENT TECHNOLOGIES, INC. (Assignor) | ||
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By: |
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Xxxxxxx Xxxx | |
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Vice President | |
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Date: |
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KEYSIGHT TECHNOLOGIES, INC. (Assignee) | ||
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By: |
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Xxxxxxx X. Xx | |
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Vice President | |
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Date: |
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Exhibit A
Keysight / EMG registered marks
ACQIRIS |
NANOSUITE |
ANTICIPATE ACCELERATE ACHIEVE |
PARBERT |
ASSUREME |
PICOCAFΓ |
BASEBAND STUDIO |
PXA |
BENCHLINK |
PXB |
BENCHVUE |
PXT |
BITE QUALIFICATION TESTER (and Design) |
REAL EDGE |
CERTIPRIME |
REALEDGE |
CODEONE |
RIDER Radiofrequency IDentification testER (and Design) |
COMMAND EXPERT |
SEQUENCE STUDIO |
CXA |
SIGNAL INTEGRITY STUDIO |
EASYEXPERT |
SIGNAL STUDIO |
EESOF |
SMART TEST |
ENA |
SPECTRAL ENGINE |
EPM |
SYSTEMVUE |
ESA |
TESTEXEC |
ESG |
TESTJET |
E-TRAK |
TESTMOBILE |
EXA |
TESTTRACS |
EXG |
TRUEFORM |
EXT |
TRUEIR |
FASTUNE |
TRUEVOLT |
FAULT DETECTIVE |
VEE PRO |
FIELDFOX |
VEE PRO (and Design) |
FIGURE EIGHT |
VEE PRO (Stylized and w/Design) |
FIGURE8 |
VERSAPOWER |
FRAMESCOPE |
VXA |
INFINIIMAX |
WIRESCOPE |
INFINIISCAN |
X-PARAMETERS |
INFINIIUM |
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INFINIIVIEW |
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INFINIIVISION |
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INFINISCAN |
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INTUILINK |
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J-XXXX |
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LIBRA |
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MAC MODE |
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MEDALIST |
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MEGAZOOM |
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MEGAZOOM (and Design) |
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miNT Mobile Communications INtegrated Tester (and Design) |
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MXA |
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MXE |
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MXG |
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NANO INDENTER |
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EXHIBIT B3
Copyright and Mask Work Assignment Agreement
This Agreement is made between Agilent Technologies, Inc., a Delaware corporation whose address is 0000 Xxxxxxx Xxxxx Xxxx, Xxxxx Xxxxx, XX 00000 (βAssignorβ), and Keysight Technologies, Inc., a Delaware corporation whose address is 0000 Xxxxxxxxxxxxx Xxxx, Xxxxx Xxxx, XX 00000 (βAssigneeβ). These parties are also parties to an Intellectual Property Matters Agreement (βIPMAβ).
The Works are the registered works listed in Exhibit A attached, together with the unregistered works that are used primarily by Keysight or relate primarily to the Keysight Primary Field as defined in the IPMA, and excluding both the Common Heritage Copyrights and the Common Infrastructure Copyrights, as defined in the IPMA.
For valuable consideration, receipt and sufficiency of which are hereby acknowledged, Assignor does hereby sell, assign, and transfer to Assignee, its successors and assigns, the entire right, title and interest in and to: the copyrights in the Works in all versions, forms, and formats (including source code and object code formats) and in all languages, together with all prior versions and all derivations, modifications, changes, translations, revisions, elaborations, adaptations or transformations of any of these; all works incorporating any of these whether in whole or in part; all copyright registrations and copyright registration applications relating to any of these and any renewals and extensions thereof; and in and to all income, royalties, damages, claims and payments now or hereafter due or payable with respect thereto, as well as in and to all causes of action, either in law or in equity for past, present, or future infringement based on the copyrights; and in and to all rights corresponding to the foregoing throughout the world.
The parties understand and intend that this COPYRIGHT AND MASK WORK ASSIGNMENT is to be recorded in the United States Copyright Office of the Library of Congress and elsewhere as appropriate.
In witness whereof, the parties have executed this Assignment of Copyrights, effective as of the 1st day of August, 2014.
[SIGNATURE PAGE FOLLOWS]
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AGILENT TECHNOLOGIES, INC. (Assignor) | ||
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By: |
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Xxxxxxx Xxxx | |
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Vice President | |
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Date: |
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KEYSIGHT TECHNOLOGIES, INC. (Assignee) | ||
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By: |
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Xxxxxxx X. Xx | |
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Vice President | |
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Date: |
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Exhibit A
Copyrights registered with US Copyright Office plus those registered in China are those associated with the following Agilent file numbers:
05.11.001 |
12.08.009 |
12.11.017 |
05.11.002 |
12.08.010 |
12.11.018 |
06.08.001 |
12.08.011 |
12.11.019 |
06.08.002 |
12.08.012 |
12.11.020 |
06.08.003 |
12.08.013 |
12.11.021 |
07.11.001 |
12.08.014 |
12.11.022 |
08.04.001 |
12.08.015 |
12.11.023 |
08.04.002 |
12.08.016 |
12.11.024 |
08.04.003 |
12.09.001 |
13.04.001 |
08.04.004 |
12.09.002 |
13.07.001 |
08.04.005 |
12.09.003 |
13.07.002 |
08.04.006 |
12.09.004 |
13.07.003 |
08.09.001 |
12.09.005 |
13.07.004 |
08.11.001 |
12.09.006 |
13.07.005 |
09.01.001 |
12.09.007 |
13.10.006 |
09.01.002 |
12.09.008 |
13.10.007 |
09.02.003 |
12.09.009 |
13.10.008 |
09.06.001 |
12.10.001 |
13.11.001 |
09.07.001 |
12.10.002 |
14.01.001 |
10.03.001 |
12.10.003 |
14.02.001 |
10.07.001 |
12.10.004 |
14.03.001 |
10.07.002 |
12.10.005 |
14.04.001 |
10.11.001 |
12.10.006 |
14.05.001 |
12.03.001 |
12.10.007 |
14.05.002 |
12.03.002 |
12.10.008 |
14.06.001 |
12.03.003 |
12.11.001 |
14.06.002 |
12.03.004 |
12.11.002 |
14.06.003 |
12.04.001 |
12.11.003 |
14.06.004 |
12.04.002 |
12.11.004 |
|
12.04.003 |
12.11.005 |
|
12.04.004 |
12.11.006 |
|
12.04.005 |
12.11.007 |
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12.05.001 |
12.11.008 |
|
12.08.001 |
12.11.009 |
|
12.08.002 |
12.11.010 |
|
12.08.003 |
12.11.011 |
|
12.08.004 |
12.11.012 |
|
12.08.005 |
12.11.013 |
|
12.08.006 |
12.11.014 |
|
12.08.007 |
12.11.015 |
|
12.08.008 |
12.11.016 |
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EXHIBIT B4
Trade Secret Assignment Agreement
This Trade Secret Assignment is effective as of the 1st day of August, 2014 (βEffective Dateβ), between Agilent Technologies, Inc. a corporation incorporated under the laws of Delaware (βAssignorβ), and Keysight Technologies, Inc., a corporation organized under the laws of Delaware (βAssigneeβ).
WHEREAS, pursuant to the Intellectual Property Matters Agreement dated as of August 1, 2014 between Assignor and Assignee (the βIP Matters Agreementβ), Assignor agreed to assign or cause to be assigned to Assignee all of Assignorβs right, title and interest in and to certain trade secrets.
Capitalized terms used in this Trade Secret Assignment Agreement which are not otherwise defined herein shall have the meanings set forth in the IP Matters Agreement.
1. Assignor hereby grants, conveys and assigns to Assignee, by execution hereof, the Transferred Trade Secrets including the Trade Secrets listed on Schedule A hereto (the βAssigned Trade Secretsβ).
2. Assignor further grants, conveys and assigns to Assignee all its right, title and interest in and to any and all proceeds, causes of action and rights of recovery for past and future infringement or misappropriation of any of the Assigned Trade Secrets.
3. Assignor further grants, conveys and assigns to Assignee all its right, title and interest in and to any and all rights of Assignor to obtain reissues, re-examinations, continuations, continuations-in-part, divisions, extensions or other legal protections arising solely from the Assigned Trade Secrets that are or may be secured in any relevant jurisdiction anywhere in the world, including but not limited to the United States, its territories and possessions, now or hereinafter in effect.
4. The Assigned Trade Secrets are conveyed subject to any and all licenses, permissions, consents or other rights that may have been granted by Assignor or its predecessors-in-interest with respect thereto prior to the Effective Date.
5. This Trade Secret Assignment Agreement may be executed in counterparts, each of which will be deemed an original, but all of which together constitute one and the same original.
