LICENSE TERMINATION AGREEMENT
Exhibit
10.11
This
License Termination Agreement (this "Termination
Agreement") is
entered into
as
of September 18, 2006, by and between Quintessence Photon's Corporation, a
Delaware
corporation with its principal place of business at 00000 Xxxxxxx Xxxxxx,
Xxxxxx,
Xxxxxxxxxx 00000 (the "Licensor") and
Finisar Corporation, a Delaware corporation
with a principal place of business at 0000 Xxxxxxx Xxxx Xxxxx, Xxxxxxxxx,
Xxxxxxxxxx
00000 (the "Licensee"). Capitalized
terms used herein and not otherwise defined shall have the respective meanings
ascribed to them in that certain License Agreement
dated as of September 18, 2003 by and between Licensor and Licensee (the
"License
Agreement").
RECITALS
WHEREAS,
the
Licensor granted the Licensee the right and license to use the Technology and
Intellectual Property pursuant to the License Agreement in accordance
with
the
terms set forth therein;
WHEREAS,
the
Licensor and Licensee now wish to terminate the License Agreement in accordance
with the terms set forth in this Termination Agreement;
WHEREAS,
in connection with the termination of the License Agreement, the Licensor
has agreed to pay the Licensee a termination fee through the issuance of that
certain
Promissory Note in the original principal amount of $6,000,000 dated as of
the
date
hereof (the "Note");
WHEREAS,
in
connection with the issuance of the Note, the Licensor and the Licensee are
entering into that certain Security Agreement between the Licensor and Licensee
dated as of the date hereof, pursuant to which the Licensor grants to Licensee
a
security
interest in its personal property to secure the obligations under the Note
(the
"Security
Agreement"); and
WHEREAS,
the transactions provided for in this Termination Agreement are, and
are
intended by each of Licensor and Licensee. to be, a contemporaneous exchange
for
new
value given by Licensee to Licensor;
NOW,
THEREFORE, in
consideration of the foregoing and of the mutual promises
contained herein and for other valuable consideration, the receipt and
sufficiency
of which is hereby acknowledged, the parties agree as follows:
1. Termination. The
Licensor and the Licensee hereby terminate the License
Agreement effective as of the Termination Date (as defined below). In
furtherance
of the foregoing, as of the Termination Date, Licensor shall terminate and
Licensee shall relinquish all of Licensee's rights set forth in the License
Agreement, including,
without limitation, Licensee's right to use or sublicense in any manner the
Licensed
IP or the Trademarks.
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2. Payment
of Termination Fee. Notwithstanding
Section 4.1 of the License Agreement,
the Licensor and the Licensee hereby agree that, in consideration for the
termination
of the License Agreement pursuant hereto, the Licensor shall execute and
deliver
the Note and the Security Agreement concurrently herewith, which Note shall
constitute,
in full, the Termination Fee payable under the License Agreement.
3. Effective
Date of Termination. The
termination of the License Agreement provided
for in Section 1 shall occur only upon the expiration of ninety one (91) full
consecutive
calendar days from the date upon which (a) the Licensee has received the
fully
executed Note and Security Agreement and (b) the security interests provided
for
in the
Security Agreement (i) have attached, and (ii) have been perfected to the extent
perfection
can be achieved through the filing of a UCC-1 financing statement or through
the
filing of an assignment or other document in the United States Patent and
Trademark Office
(such period, the "Waiting
Period"), if
on
that date the Licensor is not the subject of
any
Insolvency Proceeding or Avoidance Proceeding (the "Termination
Date"). If
an
Insolvency
Proceeding or an Avoidance Proceeding is pending on the date which is ninety
one
(91) full consecutive calendar days from the date upon which each of the
events
described in this Section 3(a) and 3(b)(i)
and
(ii)
have occurred, the Licensee shall be
entitled to retain the Note and the Security Agreement and the License Agreement
and all
rights and interests under each of the Note and the Security Agreement and
the
License
Agreement and the Termination Date shall not occur. If neither an Insolvency
Proceeding
nor an Avoidance Proceeding is pending on the date which is ninety one (91)
full
consecutive calendar days from the date upon which each of the events described
in this
Section 3(a) and 3(b)(i)
and
(ii)
have occurred, then the License Agreement shall automatically
be terminated as provided for in this Termination Agreement without any
further
action by the Licensor or the Licensee. The Licensee agrees that during the
Waiting
Period, unless an Insolvency Proceeding or Avoidance Proceeding occurs during
such
Waiting Period, it shall not (i) exercise any of the rights granted to it
pursuant to Sections 2.1, 7.1 or 7.2 of the License Agreement, or (ii) assign,
transfer or encumber in any
manner, in whole or in part, any rights to the Licensed IP. For purposes of
this
Section,
"Insolvency Proceeding" shall mean any case or proceeding commenced by or
against Licensor under any provision or chapter of the United States Bankruptcy
Code, as it may be amended from time to time, or any other federal, state or
foreign law providing for
bankruptcy, dissolution, insolvency, liquidation, receivership, rehabilitation,
reorganization,
or winding up of a debtor or the assets and liabilities of a debtor or for
the
administration,
adjustment, arrangement, compromise, composition, extension, moratorium,
reorganization, restructuring, settlement or similar relief of debts of a debtor
generally
with or for the benefit of its creditors, including without limitation (x)
an
assignment
for the benefit of creditors, (y) a proceeding seeking the appointment of a
receiver,
liquidator, assignee, trustee, conservator, custodian, fiduciary, sequestrator
or other
similar official, and (z) any formal or informal debt moratoria, whether or
not
an order
for
relief has been entered in any involuntary bankruptcy case or other proceeding,
whether or not the proceeding is voluntary or involuntary, whether or not the
proceeding is
commenced by or against the debtor, and whether or not the proceeding is
judicial, administrative,
statutory, or private. For purposes of this Section, "Avoidance Proceeding"
shall mean any proceeding, whether as part of an Insolvency Proceeding
or otherwise,
in which the Note, the Security Agreement, the License Agreement, or the
rights
or
interests of Licensee under the Note, the Security Agreement, or the License
Agreement are or could be challenged, avoided or set aside.
