SETTLEMENT, SALE OF TECHNOLOGY, AND LICENSE AGREEMENT
This Settlement, Sale of Technology, and License Agreement
(hereinafter "Agreement"), shall be effective April 4, 2002,
(herein "Effective Date"), by and between Intel Corporation
("Intel") and Intergraph Corporation and Intergraph Hardware
Technologies Company (cumulatively "Intergraph").
WITNESSETH:
Whereas, Intel develops, manufactures and markets various
products, including integrated circuits and computer systems; and
Whereas, Intergraph and Intel have been engaged in
litigation pertaining to certain patented technologies in the
Northern District of Alabama, entitled Intergraph Corporation v.
Intel Corporation, CV97-N-3023-NE (the "Alabama Case"), and in
the Eastern District of Texas, entitled Intergraph Corporation v.
Intel Corporation, 2:01cv160-TJW, (the "Texas Case") but now
desire to resolve the Alabama Case; and
Whereas, as a result of mediation and settlement discussions
on April 3 and 4, 2002, Intergraph and Intel agreed to the sale
and assignment of certain technologies, the licensing of other
technologies, and the granting of certain warranties and
representations, together with both parties dismissal of certain
existing claims, and covenants not to xxx on other similar
claims.
Now therefore, the parties agree:
1. Definitions
For this Agreement the parties agree that the following
terms have the following meaning:
1.1 "Architecture Emulator" shall mean software, firmware, or
hardware that, through emulation, simulation or any other
process, allows a computer that does not contain a Processor
having a first architecture to execute binary code that is
capable of being executed on a Processor having a second
architecture.
1.2 "Capture Period" means the period up to and including April
4, 2012.
1.3 "General Purpose Computing Operating System" means a
computer operating system primarily targeted for and
marketed for providing the services and the interaction with
the hardware and drivers of a general purpose computer such
as a desktop, laptop or server. Examples as of the
Effective Date of this Agreement of General Purpose Computer
Operating System include Windows XP, Mac OS, Redhat Linux,
Solaris and HP-UX. Examples of operating systems as of the
Effective Date of this Agreement that are not General
Purpose Computer Operating Systems include Palm OS,
pSOSystem and eCOS.
1.4 "Indirect Infringement" means a claim for infringement where
the accused infringer is not directly infringing the subject
patent rights, but is in some manner contributing to a third
party's direct infringement of the subject patent rights by,
for example, supplying parts or instructions to the third
party that as a result of such parts or instructions enable
the third party to infringe directly the subject patent
rights. Indirect Infringement includes, without limitation,
contributory infringement and inducing infringement.
1.5 "Integrated Circuit" means an integrated unit comprising one
or more active and/or passive circuit elements associated on
one or more substrates, such unit forming, or contributing
to the formation of, a circuit for performing electrical
functions (including, if provided therewith, housing and/or
supporting means). The definition of "Integrated Circuit"
shall also include any and all firmware, microcode or
drivers, if needed to cause such circuit to perform
substantially all of its intended hardware functionality,
whether or not such firmware, microcode or drivers are
shipped with such integrated unit or installed at a later
time.
1.6 "Intel Computer System" means any Intel Product which
incorporates all elements of an Intergraph System Patent
claim, whether or not the elements covered by the claim are
purchased contemporaneously or separately from Intel. Intel
Computer System does not include the combination of a
Processor sold by Intel with a third party's chipset, or the
combination of a Processor sold by Intel with main memory
provided by a third party. Whether an Intel Product is an
Intel Computer System under the Intergraph System Patents is
determined on a claim by claim basis under the Intergraph
System Patents.
1.7 "Intel Patents" means Patents owned or controlled by Intel
during the term of the Agreement and having a first filing
date during the Capture Period, in each case excluding any
claims of any such Patents that cover Integrated Circuits or
any manufacturing processes of any of the foregoing.
1.8 "Intel Products" means products sold or used internally by
Intel.
1.9 "Intergraph Patents" means all Patents owned or controlled
by Intergraph having a first filing date during the Capture
Period, other than the Texas Patents;
1.10 "Intergraph System Patents" means U.S. Patents claims
37 and 38 of 4,899,275; all claims of 4,933,835 and all
claims of 5,091,846.
1.13 "Intergraph Products" means all software products sold by
Intergraph, but does not include any Architecture Emulators,
General Purpose Computing Operating Systems, or compilers.
Notwithstanding the above restrictions, Intergraph Products
includes all Intergraph branded products, whether hardware
or software, currently sold, maintained and/or currently
supported by Intergraph.
1.14 "Processor" means an Integrated Circuit (including, without
limitation, digital signal processors, microprocessors,
microcomputers, math coprocessors, and microcontrollers)
containing functional elements including registers, control
logic, decision logic and input/output circuitry coupled to
interconnections such as data buses, address buses, or
control buses and having a capability of executing
temporarily or permanently stored program instructions or
microinstructions, and which also may have included on the
integrated circuit, memory, clock circuitry, input/output
interface circuitry, and/or other functions ordinarily
associated with or connected to central processing units.
1.15 "Motherboard" means a single printed circuit board designed
primarily for use as supporting a Processor that is a
central Processor of a general purpose computer and also
having: (i) at least one cooperating socket or other
connection mechanism for a Processor; (ii) at least one
cooperating socket or other connection mechanism for a main
memory and (iii) at least one cooperating socket or other
connection mechanism for connecting to an I/O port.
1.16 "OEM Customer" means an Intel OEM customer who purchases
Intel Products for the purpose of incorporating the Intel
Product with its own products, or other products from Intel
or third-parties for subsequent resale under the OEM
customer's own brand or trade name.
1.17 "Patents" means all classes or types of patents other than
design patents (including, without limitation, originals,
divisions, continuations, continuations-in-part, extensions
or reissues), and applications for these classes or types of
patents throughout the world that are owned or controlled by
the applicable party or any of its Subsidiaries or to which
such entities have the right to grant licenses, without the
payment of royalties or other consideration to a third party
or parties for the grant of a license, (other than employees
of the applicable party or its Subsidiaries) and that have a
first effective filing date during the Capture Period.