[SIGNATURE PAGE FOLLOWS]
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AGILENT TECHNOLOGIES, INC. (Assignor) | ||
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By: |
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Xxxxxxx Xxxx | |
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Vice President | |
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Date: |
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KEYSIGHT TECHNOLOGIES, INC. (Assignee) | ||
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By: |
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Xxxxxxx X. Xx | |
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Vice President | |
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Date: |
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Schedule A
Trade Secrets associated with the following Agilent file numbers:
189528 |
10060726 |
20140238 |
190136 |
10060781 |
20140250 |
190495 |
10070270 |
20140251 |
190525 |
10070707 |
20140254 |
190526 |
10070723 |
20140257 |
191083 |
10070766 |
20140258 |
191477 |
10961072 |
50060234 |
191626 |
10961226 |
70980010 |
1092221 |
10961294 |
|
1092222 |
10961305 |
|
1092430 |
10970954 |
|
1092516 |
10980140 |
|
1092520 |
10980141 |
|
1093456 |
10980153 |
|
1094090 |
10981314 |
|
1094095 |
10981662 |
|
1094096 |
10990066 |
|
1094281 |
10990167 |
|
10002451 |
10990621 |
|
10003740 |
10990637 |
|
10004076 |
10992593 |
|
10011485 |
10992735 |
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10020129 |
10992819 |
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10020287 |
20080518 |
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10020418 |
20081183 |
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10020598 |
20081184 |
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10020901 |
20081285 |
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10020918 |
20081328 |
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10030125 |
20090102 |
|
10040586 |
20090289 |
|
10040762 |
20110198 |
|
10040763 |
20120159 |
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10040764 |
20130089 |
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10051113 |
20130229 |
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10060049 |
20130272 |
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10060129 |
20130361 |
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10060130 |
20140019 |
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10060259 |
20140089 |
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10060429 |
20140212 |
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10060634 |
20140221 |
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10060635 |
20140230 |
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10060685 |
20140237 |
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EXHIBIT C
Schedule of Transferred Patents
The Transferred Patents, subject to the terms and conditions of this Agreement, are those associated with the following Agilent patent families:
190579 |
10010745 |
10020825 |
10030979 |
10040644 |
190596 |
10010816 |
10020851 |
10030985 |
10040670 |
191257 |
10010835 |
10020880 |
10031023 |
10040678 |
191528 |
10010869 |
10020917 |
10031048 |
10040679 |
191610 |
10010880 |
10020981 |
10031075 |
10040748 |
490051 |
10010980 |
10021061 |
10031166 |
10040886 |
10001804 |
10011095 |
10021089 |
10031220 |
10040907 |
10001940 |
10011122 |
10021092 |
10031229 |
10040927 |
10002352 |
10011125 |
10021116 |
10031230 |
10040959 |
10003329 |
10011162 |
10021119 |
10031276 |
10041015 |
10003336 |
10011201 |
10021216 |
10031298 |
10041025 |
10003342 |
10011219 |
10021250 |
10031301 |
10041043 |
10003680 |
10011269 |
10021270 |
10031315 |
10041052 |
10003845 |
10011298 |
10030041 |
10031355 |
10041057 |
10003879 |
10011300 |
10030042 |
10031555 |
10041086 |
10003880 |
10011302 |
10030056 |
10031556 |
10041127 |
10003976 |
10011338 |
10030059 |
10031564 |
10041143 |
10004017 |
10011355 |
10030061 |
10040010 |
10041158 |
10004048 |
10011387 |
10030094 |
10040025 |
10041159 |
10004095 |
10020043 |
10030114 |
10040032 |
10041239 |
10004195 |
10020076 |
10030186 |
10040033 |
10041240 |
10004221 |
10020111 |
10030268 |
10040054 |
10041242 |
10004222 |
10020154 |
10030335 |
10040055 |
10041244 |
10004384 |
10020205 |
10030362 |
10040070 |
10041248 |
10004402 |
10020206 |
10030379 |
10040101 |
10041249 |
10010023 |
10020245 |
10030469 |
10040152 |
10041253 |
10010048 |
10020278 |
10030523 |
10040173 |
10041307 |
10010051 |
10020340 |
10030530 |
10040181 |
10041313 |
10010090 |
10020389 |
10030543 |
10040210 |
10041314 |
10010274 |
10020417 |
10030610 |
10040292 |
10041315 |
10010323 |
10020454 |
10030611 |
10040321 |
10041316 |
10010334 |
10020524 |
10030612 |
10040352 |
10041325 |
10010400 |
10020532 |
10030724 |
10040476 |
10041328 |
10010403 |
10020610 |
10030762 |
10040481 |
10041329 |
10010493 |
10020611 |
10030838 |
10040492 |
10041333 |
10010512 |
10020668 |
10030882 |
10040511 |
10041348 |
10010591 |
10020681 |
10030906 |
10040536 |
10041371 |
10010657 |
10020693 |
10030919 |
10040569 |
10041382 |
10010689 |
10020725 |
10030972 |
10040580 |
10041390 |
10010709 |
10020819 |
10030978 |
10040581 |
10041470 |
10041504 |
10051506 |
10060349 |
10070124 |
1093738 |
10041556 |
10051635 |
10060353 |
10070146 |
1093804 |
10041568 |
10051689 |
10060354 |
10070147 |
1093811 |
10041598 |
10051691 |
10060356 |
10070162 |
1093854 |
10041666 |
10051694 |
10060358 |
10070176 |
1094280 |
10041675 |
10051738 |
10060360 |
10070192 |
1094336 |
10041676 |
10051739 |
10060365 |
10070194 |
1094401 |
10050020 |
10051740 |
10060366 |
10070219 |
1094470 |
10050034 |
10051743 |
10060368 |
10070220 |
1094576 |
10050041 |
10060031 |
10060374 |
10070239 |
1094643 |
10050124 |
10060044 |
10060412 |
10070251 |
1094669 |
10050125 |
10060051 |
10060426 |
10070262 |
1094725 |
10050132 |
10060059 |
10060448 |
10070265 |
1094750 |
10050137 |
10060075 |
10060449 |
10070276 |
1094752 |
10050156 |
10060101 |
10060459 |
10070290 |
1094769 |
10050196 |
10060122 |
10060463 |
10070292 |
1094855 |
10050203 |
10060135 |
10060491 |
10070328 |
1094862 |
10050204 |
10060138 |
10060493 |
10070329 |
1094892 |
10050214 |
10060146 |
10060501 |
10070330 |
1094956 |
10050216 |
10060157 |
10060521 |
10070331 |
1094957 |
10050388 |
10060158 |
10060545 |
10070448 |
1094958 |
10050450 |
10060160 |
10060577 |
10070531 |
1094961 |
10050515 |
10060174 |
10060637 |
10070632 |
10950612 |
10050516 |
10060175 |
10060640 |
10070633 |
10950679 |
10050517 |
10060185 |
10060642 |
10070701 |
10950745 |
10050518 |
10060186 |
10060644 |
10070702 |
10950804 |
10050557 |
10060190 |
10060653 |
10070709 |
10950818 |
10050572 |
10060191 |
10060660 |
10070726 |
10950855 |
10050573 |
10060202 |
10060666 |
10070727 |
10950881 |
10050827 |
10060205 |
10060669 |
10070752 |
10950983 |
10050859 |
10060298 |
10060688 |
10070760 |
10951149 |
10050866 |
10060301 |
10060699 |
10070764 |
10951180 |
10050942 |
10060302 |
10060700 |
10080004 |
10951224 |
10050995 |
10060303 |
10060701 |
1092062 |
10951228 |
10050997 |
10060304 |
10060717 |
1092251 |
10960204 |
10051012 |
10060305 |
10060762 |
1092286 |
10960205 |
10051175 |
10060311 |
10060767 |
1092537 |
10960463 |
10051278 |
10060322 |
10070027 |
1092728 |
10960472 |
10051348 |
10060324 |
10070036 |
1093029 |
10960572 |
10051349 |
10060332 |
10070050 |
1093349 |
10960581 |
10051358 |
10060341 |
10070076 |
1093451 |
10960700 |
10051390 |
10060342 |
10070091 |
1093492 |
10960967 |
10051391 |
10060343 |
10070097 |
1093573 |
10960975 |
10051400 |
10060344 |
10070107 |
1093609 |
10961057 |
10051435 |
10060346 |
10070112 |
1093674 |
10961060 |
10051439 |
10060347 |
10070115 |
1093714 |
10961061 |
10961063 |
10991077 |
20080333 |
20090227 |
20100245 |
10961131 |
10991088 |
20080338 |
20090242 |
20100263 |
10961156 |
10991315 |
20080345 |
20090293 |
20104183 |
10961161 |
10991384 |
20080346 |
20090299 |
20104184 |
10961221 |
10991497 |
20080353 |
20090300 |
20110004 |
10961281 |
10991652 |
20080412 |
20090301 |
20110008 |
10961334 |
10992455 |
20080546 |
20090316 |
20110011 |
10961374 |
10992580 |
20080570 |
20090348 |
20110012 |
10961375 |
10992632 |
20080573 |
20090376 |
20110053 |
10961394 |
10992787 |
20080579 |
20100023 |
20110056 |
10970169 |
20003003 |
20080580 |
20100037 |
20110063 |
10970368 |
20010438 |
20080589 |
20100038 |
20110074 |
10970623 |
20010440 |
20080590 |
20100039 |
20110084 |
10970629 |
20010490 |
20080594 |
20100040 |
20110094 |
10970754 |
20010575 |
20080599 |
20100041 |
20110095 |
10970859 |
20010577 |
20080600 |
20100043 |
20110119 |
10971126 |
20010625 |
20080605 |
20100047 |
20110140 |
10971436 |
20010698 |
20081033 |
20100048 |
20110147 |
10971781 |
20011286 |
20081159 |
20100056 |
20110158 |
10971961 |
20011450 |
20081160 |
20100057 |
20110178 |
10971963 |
20020366 |
20081163 |
20100058 |
20110180 |
10971974 |
20020480 |
20081169 |
20100059 |
20110189 |
10980009 |
20020534 |
20081171 |
20100063 |
20110192 |
10980010 |
20020565 |
20081200 |
20100064 |
20110193 |
10980085 |
20020728 |
20081215 |
20100065 |
20110199 |
10980102 |
20031035 |
20081238 |
20100093 |
20110200 |
10980244 |
20040623 |
20081252 |
20100117 |
20110214 |
10980262 |
20050068 |
20081260 |
20100118 |
20110221 |
10980306 |
20051342 |
20081275 |
20100136 |
20110228 |
10980345 |
20060292 |
20081283 |
20100138 |
20110255 |
10980630 |
20060707 |
20081302 |
20100141 |
20110258 |
10980908 |
20070059 |
20081322 |
20100159 |
20110281 |
10981286 |
20070751 |
20081330 |
20100160 |
20110299 |
10981397 |
20080011 |
20081346 |
20100175 |
20110304 |
10981436 |
20080012 |
20081350 |
20100180 |
