EX-10.4 8 d223180dex104.htm EX-10.4 INTELLECTUAL PROPERTY MATTERS AGREEMENT BY AND BETWEEN VARIAN MEDICAL SYSTEMS, INC. AND VAREX IMAGING CORPORATION DATED AS OF [●]
Exhibit 10.4
INTELLECTUAL PROPERTY MATTERS AGREEMENT
BY AND BETWEEN
VARIAN MEDICAL SYSTEMS, INC.
AND
VAREX IMAGING CORPORATION
DATED AS OF [●]
TABLE OF CONTENTS
ARTICLE I DEFINITIONS | 1 | |||||
Section 1.01 | Definitions | 1 | ||||
ARTICLE II GRANT OF LICENSE | 7 | |||||
Section 2.01 | Grant of License | 7 | ||||
Section 2.02 | Sublicensing | 7 | ||||
Section 2.03 | Deliveries; Escrow | 8 | ||||
Section 2.04 | Destruction | 9 | ||||
Section 2.05 | Improvements | 10 | ||||
Section 2.06 | Retained Rights | 10 | ||||
ARTICLE III COVENANTS | 11 | |||||
Section 3.01 | No Challenge to Title | 11 | ||||
Section 3.02 | No Conflicting Grants | 11 | ||||
Section 3.03 | Confidentiality | 11 | ||||
ARTICLE IV PROSECUTION, MAINTENANCE, ENFORCEMENT AND DEFENSE | 12 | |||||
Section 4.01 | Prosecution and Maintenance | 12 | ||||
Section 4.02 | Enforcement and Defense | 12 | ||||
Section 4.03 | Third Party Actions | 13 | ||||
ARTICLE V BANKRUPTCY | 13 | |||||
ARTICLE VI TERMINATION | 13 | |||||
Section 6.01 | Termination for Material Breach | 13 | ||||
Section 6.02 | Termination Upon Bankruptcy | 14 | ||||
Section 6.03 | Termination by Licensee | 14 | ||||
Section 6.04 | Effect of Termination; Survival | 14 | ||||
ARTICLE VII GROUP MEMBERS | 14 |
ARTICLE VIII DISCLAIMER OF WARRANTIES; LIMITATION OF LIABILITY | 15 | |||||
Section 8.01 | Disclaimer of Representations and Warranties | 15 | ||||
Section 8.02 | Exclusion of Certain Damages | 15 | ||||
ARTICLE IX INDEMNIFICATION | 15 | |||||
Section 9.01 | Indemnification | 15 | ||||
Section 9.02 | Indemnification Procedures | 16 | ||||
ARTICLE X MISCELLANEOUS | 16 | |||||
Section 10.01 | 16 | |||||
Section 10.02 | 16 | |||||
Section 10.03 | Governing Law | 17 | ||||
Section 10.04 | Assignability | 17 | ||||
Section 10.05 | Third-Party Beneficiaries | 17 | ||||
Section 10.06 | Notices | 18 | ||||
Section 10.07 | Severability | 19 | ||||
Section 10.08 | Force Majeure | 19 | ||||
Section 10.09 | No Set-Off | 19 | ||||
Section 10.10 | Expenses | 19 | ||||
Section 10.11 | Headings | 19 | ||||
Section 10.12 | Waivers of Default | 19 | ||||
Section 10.13 | Dispute Resolution | 20 | ||||
Section 10.14 | Specific Performance | 20 | ||||
Section 10.15 | Amendments | 20 | ||||
Section 10.16 | Interpretation | 20 | ||||
Section 10.17 | Mutual Drafting | 21 |
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Schedule A: Varex Licensed Software | ||||||
Schedule B: Varian Licensed Accelerator Technology | ||||||
Schedule C: Exemplary Excluded Accelerator Technology | ||||||
Schedule D: Varian Licensed Software | ||||||
Schedule E: Varex Deliverable Items | ||||||
Schedule F: Varian Deliverable Items |
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INTELLECTUAL PROPERTY MATTERS AGREEMENT
This INTELLECTUAL PROPERTY MATTERS AGREEMENT, dated as of [●] (this “Agreement”), is by and between Varian Medical Systems, Inc., a Delaware corporation (“Varian”), and Varex Imaging Corporation, a Delaware corporation (“Varex”).
R E C I T A L S:
ARTICLE I
(a) “Accelerator Technology” has the meaning set forth in the Separation and Distribution Agreement.
(b) “Action” has the meaning set forth in the Separation and Distribution Agreement.
(c) “Affiliate” has the meaning set forth in the Separation and Distribution Agreement.
(d) “Agreement” has the meaning set forth in the Preamble.
(e) “Ancillary Agreements” has the meaning set forth in the Separation and Distribution Agreement.
(f) “Applicable Terms” has the meaning set forth in Section 2.02.
(g) “Assets” has the meaning set forth in the Separation and Distribution Agreement.
(h) “Attila4MC Module” shall mean the object code software module consisting of Attila4MC, SpaceClaim for Attila and SpaceClaim CAD Data Package II.
(i) “Attila XXXX” shall mean Varex’s standard form of Attila Product Line End User License and Maintenance Agreement, with certain changes thereto agreed by the Parties.
(j) “Attila Program” shall mean the full Attila product suite owned by Varian immediately prior to the Separation and Distribution.
