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Exhibit 10.14
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PATENT AND TECHNOLOGY LICENSE AGREEMENT
by and between
LUCENT TECHNOLOGIES INC.
and
LUCENT TECHNOLOGIES GRL CORP.
and
AVAYA INC.
and
AVAYA TECHNOLOGY CORP.
Dated as of October 1, 2000
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PATENT AND TECHNOLOGY LICENSE AGREEMENT
Table of Contents
ARTICLE I -- DEFINITIONS
ARTICLE II -- ACCESS AND USE OF LICENSED TECHNOLOGY
2.1 Access to Licensed Technology
2.2 Export Control
2.3 Lucent's Rights to Use Licensed Avaya Technology
2.4 Avaya's Rights to Use Licensed Lucent Technology and Licensed Corporate
Technology
2.5 Procurement
ARTICLE III -- PATENT LICENSES
3.1 Grants to Avaya
3.2 Grants to GRL
3.3 Duration and Extent of Licensees
3.4 Scopes of Licenses
3.5 Filings of Patent Applications
3.6 Joint Inventions
3.7 Disclaimer
3.8 Outside the United States
ARTICLE IV -- ASSIGNMENT OF RESTRICTED JOINT CORPORATE TECHNOLOGY
4.1 Assignment
4.2 Exception to Restriction
4.3 Access to Restricted Joint Corporate Technology
ARTICLE V -- BALANCING PAYMENTS
5.1 Payment to Lucent
ARTICLE VI -- TERMINATION
6.1 Voluntary Termination
6.2 Survival
6.3 Change of Control of, or Certain Acquisitions by Avaya
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6.4 Material Breach
ARTICLE VII -- MISCELLANEOUS PROVISIONS
7.1 Agreement Prevails
7.2 Nothing Construed
7.3 Disclaimer
7.4 Confidentiality
7.5 Counterparts; Entire Agreement; Corporate Power
7.6 Governing Law
7.7 Assignability; Successors.
7.8 Third Party Beneficiaries
7.9 Notices
7.10 Severability
7.11 Force Majeure
7.12 Publicity
7.13 Headings
7.14 Waivers of Default
7.15 Specific Performance
7.16 Amendments
7.17 Interpretation
Exhibit A -- Licensed Avaya Technology
Exhibit B -- Avaya Product Realization Technology
Exhibit C -- Licensed Corporate Technology
Exhibit D -- Licensed Lucent Technology
Exhibit E -- Lucent Product Realization Technology
Exhibit F -- Restricted Joint Corporate Technology
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PATENT AND TECHNOLOGY LICENSE AGREEMENT
THIS PATENT AND TECHNOLOGY LICENSE AGREEMENT (this "Agreement"),
effective as of October 1, 2000 (the "Effective Date"), is by and between Lucent
Technologies Inc., a Delaware corporation, with offices at 000 Xxxxxxxx Xxxxxx,
Xxxxxx Xxxx, Xxx Xxxxxx 00000 ("Lucent"), Lucent Technologies GRL Corporation, a
Delaware corporation, having an office at Suite 105, 00000 X.X. 00xx Xxxxxx,
Xxxxx Xxxxx, Xxxxxxx 00000 ("GRL"), Avaya Inc., a Delaware corporation, with
offices at 000 Xxxxx Xxxx Xxxx, Xxxxxxx Xxxxx, Xxx Xxxxxx 00000 ("Avaya"), and
Avaya Technology Corp., a Delaware corporation, with offices at Suite 105, 14645
N.W. 77th Avenue, Miami Lakes, Florida 33014, United States of America ("Avaya
IPCO").
RECITALS
A. WHEREAS, the Board of Directors of Lucent has determined that it is
in the best interests of Lucent and its stockholders to separate Lucent's
existing businesses into two independent businesses;
B. WHEREAS, Avaya and Avaya IPCO desire to receive and Lucent and GRL
are willing to grant to Avaya and Avaya IPCO certain rights to use patents and
technology retained and owned by Lucent and GRL on or after the Effective Date;
and
C. WHEREAS, Lucent and GRL desire to receive and Avaya and Avaya IPCO
are willing to grant to Lucent and GRL certain rights to use patents and
technology which is owned by Avaya and Avaya IPCO on or after the Effective
Date.