20110308 |
10981471 |
20080123 |
20090009 |
20100181 |
20110319 |
10982159 |
20080139 |
20090011 |
20100185 |
20110337 |
10982344 |
20080142 |
20090044 |
20100186 |
20110339 |
10990135 |
20080144 |
20090096 |
20100191 |
20110351 |
10990287 |
20080181 |
20090144 |
20100207 |
20110361 |
10990370 |
20080222 |
20090173 |
20100209 |
20110362 |
10990531 |
20080253 |
20090191 |
20100218 |
20110363 |
10990545 |
20080255 |
20090204 |
20100220 |
20110370 |
10990602 |
20080294 |
20090211 |
20100221 |
20110371 |
10991074 |
20080297 |
20090219 |
20100228 |
20120018 |
10991075 |
20080312 |
20090222 |
20100235 |
20120024 |
20120026 |
20120360 |
20140022 |
30010535 |
40040469 |
20120028 |
20120393 |
20140033 |
30020258 |
40040487 |
20120036 |
20120398 |
20140034 |
30020382 |
40040570 |
20120040 |
20120402 |
20140038 |
30020533 |
40040572 |
20120062 |
20130019 |
20140045 |
30020913 |
40041090 |
20120067 |
20130025 |
20140058 |
30021158 |
40050538 |
20120085 |
20130037 |
20140059 |
30031118 |
40050565 |
20120090 |
20130048 |
20140068 |
30041688 |
40050918 |
20120091 |
20130054 |
20140069 |
30050710 |
40051089 |
20120100 |
20130055 |
20140070 |
30050715 |
40060170 |
20120101 |
20130056 |
20140076 |
30050988 |
40060196 |
20120105 |
20130069 |
20140093 |
30051152 |
40060228 |
20120108 |
20130070 |
20140096 |
30070305 |
40060229 |
20120125 |
20130071 |
20140097 |
3093027 |
40060252 |
20120130 |
20130073 |
20140102 |
3093066 |
40060339 |
20120139 |
20130075 |
20140115 |
30960012 |
40060535 |
20120157 |
20130084 |
20140121 |
30960031 |
40070043 |
20120161 |
20130085 |
20140124 |
30960075 |
4093018 |
20120162 |
20130086 |
20140125 |
30960138 |
4093022 |
20120167 |
20130087 |
20140129 |
30980096 |
4094001 |
20120168 |
20130119 |
20140141 |
31011113 |
4094005 |
20120198 |
20130131 |
20140142 |
31020091 |
4094008 |
20120199 |
20130134 |
20140152 |
31021290 |
4094009 |
20120249 |
20130139 |
20140161 |
31030445 |
40950005 |
20120260 |
20130153 |
20140167 |
31030614 |
40950006 |
20120262 |
20130159 |
20140170 |
31031360 |
40950011 |
20120264 |
20130161 |
20140172 |
31051560 |
40960001 |
20120284 |
20130168 |
20140199 |
31060195 |
40990004 |
20120290 |
20130171 |
20140209 |
31060367 |
70060212 |
20120291 |
20130187 |
20140221 |
31060558 |
70060246 |
20120292 |
20130194 |
20140225 |
31060559 |
70060269 |
20120303 |
20130210 |
20140239 |
31060560 |
70060677 |
20120310 |
20130211 |
2094021 |
31070733 |
70060838 |
20120312 |
20130213 |
2094029 |
32070164 |
70070065 |
20120317 |
20130235 |
20960013 |
32070168 |
70070067 |
20120318 |
20130247 |
20970001 |
32070169 |
70070221 |
20120319 |
20130301 |
20980026 |
40011316 |
70070692 |
20120331 |
20130315 |
20990037 |
40011444 |
70070693 |
20120351 |
20130322 |
30003829 |
40030494 |
70070761 |
20120354 |
20130329 |
30004025 |
40031201 |
9094004 |
20120356 |
20130359 |
30004036 |
40031253 |
|
20120359 |
20130360 |
30004066 |
40040376 |
|
EXHIBIT D
Schedule of Transferred Intellectual Property Rights
The Transferred Intellectual Property Rights, subject to the terms and conditions of this Agreement, include:
1. Copyrights: The copyrights associated with the following Agilent file numbers:
05.11.001 |
10.11.001 |
12.08.012 |
12.11.001 |
12.11.023 |
05.11.002 |
12.03.001 |
12.08.013 |
12.11.002 |
12.11.024 |
06.08.001 |
12.03.002 |
12.08.014 |
12.11.003 |
13.04.001 |
06.08.002 |
12.03.003 |
12.08.015 |
12.11.004 |
13.07.001 |
06.08.003 |
12.03.004 |
12.08.016 |
12.11.005 |
13.07.002 |
07.11.001 |
12.04.001 |
12.09.001 |
12.11.006 |
13.07.003 |
08.04.001 |
12.04.002 |
12.09.002 |
12.11.007 |
13.07.004 |
08.04.002 |
12.04.003 |
12.09.003 |
12.11.008 |
13.07.005 |
08.04.003 |
12.04.004 |
12.09.004 |
12.11.009 |
13.10.006 |
08.04.004 |
12.04.005 |
12.09.005 |
12.11.010 |
13.10.007 |
08.04.005 |
12.05.001 |
12.09.006 |
12.11.011 |
13.10.008 |
08.04.006 |
12.08.001 |
12.09.007 |
12.11.012 |
13.11.001 |
08.09.001 |
12.08.002 |
12.09.008 |
12.11.013 |
14.01.001 |
08.11.001 |
12.08.003 |
12.09.009 |
12.11.014 |
14.02.001 |
09.01.001 |
12.08.004 |
12.10.001 |
12.11.015 |
14.03.001 |
09.01.002 |
12.08.005 |
12.10.002 |
12.11.016 |
14.04.001 |
09.02.003 |
12.08.006 |
12.10.003 |
12.11.017 |
14.05.001 |
09.06.001 |
12.08.007 |
12.10.004 |
12.11.018 |
14.05.002 |
09.07.001 |
12.08.008 |
12.10.005 |
12.11.019 |
14.06.001 |
10.03.001 |
12.08.009 |
12.10.006 |
12.11.020 |
14.06.002 |
10.07.001 |
12.08.010 |
12.10.007 |
12.11.021 |
14.06.003 |
10.07.002 |
12.08.011 |
12.10.008 |
12.11.022 |
14.06.004 |
2. Mask Work Rights:
[Intentionally Left Blank]
3. Database Rights:
ASIC Database, Keysight Team Foundation Database, Enovia Database
4. Trade Secrets:
Trade Secrets associated with the following Agilent file numbers:
189528 |
10003740 |
10060429 |
10981662 |
20130272 |
190136 |
10004076 |
10060634 |
10990066 |
20130361 |
190495 |
10011485 |
10060635 |
10990167 |
20140019 |
190525 |
10020129 |
10060685 |
10990621 |
20140089 |
190526 |
10020287 |
10060726 |
10990637 |
20140212 |
191083 |
10020418 |
10060781 |
10992593 |
20140221 |
191477 |
10020598 |
10070270 |
10992735 |
20140230 |
191626 |
10020901 |
10070707 |
10992819 |
20140237 |
1092221 |
10020918 |
10070723 |
20080518 |
20140238 |
1092222 |
10030125 |
10070766 |
20081183 |
20140250 |
1092430 |
10040586 |
10961072 |
20081184 |
20140251 |
1092516 |
10040762 |
10961226 |
20081285 |
20140254 |
1092520 |
10040763 |
10961294 |
20081328 |
20140257 |
1093456 |
10040764 |
10961305 |
20090102 |
20140258 |
1094090 |
10051113 |
10970954 |
20090289 |
50060234 |
1094095 |
10060049 |
10980140 |
20110198 |
70980010 |
1094096 |
10060129 |
10980141 |
20120159 |
|
1094281 |
10060130 |
10980153 |
20130089 |
|
10002451 |
10060259 |
10981314 |
20130229 |
|
5. Industrial Designs.
[Intentionally Left Blank]
6. Trademarks:
ACQIRIS |
EASYEXPERT |
ANTICIPATE ACCELERATE ACHEIVE |
EESOF |
ASSUREME |
ENA |
BASEBAND STUDIO |
EPM |
BENCHLINK |
ESA |
BENCHVUE |
ESG |
BITE QUALIFICATION TESTER (and Design) |
E-TRAK |
CERTIPRIME |
EXA |
CODEONE |
EXG |
COMMAND EXPERT |
EXT |
CXA |
FASTUNE |
|
FAULT DETECTIVE |
|
FIELDFOX |
FIGURE EIGHT |
PXB |
FIGURE8 |
PXT |
FRAMESCOPE |
REAL EDGE |
INFINIIMAX |
REALEDGE |
INFINIISCAN |
RIDER Radiofrequency IDentification testER (and Design) |
INFINIIUM |
SEQUENCE STUDIO |
INFINIIVIEW |
SIGNAL INTEGRITY STUDIO |
INFINIIVISION |
SIGNAL STUDIO |
INFINISCAN |
SMART TEST |
INTUILINK |
SPECTRAL ENGINE |
J-XXXX |
SYSTEMVUE |
LIBRA |
TESTEXEC |
MAC MODE |
TESTJET |
MEDALIST |
TESTMOBILE |
MEGAZOOM |
TESTTRACS |
MEGAZOOM (and Design) |
TRUEFORM |
miNT Mobile Communications INtegrated Tester (and Design) |
TRUEIR |
MXA |
TRUEVOLT |
MXE |
VEE PRO |
MXG |
VEE PRO (and Design) |
MYSEM (Stylized) |
VEE PRO (Stylized and w/Design) |
NANO INDENTER |
VERSAPOWER |
NANOSUITE |
VXA |
PARBERT |
WIRESCOPE |
PICOCAFΓ |
X-PARAMETERS |
PXA |
|
7. Internet Properties:
0x-xxxxx.xxx |
xxxxx.xx |
xxxxxxxxx-xx.xxx |
xxxxxxxx.xxx |
xxxxxxxxx.xxx |
xxxxxx.xxx |
xxxxxxx.xxx |
xxxxxxxx.xxx |
xxxxxxx.xx |
xxxx-xxxxxxxxx.xxx |
xxxxxxx.xx |
xxxxxxxxxx.xxx |
xxxxxxx.xx |
xxxxxxx-xxxxx.xxx |
xxxxxxx.xxx |
xxxxxxx-xxxxx.xxx |
xxxxxxxx.xxx |
xxxxxxx-xxxxx.xxx |
xxxxxxxxx.xxx |
xxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxx.xxx |
xxxxxxxxxx-xxxxx.xxx |
xxxxxxxxxxxx.xxx |
xxxxxxxxxx-xxxxx.xxx |
xxxxxxxxxxxx.xxx |
xxxxxxxxxx-xxxxx.xxx |
xxxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxxxxx-xxxx.xxx |
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xxxxxxxxxxxxxxx.xxx |
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xxxxxxxx-xxxxx.xxx |
xxxxxxxxxxxxxxxxxxx.xxx |
xxxxxxxx-xxxxx.xxx |
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xxxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxxxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxxx-xxxx.xxx |
xxxxxxxxxxxxxxxxxxxxxxxxxxx.xxx |
xxxxxxxxxxxxx-xxxx.xxx |
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xxxxxx.xxx |
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xxxxxxxxxxx.xxx |
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xxxxxxxx.xxx |
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xxxxx-xxx.xxx |
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xxxxx.xxx |
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xxxxx.xxx |
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xxxxx.xxx |
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xxxxxxxx.xxx |
xxxxxxxxxxxxxxxxxxxxxxxxx.xxx |
xxxxxxxx.xxx.xx |
xx-xxxxxxxxx-xxxxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxx-xxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxxxxxxxxxxxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxxxxxx.xxx |
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xxx-xxxxxxxxx.xxx |
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xxx-xxxxxxxxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxxxxxxxx.xxx |
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xxx-xxxxxxxxxx.xxx |
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xxx-xxxxxxxxxx.xxx |
xxxxxxxx.xxx.xx |
xxx-xxxxxxxxxx.xxx |
xxxxxxxx.xxx.xx |
xxxxxxxx-xxxxx.xxx |
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xxxxxxxx-xxxx-xxxxx.xxx |
xxxxxxxx.xxx.xx |
xxxxxxxx-xxxx.xxx |
xxxxxxxx.xxx.xx |
xxxxxxxx-xxxx.xxx |
xxxxxxxx.xx |
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xxxxxxxx.xx |
xxxxxxxx-xxxx.xxx |
xxxxxxxx.xx |
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xxxxxxxx.xx |
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xxxxxxxxxxx-xxxxx.xxx |
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xx--x0xx0x00xx00x.xx |
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EXHIBIT E
FORM OF
TRADEMARK
LICENSE AGREEMENT
between
AGILENT TECHNOLOGIES, INC.