1.18 "Subsidiary" means any corporation, partnership, joint
venture, limited liability company or other entity, now or
hereafter, in which a party owns or controls (either
directly or indirectly) the following:
(a) an interest sufficient to receive at least thirty
percent (30%) of the profits and/or losses of such
entity (in the event that such entity distribute
its profits or losses); and
(b) either of the following:
(1) if such entity has voting shares or other
voting securities, more than fifty percent
(50%) of the outstanding shares or securities
entitled to vote for the election of
directors or similar managing authority; or
(2) if such entity does not have voting shares or
other voting securities, more than fifty
percent (50%) of the ownership interest that
represents the right to make decisions for
such entity.
An entity shall be deemed to be a Subsidiary under this
Agreement only so long as:
(x) the party owning or controlling the interest
required under subsection (a) above has not
contractually or otherwise agreed to forfeit any
part of its share of the profits or losses
distributed by the entity; and
(y) the party owning or controlling the shares,
securities, or other ownership interest required
under subsections(b)(1) or (b)(2) above has not
contractually or otherwise surrendered, limited,
or in any other way constrained its authority to
elect the managing authority or make decisions for
the entity; and
(z) all requisite conditions of being a Subsidiary are
met.
1.21 "Texas Patents" means U.S. Patents 5,560,028; 5,794,003; and
6,360,313; (2) all foreign counterparts thereof; and (3) any
other patent claiming priority from these U.S. or foreign
Patents.
1.22 "Texas Litigation Patents" means U.S. Patents 5,560,028 and
5,794,003.
2. Pending Litigation
2.1 In consideration of each party's performance hereunder, the
parties agree to dismiss with prejudice the litigation and
all claims against each other pending in the U.S. District
Court for the Northern District of Alabama, entitled
Intergraph Corporation v. Intel Corporation, CV97-N-3023-NE
and an interference proceeding pending in the U.S. Patent
and Trademark Office entitled Sachs v Hull. The parties
agree to prepare and file documents to terminate the
interference in a manner not prejudicial to the existing
patent rights of either party.
2.2 The parties agree that the Texas Case will be resolved in
accordance with the following procedure. If the Texas
Litigation Patents are found by the Texas Federal District
Court to be infringed, not invalid, and enforceable, then
Intel shall pay Intergraph $150 million within thirty (30)
days of entry of final judgment. Intel shall then have the
option, in its sole discretion, to take any of the following
actions:
(1) Pay an additional $100 million to Intergraph at any
time, whereupon Intergraph shall immediately dismiss the
Texas case with prejudice and the license to the Texas
Patents granted under the terms of Section 4.2 will become
immediately effective.
(2) Design around the Texas Litigation Patents and have the
design around confirmed by the Texas Federal District Court
and implemented in the next stepping of the accused
product(s) after any injunction becomes operative. The
parties agree that any injunction shall be stayed and will
not become operative until the Texas District Court renders
its decision on Intel's design around. If Intel elects this
option it shall notify Intergraph within 30 days of final
judgment.
(3) Appeal the district court decision. If the appellate
court affirms the district court's finding of infringement,
validity and enforceability for either of the Texas
Litigation Patents, then Intel shall pay Intergraph an
additional $100 million within thirty (30) days of the
appellate court's decision, upon payment of which the
license to the Texas Patents granted under the terms of
Section 4.4 will become immediately effective. If the
appellate court finds each of the Texas Litigation Patents
to be not infringed or invalid or unenforceable, then no
additional payment from Intel shall be due. The parties
agree that any injunction shall be stayed pending such
appeal and shall be dissolved upon Intel paying the $100
million provided for under this section 2.2(3).
2.3 Intergraph agrees that it will not assert a claim of
infringement against Intel or Intel Customers under the
Texas Patents (other than in the Texas Case), and Intergraph
agrees to grant a release to Intel under the Texas Patents
of the same scope as provided for in Section 6.1 upon final
adjudication of the Texas Case.
3. Sale of Technology
3.1 Intergraph Hardware Technologies Company (herein "IHTC"),
agrees to sell and assign, and Intel agrees to buy, all
right, title and interest including the right to xxx for
past infringements to the following IHTC patents (herein
"Assigned Patents"): U.S. 5,432,727; 5,216,297; 5,504,925;
5,212,454; 5,338,970; 5,499,445; 5,508,640; 5,487,025;
5,455,528; CA 2105806; DE69318914; GB 0536536; 0477807; and
FR 0477809 and 0536536. IHTC and Intergraph hereby reserve
a personal, non-exclusive, irrevocable, perpetual, non-
transferable, royalty-free, worldwide license, without the
right to sublicense, to make, have made (subject to 4.4),
import, offer to sell, and sell products under the Assigned
Patents.
3.2 In further consideration of Intel's payment, IHTC agrees to
assist and cooperate with Intel in the filing and
prosecution of any pending applications and/or further
continuation or derivative rights pertaining to the Assigned
Patents.
3.3 The parties agree that the Assigned Patents do not pertain
to the pending litigation between Intel and Intergraph.
3.4 IHTC hereby sells, assigns, transfers, and conveys to Intel
all of IHTC's right, title, and interest in and to all
causes of action and enforcement rights, whether currently
pending, filed, or otherwise, for the Assigned Patents,
including without limitation, all rights to pursue damages,
injunctive relief, and other remedies for past, current and
future infringement of the Assigned Patents.
3.5 Within thirty (30) days following the Effective Date, IHTC
shall deliver to Intel (a) an executed patent assignment in
the form of Exhibit B hereto; and (b) copies of all patent
files and original documents, owned or controlled by
Intergraph (including without limitation Letters Patent)
relating to the Assigned Patents.