NOW, THEREFORE, in consideration of the premises and for other good and
valid consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties, intending to be legally bound, agree as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following terms in capital
letters are defined in this Article I and shall have the meaning specified
herein:
CHANGE OF CONTROL OF ANY PERSON means any of the following: (a) the
consummation of a merger, consolidation, or similar business combination
involving such Person and the securities of such Person that are outstanding
immediately prior to such transaction and which represent 100% of the combined
voting power of the then outstanding voting securities of such Person entitled
to vote generally in the election of directors ("Voting Securities") are changed
into or exchanged for cash, securities or
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property, unless pursuant to such transaction such securities are changed into
or exchanged for, in addition to any other consideration, securities of the
surviving Person or transferee that represent immediately after such
transaction, at least a majority of the combined voting power of the Voting
Securities of the surviving Person or transferee; (b) a sale or other
disposition of all or substantially all of the assets of such Person; (c) the
acquisition by any individual, entity or group (within the meaning of Section
13(d)(3) or 14(d)(2) of the Securities Exchange Act of 1934, as amended) of
beneficial ownership (within the meaning of Rule 13d-3 promulgated under such
Act) of 40% or more of the combined voting power of the then outstanding Voting
Securities; or (d) individuals who, as of the Distribution Date, constitute the
Board of Directors of such Person (the "Incumbent Board") cease for any reason
to constitute at least a majority of such Board; provided, however, that any
individual becoming a director subsequent to the Distribution Date (other than
any such individual whose initial assumption of office occurs as a result of an
actual or threatened election contest with respect to the election or removal of
directors or other actual or threatened solicitation of proxies or consents by
or on behalf of any Person other than the Board) whose election or nomination
for election by the stockholders of such Person was approved by a vote of at
least a majority of the directors then comprising the Incumbent Board shall be
considered as though such individual were a member of the Incumbent Board.
COMMON SUPPORT FUNCTION SOFTWARE means those computer programs in
source and object code forms, including their respective associated
documentation, listed on Schedule A of the Technology Assignment and Joint
Ownership Agreement, dated as of September 30, 2000, by and between Lucent and
Avaya.
COPYRIGHTS mean any original works of authorship fixed in any tangible
medium of expression as set forth in 17 U.S.C. Section 101 et. seq.
CORPORATE TECHNOLOGY means any and all portions of Corporation
Technology other than Lucent Technology, Avaya Technology, and Common Support
Function Software. The term includes, but is not limited to, basic research.
DISTRIBUTION DATE shall have the meaning defined in the Contribution
and Distribution Agreement, dated as of September 30, 2000, by and between
Lucent and Avaya.
CORPORATION TECHNOLOGY means any and all Technology existing as of the
Distribution Date which is owned by, and was developed by or for, or purchased
by Lucent and its Subsidiaries, including any of its business units and
divisions. The term includes any and all Technology owned or controlled by any
of Lucent's Subsidiaries under which Lucent has the right to grant any of the
right-to-use licenses of the type and on the terms herein granted.
AVAYA BUSINESS shall have the meaning set forth in the Contribution and
Distribution Agreement, dated as of September 30, 2000, by and between Lucent
and Avaya.
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AVAYA IPCO'S PATENTS means every patent including any reissues or
reexaminations thereof (an including utility models but excluding design patents
and design registrations) issued in any country of the world, which is owned or
controlled by Avaya IPCO or any of its Related Companies and issued on, or
claiming priority from, an application filed in any country of the world within
two (2) years after the Effective Date, with respect to which and to the extent
that Avaya IPCO or any of its Related Companies has a right, as of the Effective
Date or thereafter, to grant the licenses granted herein.
AVAYA PRODUCT REALIZATION TECHNOLOGY means any and all portions of
Avaya Technology listed in the attached Exhibit B.
AVAYA TECHNOLOGY means any and all portions of Corporation Technology
existing as of the Distribution Date which were developed by or for, or
purchased by the Avaya Business. The term includes Licensed Avaya Technology,
and Avaya Product Realization Technology, but shall not include Lucent
Technology, Common Support Function Software or Corporate Technology.
GOVERNMENTAL AUTHORITY means any federal, state, local, foreign or
international court, government, department, commission, board, bureau, agency,
official or other regulatory, administrative or governmental authority.
GRL'S PATENTS means every patent including any reissues or
reexaminations thereof (an including utility models but excluding design patents
and design registrations) issued in any country of the world, which is owned or
controlled by GRL or any of its Related Companies and issued on, or claiming
priority from, an application filed in any country of the world within two (2)
years after the Effective Date, with respect to which and to the extent that GRL
or any of its Related Companies has a right, as of the Effective Date or
thereafter, to grant the licenses granted herein. Notwithstanding the foregoing,
the term GRL's Patents does not include Avaya's Patents.
JOINT CORPORATE TECHNOLOGY means those portions of Corporate Technology
listed on Schedule B of the Technology Assignment and Joint Ownership Agreement,
dated as of September 30, 2000, by and between Lucent and Avaya.
LICENSED CORPORATE TECHNOLOGY means those portions of Corporate
Technology listed in the attached Exhibit C.
LICENSED AVAYA TECHNOLOGY means only those items of Avaya Technology
listed in the attached Exhibit A.
LICENSED LUCENT TECHNOLOGY means only those items of Lucent Technology
listed in the attached Exhibit D.
LICENSED TECHNOLOGY, as to Lucent, means Licensed Avaya Technology, and
as to Avaya, means Licensed Lucent Technology or Licensed Corporate Technology.
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LUCENT BUSINESS shall have the meaning set forth in the Contribution
and Distribution Agreement, dated as of September 30, 2000, by and between
Lucent and Avaya.