and
KEYSIGHT TECHNOLOGIES, INC.
Effective as of August 1, 2014
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (this βLicenseβ) is effective as of August 1, 2014, (the βEffective Dateβ) between Agilent Technologies, Inc., a Delaware corporation (βAgilentβ), and Keysight Technologies, Inc., a Delaware corporation (βKeysightβ).
WHEREAS, Agilent and Keysight have also entered into an Intellectual Property Matters Agreement, of even date herewith (the βIPMAβ), which provides among other things, for the assignment and transfer of certain intellectual property rights; and
ARTICLE I
DEFINITIONS
For the purpose of this License, unless specifically defined otherwise in this License, all defined terms will have the meanings set forth in the Separation Agreement and/or the IPMA, as applicable:
1.1 βAffiliateβ means Affiliate as defined in the Separation Agreement.
1.2 βAgilent Blueβ means the shade of blue color used in the Spark Licensed Xxxx and elsewhere which is both an unregistered common-law xxxx as well as Agilent trade dress element.
1.3 βAgilent Enterprise Quality Directorβ means the contact specified in Exhibit E.
1.4 βAgilent Lime Greenβ means the shade of lime green color used in the Eco-Label Symbol and elsewhere, which is both an unregistered common-law xxxx as well as Agilent trade dress element.
1.5 βAuthorized Dealerβ means any distributor, dealer, OEM customer, VAR customer, VAD customer, systems integrator or other agent that on or after the Effective Date is
authorized by Keysight or any of its Affiliates to market, advertise, sell, lease, rent, service, distribute or otherwise offer a Licensed Product.
1.6 βCollateral Materialsβ means all packaging, tags, labels, instructions, warranties and other materials of any similar type associated with the Licensed Products that are marked with at least one of the Licensed Marks and distributed to the customer in connection with the Sale and Service of the Licensed Product as well as end user license agreements and other agreements or licenses relating to a Licensed Product.
1.7 βContract Manufacturerβ means any Third Party who manufactures Licensed Products for Keysight or its Affiliates under written agreements and sells such Licensed Products only to Keysight or its Affiliates.
1.8 βCorporate Identity Materialsβ means materials that are not Keysight Products or Keysight Product-related and that Keysight 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.
1.9 βDisputeβ means the term defined in Section 13.3.
1.10 βDistribution Dateβ means Distribution Date as defined in the Separation Agreement.
1.11 βEco-Label Symbolβ means the Agilent created symbol shown in the figure, below, which serves as a visual cue used in association with an eco-friendly message. Although it is not currently a registered trademark in any jurisdiction, Agilent owns the copyright in this symbol, as well as such common law trademark rights and trade dress rights as may have accrued through Agilentβs usage in commerce.
1.12 βGuideline Initial Cure Periodβ means the term defined in Section 6.1.
1.13 βInternal Partsβ means the subset of Licensed Products that are parts and components inside a Keysight instrument and which are not visible to the end user during normal operation of that instrument. For the avoidance of doubt βnormal operationβ for purposes of this definition does not include inspection, calibration, maintenance, and service, or any other activity which would involve the removal or opening of a fastener or panel to gain access to the interior of the Keysight instrument.
1.14 βInitial Cure Periodβ means the term defined in Section 8.1.
1.15 βKeysight Businessβ means Keysight Business as defined in the Separation Agreement.
1.16 βKeysight Director of Qualityβ means the contact specified in Exhibit E.
1.17 βKeysight Overlap Fieldβ means Keysight Overlap Field as defined in the IPMA.
1.18 βKeysight Primary Fieldβ means Keysight Primary Field as defined in the IPMA.
1.19 βKeysight Quality Reportsβ means the term defined in Section 7.3(a).
1.20 βKeysight Productβ means Keysight Product as defined in the IPMA.
1.21 βLawβ means Law as defined in the Separation Agreement.
1.22 βLegacy Productsβ means products which are not on Agilentβs published corporate price list as of one day prior to the Effective Date, but which once were on Agilentβs, or its predecessors-in-interest corporate price list and which relate to the Keysight Primary Field or Keysight Overlap Field.
1.23 βLicensed Marksβ means the Agilent Marks listed on Exhibit A of this License.
1.24 βLicensed Productsβ means any of the following: (1) Keysight Products on Agilentβs published corporate price list as of one day prior to the Effective Date; (2) Keysight Products available for purchase from Agilent or an Affiliate as a special order as of July 31, 2014; (3) parts, components or software for Keysight Products or Legacy Products which are sold by Agilent as of one day prior to the Effective Date; (4) any new versions of items (1), (2) or (3), above, that have merely minor incremental differences, (5) software containing a Xxxx Displaying Software Code Block; and (6) services including maintenance (whether diagnostic, preventive, remedial, warranty or non-warranty), parts replacement, components (including software) support, and similar services associated with Licensed Products or Legacy Products, pursuant to Maintenance Contracts or otherwise.
1.25 βMaintenance Contractsβ means agreements pursuant to which Keysight, its Affiliates or their Authorized Dealers or their designees provide repair and maintenance services (whether preventive, diagnostic, remedial, warranty or non-warranty) in connection with Licensed Products or Legacy Products, including without limitation, agreements entered into by Agilent or its predecessors-in-interest prior to August 1 and assigned to Keysight.
1.26 βXxxxβ means any trademark, service xxxx, trade name, domain name, URL or other electronic identifier, 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 products or services, including without limitation all registrations and applications therefor throughout the world and all common law and other rights therein throughout the world.
1.27 βXxxx Displaying Software Code Blockβ means software code segments written before the Distribution Date and included in software that is either a Keysight Product, or designed to run on, a Keysight Product or Legacy Product, and which result in a Licensed Xxxx being displayed to a user. Examples of screens where such displays often appear include: installation instructions, splash screens, license information, and help information.
1.28 βMarketing Materialsβ means advertising, promotions, display fixtures or similar type literature or things, in any medium, for the marketing, promotion or advertising of the Sale or Service of the Licensed Products or parts therefor that are marked with at least one of the Licensed Marks.
1.29 βNon-Customer-Facing Partsβ means tangible parts which contain or bear Licensed Marks that are not visible to end customers in the ordinary course of use. For the avoidance of doubt, βordinary course of useβ for purposes of this definition includes normal inspection, use, calibration, maintenance, and service. Examples of Non-Customer-Facing Parts include a semiconductor die which bears a Licensed Xxxx but which is sold in an encapsulated form (where the encapsulation does not bear a Licensed Xxxx) and software whose source code includes a Licensed Xxxx, but whose user accessible interfaces do not bear Licensed Marks. It also includes tangible parts where the Licensed Xxxx has been obscured and is thus not visible, perhaps because a label has been affixed over the Licensed Xxxx.
1.30 βPersonβ 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 or a governmental entity or any department, agency or political subdivision thereof.
1.31 βQuality Standardsβ means written standards of quality applicable to the Licensed Products, as in use immediately prior to the Effective Date, unless otherwise modified in writing by Keysight from time to time during the Term of this License and communicated to Agilent for review/approval.
1.32 βSecond Cure Periodβ means the term defined in Section 8.2.
1.33 βSecond Guideline Cure Periodβ means the term defined in Section 6.2.
1.34 βSellβ means to sell, transfer, lease or otherwise dispose of a product. βSaleβ and βSoldβ have the corollary meanings ascribed thereto.
1.35 βServiceβ means to repair, refurbish, fix, perform any maintenance or otherwise review a Sold Licensed Product, so that such product continues to operate in normal, working conditions, or to diagnose any existing operational issues with such Licensed Product.
1.36 βSubsidiaryβ means Subsidiary as defined in the Separation Agreement.