3.6 At the reasonable request of Intel, IHTC shall execute and
deliver any instruments, and do and perform any other acts
and things as may be reasonably necessary or desirable for
effecting completely the consummation of the transfers
contemplated hereby, including without limitation execution,
acknowledgment, and recordation of any papers. IHTC shall,
at Intel's reasonable expense, fully cooperate in any
litigation or proceeding (including but not limited to
interference proceedings) relating to the Assigned Patents
(such cooperation including, but not limited to, making
witnesses available and providing evidence of invention
dates) to the extent that IHTC is able to do so without
unreasonably interfering with IHTC's business operations.
3.7 IHTC represents that to IHTC's knowledge with respect to the
Assigned Patents:
(a) no assignments or agreements exist that could prevent,
delay, or interfere with the sale of Assigned Patents
to Intel;
(b) (i) IHTC is the sole and exclusive legal and beneficial
owner of all rights, title, and interest in and to the
Assigned Patents, and IHTC has received no notice or
claim challenging IHTC's complete and exclusive
ownership of any of the Assigned Patents or suggesting
that any person has any claim of legal or beneficial
ownership with respect thereto; (ii) IHTC has the
exclusive, unrestricted right to xxx for past, present,
and future infringement of the Assigned Patents; (iii)
the Assigned Patents are free and clear of any and all
liens, mortgages, security interests, or other
encumbrances of title, and restrictions on transfer;
and (iv) to IHTC's knowledge, there are no actions,
suits, investigations, claims, or proceedings
threatened, pending, or in progress relating to the
Assigned Patents.
(c) there are no existing contracts, agreements, options,
commitments, proposals, bids, offers, or rights with,
to, or in any person to acquire any of the Assigned
Patents or any interest therein or to grant any right
or license therein or thereunder;
(d) to IHTC's knowledge, that Intel is not and will not
hereafter be subject to any covenant not to xxx or
similar restrictions on its enforcement or enjoyment of
the Assigned Patents as a result of any action taken or
not taken by IHTC or any prior owner of any of the
Assigned Patents or any part thereof;
(e) IHTC has not put a third party on notice of actual or
potential infringement of any of the Assigned Patents;
(f) none of the Assigned Patents have been or are currently
involved in any reexamination, reissue, or interference
proceeding, or any similar proceeding, and that, to
Intergraph's knowledge, no such proceedings are pending
or threatened;
(g) all maintenance fees, annuities, and the like due on
the Assigned Patents have been timely paid through the
Effective Date;
(h) IHTC has obtained all third party consents, approvals,
and/or other authorizations required to sell and assign
to Intel the Assigned Patents and related causes of
action pursuant to Section 3.
(i) (i) none of the Assigned Patents has ever been found
invalid, unenforceable or misused for any reason in any
administrative, arbitration, judicial or other
proceeding; and (ii) IHTC has not received any notice
that the Assigned Patents may be invalid, unenforceable
or misused or that a claim to such effect may be
brought by any person, and to the knowledge of IHTC,
the Assigned Patents are valid and enforceable without
any material qualification, limitation or restriction
on their use,
4. Licenses
4.1 Intel Products: Intergraph hereby grants to Intel a
personal, non-exclusive, irrevocable and perpetual non-
transferable, royalty-free, worldwide license, without the
right to sublicense, under the Intergraph Patents other than
the Texas Patents and the Intergraph System Patents, to:
(a) make, use, sell, (directly or indirectly), offer to
sell, import and otherwise dispose of Intel Products; and
(b) make, have made (subject to Section 4.4), use
and/or import any equipment and practice any method or
process for the manufacture, use, import and/or sale of
Intel Products; and
(c) have made (subject to section 4.4) Intel Products
by another manufacturer for use, import, sale, offer for
sale or disposition by Intel.
The license in this Section is specific to the Intergraph
Patents, other than the Texas Patents and the Intergraph
System Patents, and does not create a license to Intel, or
an implied license to anyone other than Intel, under the
Intergraph System Patents or the Texas Patents.
4.2 Conditional Texas License: Subject to the conditions
precedent set forth in Section 2.2, effective as and when
provided in Section 2.2, Intergraph hereby grants to Intel a
personal, non-exclusive, irrevocable and perpetual non-
transferable, royalty-free, worldwide license, without the
right to sublicense, under the Texas Patents, to:
(a) make, use, sell, (directly or indirectly), offer to
sell, import and otherwise dispose of Intel Products; and
(b) make, have made (subject to Section 4.4), use
and/or import any equipment and practice any method or
process for the manufacture, use, import and/or sale of
Intel Products.
(c) have made (subject to Section 4.4) Intel Products
by another manufacturer for use, import, sale, offer for
sale or disposition by Intel.
(d) Upon completion of the applicable condition
precedent selected by Intel under Section 2.2(1) through (3)
final adjudication of the Texas Case then Intergraph grants
Intel a license under the Texas Patents of the same scope as
granted hereunder for the Intergraph Patents.
Simultaneously, the Parties agree to grant releases of the
scope provided in section 6 for the Texas Case and the Texas
Patents.
The conditional license in this Section is specific to the
Texas Patents and does not create a license to Intel, or an
implied license to anyone other than Intel, under the Texas
Patents.
4.3 Intel Computer Systems: Intergraph hereby grants to Intel
under the Intergraph System Patents, on a claim by claim
basis as set forth in Section 1.6, a personal, non-
exclusive, irrevocable and perpetual non-transferable,
royalty-free, worldwide license, without the right to
sublicense, for Intel Computer Systems, to:
(a) make, use, sell, (directly or indirectly), offer to
sell, import and otherwise dispose of Intel Computer
Systems; and
(b) make, have made (subject to Section 4.4), use
and/or import any equipment and practice any method or
process for the manufacture, use, import and/or sale of
Intel Computer Systems; and
(c) have made (subject to Section 4.4) Intel Computer
Systems by another manufacturer for use, import, sale, offer
for sale or disposition by Intel.
Nothing in this license shall be construed as granting or
implying a license as to any claim of an Intergraph System
Patent in which the Intel Product as sold by Intel would not
constitute an Intel System Product with respect to that
claim, and it is expressly understood that Intergraph
reserves all rights to assert its patents, and individual
claims thereof against third parties, including OEMs and
other Intel customers, who combine Intel products with
products of third parties to infringe a claim of an
Intergraph System Patent.