LUCENT COMPETITOR means any person or entity that competes with Lucent
in the provision of telecommunications systems, services, and equipment,
including the provision of software and semiconductive devices.
LUCENT TECHNOLOGY means any and all portions of Corporation Technology
existing as of the Distribution Date, which were developed by or for, or
purchased by the Lucent Business. The term includes Licensed Lucent Technology,
and Lucent Product Realization Technology, but shall not include Avaya
Technology, Common Support Function Software or Corporate Technology.
LUCENT PRODUCT REALIZATION TECHNOLOGY means those items of Lucent
Technology listed in the attached Exhibit E.
MASK WORKS means any mask work, registered or unregistered, as defined
in 17 U.S.C. Section 901.
PERSON means an individual, a general or limited partnership, a
corporation, a trust, a joint venture, an unincorporated organization, a limited
liability entity, any other entity and any Governmental Authority.
RELATED COMPANIES means (i) with respect to GRL, Lucent, Subsidiaries
of either GRL or Lucent (only for so long as they remain Subsidiaries), (ii)
with respect to Lucent, Subsidiaries of Lucent, only for so long as they remain
Subsidiaries, (iii) with respect to Avaya IPCO, Avaya, and Subsidiaries of
either Avaya IPCO or Avaya (only for so long as they remain Subsidiaries), and
(iv) with respect to Avaya, Subsidiaries of Avaya, only for so long as they
remain Subsidiaries, and any other company so designated and agreed to in a
writing signed by the relevant parties. Solely for purposes of this definition,
Avaya and its Subsidiaries shall be deemed not to be Related Companies or
Subsidiaries of Lucent.
RESTRICTED JOINT CORPORATE TECHNOLOGY means the trade secrets, know
how, and computer programs (in source and object code forms), listed in the
attached Exhibit F.
SUBSIDIARY of a company means a corporation or other legal entity (i)
the majority of whose shares or other securities entitled to vote for election
of directors (or other managing authority) is now or hereafter controlled by
such company either directly or indirectly; or (ii) which does not have
outstanding shares or securities but the majority of whose ownership interest
representing the right to manage such corporation or other legal entity is now
or hereafter owned and controlled by such company either directly or
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indirectly; but any such corporation or other legal entity shall be deemed to be
a Subsidiary of such company only as long as such control or ownership and
control exists.
TECHNOLOGY means any and all technical information, computer or other
apparatus programs, specifications, drawings, records, documentation, works of
authorship or other creative works, ideas, knowledge or data. The term
Technology includes Copyrights, Mask Works and any other intellectual property
right, but does not include any trademark, trade name, trade dress or service
xxxx, or any patent applications on inventions, discoveries or improvements, or
any patents that may be granted or have been granted thereon.
ARTICLE II
ACCESS AND USE OF LICENSED TECHNOLOGY
2.1 ACCESS TO LICENSED TECHNOLOGY. During a period beginning on the
Effective Date and ending on December 31, 2000, each party shall have the right
to access and to copy any and all portions of the Licensed Technology in
possession of the other party. Such access and copying shall be in accordance
with a reasonable request and schedule to be mutually agreed upon between the
party in possession of the Licensed Technology that is requested and the
requesting party. All costs associated with the assembling, copying and
delivering of such Licensed Technology shall be borne by the requesting party.
2.2 EXPORT CONTROL. The parties acknowledge that any software and
technical information provided under this Agreement are subject to U.S. export
laws and regulations and any use or transfer of such software and technical
information must be authorized under those laws and regulations. The parties
agree that they will not use, distribute, transfer, or transmit the software or
technical information (even if incorporated into other products) except in
compliance with U.S. export regulations. If requested by another party, each
party also agrees to sign written assurances and other export-related documents
as may be required for the other party to comply with U.S. export regulations.
2.3 LUCENT'S RIGHTS TO USE LICENSED AVAYA TECHNOLOGY. (a) Subject to
the restrictions specified in this Section 2.3, Lucent and its Related Companies
shall each have a personal, worldwide, nonexclusive, royalty-free, and
non-transferable right to use the Licensed Avaya Technology for the businesses
in which Lucent or any of its Related Companies are now or hereafter engaged.
(b) Lucent's right to use includes the right of Lucent and its Related
Companies to copy, modify and improve any portion of the Licensed Avaya
Technology. No right is granted hereunder to Lucent or its Related Companies to
sublicense any of the Licensed Avaya Technology to any third party, other than
the sublicensing of software in object code form in connection with the sale of
Lucent products or services.
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(c) Notwithstanding any other provision, neither Lucent nor any of its
Related Companies shall have the right to access, copy or use, in whole or in
part, for any purpose, any Avaya Product Realization Technology without the
prior written consent of Avaya.
(d) Notwithstanding the provisions of Section 2.3(b), Lucent's rights
to use the "Octel Messaging Technology" listed in Appendix A includes the right
of Lucent and its Related Companies to sublicense any of such technology in
source code form to any third party for any and all purposes. For purposes of
clarity and not limitation, all rights granted to Lucent under such "Octel
Messaging Technology" shall be irrevocable.