1.37 βTermβ means the term defined in Section 3.2 of this License.
1.38 βThird Partyβ means a Person other than Agilent and its Affiliates or Keysight and its Affiliates.
1.39 βTrademark Usage Guidelinesβ means the written guidelines for proper usage of the Licensed Xxxx that are in use immediately prior to the Effective Date and located at: xxxx://xxx.xxxxxxx.xxx/xxxxxx/xxxxxxxxxxxx/.
User Name: brandid
Password: spark.
For literature, packaging, exhibit standards, emarketing, learning products, web and Third Party Marks use standards located at: xxxx://xxx.xxxxxxx.xxx/xxxxxx/xxxxxxxxx.
User Name: trademark
Password: ez4u.
For product labeling, use the product labeling standards attached hereto as Exhibit B.
Agilent shall notify Keysight in writing of any change to the above URLs, user names, or passwords. All such standards and guidelines may be revised and updated by Agilent from time to time during the Term in writing at the sites listed above or by written communication to Keysight, at Agilentβs sole discretion with regard to the product labeling standards. With regard to product labeling embedded into the manufacturing process, any such labeling that was created by Agilent and used on Licensed Products as of the Effective Date will be deemed to be in compliance with any product labeling standards, provided the embedded product labeling has not been altered by Keysight or its Affiliates.
1.40 βUnencapsulated Integrated Circuitsβ means the Licensed Products listed in Exhibit C.
ARTICLE II
LICENSES
2.1 LICENSE GRANT. Agilent grants to Keysight a personal, non-exclusive, worldwide and non-transferable (except as set forth in Section 11.3 hereof) license to the Licensed Marks, Agilent Blue, Agilent Lime Green, and the Eco-Label Symbol commencing on the day prior to the Effective Date and continuing for their respective stated license terms as set out in Article III below, to use for the respective license term the Licensed Marks on or in connection with:
(a) Corporate Identity Materials;
(b) Licensed Products,
(c) Collateral Materials, and
(d) Marketing Materials,
all in connection with the Sale, offer for Sale, support, and Service of such Licensed Products (or in the case of Licensed Products in the form of software, in connection with the licensing of such Licensed Products).
2.2 LICENSE RESTRICTIONS.
(a) Keysight may not make any use whatsoever, in whole or in part, of the Licensed Marks or Agilent Blue, as any part of or otherwise in direct connection with Keysightβs corporate name, trade name, βdoing business asβ name, fictitious name or Internet domain name, or on any Corporate Identity Materials, without the prior written consent of Agilent, except as expressly set forth in Section 3.3 (a)-(c) below. Nothing herein shall prevent or restrict Keysight from making informational use of the Licensed Marks as stated in Section 2.8 herein.
(b) Except for those combined marks expressly listed in this 2.2(b), Keysight may not use any Licensed Xxxx in direct association with another Xxxx such that the two Marks appear to be a single Xxxx or in any other composite manner with any Marks of Keysight or any Third Party. Keysight shall cease use of the listed combined marks within five (5) years of the Distribution Date.
(i) Agilent Advantage
(ii) Agilent Assured
(iii) Agilent Assureme
(iv) Agilent Certiprime (and Design)
(v) Agilent CXA
(vi) Agilent Direct
(vii) Agilent Easyexpert
(viii) Agilent Fault Detective
(ix) Agilent Instapin
(x) Agilent N2X
(xi) Agilent Open
(xii) Agilent Open (and Design)
(xiii) Agilent Vee
(xiv) MyAgilent
(c) In all respects, Keysightβs usage of the Licensed Marks during the Term pursuant to the license granted hereunder shall be in a manner consistent with the high standards, reputation and prestige of Agilent as represented by its use of the Licensed Marks, and any usage by Keysight that is inconsistent with the foregoing shall be deemed to be outside the scope of the license granted hereunder.
2.3 LICENSEE UNDERTAKINGS. As a condition to the licenses granted hereunder, Keysight undertakes to Agilent that:
(a) Keysight shall not use the Licensed Marks (or any other Xxxx of Agilent) 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 Agilent or the Licensed Marks, or which might jeopardize or limit Agilentβs proprietary interest therein.
(b) Keysight shall not use the Licensed Marks or any other Agilent Xxxx in connection with any products other than the Licensed Products, including without limitation any other products sold and/or manufactured by Keysight.
(c) Keysight shall not: (i) misrepresent to any Person the scope of its authority under this License, (ii) incur or authorize any expenses or liabilities chargeable to Agilent or (iii) take any actions that would impose upon Agilent any obligation or liability to a Third Party other than obligations under this License or other obligations which Agilent expressly approves in writing for Keysight 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.
2.4 RESERVATION OF RIGHTS. Except as otherwise expressly provided in this License, Agilent shall retain all rights in and to the Licensed Marks and all other Agilent Marks, including without limitation:
(a) all rights of ownership in and to the Licensed Marks;
(b) the right to use (including the right of Agilentβs Affiliates to use) the Licensed Marks, either alone or in combination with other Marks, in connection with the marketing, offer or provision of any products or services, except for the Licensed Products; and
(c) the right to license Third Parties to use the Licensed Marks, except on the Licensed Products.
2.5 SEARCH ENGINE AUTHORITY. Agilent hereby authorizes Keysight to utilize the Licensed Marks as keywords in pay-for-placement online advertising, such as through search engines for a period ending on November 1, 2019, provided that such use is limited to Keysight Products, e.g., βAgilent Oscilloscope,β and does not overlap with any Agilent retained products, e.g., βAgilent Lab Softwareβ or βAgilent Analyzer.β
2.6 THIRD-PARTY LICENSES. Nothing in this License shall be construed to prevent Agilent from granting any licenses for the use of the Licensed Marks or from utilizing the Licensed Marks in any manner whatsoever, except in relation to the Licensed Products following the Distribution Date.
2.7 NOTIFICATION. Except as would be a violation of Law, Keysight agrees to notify all customers receiving parts and materials bearing the Licensed Marks that Keysight is the source of and is the proper contact for such products, parts and materials.
2.8 REFERENCES TO AGILENT. It is understood and agreed that it shall not be a violation of this License for Keysight, its Affiliates or its Authorized Dealers, at any time during or after the Term, to make accurate references to the fact that Keysight has succeeded to the business of Agilent with respect to the Licensed Products, or to advertise or promote its or their provision of maintenance services or supply of spare parts for Licensed Products or Legacy Products previously sold under any of the Licensed Marks, provided that Keysight, its Affiliates and its Authorized Dealers do not in connection therewith claim to be authorized by Agilent in any manner with respect to such activities and do not brand any products, Marketing Materials, Collateral Materials or parts Sold after the Term with any of the Licensed Marks in a manner that is inconsistent with this Article II. Notwithstanding the foregoing, it shall not be a violation of this License, either during or after the Term of this License, for Keysight to refer to Agilent in a nominative or non-trademark use, such as a statement that Keysightβs parts and components are compatible with Licensed Products previously sold by Agilent, as long as such use is not misleading or would otherwise cause consumer confusion. For the avoidance of doubt, Keysight may make accurate references to the fact that Keysight has succeeded to the business of Agilent with respect to the Licensed Products within its Corporate Identity Materials. In addition, it shall not be a violation of this License, either during or after the Term of this License for Keysight products, in response to a software identification command, including but not limited to a SCPI command, to identify themselves in a way that may include βAgilentβ or βAgilent Technologies.β Further, it shall not be a violation of this License, either during or after the Term of this License, for Keysight products to utilize the USB Vendor ID associated with Agilent.
2.9 EXISTING INVENTORY OF PARTS AND COMPONENTS. It is understood and agreed that it shall not be a violation of this License, either during or after the Term of this License, for Keysight to sell as spare parts or components, or to utilize in maintenance (whether diagnostic, preventive, remedial, warranty or non-warranty) or refurbishment of any Licensed Products or Legacy Products any Licensed Products that were any of the following, and such sale or use is not misleading or would otherwise cause consumer confusion:
(a) Made under license;
(b) In Keysight inventory as of the Distribution Date;
(c) Part of lifetime buy initiated prior to the Distribution Date; or
(d) Software substantially unmodified after the Distribution Date.
2.10 NON-CUSTOMER-FACING PARTS. It is understood and agreed that it shall not be a violation of this License, either during or after the Term of this License, for Keysight to sell or distribute Non-Customer-Facing Parts provided such is not misleading or would otherwise cause consumer confusion.
2.11 UNMODIFIED COPYRIGHTED WORKS. It is understood and agreed that it shall not be a violation of this License, either during or after the Term of this License, for Keysight to exercise their rights in copyrighted works (including but not limited to software,
documents, presentation materials, learning products, application notes, and videos), including the right to distribute and publically display such works, where the copyright has been assigned by Agilent to Keysight as of the Distribution Date even if such works bear a Licensed Xxxx, as long as such remain substantially unmodified from the Distribution Date, and such exercise of copyright rights is not misleading or would otherwise cause consumer confusion.
2.12 REPAIR AND REFURBISHMENT. It is understood and agreed that it shall not be a violation of this License, either during or after the Term of this License, for Keysight to repair or refurbish any Licensed Product or Legacy Product bearing a Licensed Xxxx, or to sell or distribute any such refurbished or repaired Licensed Product or Legacy Product, as long as such activity is not misleading or would otherwise cause consumer confusion.
2.13 INDEMNIFICATION. Keysight and its Affiliates shall indemnify Agilent and its Affiliates and hold them harmless from all Third Party claims arising out of or relating to their use or sale of any products, parts or materials using or containing any of the Licensed Marks from and after the Distribution Date and any sales activities relating thereto.
ARTICLE III
TERM OF LICENSE
3.1 The term of each of the licenses granted pursuant to Section 2.1 above shall begin on the Effective Date and, unless terminated sooner pursuant to the provisions of Articles VIII or XI hereof, shall last for the periods set forth in Section 3.3 below.
3.2 βTermβ means the period of time Keysight is permitted to use the Licensed Marks.