..
4.4 Have Made Rights.
(a) Each party's rights to have products manufactured for
it by third parties under the licenses granted under
Sections 4.1 through 4.3 and 4.8 above shall apply only
when the designs, specifications and working drawings
for the manufacture of such products to be manufactured
by such third party are furnished to the third party
manufacturer by the party licensed under this Agreement
("Licensed Party").
(b) The parties understand and acknowledge that a party's
Licensed Products may consist of software, and that
software is often distributed to end users by providing
a single master copy of such software to a distributor,
replicator, VAR, OEM or other agent and authorizing
such agent to reproduce such software in substantially
identical form and distribute it as a product of the
providing party. Accordingly, the parties agree that
the licenses granted in this Section 4 are intended to
apply to the reproduction and subsequent distribution,
as a product of the providing party, of such software
Licensed Products in substantially identical form by
such authorized agent.
(c) Upon written request of the party to this Agreement
that grants the relevant license to the Licensed Party
("Requesting Party"), the Licensed Party shall, within
30 days of receiving such request, inform the
Requesting Party in writing whether, and if so to what
extent, any manufacturer identified by the Requesting
Party is manufacturing any Licensed Product for the
Licensed Party pursuant to the "have made" rights
granted under this Agreement.
4.5 Intergraph agrees that for the Intergraph Patents licensed
hereunder, Intergraph will not assert a claim of Indirect
Infringement against Intel, but may assert a claim of direct
infringement against a third party purchaser of an Intel
Product, where such a claim of Indirect Infringement is
based upon (a) any activity for which Intel is licensed
under this Agreement, or (b) any act by Intel providing
instructions regarding, or sample designs related to, Intel
Products. Intel agrees that notwithstanding anything to the
contrary in this Agreement, Intergraph shall have the right
to assert direct or indirect claims of infringement against
third parties for the combination of Intel Products with any
third party products.
4.6 No implied licenses are granted hereunder. Nothing
contained in this Agreement shall expressly or by
implication give either party any right to license the other
party's Patents to others. No license is granted by either
party either indirectly or by implication, estoppel, or
otherwise. Nor is any license granted hereby to third
parties (i) acquiring any item from Intel or its
Subsidiaries for the combination of Intel Products with any
third party products or (ii) acquiring any item from
Intergraph or its Subsidiaries for the combination of
Intergraph Products with any third party products.
4.7 Nothing in this Agreement shall either expressly or
impliedly give Intel the right to license Intergraph Patents
to others or Intergraph the right to license Intel Patents
to others. Nor shall the sale of any Intel Products provide
or give rise to an implied license, by estoppel or
otherwise, in favor of third parties to any Intergraph
Patents covering combinations of Intel Products with any
third party products, nor shall the sale of any Intergraph
Products provide or give rise to an implied license, by
estoppel or otherwise, in favor of third parties to any
Intel Patents covering combinations of Intergraph Products
with any third party products.
4.8 Intel hereby grants to Intergraph under Intel's Patents a
personal, non-exclusive, irrevocable and perpetual, non-
transferable, royalty-free, worldwide license, without the
right to sublicense, to:
(a) make, use, sell, (directly or indirectly), offer to
sell, import and otherwise dispose of Intergraph Products;
and
(b) make, have made, use and/or import any equipment
and practice any method or process for the manufacture, use,
import and/or sale of Intergraph Products; and
(c) have made Intergraph Products by another
manufacturer for use, import, sale, offer for sale or
disposition by Intergraph.
This license shall only apply to Intergraph and Intergraph
Products and shall not be construed to create any implied
license under the Intel Patents to any third party,
including Intergraph's customers.
4.9 Except as provided in Section 4.9(c), the parties understand
and acknowledge that the licenses granted hereunder are
intended to cover only the products of the two parties to
this Agreement, and are not intended to cover manufacturing
activities that either party may undertake on behalf of
third parties (patent laundering activities). Similarly,
the licenses provided under this Agreement are not intended
to cover services provided by the parties to the extent that
such services are provided to or on behalf of a third party
using tangible or intangible materials provided by or on
behalf of the third party. Accordingly, by way of
clarification, the following guidelines are provided to aid
the determination of whether a party's product, in the case
of Intel, is an Intel Product, or, in the case of Intergraph
is an Intergraph Product (an Intel Product and an Intergraph
Product being referred to collectively as a "Company
Product") or whether such product is disqualified from being
a Company Product because circumstances surrounding the
manufacture of the product suggest patent laundering.
(a) Products of either party (including, without
limitation, Application Specific Integrated Circuits
"ASICs" and software) that otherwise meet the
definition of Company Product are disqualified as
Company Products if such products are manufactured on
behalf of a third party from designs received in a
substantially completed form from a third party for
resale to or on behalf of that party.
(b) Products of either party (including, without
limitation, ASICs and software) that otherwise meet the
definition of Company Product are not disqualified as
Company Products under the prohibition against patent
laundering set forth in this Section if:
(1) the party selling or otherwise disposing of such
Company owns the design of such product and is
under no obligation that restricts the sale of
such Company Product; or
(2) the party selling or otherwise disposing such
Company Product has an unrestricted, royalty-free
ownership or license right to the design of the
Company Product.
(c) The guidelines set forth in this Section 4.9
restricting the definition of Intel Company Product
shall not apply to manufacturing methods and processes
as licensed hereunder pursuant to Sections 4.1(b),
4.2(b), and 4.3(b). The guidelines set forth in this
Section 4.9 restricting the definition of Intel Company
Products shall not apply to the library tools or
standard cells of the parties or their licensed
Subsidiaries that either party or any of their licensed
Subsidiaries incorporates into, or uses to manufacture
any standard or custom ASICs that Intel or its licensed
Subsidiaries manufacture for third party customers.