2.4 AVAYA'S RIGHTS TO USE LICENSED LUCENT TECHNOLOGY AND LICENSED
CORPORATE TECHNOLOGY. (a) Subject to the restrictions specified in this Section
2.4, Avaya and its Related Companies shall each have a personal, worldwide,
nonexclusive, royalty-free and non-transferable right to use the Licensed Lucent
Technology and the Licensed Corporate Technology for the businesses in which
Avaya or any of its Related Companies are now or hereafter engaged.
(b) Avaya's right to use includes the right of Avaya and its Related
Companies to copy, modify and improve any portion of Licensed Lucent Technology
and the Licensed Corporate Technology. No right is granted hereunder to Avaya or
its Related Companies to sublicense any of Licensed Lucent Technology or
Licensed Corporate Technology to any third party, other than the sublicensing of
software in object code form in connection with the sale of Avaya products or
services.
(c) Notwithstanding any other provision, neither Avaya nor any of its
Related Companies shall have the right to access, copy or use, in whole or in
part, for any purpose, any Lucent Product Realization Technology, without the
prior written consent of Lucent, and then only to support work for or on behalf
of Lucent.
2.5 PROCUREMENT. (a) As an attribute to each party's rights to use
Licensed Technology, and subject to the restrictions specified in Sections 2.3
and 2.4, each party may disclose to any of its suppliers, prospective suppliers
or third party joint developers (under appropriate joint development agreements)
only those portions of Licensed Technology that are reasonably necessary for the
procurement by such party of components, subsystems, subassemblies, products
and/or services of the businesses of such party.
(b) Each party agrees that it will not make any portion of Licensed
Technology available to any such supplier, prospective supplier, or joint
developer except under procurement terms and conditions (including
confidentiality, use and disclosure restrictions) normally used by such party to
protect its own proprietary information of a similar nature.
(c) The procurement rights granted hereunder to each one of the parties
under this Section 2.5 shall not be exercised by one party in a manner such that
the exercise of
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such one party's procurement rights is a sham to effect the licensing of another
party's Licensed Technology or any portion thereof, to a third party and not for
bona fide business purposes of such one party.
(d) Each party agrees that prior to the disclosure of any portion of
Licensed Technology under this Section 2.5, all proprietary information of the
other parties shall be expunged. No later than December 31, 2000, the parties
will agree on acceptable procedures to achieve such expungement.
ARTICLE III
PATENT LICENSES
3.1 GRANTS TO AVAYA. (a) GRL grants to Avaya IPCO, under GRL's Patents,
worldwide, personal, nonexclusive, royalty-free and non-transferable licenses to
make, have made (subject to 3.1(b)), use, lease, sell, offer for sale and import
any and all products and services of the businesses in which Avaya or any of its
Related Companies is now or hereafter engaged.
(b) The right of Avaya IPCO to have product made pursuant to this
Agreement is not limited to products custom designed by or for Avaya IPCO. Such
"have made" rights shall include the right to have "off the shelf" products made
for or procured by Avaya IPCO. The "have made" rights shall not be exercised by
Avaya in a manner such that the exercise of those rights is a sham to sublicense
GRL's Patents to a third party and not for a bona fide business purpose of Avaya
IPCO.
(c) GRL hereby further grants to Avaya a sublicense under any and all
patent license rights, with respect to which GRL has received from any third
party pursuant to any license agreement a right to sublicense (but only to the
extent that GRL has a right to grant such a sublicense without payment of
royalties), to make, have made, use, lease, offer to sell, sell, and import any
and all products and services.
3.2 GRANTS TO GRL. (a) Avaya IPCO grants to GRL, under Avaya IPCO's
Patents, worldwide, personal, nonexclusive, royalty-free and non-transferable
licenses to make, have made (subject to 3.2(b)), use, lease, sell, offer for
sale and import any and all products and services of the businesses in which GRL
or any of its Related Companies is now or hereafter engaged.
(b) The right of GRL to have product made pursuant to this Agreement is
not limited to products custom designed by or for GRL. Such "have made" rights
shall include the right to have "off the shelf" products made for or procured by
GRL. The "have made" rights shall not be exercised by GRL in a manner such that
the exercise of those rights is a sham to sublicense Avaya's Patents to a third
party and not for a bona fide business purpose of GRL.
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3.3 DURATION AND EXTENT OF LICENSES. Subject to Article VI, all
licenses granted herein as to any party's patents shall continue for the entire
unexpired term of such patents.
3.4 SCOPE OF LICENSES. (a) The licenses granted herein include
licenses to convey to any customer of the grantee, with respect to any licensed
product which is sold or leased by such grantee to such customer, rights to use
and resell such licensed product as sold or leased by such grantee (whether or
not as part of a larger combination); provided, however, that no rights may be
conveyed to customers with respect to any invention which is directed to (1) a
combination of such licensed products(s) (as sold or leased) with any other
product that is not a licensed product, except to the extent that the licensed
product(s) embodies a substantial and significant portion of the invention, (2)
a method or process other than a method or process the inventive steps of which
are implemented primarily by the licensed product(s) in the operation of such
licensed products(s) or (3) a method or process involving the use of a licensed
product to manufacture any other product and to test any such manufactured
product.