3.3 Except as provided for in Sections 2.9 through 2.13, above, Keysight agrees to discontinue all use of the Licensed Marks no later than the expiration of the Terms shown below:
(a) Corporate Identity Materials: six (6) months from the Distribution Date;
(b) Licensed Products and associated Collateral Materials and Marketing Materials: except as provided in Sections 3.3 (c), (d) or (e) below, five (5) years from the Distribution Date;
(c) Internal Parts: twenty (20) years from the Distribution Date;
(d) Licensed Products listed in Exhibit D: twenty (20) years from the Distribution Date; and
(e) Unencapsulated Integrated Circuits: Until removed from the Keysight corporate price list.
3.4 Keysight agrees to timely notify Agilent when all of the Unencapsulated Integrated Circuits have been removed from the Keysight corporate price list.
ARTICLE IV
PERMITTED SUBLICENSES
4.1 SUBLICENSES.
(a) SUBLICENSES TO AFFILIATES AND CONTRACT MANUFACTURERS. Subject to the terms and conditions of this License, including all applicable Quality Standards, Quality Control Monitoring, and Trademark Usage Guidelines and other restrictions in this License, Keysight may grant sublicenses to its Affiliates and to Contract Manufacturers entering into Contract Manufacturer agreements with Keysight (collectively βsublicenseesβ) to use the Licensed Marks in accordance with the license grant in Section 2.1 above; provided that: (i) Keysight enters into a written sublicense agreement with each such sublicensee and (ii) such agreement does not include the right to grant further sublicenses other than sublicenses between Affiliates of Keysight. Keysight shall provide copies of such written sublicense agreements to Agilent upon request. If Keysight grants any sublicense rights pursuant to this Section 4.1(a) and any such sublicensee ceases to be an Affiliate or Contract Manufacturer, then the sublicense granted to such Affiliate or Contract Manufacturer pursuant to this Section 4.1(a) shall terminate immediately upon cessation.
(b) SUBLICENSES TO TRANSFEREES. If Keysight transfers a going business (but not all or substantially all of its business or assets), and such transfer includes at least one marketable product and tangible assets having a net value of at least twenty-five million U.S. dollars ($25,000,000) then, subject to the terms and conditions of this License, including all applicable Quality Standards, Quality Control Monitoring, and Trademark Usage Guidelines and other restrictions in this License, Keysight may grant sublicenses to the transferee of such business to use the Licensed Marks on the Keysight Products that are in the transferred business as of the effective date of the transfer in accordance with the license grant set forth in Section 2.1 above; provided, that: (i) Keysight enters into a written sublicense agreement with the sublicensee, (ii) such agreement does not include the right to grant further sublicenses and (iii) in any event, such sublicense shall terminate ninety (90) days after the effective date of the transfer. Keysight shall provide copies of such written sublicense agreements to Agilent upon request. Keysight shall remain responsible and liable to Agilent for all acts or omissions of such permitted sublicensees with respect to the Licensed Marks or this License if such acts or omissions were made by Keysight.
4.2 AUTHORIZED DEALERSβ USE OF MARKS. Subject to the terms and conditions of this License, including all applicable Quality Standards and Trademark Usage Guidelines and other restrictions in this License, Keysight (and those Affiliates sublicensed to use the Licensed Marks pursuant to Section 4.1) may allow Authorized Dealers to: (a) Sell, otherwise distribute or Service Collateral Materials and Licensed Products bearing the Licensed Marks, (b) create and use Marketing Materials and (c) allow other Authorized Dealers to do any or all of these things, provided that such Authorized Dealers agree to full compliance with all relevant provisions of this License. Keysight shall remain responsible and liable to Agilent for all acts or omissions of Authorized Dealers with respect to the Licensed Marks or this License if such acts or omissions were made by Keysight.
4.3 ENFORCEMENT OF AGREEMENTS. Keysight shall take all reasonably appropriate measures at Keysightβs expense to promptly and diligently enforce the terms of any sublicense agreement or other agreement with any sublicensee or Authorized Dealer and shall restrain any such sublicensee or Authorized Dealer from violating such terms, including without limitation: (a) monitoring the sublicenseesβ and Authorized Dealersβ compliance with the relevant Quality Standards and Trademark Usage Guidelines and causing any non-complying sublicensee or Authorized Dealer promptly to remedy any failure; (b) if need be, terminating such agreement; and/or (c) if need be, commencing legal action, in each case using a standard of care consistent with Agilentβs practices as of one day prior to the Effective Date, but in no case using a standard of care less than what is reasonable in the industry. In the event that Agilent determines that Keysight has failed to promptly and diligently enforce the terms of any such agreement using such standard of care, Agilent reserves the right to enforce such terms, only after providing Keysight with written notice and time to cure such failure to enforce consistent with the procedures set forth in Articles VI and VIII. If Keysight fails to cause sublicensees to cure any defects, and Agilent elects to enforce its rights in accordance with this paragraph, Keysight shall reimburse Agilent for its reasonable litigation costs, attorneysβ fees, and expenses incurred in enforcing the agreement, including out-of-pocket costs, attorneysβ fees, and expenses incurred from litigation.
ARTICLE V
TRADEMARK USAGE GUIDELINES
5.1 TRADEMARK USAGE GUIDELINES. Keysight, its Affiliates and Authorized Dealers shall use the Licensed Marks during the Term only in a manner that is consistent with the Trademark Usage Guidelines. To the extent that Keysightβs use of the Licensed Marks is unchanged from how the Licensed Marks were used in a product Sold by Agilentβs Electronic Measurement Group prior to the Effective Date, such use in the counterpart Keysight product shall be deemed to be consistent with the Trademark Usage Guidelines.
5.2 TRADEMARK REVIEWS. At Agilentβs reasonable request, Keysight agrees to furnish or make available for inspection to Agilent one (1) sample of Corporate Identity Materials, Licensed Products, Collateral Materials and Marketing Materials of Keysight and its Affiliates that are marked with one or more of the Licensed Marks. Keysight further agrees to take reasonably appropriate measures to require its Authorized Dealers to furnish or make available for inspection to Keysight samples of Marketing Materials and Collateral Materials of its Authorized Dealers. If Keysight is notified or reasonably determines that it or any of its Affiliates or Authorized Dealers is not complying with any Trademark Usage Guidelines, it shall notify Agilent and the provisions of Section 4.3 and Article VI hereof shall apply to such noncompliance.
ARTICLE VI
TRADEMARK USAGE GUIDELINES ENFORCEMENT
6.1 INITIAL CURE PERIOD. If Agilent becomes aware that Keysight or any of its Affiliates is not complying with any Trademark Usage Guidelines, Agilent shall notify
Keysight in writing, setting forth in reasonable detail a written description of the noncompliance and any requested action for curing such noncompliance. Keysight shall then have forty-five (45) calendar days after receipt of such notice (βGuideline Initial Cure Periodβ) to correct such noncompliance or submit to Agilent a written plan to correct such noncompliance, which written plan shall be reasonably acceptable to Agilent, unless Agilent previously affirmatively concurs in writing, in its sole discretion, that Keysight or its Affiliate is in compliance. If Agilent or Keysight becomes aware that an Authorized Dealer is not complying with any Trademark Usage Guidelines, Keysight (but not Agilent) shall promptly notify such Authorized Dealer in writing, setting forth in reasonable detail a written description of the noncompliance and any requested action for curing such noncompliance. Such Authorized Dealer shall then have the Guideline Initial Cure Period to correct such noncompliance or submit to Keysight a written plan to correct such noncompliance, which written plan shall be reasonably acceptable to Keysight and Agilent.
6.2 SECOND CURE PERIOD. If the noncompliance with the Trademark Usage Guidelines continues beyond the Guideline Initial Cure Period, Keysight and Agilent shall each promptly appoint a representative to negotiate in good faith actions that may be necessary to correct such noncompliance. The parties shall have thirty (30) calendar days following the expiration of the Guideline Initial Cure Period to agree on corrective actions, and Keysight shall have thirty (30) calendar days from the date of an agreement of corrective actions to implement such corrective actions and cure or cause the cure of such noncompliance (βSecond Guideline Cure Periodβ).
6.3 ENFORCEMENT UPON FAILURE TO CURE. If the noncompliance with the Trademark Usage Guidelines by Keysight or any Affiliate (as the case may be) remains uncured after the expiration of the Second Guideline Cure Period, then at Agilentβs election, Keysight or the non-complying Affiliate (as the case may be) promptly shall cease using the non-complying Corporate Identity Materials, Licensed Product, Collateral Materials and/or Marketing Materials until Agilent reasonably determines that Keysight or the non-complying Affiliate (as the case may be) has reasonably demonstrated its ability and commitment to comply with the Trademark Usage Guidelines. If the noncompliance with the Trademark Usage Guidelines by an Authorized Dealer remains uncured after the expiration of the Second Guideline Cure Period, then at Keysightβs election, such Authorized Dealer promptly shall cease using the non-complying Collateral Materials and/or Marketing Materials until Keysight determines that such Authorized Dealer has demonstrated its ability and commitment to comply with the Trademark Usage Guidelines. Nothing in this Article VI shall be deemed to limit Keysightβs obligations under Section 4.3 above or to preclude Agilent from exercising any rights or remedies under Section 4.3 above.
ARTICLE VII
QUALITY STANDARDS
7.1 GENERAL. Keysight acknowledges that the Licensed Products permitted by this License to be marked with one or more of the Licensed Marks must continue to be of sufficiently high quality as to provide protection of the Licensed Marks and the goodwill they symbolize, and at least consistent and in compliance with the applicable Agilent Quality Standards in effect as of the day prior to the Effective Date. Prior to making any material change
in any applicable Quality Standard, Keysight shall first advise Agilent of the anticipated change, and obtain Agilentβs consent before implementing it.
7.2 QUALITY STANDARDS. Keysight and its Affiliates shall use the Licensed Marks only on and in connection with Licensed Products that meet or exceed in all respects the applicable Quality Standards in effect on the Distribution Date, or as otherwise mutually agreed between the parties.