4.10 (a) For purposes of this Section 4.10, "Affiliate" means
any entity other than a Subsidiary that is directly or
indirectly controlled by, under common control with or that
controls the subject party. For purposes of this definition
control means direct or indirect ownership of or the right
to exercise (i) at least fifty percent (50%) of the
outstanding shares or securities entitled to vote for the
election of directors or similar managing authority of the
subject entity; or (ii) at least fifty percent (50%) of the
ownership interest representing the right to make the
decisions for the subject entity.
(b) Notwithstanding anything herein to the contrary, a
party ("First Party") shall have the limited right to
suspend the licenses granted under this Agreement to
the other party ("Second Party") with respect to sales
to an Affiliate of the Second Party if:
(1) The Affiliate is a direct or indirect customer of
the Second Party; and
(2) the Affiliate initiates a legal or administrative
proceeding against the First Party and/or any of
its Subsidiaries alleging that the First Party
infringes a patent right of the Affiliate, and
(3) the alleged infringing activity would have been
licensed had the identified patent right been
owned or controlled by the Second Party.
(c) If the First Party elects to suspend the licenses
granted under this Agreement pursuant to Section
4.10(b), the First Party shall give written notice of
such suspension to the Second Party. The suspension
shall apply only with respect to the Products of the
Second Party that are sold to such Affiliate. Such
suspension shall be effective sixty (60) days following
the date of such written notice, and shall allow the
First Party to assert a claim of infringement against
the Affiliate that brought the original claim against
the Licensing Party.
(d) The Licensing Party agrees that it shall not seek
monetary damages against the Second Party but rather
shall look to the Affiliate for monetary damages. The
First Party shall not assert a patent claim directly
against the Second Party until it has first exhausted
its legal remedies directly against the Affiliate. If
the First Party resolves its patent dispute with the
Affiliate, either through entrance of a judgment or by
settlement of the dispute, the First Party agrees that
it shall not bring a separate action against the Second
Party with respect to products sold to such Affiliate.
4.11 Intention for Subsidiaries to be Bound.
(a) Except as expressly set forth herein, the parties
intend that this Agreement shall extend to all of each
party's Subsidiaries. The parties agree that to the
extent they are not already bound, each party shall use
reasonable and diligent efforts to ensure that all such
Subsidiaries are bound by the terms of this Agreement.
(b) Each party agrees to take all steps that are reasonable
and in good faith under the circumstances to ensure
that all Patents directed to inventions that are made
by its employees and/or Patents directed to inventions
that are made by its contractors during performance of
work paid for by the party, in each case, either alone
or in conjunction with the employees and/or contractors
of one or more of its Subsidiaries or third parties (to
the extent legally possible) are licensed under this
Agreement.
(c) Notwithstanding the foregoing, however, both parties
understand and intend that there are circumstances in
which a party could reasonably agree in good faith with
an independent third party that the party would not
have rights to license and/or enforce Patents directed
to inventions developed in conjunction with employees
and or contractors of such third party. For example,
both parties understand that it could be reasonable
under the circumstances for a party to agree in good
faith not to have rights to license and/or enforce
Patents directed to inventions that arise out of: (i)
bona fide joint development projects based in
substantial part on the pre-existing technology of an
independent third party; (ii) bona fide joint
development projects undertaken with the significant
assistance of the employees and/or contractors of an
independent third party; or (iii) bona fide development
projects funded in substantial part by and for the
benefit of a state or federal government or a
university.
(d) Either party to this Agreement shall have the right to
request a written confirmation or denial from the other
party to this Agreement that a specific Subsidiary is
(or is not) bound by this Agreement. A party receiving
such a request shall provide such written confirmation
(including a full explanation in support of such
confirmation or denial) within 30 days after the
receipt of the request.
(e) In the event that neither a party nor any of its
Subsidiaries has the right to grant a license under any
particular Patent Right of the scope set forth herein,
then the license granted herein under such Patent shall
be of the broadest scope which the licensing party or
any of its Subsidiaries has the right to grant.
(f) The parties represent, warrant and covenant that they
shall not participate in the creation or acquisition of
Subsidiaries where a primary purpose of such creation
or acquisition is to extend the benefits of this
Agreement to a third party and agree that any such
attempt to extend such benefits shall not extend this
license to such third party or Subsidiary.
(g) Notwithstanding anything to the contrary contained
herein, in the event that either party or any of its
Subsidiaries obtains rights to any Patents that would
be included within the Patents licensed hereunder but
for the fact that such a license would require the
party granting such license to make payments to a third
party, such Patents shall be included within the
Intergraph Patents or the Intel Patents, as the case
may be, if the party to whom such would be licensed
under this Agreement agrees in a separate written
agreement to be bound by, and protect such grantor
against, those payment obligations.
(h) If a third party has the right to grant licenses under
a patent to a party hereto (as a "Licensee") with the
consent of the other party hereto or any of its
Subsidiaries, said other party or its Subsidiaries
shall provide said third party with any consent
required to enable said third party to license said
Licensee on whatever terms such third party may deem
appropriate. Each party, on behalf of itself and its
Subsidiaries, waives any right it may have to receive
royalties or other consideration from said third party
as a result of said third party's so licensing said
Licensee within the scope of the releases and/or
licenses granted under Section 4 of this Agreement.
4.15 Each party represents and warrants that it has the full
right and power to grant the licenses and releases herein.
4.16 In the event that neither Party nor any of its Subsidiaries
has the right to grant a license under any particular Patent
of the scope set forth herein, then the license granted
herein under such Patent shall be of the broadest scope
which the licensing party or any of its Subsidiaries has the
right to grant.
4.17 If a third party has the right to grant licenses under a
patent to a party (as a "licensee") with the consent of the
other party hereto or any of its Subsidiaries, then the
party agrees to provide the third party with any consent
required to enable the third party to license the licensee
on whatever terms such third party may deem appropriate.
The party, on behalf of itself and its Subsidiaries, waives
any right it may have to receive royalties or other
consideration from the third party as a result of the third
party's so licensing the licensee within the scope of the
releases and/or licenses granted under this Agreement.