(b) Licenses granted herein are not to be construed: (i) as
consent by the grantor to any act which may be performed by the grantee, except
to the extent impacted by a patent licensed herein to the grantee, (ii) except
as otherwise specifically provided under Section 3.4(a), a waiver of a party's
(or any of its Related Companies') rights against any third party with respect
to any infringement or (iii) except to the extent specified in Section 3.4(a),
to include licenses to contributorily infringe or induce infringement under U.S.
law or a foreign equivalent thereof.
(c) The grant of each license hereunder to each party includes the
right to grant sublicenses within the scope of such license to a party's Related
Companies for so long as they remain Related Companies of such party. Any such
sublicense may be made effective retroactively, but not prior to the Effective
Date, nor prior to the sublicensee's becoming a Related Company of such party.
3.5 FILINGS OF PATENT APPLICATIONS. Each party agrees to file
patent applications within the two (2) year period commencing on the Effective
Date in a timely manner as determined by generally accepted good patent filing
practices and as though this Agreement were not in existence between the
parties. The dispute resolution provisions of Article V shall apply to any
allegation by one party that another party hereto has purposely delayed its
patent filings primarily to avoid providing the licenses and rights granted
hereunder.
3.6 JOINT INVENTIONS. (a) There are countries (not including the
United States) which require the express consent of all inventors or their
assignees to the grant of licenses or rights under patents issued in such
countries for joint inventions.
(b) Each party shall give such consent, or shall use its
reasonable best efforts to obtain such consent from its Related Companies, its
employees or employees of any of its Related Companies, as required to make full
and effective any such licenses and rights
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respecting any joint invention granted to a grantee hereunder by such party and
by another licensor of such grantee.
(c) Each party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents are necessary
to make full and effective such licenses and rights respecting any joint
invention purported to be granted by it hereunder. If, in spite of such
reasonable steps, such party is unable to obtain the requisite consents from
such third parties, the resulting inability of such party to make full and
effective its purported grant of such licenses and rights shall not be
considered to be a breach of this Agreement.
3.7 DISCLAIMER. No party or any of its Related Companies makes any
representation, extends any warranty of any kind, assumes any responsibility or
obligation whatsoever, or confers any right by implication, estoppel or
otherwise, other than the licenses, rights and warranties herein expressly
granted.
3.8 OUTSIDE THE UNITED STATES. (a) There are countries in which
the owner of an invention is entitled to damages, compensation or other monetary
award for another's unlicensed manufacture, sale, lease, use or importation
involving such invention prior to the date of issuance of a patent for such
invention but on or after a certain earlier date, hereinafter referred to as the
invention's "protection commencement date" (e.g., the date of publication of
allowed claims or the date of publication or "laying open" of the filed patent
application). In some instances, other conditions precedent must also be
fulfilled (e.g., knowledge or actual notification of the filed patent
application). The parties agree that (i) an invention which has a protection
commencement date in any such country may be used in such country pursuant to
the terms of this Agreement on and after any such date, and (ii) all such
conditions precedent are deemed satisfied by this Agreement.
(b) There may be countries in which a party hereto may have, as a
consequence of this Agreement, rights against third party infringers of another
party's patents licensed hereunder. Each party hereto hereby waives any such
right it may have by reason of such third party's infringement or alleged
infringement of another party's patents.
(c) Each party hereto hereby agrees to register or cause to be
registered, to the extent that such party reasonably determines that
registration or recordation is necessary under applicable law, and without
expense to the other party or any of its Related Companies, any agreements
wherein sublicenses are granted by it under the other party's patents licensed
hereunder. Each party hereto hereby waives any and all claims or defenses,
arising by virtue of the absence of such registration, that might otherwise
limit or affect its obligations to the other party.
ARTICLE IV
ASSIGNMENT OF RESTRICTED JOINT CORPORATE TECHNOLOGY
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4.1 ASSIGNMENT. Lucent hereby irrevocably transfers and assigns
to Avaya an undivided one-half (l/2), interest in the Restricted Joint Corporate
Technology. Lucent and Avaya shall each jointly own an equal, undivided,
one-half (l/2) interest in the Restricted Joint Corporate Technology, with no
duty to account to the other or any exploitation of such jointly-owned
Restricted Joint Corporate Technology. Avaya agrees that it shall not have any
right to, and will not (1) disclose the Restricted Joint Corporate Technology to
any Lucent Competitor, or (2) authorize the use of the Restricted Joint
Corporate Technology by any Lucent Competitor; provided, however, that Avaya
shall not be precluded from selling products or licensing software (in object
code form), which include Restricted Joint Corporate Technology. Avaya agrees
that it will not make any portion of the Restricted Joint Corporate Technology
available to any third party except under confidentiality terms and conditions
normally used by Avaya to protect its own proprietary information of a similar
nature.