7.3 QUALITY CONTROL MONITORING.
(a) REPORTS: Keysight will provide Agilent with the quality reports in the form and at the frequency used by Agilentβs Electronic Measurement Group as of July 31, 2014 (βKeysight Quality Reportsβ) unless otherwise agreed in writing between the parties. Keysight Quality Reports should be sent electronically to Agilent Enterprise Quality Director or a delegate using the contact information provided in Exhibit E. If a Keysight Quality Report is not submitted within fourteen (14) days of its respective due date, Keysight shall be considered in violation of this provision and subject to the provisions of Artilce VIII (including Section 8.4), below, except when the parties have otherwise agreed in writing.
(b) ADDITIONAL INFORMATION. Any Agilent concerns about the reports or their contents should be directed the Keysight Director of Quality or authorized delegate using the contact information provided in Exhibit E. If Agilent determines that further information or other action is needed, appropriate requests will be made via email to the Keysight Director of Quality or authorized delegate, using the contact information provided in Exhibit E, who will acknowledge such request within fifteen (15) days of receipt. The parties will then confer to exchange relevant information and determine needed actions and applicable deadlines.
(c) SAMPLES. In addition, at Agilentβs reasonable request, Keysight shall furnish or make available to Agilent for inspection one (1) sample of each requested Licensed Product marked with one or more of the Licensed Marks.
(d) UPDATING CONTACT INFORMATION. Contact information may be updated consistent with Section 8.6 of the Separation Agreement, below, with a copy to Agilent Enterprise Quality Director and the Keysight Director of Quality.
ARTICLE VIII
QUALITY STANDARD ENFORCEMENT
8.1 INITIAL CURE PERIOD. If Agilent becomes aware that Keysight or any Affiliate is not complying with any Quality Standard or transmitting the reports identified in Section 7.3(b), above, Agilent shall notify Keysight in writing, setting forth in reasonable detail a written description of the noncompliance and any requested action for curing such noncompliance. Following receipt of such notice, Keysight shall make an inquiry promptly and in good faith concerning each instance of noncompliance described in the notice. Keysight shall then have thirty (30) calendar days after receipt of such notice (βInitial Cure Periodβ) to correct such noncompliance or submit to Agilent a written plan to correct such noncompliance, which
written plan shall be reasonably acceptable to Agilent, unless Agilent previously affirmatively concurs in writing, in its sole discretion, that Keysight or its Affiliates is in compliance.
8.2 SECOND CURE PERIOD. If the noncompliance with the Quality Standards continues beyond the Initial Cure Period, Keysight and Agilent shall each promptly appoint a representative to negotiate in good faith actions that may be necessary to correct such noncompliance. The parties shall have fifteen (15) calendar days following the expiration of the Initial Cure Period to agree on corrective actions, and Keysight shall have fifteen (15) calendar days from the date of an agreement of corrective actions to implement such corrective actions and cure or cause the cure of such noncompliance (βSecond Cure Periodβ).
8.3 ENFORCEMENT UPON FAILURE TO CURE. If the said noncompliance with the Quality Standards by Keysight or any Affiliate (as the case may be) remains uncured after the expiration of the Second Cure Period, then at Agilentβs election, Keysight or the non-complying Affiliate (as the case may be) promptly shall cease offering the non-complying Licensed Products under the Licensed Marks until Agilent reasonably determines that Keysight or the non-complying Affiliate (as the case may be) has reasonably demonstrated its ability and commitment to comply with the Quality Standards. Nothing in this Article VIII shall be deemed to limit Keysightβs obligations under Section 4.3 above or to preclude Agilent from exercising any rights or remedies under Section 4.3 above.
8.4 REPEATED VIOLATIONS OF REPORT REQUIREMENT. If Keysight violates Section 7.3(a), above, in any three (3) months during any consecutive twelve (12)βmonth period, Keysightβs license rights to use the Licensed Marks under this agreement shall be deemed automatically terminated with respect to all Licensed Products, regardless of whether or not Agilent has provided Keysight any notices of noncompliance.
8.5 LICENSE RE-GRANT FOLLOWING LICENSE TERMINATION. In the event of an automatic license termination under Section 8.4 above, Keysight may, at any time, request in writing that Agilent re-grant Keysight a license having identical terms to apply from the new grant date forward and potentially also apply retroactively as to certain products. The written request shall include: (1) current Keysight Quality Reports;(2) all of the relevant Keysight Quality Reports covering the periods of unlicensed use; and (3) two thousand U.S. dollars ($2,000) per month for each month of unlicensed use of the Licensed Marks, to compensate Agilent for the costs and risks associated with Keysightβs unlicensed use of the Licensed Marks. Effective upon receipt of such request from Keysight, the license shall be deemed granted effective from the receipt date forward. If Keysight has also requested the license apply retroactively, Agilent shall evaluate the request in light of the written application. Within thirty (30) days of receipt, Agilent shall review the back Keysight Quality Reports and respond to the request with any concerns raised in the current Keysight Quality Reports being addressed using the processes of Section 7.3 and Sections 8.1, 8.2 and 8.3, above. If supported by the data submitted, Agilent shall grant the request for retroactive application of the license by making the re-granted license applicable to the relevant Licensed Products, as if the license had not been terminated.
ARTICLE IX
PROTECTION OF LICENSED MARKS
9.1 GOODWILL OF LICENSED MARKS. Any increase in the goodwill associated with Keysightβs use of the Licensed Marks shall inure exclusively to the benefit of Agilent and Keysight shall not acquire or assert any rights therein. Keysight 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.
9.2 PROTECTION OF LICENSED MARKS. During the term of this License, Keysight shall assist Agilent, at Agilentβs request and expense, in the procurement and maintenance of Agilentβs intellectual property rights in the Licensed Marks. Keysight will not grant or attempt to grant a security interest in the Licensed Marks or record any such security interest in the United States Patent and Trademark Office or elsewhere against any Xxxx application or registration belonging to Agilent. Keysight agrees to, and shall cause its Affiliates to, execute all documents reasonably requested by Agilent to affect further registration of, maintenance and renewal of the Licensed Marks, recordation of the license relationship between Agilent and Keysight and recordation of Keysight as a registered user. Agilent makes no warranty or representation that Xxxx registrations have been or will be applied for, secured or maintained in the Licensed Marks throughout, or anywhere within the world. Keysight shall cause to appear on all Licensed Products, all Marketing Materials and all Collateral Materials, such legends, markings and notices as may be required by applicable law or as otherwise agreed by Agilent and Keysight.
9.3 SIMILAR MARKS. Keysight agrees not to use or register in any country any Xxxx that is or may be confusingly similar to or otherwise infringe Licensed Marks, or any element thereof. Keysight agrees not to adopt any Marks incorporating the root βAgilβ or any other Xxxx confusingly similar to the Licensed Marks. Keysight shall not challenge Agilentβs ownership of or the validity of the Licensed Marks or any application for registration thereof throughout the world. Keysight shall not use or register in any country or jurisdiction, or permit others to use or register on its behalf in any country or jurisdiction, any copyright, telephone number or any other intellectual property right, whether recognized currently or in the future, or any other designation which would affect the ownership or rights of Agilent in and to the Licensed Marks, or otherwise take any action which would adversely affect any of such ownership rights, or assist anyone else in doing so. Keysight shall cause its Affiliates and direct its Authorized Dealers to comply with the provisions of this Section 9.3.
9.4 INFRINGEMENT PROCEEDINGS.
(a) NOTICE TO AGILENT. If Keysight learns, during the Term of this License, of any infringement or threatened infringement of the Licensed Marks, or any unfair competition, passing-off or dilution with respect to the Licensed Marks, Keysight shall provide timely notice to Agilent or its authorized representative giving particulars thereof and indicating whether Keysight requests Agilent take action to enforce its rights in such matter. Notwithstanding the foregoing, Keysight is not obligated to monitor or police use of the Licensed Marks by Third Parties other than as specifically set forth in Section 4.3 hereof.
(b) DECISION TO ENFORCE. Except for those actions initiated by Keysight pursuant to Section 4.3 hereof to enforce any sublicense or other agreement with any Affiliate or Authorized Dealer, Agilent 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 of Agilent; provided, however, that in cases where Keysight is bearing the costs of such action, Agilent agrees to consult with Keysight prior to making such decisions. Keysight can revoke its request that Agilent take action at any time upon written notice. If the revocation is received by Agilent before an action is initiated, the revocation will be effective upon receipt. However, if the revocation is received by Agilent after an action is initiated, Keysightβs revocation will become effective only upon the action being successfully terminated or concluded. If, during the pendency of an action for which Keysight is bearing the costs, a settlement opportunity is presented that Keysight elects to accept, Agilent may alone reject the settlement and continue the litigation on the condition that Agilent bear the costs from that time forward. Keysight shall not and shall have no right to initiate any litigation, opposition, cancellation or related legal proceedings with respect to the Licensed Marks in its own name (except for those actions initiated by Keysight pursuant to Section 4.3 hereof). Other than disbursement of monetary recoveries in accordance with Section 9.4(d), below, Agilent shall incur no liability to Keysight or any other Person under any legal theory by reason of Agilentβs failure or refusal to prosecute, nor by reason of any settlement to which Agilent may agree.
(c) KEYSIGHT ASSISTANCE. Keysight shall provide necessary information and assistance to Agilent or its authorized representatives in the event that Agilent decides that proceedings should be commenced. Keysight agrees to cooperate with Agilent to enforce its rights in the Licensed Marks, including to join or be joined as a party in any action taken by Agilent against a Third Party for infringement or threatened infringement of the Licensed Marks, to the extent such joinder is required under mandatory local law for the prosecution of such an action.
(d) COST OF ENFORCEMENT. Unless Keysight has indicated its desire that Agilent take action to enforce its rights in a matter, Agilent shall be responsible for all costs associated with Agilentβs enforcement, including the costs of Keysight assistance provided in accordance with Section 9.4(c), above, and all monetary recoveries shall belong exclusively to Agilent. Where Keysight has requested Agilent take action, Keysight shall be responsible for all costs associated with Agilentβs enforcement. If Keysight is responsible for costs, all monetary recoveries up to the full cost of enforcement shall be paid to Keysight with any amounts above and beyond the cost of enforcement split equally between Agilent and Keysight. If Keysight revokes its request that Agilent take action in a particular matter, Keysight shall remain liable for any costs incurred through the date the revocation became effective, and all monetary recoveries shall belong exclusively to Agilent.