4.18 If a party or one of its Subsidiaries ("First Party") owns
or has the right to enforce or control the enforcement of
any rights in any Patent but such First Party does not have
the right to license those rights to the other party to this
Agreement (the "Second Party") hereunder ("Restricted Patent
Rights"), then, if and to the extent that such Restricted
Patent Rights would have been licensed to the Second Party
if the First Party had the right to license such patents:
(a) the First Party, to the extent it has the right
to, grants to the products licensed hereunder of the Second
Party an immunity from suit for infringement of such
Restricted Patent Rights of a scope identical to the rights
that would have been granted hereunder if the First Party
had the right to license such Restricted Patent Rights; and
(b) the First Party shall not give its assent if that
assent is required to allow a third party entity to assert
the Restricted Patent Rights against the products licensed
of the Second Party; provided that (i) this restriction
shall be dropped if the Second Party first initiates
litigation alleging infringement of patent rights against
the holder of the Restricted Patent Rights, and (ii) in any
event the First Party shall be free to fulfill its
preexisting contractual obligations to provide assistance
and support as may be required under the relevant
contractual agreement.
4.19 In the event that a party or any of its Subsidiaries obtains
rights to any Patents that would be included within the
Patents licensed hereunder but for the fact that such a
license would require the party granting such license to
make payments to a third party, such Patents shall be
included within the Intergraph Patents or the Intel Patents,
as the case may be, if the party to whom such would be
licensed under this Agreement agrees in a separate written
agreement to be bound by, and protect such grantor against,
those payment obligations.
4.20 Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation by either of the parties
to this Agreement as to the validity, enforceability or
scope of any class or type of Patent Right; or
(b) a warranty or representation that any manufacture,
sale, lease, use or other disposition of Licensed
Products hereunder will be free from infringement of
any patent rights or other intellectual property rights
of either party or any third party; or
(c) an obligation to furnish any technical or other
information or know-how.
4.21 Intergraph covenants not to xxx Intel or Intel's
customers under the Intergraph System Patents for a product
which contains an Intel Motherboard, unless the basis for
the assertion of infringement under the Intergraph System
Patents including the Intel Product is that one or more of
the processing elements as defined by the claims of the
Intergraph System Patents is a non-Intel processing element.
4.22 All licenses granted under this Agreement are retroactive as
of the date they vest.
EACH PARTY HEREBY DISCLAIMS ANY IMPLIED WARRANTIES WITH
RESPECT TO THE PATENTS LICENSED HEREUNDER, INCLUDING WITHOUT
LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE.
5. Intergraph Licensing Program
5.1 Intel acknowledges that Intergraph's intent is to seek
payment for patent license agreements from vendors of
Computer Systems including OEM Customers. Intel agrees that
any attempt to license such OEM Customers under the
Intergraph System Patents by itself shall not be a material
breach of this Agreement. During the term of this
Agreement, Intel agrees not to interfere with any third
party licensing activity of Intergraph which does not
otherwise implicate Section 5.2. Notwithstanding the
foregoing, Intel may respond to specific inquiries from
customers for information pertaining to specific claims made
by Intergraph in any licensing request to such customer.
Intel agrees to provide Intergraph with copies of whatever
materials or documentation relating to the request which its
supplies to its customer, contemporaneously with the
dissemination of such information to Intel's customer. The
parties agree to execute an appropriate non-disclosure
agreement for the documents provided.
5.2 Intel agrees that it will not initiate, fund or assist
others in bringing or maintaining a lawsuit or any
administrative action contesting the validity,
enforceability or infringement of the Intergraph Patents
except where Intel has received a notice of indemnity which
it believes in good faith is covered by the licenses granted
hereunder, and only to the extent as is necessary to defend
against the claim of indemnity as contractually or legally
required of Intel. Nothing in this Agreement shall prevent
Intel from participating in a criminal, civil or
administrative proceeding pursuant to a subpoena or as
otherwise required by law.
5.3 Intel agrees to provide within thirty (30) days of receipt
of a written request from Intergraph, to Intel customers
designated in such written request, a letter of the form of
Exhibit A hereto. Intergraph agrees to send such written
requests to Intel no more frequently than once per calendar
quarter, which Intel customers Intergraph in good faith
intends to enter into licensing discussions with or has
already entered into such discussions. Intergraph shall not
request duplicate notices for Intel customers.
5.4 Intel agrees not to designate or refer to Intel Products
covered by this Agreement as "licensed" by Intergraph unless
it simultaneously explains that the purchase price of such
Intel Microprocessor does not include a license under the
Intergraph System Patents.
6. Releases
Subject to all of the terms of this Agreement, the parties
release each other as follows:
6.1 Intergraph Release. In further consideration of a payment
from Intel to Intergraph of the amount specified in Section
8.1., Intergraph, on behalf of itself and its Subsidiaries,
hereby releases, acquits and forever discharges Intel, and
its Subsidiaries from any and all claims or liability
asserted in the suit in the Northern District of Alabama, in
Intergraph v. Intel, CV97-N-3023-NE, with respect to
performance by Intel, prior to the Effective Date, of acts,
which had they been performed on or after the Effective
Date, would have been licensed hereunder.
6.2 Intel Release. Intel, on behalf of itself and its
Subsidiaries, hereby releases, acquits and forever
discharges Intergraph and its Subsidiaries from any and all
claims or liability asserted in the suit in the Northern
District of Alabama, in Intergraph v. Intel, CV97-N-3023-NE,
with respect to performance by Intergraph, prior to the
Effective Date, of acts, which had they been performed on or
after the Effective Date, would have been licensed
hereunder.
6.3 It is understood by the parties hereto that the
consideration for the Releases granted in this section, and
the consideration expressed elsewhere in this agreement,
reflect the fact that the release granted by Intergraph to
Intel is limited to activities that, if they had they been
performed on or after the Effective Date, would have been
licensed under the licenses expressly granted by Intergraph
to Intel in this Agreement, and that such licenses are
limited and specific to certain Intergraph Patents and
certain Intel Products, and do not create implied licenses
for any act in the past or in the future in favor of Intel's
customers and other third parties except as expressly stated
in this Agreement.