4.2 EXCEPTION TO RESTRICTION. Lucent and Avaya agree that the
restrictions in Section 4.1 on Avaya's rights under the Restricted Joint
Corporate Technology shall not apply to any Restricted Joint Corporate
Technology that Avaya actually incorporates into Avaya products, or has
documented, formal and active plans to incorporate into Avaya products, for so
long as Avaya manufactures, sells, or actively develops such products.
4.3 ACCESS TO RESTRICTED JOINT CORPORATE TECHNOLOGY. During a
period beginning on the Effective Date and ending on December 31, 2000, Avaya
shall have the right to access and to copy any and all portions of the
Restricted Joint Corporate Technology in possession of Lucent. Such access and
copying shall be in accordance with a reasonable request and schedule to be
mutually agreed upon between Avaya and Lucent. All costs associated with the
assembling, copying and delivering of such Restricted Joint Corporate Technology
shall be borne by Avaya.
ARTICLE V
BALANCING PAYMENTS
5.1 PAYMENT TO GRL. In consideration for the balance of
licenses and rights exchanged hereunder by the parties, Avaya or Avaya IPCO
shall pay to GRL a lump sum amount of ___________ ($________) within sixty (60)
days of execution of this Agreement by all parties. Neither such sum nor any
portion thereof shall be refundable or creditable to Avaya or Avaya IPCO. No
other payments or royalties shall be due from or to any other party under this
Agreement.
ARTICLE VI
TERMINATION
6.1 VOLUNTARY TERMINATION. By written notice to a party,
another party may voluntarily terminate all or a specified portion of the
licenses and rights granted to it
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hereunder by such granting party. Such notice shall specify the effective date
of such termination and shall clearly specify any affected patent, invention,
product or service.
6.2 SURVIVAL. (a) If a company ceases to be a Related Company of a
party, licenses and rights granted to the other parties hereunder with respect
to patents of such company on applications filed prior to the date of such
cessation shall not be affected by such cessation.
(b) Any voluntary termination of licenses and rights of a party
under Section 6.1 shall not affect such party's licenses and rights with respect
to any licensed product made or service furnished prior to such termination, and
shall not affect the licenses and rights granted to the other parties hereunder.
6.3 CHANGE OF CONTROL OF, OR CERTAIN ACQUISITIONS BY AVAYA. In the
event of a Change of Control of Avaya, or in the event that Avaya acquires any
Person that has a market value greater than fifty percent (50%) of Avaya's
market value at the time of acquisition, then, all patent licenses and
patent-related rights granted to Avaya hereunder shall extend only to a specific
annual volume of products and services which are of a kind comparable to those
offered by Avaya prior to such Change of Control or acquisition. Such specific
volume of products and services shall not exceed the volume of corresponding
licensed products and services of Avaya prior to such Change of Control or
acquisition.
6.4 MATERIAL BREACH. No party may unilaterally terminate this
Agreement, or any licenses granted hereunder, for a material breach of this
Agreement by another party, provided, however, that each party shall retain any
remedies for such breach that it may be entitled to in a court of law or equity.
ARTICLE VII
MISCELLANEOUS PROVISIONS
7.1 AGREEMENT PREVAILS. This Agreement shall prevail in the event
of any conflicting terms or legends that may appear on any portion of the
Licensed Technology.
7.2 NOTHING CONSTRUED. Neither the execution of this Agreement nor
anything in it or in the Licensed Lucent Technology, Licensed Corporate
Technology and Licensed Avaya Technology shall be construed as an obligation
upon any party or its Related Companies to furnish to any other party or its
Related Companies, any assistance of any kind whatsoever, or any information
other than the portion of Licensed Lucent Technology, Licensed Corporate
Technology and Licensed Avaya Technology, as applicable, requested pursuant to
Section 2.1, or to revise, supplement or elaborate upon the Licensed Lucent
Technology, Licensed Corporate Technology and Licensed Avaya Technology.
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7.3 DISCLAIMER. NO PARTY OR ANY OF ITS RELATED COMPANIES MAKES ANY
REPRESENTATION, EXTENDS ANY WARRANTY OF ANY KIND, ASSUMES ANY RESPONSIBILITY OR
OBLIGATION WHATSOEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR
OTHERWISE, OTHER THAN THE RIGHTS AND WARRANTIES HEREIN EXPRESSLY GRANTED.
7.4 CONFIDENTIALITY. (a) Subject to Section 7.4(d), each of
Lucent, GRL, Avaya, and Avaya IPCO agrees to hold, and to cause its respective
directors, officers, employees, agents, accountants, counsel and other advisors
and representatives to hold, in strict confidence, with at least the same degree
of care that applies to such party's confidential and proprietary information,
all information of another party that is either in its possession or furnished
by one party to the other or its respective directors, officers, employees,
agents, accountants, counsel and other advisors and representatives at any time
pursuant to this Agreement or otherwise, and shall not use any such information
other than for the purposes of performing its obligations under this Agreement,
except, in each case, to the extent that such information has been (i) in the
public domain through no fault of such party or any of their respective
directors, officers, employees, agents, accountants, counsel and other advisors
and representatives, (ii) later lawfully acquired from other sources by such
party which sources are not themselves bound by a confidentiality obligation, or
(iii) independently generated without reference to any proprietary or
confidential information of the other party.