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4. Effect
of Termination. Notwithstanding anything in the License Agreement to
the contrary, including Sections 4.2(b), (c), (d) and (f) of the License
Agreement, (i) only Sections 4.2(a) and 6 of the License Agreement shall survive
the termination of the License Agreement pursuant hereto and continue to be
effective, (ii) the Licensor acknowledges that the Licensee continues to have
rights under Section 2.2 of the License Agreement with respect to elements
of
Derivative Works that were developed or created by or for Licensee prior to
the
Effective Date, and (iii) Licensee agrees that Licensor retains all of its
intellectual property rights and terminates Licensee's rights with respect
to
the Licensed IP that may be incorporated into such Derivative
Works.
5. Deliverables. The
Licensor and the Licensee each hereby agree to use reasonable
efforts to promptly return to the other party all Confidential Information
belonging
to the other party to the extent such party is aware of the existence of such
Confidential
Information and is able to locate it. The Licensee further agrees to use
reasonable
efforts to promptly return all Deliverables previously provided by the
Licensor
to the Licensee to the extent Licensee is aware of the existence of such
Deliverables
and is able to locate such Deliverables. Notwithstanding the foregoing, to
the
extent the Licensee is not able to locate or return such Deliverables, except
with the prior written consent of the Licensor or pursuant to legal process,
the
Licensee agrees not to use, disclose or convey to any third party the
Deliverables previously provided by the Licensor
to the Licensee.
6. No
Assignment or Sublicense. The
Licensee represents and warrants to the
Licensor that it has not heretofore assigned, transferred, sold or sublicensed
to any person
or
entity any of the Licensed IP.
7. Further
Assurances. Each
of
the Licensor and Licensee agree to do such further
acts and things and to execute and deliver such additional agreements, powers
and instruments
as the other may reasonably request to carry into effect the terms, provisions
and purposes of this Termination Agreement or to better assure and confirm
their
respective
rights hereunder.
8.
Binding
Agreement, Assignments. This
Termination Agreement, and the terms,
covenants and conditions hereof, shall be binding upon and inure to the benefit
of the
parties hereto and their respective successors and permitted
assigns.
9. GOVERNING
LAW AND CONSENT TO JURISDICTION. THE
VALIDITY,
CONSTRUCTION AND EFFECT OF THIS TERMINATION AGREEMENT SHALL BE GOVERNED BY
THE
LAWS OF THE STATE OF CALIFORNIA.
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10.
Costs
and Expenses. Each
party hereto shall bear their own attorneys' fees,
costs, and expenses in connection with the negotiation for and preparation
of
this Termination
Agreement, and the completion of the termination as herein
provided.
11. Authority. Each
of
the Licensor and Licensee represents and warrants that it
is
fully authorized to enter into this Termination Agreement and to carry out
the
obligations
provided for herein.
12. Counterparts. This
Termination Agreement may be executed in two or more
counterparts, each of which shall constitute an original, but all of which,
when
taken
together, shall constitute but one instrument.
13. Entire
Agreement; Amendments,. This
Termination Agreement constitutes the
entire agreement of the parties concerning the subject matter hereof,
superseding all prior
and
contemporaneous proposals, negotiations, communications and agreements, written
or oral, with respect to the subject matter of this Termination
Agreement.
IN
WITNESS WHEREOF, the parties have caused this Termination Agreement to
be
executed by their duly authorized representatives.
| Licensor | ||
|
QUINTESSENCE
PHOTONICS CORPORATION
|
||
| |
|
|
| By: |
/s/ Xxxxxx
Xxxxx
|
|
| Name: Xxxxxx Xxxxx | ||
|
Title:
CFO
|
||
| Licensee: | ||
|
FINISAR
CORPORATION
|
||
| |
|
|
| By: |
/s/ X.X.
Xxxxxxx
|
|
| Name: X.X. Xxxxxxx | ||
| Title: CFO | ||
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