6.4 All amounts paid by hereunder are nonrefundable, even if the
validity, scope, or enforceability of any Intergraph Patent
or Intel Patent is subsequently challenged and deemed to be
held invalid, not infringed, of narrower scope, or
unenforceable.
6.5 (a) To the extent that a license vests on the
Effective Date, each party releases the other party and
its Subsidiaries from any and all claims of
infringement of its Patents arising prior to the
Effective Date to which the licenses expressly granted
under this Agreement would be a complete defense had
the cause of action or claim arisen after the Effective
Date.
(b) To the extent that a licenses vests after the Effective
Date, Intergraph releases Intel and its Subsidiaries
from any and all claims of infringement of the
Intergraph Texas Patents arising prior to the date of
such license vesting to which the licenses expressly
granted under the Texas Patents would be a complete
defense had the cause of action or claim arisen after
the date such license vests.
7. Term
7.1 The term of this Agreement shall be from April 4, 2002,
until the expiration of the last to expire of the Patents
licensed herein unless previously terminated as provided in
this Agreement.
7.2 If Intel shall fail to make the payments hereunder, and such
failure shall not be cured, and any interest due, at a rate
of one percent (1%) per month, shall not be fully paid,
within ten (10) days after written notice from Intergraph to
Intel specifying the nature of such failure, Intergraph
shall have the right to terminate this Agreement, and the
licenses granted hereunder, by giving written notice to
Intel, and such termination shall be effective on the tenth
day after the giving of such notice; provided that, upon a
termination of the licenses hereunder by Intergraph, Intel
shall thereupon be released and discharged from any further
obligation to make any payments to Intergraph under this
Agreement.
7.3 In the event this Agreement or the licenses granted
hereunder, in whole or as to any specified patent or claim,
shall be terminated pursuant to this Section 7, the
corresponding sublicenses granted to Subsidiaries of Intel
shall likewise terminate, but no notices need be given by
Intergraph to such sublicensees.
..
7.4 No termination pursuant to this Section 7, or any other
provision of this Agreement, shall relieve Intel of any
obligation or liability accrued hereunder prior to such
termination, or rescind or give rise to any right to rescind
anything done by Intel or any payments made or other
consideration given to Intergraph hereunder prior to the
time such termination becomes effective, and such
termination shall not affect in any manner any rights of
Intergraph arising under this Agreement prior to such
termination; provided that, as provided in Section 7.2, upon
any termination by Intergraph thereunder, Intel shall
thereupon be released and discharged from any further
obligation to make any payments to Intergraph under this
Agreement.
7.5 (a) Subject to Intergraph's right to terminate this
Agreement pursuant to Section 7.2 upon a failure by Intel to
make any payments due hereunder, a party may terminate, at
its option, this Agreement or the other party's rights and
licenses hereunder upon notice if the other party hereto
commits a material breach of this Agreement and does not
correct such breach within sixty (60) days after receiving
written notice complaining thereof.
(b) A party hereto may terminate, at its option, this
Agreement or the other party's rights and licenses
hereunder upon thirty (30) days written notice of
termination to the other party given at any time upon
or after:
(1) the filing by the other party of a petition
in bankruptcy or insolvency;
(2) any adjudication that the other party is
bankrupt or insolvent;
(3) the filing by the other party of any petition
or answer seeking reorganization, readjustment or
arrangement of its business under any law relating
to bankruptcy or insolvency;
(4) the appointment of a receiver for all or
substantially all of the property of the other
party;
(5) the making by the other party of any
assignment for the benefit of creditors; or
(6) the institution of any proceedings for the
liquidation or winding up of the other party's
business or for the termination of its corporate
charter.
(c) Intel may terminate, at its option, this Agreement or
Intergraph's rights and licenses under this Agreement
if Intergraph undergoes a Change of Control. For
purposes of this Section 7.5(c), "Change of Control"
shall mean a transaction or a series of related
transactions in which (i) one or more related parties
who did not previously own at least a fifty percent
(50%) interest in Intergraph obtain at least a fifty
percent (50%) interest in Intergraph, and, in the
reasonable business judgment of Intel, such change in
ownership will have a material effect on Intergraph's
business, or (ii) a party to this Agreement merges with
or transfers substantially all of its assets to a third
party in which the shareholders of such party
immediately before the transaction own less than a
fifty percent (50%) interest in the acquiring or
surviving entity immediately after the transaction, or
(iii) Intergraph acquires, by merger, acquisition of
assets or otherwise, all or any portion of another
legal entity such that either the assets or market
value of such party after the close of such transaction
are greater than one and one third (1 1/3) of the
assets or market value of such party prior to such
transaction.
(d) In the event of such termination, the rights and
licenses granted to the terminated party shall
terminate, but the rights and licenses granted to the
other shall survive such termination of this Agreement
subject to its continued compliance with the terms and
conditions of this Agreement.
(e) The provisions of Sections 1, 2, 3, 7.4, 7.5(d),
7.5(e), 8, 9, 11 and 12 will survive any termination or
expiration of this Agreement. Upon full payment of
amounts owed to Intergraph hereunder, Section 6 shall
also survive termination of this Agreement
8. Consideration
8.1 In consideration for the sale of patents to Intel in Section
3.1, the granting to Intel of the licenses in Sections 4.1
through 4.6, the release given to Intel in Section 6.1, and
the other consideration being provided to Intel as set forth
herein, Intel agrees to pay Intergraph the sum of three
hundred million dollars ($300,000,000.00) by May 1, 2002,
plus any additional compensation pursuant to the terms of
Section 2.2.
9. Communications
9.1 Payment shall be made by electronic funds transfer.
Payments shall be deemed to be made on the date of
electronic funds transfer as follows:
[ ]*
----
9.2 All notices required or permitted to be given hereunder
shall be in writing and shall be delivered by hand, or if
dispatched by prepaid air courier or by registered or
certified airmail, postage prepaid, addressed as follows:
If to Intergraph: If to Intel:
Intergraph Corporation Intel Corporation
Legal Xxxxxxxxxx, XX/XX 0000 0000 Xxxxxxx Xxxxxxx Xxxx.