(e) PENDING ACTIONS. As to actions pending on as of the day prior to the Effective Date, Agilent shall continue to bear the costs, and Keysight shall provide assistance in accordance with Section 9.4(c) above, unless the parties otherwise agree in writing as to a specific action.
9.5 TECHNICAL ASSISTANCE. Except as otherwise set forth herein, in the Agreement or any other mutually executed agreement between the parties, no party shall be required to provide the other party with any technical assistance or to furnish any other party with, or obtain on their behalf, any documents, materials or other information (including copies of registrations of the Licensed Marks).
9.6 NO CHALLENGE TO TITLE. The party receiving the license hereunder acknowledges and agrees that the party (or its applicable Affiliate) granting the license is the sole and exclusive owner of the Licensed Xxxx so licensed. Keysight agrees that it shall not (and shall cause its Affiliates not to), for any reason, whether during or after the termination of this License, do or authorize any Third Party to do, any of the following with respect to any Licensed Xxxx licensed to Keysight or its Affiliates hereunder: (a) represent to any Third Party in any manner that it owns or has any ownership rights in the Licensed Marks; (b) apply for federal, state, or national registration of the Licensed Marks; or (c) impair, dispute or contest the validity of the Agilent (or any of its Affiliates) right, title and interest in and to the Licensed Marks.
ARTICLE X
CONFIDENTIALITY
The provisions set forth in Section 6.2 of the Separation Agreement are hereby expressly incorporated into this License and made a part thereof, and all information, whether written or oral, furnished by either party to the other party or any Affiliate of such other party pursuant to this License shall also be βConfidential Information,β as that term is defined in the Separation Agreement.
11.1 VOLUNTARY TERMINATION. By written notice to Agilent, Keysight may voluntarily terminate all or a specified portion of the licenses granted to it hereunder by Agilent. Such notice shall specify the effective date of such termination and shall clearly specify any affected Licensed Marks and Licensed Products.
11.2 EFFECT OF TERMINATION; SURVIVAL. Any voluntary termination of licenses and rights of Keysight under Section 11.1 hereof shall not affect Keysightβs licenses and rights with respect to any Licensed Products made or furnished by Keysight prior to such termination or Keysightβs licenses and rights with respect to any Licensed Marks not so terminated. Notwithstanding anything in this License to the contrary, Section 2.4 (Reservation of Rights), Section 2.13 (Indemnification), Article X (Confidentiality), this Section 11.2 (Effect of Termination; Survival), Article XII (Limitation of Liability and Warranty Disclaimer) and Article XIII (Miscellaneous Provisions) shall survive any expiration or termination of this License in whole or in part.
11.3 CHANGE OF CONTROL.
(a) Notwithstanding any other provisions of this License, Change of Control, as defined in the IPMA applies to this License and all licenses granted to Keysight by this
License. For example, if the licenses granted by Agilent to Keysight pursuant to the IPMA are deemed not assignable pursuant to Section 8.2 of the IPMA, then this License and all licenses granted under this License are not assignable.
(b) Further, upon any Change of Control of Keysight, the term specified in each of Sections 2.2(b), 3.3(b), 3.3(c), 3.3(d) and 3.3(e) shall change to βthree (3) years from the Distribution Date,β unless Agilent, in its sole and absolute discretion, agrees otherwise in writing. For example, in the absence of Agilentβs written agreement to the contrary: (1) if the Change of Control event were to occur on the second anniversary of the Distribution Date, then all licenses granted under this Agreement would be deemed to terminate on the third anniversary of the Distribution Date (i.e. in one (β1β) year); and (2) if the Change of Control event were to occur after the third anniversary of the Distribution Date, then all licenses granted under this agreement would be deemed terminated immediately upon the occurrence of the Change of Control.
ARTICLE XII
LIMITATION OF LIABILITY AND WARRANTY DISCLAIMER
12.1 IN NO EVENT SHALL ANY PARTY BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND BASED ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS LICENSE, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE FOREGOING SHALL NOT, HOWEVER, LIMIT THE DAMAGES AVAILABLE TO AGILENT FOR (A) INFRINGEMENT OR MISAPPROPRIATION OF ANY LICENSED MARKS OR (B) BREACHES OF ARTICLE X.
12.2 WARRANTIES DISCLAIMER. EXCEPT AS OTHERWISE SET FORTH HEREIN, EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL LICENSED MARKS AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR FURNISHED HEREUNDER ARE LICENSED OR FURNISHED WITHOUT ANY WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF TITLE, FITNESS FOR A PARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
12.3 Except as otherwise set forth herein, neither Agilent nor any of its Affiliates makes any warranty or representation as to the validity of any Licensed Xxxx or any warranty or representation that any use of any Licensed Xxxx with respect to any product or service will be free from infringement of any rights of any Third Party.
ARTICLE XIII
MISCELLANEOUS PROVISIONS
13.1 ENTIRE AGREEMENT. This License, together with the Separation Agreement and the IPMA constitute the entire understanding 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 that there is a conflict between this License and such other agreements, this License shall govern.
13.2 INCORPORATION OF MISCELLANEOUS TERMS. Article VIII of the Separation Agreement is hereby incorporated into this Agreement by this reference.
13.3 DISPUTE RESOLUTION. In the event of any controversy, dispute or claim (a βDisputeβ) arising out of or relating to any partyβs rights or obligations under this License (whether arising in contract, tort or otherwise) (including the interpretation or validity of this License), such Dispute shall be resolved in accordance with the dispute resolution process referred to in Article VII of the Separation Agreement.
13.4 SPECIFIC PERFORMANCE. Subject to Section 13.3, in the event of any actual or threatened default in, or breach of, any of the terms, conditions and provisions of this License, the party or parties who are or are to be thereby aggrieved shall have the right to specific performance and injunctive or other equitable relief (on an interim or permanent basis) of its rights under this License, in addition to any and all other rights and remedies at law or in equity, and all such rights and remedies shall be cumulative. The parties agree that the remedies at law for any breach or threatened breach, including monetary damages, may be inadequate compensation for any loss and that any defense in any action for specific performance that a remedy at law would be adequate is waived. Any requirements for the securing or posting of any bond with such remedy are waived by each of the parties.
[SIGNATURE PAGE FOLLOWS]
IN WITNESSS WHEREOF, the parties have caused this Trademark License Agreement to be duly executed.
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AGILENT TECHNOLOGIES, INC. | |||
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Xxxxxx Xxxx Xxxxxxxxx | |
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Senior Vice President, Corporate Development and Strategy | |
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Date: |
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KEYSIGHT TECHNOLOGIES, INC. | |||
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By: |
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Xxxxxx X. Xxxxxxxxx | |
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President and Chief Executive Officer | |
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Date: |
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[Signature Page to the Trademark License Agreement]
Exhibit A
Licensed Marks
1. βAgilentβ β word xxxx
2. βAgilent Technologiesβ β word xxxx
3. βSpark (4-dot)β - graphic
4. βSpark (3-dot)β - graphic
5. βAgilent Signatureβ β composite word xxxx and graphic, and trade dress element
Exhibit C
Unencapsulated Integrated Circuits
Part Number |
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Description |
1NB4-5057 |
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IC-ASIC 1NB4-5057 256-TBGA, Agilent Trade Restricted |
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1NB7-8453 |
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Rattler PRE AMP, Agilent Trade Restricted |
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1NB7-8477 |
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Rattler Preamp 50 OHM, Agilent Trade Restricted |
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1NG9-8201 |
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Xxxxxxx - External |
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1NG9-8202 |
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Berlin - External |
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2AT9-8201 |
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IC ASIC preamplifier 40-QFN - external |
Exhibit D
Licensed Products subject to Long Term Exception
Part Number |
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Description |
M9101A, M9102A, M9103A, M9120A, M9121A, M9122A, M9128A, M9130A, M9131A, M9132A, M9133A, M9135A, M9146A, M9147A, M9148A, M9149A, M9150A, M9151A, M9152A, M9153A, M9187A |
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Software/Firmware used in the βPipelineβ family of switch products. |
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M9330A, M9331A |
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Software/Firmware used in the Arbitrary Wafeform Generator |
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34921A, 34922A, 34923A, 34924A, 34925A, 34931A, 34932A, 34933A, 34934A, 34934C, 34937A, 34938A, 34939A, 34941A, 34942A, 34945A, 34945EXT, 34946A, 34947A, 34950A, 34951A, 34952A 34959A, 34980A, L4421A, L4433A, L4437A, L4445A, L4450A, L4451A, L4452A, L4490A, L4491A, L4532A, L4534A |
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Software/Firmware used in the βAbeβ family of switch products |
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Agilent Measurement Manager Software as distributed with USB modular products |
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This is a software module that runs the background and interfaces with embedded code on every USB modular product made by Agilent prior to Keysight spin. Changing the name may break functionality with legacy products. |
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Parametric Measurement Manager (PMM) as used with U2722/23A USB Modular Source Measurement unit and its parametric test fixture accessory, U2941A |
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PMM is an optional, free software that allows users to program the U2722/23A and the U2941A |
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W400d |
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VEE software |
Exhibit E
Quality Contacts
Keysight Contact:
Keysight Director of Quality
xxxxxxxxxxxxxxx.xxxxxxxxx@xxxxxxxx.xxx and
xxxx_xxxxxxx@xxxxxxxx.xxx
707.577.6571
0000 Xxxxxxxxxxxxx Xxxx
Xxxxx Xxxx, XX 00000
Agilent Contact:
Agilent Enterprise Quality Director
xxxxxxxxxxxxxx.xxxxxxxxx@xxxxxxx.xxx
408.345.8117
0000 Xxxxxxx Xxxxx Xxxx
Xxxxx Xxxxx, XX 9505