(b) Each party agrees not to release or disclose, or permit to be
released or disclosed, any such information to any other person, except its
directors, officers, employees, agents, accountants, counsel and other advisors
and representatives who need to know such information for purposes of performing
such party's obligations under this Agreement (who shall be advised of their
obligations hereunder with respect to such information), except as specified in
Section 2.5 or in compliance with Section 7.4(d) or with the prior written
consent of the other party.
(c) Without limiting the foregoing, when any information is no longer
needed for the purposes contemplated by this Agreement, each party will promptly
after request of a furnishing party either return to the furnishing party all
information in a tangible form (including all copies thereof and all notes,
extracts or summaries based thereon) or certify to the furnishing party that it
has destroyed such information (and such copies thereof and such notes, extracts
or summaries based thereon).
(d) In the event that any party (the "disclosing party") either
determines on the advice of its counsel that it is required to disclose any
information pursuant to applicable law or receives any demand under lawful
process or from any governmental authority to disclose or provide information of
any other party that is subject to the confidentiality provisions hereof, such
disclosing party shall notify the other party prior to disclosing or providing
such information and shall cooperate at the expense of the other party in
seeking any reasonable protective arrangements requested by such other party.
Subject to the foregoing, the person that received such request may thereafter
disclose or provide information to the extent required by such law (as so
advised by counsel) or by lawful process or such governmental authority.
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7.5 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER. (a) This Agreement
may be executed in one or more counterparts, all of which shall be considered
one and the same agreement.
(b) This Agreement and any exhibits, schedules and appendices hereto
contain the entire agreement between the parties with respect to the subject
matter hereof, supersede all previous agreements, negotiations, discussions,
writings, understandings, commitments and conversations with respect to such
subject matter and there are no agreements or understandings between the parties
other than those set forth or referred to herein.
(c) Each party represents as follows:
(i) each has the requisite corporate or other power and
authority and has taken all corporate or other action necessary in
order to execute, deliver and perform this Agreement and to consummate
the transactions contemplated hereby; and
(ii) this Agreement has been duly executed and delivered by it
and constitutes a valid and binding agreement of it enforceable in
accordance with the terms thereof.
7.6 GOVERNING LAW. This Agreement shall be governed by and construed
and interpreted in accordance with the laws of the State of New York applicable
to contracts to be performed solely within the State of New York, as to all
matters, including matters of validity, construction, effect, enforceability,
performance and remedies.
7.7 ASSIGNABILITY; SUCCESSORS. (a) This Agreement shall be binding upon
and inure to the benefit of the parties hereto and their respective successors
and assigns; provided, however, that a party-grantee may not assign this
Agreement, in whole or in part, or its respective rights or obligations without
the prior written consent of the party-grantor except as provided in subsection
(b) below.
(b) By the provision of notice thereof in accordance with this
Agreement, a party may assign this Agreement and its rights and obligations
hereunder, either in whole or in part, to any entity that is, or that was
immediately preceding such assignment, a current Subsidiary, business unit,
division or other Related Company of such party, in each case that is the
successor to the business and assets of any such party that relates to this
Agreement.
(c) If Lucent, Avaya or any of their Related Companies, divests a
portion of its business and such divested business continues operation as a
separately identifiable business, then the licenses and rights granted hereunder
to the divesting party may be sublicensed to such divested separate business
without the consent of the other party, but only to the extent and for the time
the divested business functions as a separately
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identifiable business. With respect to patent licenses, such sublicenses shall
further be limited to products and services of the kind provided by the divested
business prior to its divestiture and not to any products or services of any
entity which acquires the divested business. With respect to all other
intellectual property licenses herein, such sublicenses shall further be limited
to products and services of the kind provided or under development by the
divested business prior to its divestiture and not to any other category of
products or services of any entity which acquires the divested business. As used
herein, the term "other category of products or services" of an acquiring entity
shall mean only those products and services which are not of the kind or type
provided by the divested business prior to its divestiture. This Section 7.7(c)
shall apply regardless of whether the business is divested by a distribution to
existing shareholders, a sale of assets or as a sale of a legal entity (e.g.,
sale of a Subsidiary). The sublicensing rights specified herein shall include
any business whose acquisition is after the Effective Date, provided the
acquisition of such business was not a sham for the purpose of extending rights
to the acquired (and then divested) business.
7.8 THIRD PARTY BENEFICIARIES. The provisions of this Agreement are
solely for the benefit of the parties and are not intended to confer upon any
person except the parties any rights or remedies hereunder, and there are no
third party beneficiaries of this Agreement, and this Agreement shall not
provide any third person with any remedy, claim, liability, reimbursement, claim
of action or other right in addition to those existing without reference to this
Agreement.