Xxxxxxxxxx, Xxxxxxx 00000-0000 Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: General Counsel Attn: General Counsel
Such notices shall be deemed to have been served when
received by addressee or, if delivery is not accomplished by
reason of some fault of the addressee, when tendered for
delivery. Both party may give written notice of a change of
address, and after notice of such change has been received,
any notice or request shall thereafter be given to such
party as above provided at such changed address.
* CONFIDENTIAL INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISION.
10. Assignments
10.1 Intergraph shall not assign or grant any right under any of
the Intergraph Patents, and Intel shall not assign or grant
any right under any of the Intel Patents unless such
assignment or grant is subject to all of the terms and
conditions of this Agreement. Any attempted assignment or
grant in derogation of the foregoing shall be null and void
11. Applicable Law
11.1 This Agreement shall be construed, and the legal relations
between the parties hereto shall be determined, in
accordance with the law of the State of Delaware.
12. Miscellaneous
12.1 Nothing contained in this Agreement shall be construed as
conferring on either party any license or other right to
copy the exterior design of the products of the other party.
12.2 Nothing contained in this Agreement shall be construed as
conferring any right to use in advertising, publicity, or
other promotional activities any name, trade name, trademark
or other designation of either party hereto (including any
contraction, abbreviation or simulation of any of the
foregoing).
12.3 Nothing contained in this Agreement shall be construed as
limiting the rights which the parties have outside the scope
of the license granted hereunder, or restricting the right
of either party or any of its Subsidiaries to make, have
made, use, lease, sell, offer to sell, import, export, or
otherwise dispose of any particular product or products not
herein licensed.
12.4 Neither party nor any of its Subsidiaries shall be required
hereunder to file any patent application, or to secure any
patent or patent rights, or to maintain any patent in force,
or to provide copies of patent applications to the other
party or its Subsidiaries, or to disclose any inventions
described or claimed in such patent applications.
12.5 Neither Intergraph nor Intel shall have any obligation
hereunder to institute any action or suit against third
parties for infringement of any Patents or to defend any
action or suit brought by a third party which challenges or
concerns the validity of any Patents. Neither Intel nor
Intergraph shall have any right to institute any action or
suit against third parties for infringement of any the
other's Patents.
12.6 This Agreement will not be binding upon the parties until it
has been signed below. No amendment or modification hereof
shall be valid or binding upon the parties unless made in
writing and signed. This Agreement embodies the entire
understanding of the parties with respect to the subject
matter hereof and merges all prior oral or written
communications between them, and neither of the parties
shall be bound by any conditions, definitions, warranties,
understandings or representations with respect to the
subject matter hereof other than as expressly provided
herein.
12.7 The headings of the several Sections are inserted for
convenience of reference only and are not intended to be a
part of or to affect the meaning or interpretation of this
Agreement.
12.8 Regardless of which party may have drafted this Agreement or
any part thereof, no rule of strict construction shall be
applied against either party. If any provision of this
Agreement is determined by a court to be unenforceable,
whether by violation of any rule of law, statute, regulation
or governmental decision, the parties shall deem the
provision to be severed the provision to be severed and
deleted from this Agreement, and the remainder of the
Agreement will continue in effect.
12.9 Each party shall be responsible for the payment of its own
tax liability.
12.10 No license or immunity is granted by either party
hereto either directly or by implication, estoppel or
otherwise to any third parties acquiring items from either
party for the combination of items licensed hereunder with
other items, including other items provided by either party,
or for the use of any such combination, even if said
acquired item has no substantial use other than in
combination with other items.
12.11 Nothing in this Agreement shall be construed to grant
any third party a license to make, have made, use, sell,
offer for sale, or import Intel Products or Intergraph
Products. At all times, Intel and Intergraph retain the
right to enforce its intellectual property rights against
third parties for the infringement of any Intergraph
patents.
12.12 Confidentiality of Terms.
Neither party shall use or refer to this Agreement or any of
its provisions in any promotional activity, except that, the
parties shall cooperate in preparing and releasing an
announcement, if any, relating to this Agreement.
Except as otherwise may be required by generally accepted
accounting principles, regulatory requirements, or court
order, the specific terms of this Agreement shall be
confidential. Notwithstanding the foregoing, both parties
acknowledge that the pending litigation, and therefore the
general terms of mediation and settlement may be material
events to both Intel and Intergraph, and that each party
shall have the right to issue an appropriate press release
and/or filing with the SEC disclosing the material
provisions of this Agreement.
12.13 Anything contained in this Agreement to the contrary
notwithstanding, the obligations of the parties hereto and
of the Subsidiaries of the parties shall be subject to all
laws, present and future, of any government having
jurisdiction over the parties hereto or the Subsidiaries of
the parties, and to orders, regulations, directions or
requests of any such government.
12.14 The parties hereto shall be excused from any failure to
perform any obligation hereunder to the extent such failure
is caused by war, acts of public enemies, strikes or other
labor disturbances, fires, floods, acts of God, or any
causes of like or different kind beyond the control of the
parties.
IN WITNESS WHEREOF, the parties have caused this
Agreement to be duly signed as of the date written below.
Intel Corporation Intergraph Corporation
By /s/ F. Xxxxxx Xxxxxx Xx. By /s/ Xxxxx Xxxxx Xxxxx
---------------------------- --------------------------
F. Xxxxxx Xxxxxx Xx. Xxxxx Xxxxx Xxxxx
------------------------------ ----------------------------
Name Printed Name Printed
Sr. Vice President, General Counsel Vice President, General Counsel
----------------------------------- -------------------------------
Title Title
April 14, 2002 April 14, 2002
------------------------------ ----------------------------
Date Date
Intergraph Hardware Technologies Company
By /s/ Xxxxx Xxxxx Xxxxx
--------------------------------
Xxxxx Xxxxx Xxxxx
----------------------------------
Name Printed
General Counsel
----------------------------------
Title
April 14, 2002
----------------------------------
Date