7.9 NOTICES. All notices or other communications under this Agreement
shall be in writing and shall be deemed to be duly given when (a) delivered in
person or (b) deposited in the United States mail or private express mail,
postage prepaid, addressed as follows:
If to Lucent, to: Lucent Technologies Inc.
000 Xxxxx Xxxx
Xxxxxxx Xxxxxx, Xxx Xxxxxx 00000-0000
Attn: President-Intellectual Property Business
If to Avaya to: Avaya Inc.
000 Xxxxx Xxxx Xxxx
Xxxxxxx Xxxxx, Xxx Xxxxxx 00000
Attn: Vice President-Law,
Intellectual Property Matters
If to GRL, to: Lucent Technologies GRL Corporation
Suite 105
14645 N.W. 00xx Xxxxxx
Xxxxx Xxxxx, Xxxxxxx 00000
Attn: Contract Administrator
Intellectual Property Organization
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If to Avaya IPCO to: ______________________________
Any party may, by notice to the other party, change the address to which such
notices are to be given.
7.10 SEVERABILITY. If any provision of this Agreement or the
application thereof to any person or circumstance is determined by a court of
competent jurisdiction to be invalid, void or unenforceable, the remaining
provisions hereof, or the application of such provision to persons or
circumstances or in jurisdictions other than those as to which it has been held
invalid or unenforceable, shall remain in full force and effect and shall in no
way be affected, impaired or invalidated thereby, so long as the economic or
legal substance of the transactions contemplated hereby or thereby, as the case
may be, is not affected in any manner adverse to any party. Upon such
determination, the parties shall negotiate in good faith in an effort to agree
upon such a suitable and equitable provision to effect the original intent of
the parties.
7.11 FORCE MAJEURE. Except with respect to payment obligations
hereunder, no party shall be deemed in default of this Agreement to the extent
that any delay or failure in the performance of its obligations under this
Agreement results from any cause beyond its reasonable control and without its
fault or negligence, such as acts of God, acts of civil or military authority,
embargoes, epidemics, war, riots, insurrections, fires, explosions, earthquakes,
floods, unusually severe weather conditions, labor problems or unavailability of
parts or raw materials, or, in the case of computer systems, any failure in
electrical or air conditioning equipment. In the event of any such excused
delay, the time for performance shall be extended for a period equal to the time
lost by reason of the delay.
7.12 PUBLICITY. Each of Lucent and Avaya shall consult with each other
prior to issuing any press releases or otherwise making public statements with
respect to this Agreement or the transactions contemplated hereby. In addition,
neither party shall issue or release for publication any articles, advertising,
or publicity materials relating to Licensed Technology of the other party under
this Agreement or mentioning or implying the name, trademarks, logos, trade
name, service xxxx or other company identification of the other party or any of
its affiliates or any of its personnel without the prior written consent of the
other party.
7.13 HEADINGS. The article, section and paragraph headings contained in
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement.
7.14 WAIVERS OF DEFAULT. Waiver by any party of any default by the
other party of any provision of this Agreement shall not be deemed a waiver by
the waiving party of any subsequent or other default, nor shall it prejudice the
rights of the other party.
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7.15 SPECIFIC PERFORMANCE. In the event of any actual or threatened
default in, or breach of, any of the terms, conditions and provisions of this
Agreement, 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
of its rights under this Agreement, 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, are 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.
7.16 AMENDMENTS. No provision of this Agreement shall be deemed waived,
amended, supplemented or modified by any party, unless such waiver, amendment,
supplement or modification is in writing and signed by the authorized
representative of the party against whom it is sought to enforce such waiver,
amendment, supplement or modification.
7.17 INTERPRETATION. Words in the singular shall be held to include the
plural and vice versa and words of one gender shall be held to include the other
genders as the context requires. The terms "hereof," "herein," and "herewith"
and words of similar import shall, unless otherwise stated, be construed to
refer to this Agreement as a whole (including all of the schedules, exhibits and
appendices hereto) and not to any particular provision of this Agreement.
Article, section, exhibit, schedule and appendix references are to the articles,
sections, exhibits, schedules and appendices to this Agreement unless otherwise
specified. The word "including" and words of similar import when used in this
Agreement shall mean "including, without limitation," unless the context
otherwise requires or unless otherwise specified. The word "or" shall not be
exclusive. Unless expressly stated to the contrary in this Agreement, all
references to "the date hereof," "the date of this Agreement," "hereby" and
"hereupon" and words of similar import shall all be references to the Effective
Date, regardless of any amendment or restatement hereof.
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IN WITNESS WHEREOF, the parties have caused this PATENT AND TECHNOLOGY
LICENSE AGREEMENT to be executed in four originals by their duly authorized
representatives as of the Effective Date.
LUCENT TECHNOLOGIES INC.
By:___________________________
Name:
Title:
LUCENT GRL CORPORATION
By:___________________________
Name:
Title:
AVAYA INC.
By:___________________________
Name:
Title:
AVAYA TECHNOLOGY CORP.
By:___________________________
Name:
Title:
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