(k) “Control” shall mean, with respect to any Patent, any item of Software or Technology or any other intellectual property right, possession of the right, whether by ownership, license or otherwise (other than by operation of the licenses and sublicenses granted under this Agreement), to grant a license or sublicense under such Patent, item of Software or Technology or other intellectual property right as provided for herein without violating the terms of, or triggering any payment obligations under, any agreement with any Third Party.
(l) “Derivative Work” shall mean a work that is based upon one or more preexisting works, and which is a derivative work, including any revision, modification, translation, abridgment, condensation, expansion, collection, compilation and any other form in which such preexisting works may be recast, transformed or adapted, and that, if prepared without authorization by the owner of a preexisting work, would constitute copyright infringement.
(m) “Dispute” has the meaning set forth in Section 10.13.
(n) “Disclosing Party” has the meaning set forth in Section 3.03(a).
(o) “Distribution” has the meaning set forth in the Recitals.
(p) “Distribution Date” shall mean the date of the consummation of the Distribution, which shall be determined by the Varian Board in its sole and absolute discretion.
(q) “Effective Time” has the meaning set forth in the Separation and Distribution Agreement.
(r) “Excluded Accelerator Technology Materials” has the meaning set forth in Section 2.04(a).
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(s) “Exploit” shall mean to make, have made, import, use, sell or offer for sale, including to research, develop, commercialize, register, manufacture, have manufactured, hold or keep (whether for disposal or otherwise), have used, export, transport, distribute, promote, market or have sold or otherwise dispose of.
(t) “Force Majeure” has the meaning set forth in the Separation and Distribution Agreement.
(u) “Group” shall mean either the Varex Group or the Varian Group, as the context requires.
(v) “Improvements” shall mean any improvements, additions, modifications, developments, variations, refinements, enhancements, compilations, collective works or Derivative Works.
(w) “IP Agreement Information” has the meaning set forth in Section 3.03(a).
(x) “Law” has the meaning set forth in the Separation and Distribution Agreement.
(y) “Liabilities” has the meaning set forth in the Separation and Distribution Agreement.
(z) “Licensed IP” shall mean the Varex Licensed IP or the Varian Licensed IP, as the context may require.
(aa) “Licensee” shall mean (i) with respect to the Varian Licensed IP, Varex, and (ii) with respect to the Varex Licensed IP, Varian.
(bb) “Licensor” shall mean (i) with respect to the Varian Licensed IP, Varian, and (ii) with respect to the Varex Licensed IP, Varex.
(cc) “Licensor Indemnitees” has the meaning set forth in Section 9.01.
(dd) “Limited Sublicense” has the meaning set forth in Section 2.02.
(ee) “Parent Assets” has the meaning set forth in the Separation and Distribution Agreement.
(ff) “Parties” shall mean the parties to this Agreement.
(gg) “Patents” has the meaning set forth in the Separation and Distribution Agreement.
(hh) “Person” has the meaning set forth in the Separation and Distribution Agreement.
(ii) “Receiving Party” has the meaning set forth in Section 3.03(a).
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(jj) “Record Date” has the meaning set forth in the Separation And Distribution Agreement.
(kk) “Representatives” has the meaning set forth in the Separation and Distribution Agreement.
(ll) “Separation” has the meaning set forth in the Recitals.
(mm) “Separation and Distribution Agreement” has the meaning set forth in the Recitals.
(nn) “Software” has the meaning set forth in the Separation and Distribution Agreement.
(oo) “Subsidiary” has the meaning set forth in the Separation and Distribution Agreement.
(pp) “Technology” has the meaning set forth in the Separation and Distribution Agreement.
(qq) “Third Party” has the meaning set forth in the Separation and Distribution Agreement.
(rr) “Trademarks” has the meaning set forth in the Separation and Distribution Agreement.
(ss) “Varex” has the meaning set forth in the Preamble.
(tt) “Varex Assets” has the meaning set forth in the Separation and Distribution Agreement.
(uu) “Varex Business” has the meaning set forth in the Separation and Distribution Agreement.
(vv) “Varex Field” shall mean products and services used in the Varex Operating Activities, but excluding the Varian Field.
(ww) “Varex Group” has the meaning set forth in the Separation and Distribution Agreement.
(xx) “Varex Invention Disclosures” has the meaning set forth the Separation and Distribution Agreement.
(yy) “Varex Licensed Invention Disclosures” shall mean any Varex Invention Disclosure that is included in the Varex Licensed Technology.
(zz) “Varex Licensed IP” shall mean, collectively, (i) the Varex Licensed Patents, (ii) the Varex Licensed Software and (iii) the Varex Licensed Technology.
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(aaa) “Varex Licensed Patents” shall mean (i) any Patents Controlled by the Varex Group as of the Effective Time (after giving effect to the Separation and Distribution); (ii) any patent issuing on any patent application included in clause (i) above; (iii) any patent claims issuing on any patent application that claims priority from, and that cover exclusively subject matter that is entitled to priority to, any patent or patent application included in clause (i) above (including any divisional, continuation, continuation-in-part, reissue, reexamination, or extension) with a priority date that is on or before the Distribution Date; (iv) any foreign counterpart of any of the foregoing patents and patent applications with a priority date that is on or before the Distribution Date; and (v) any claim of any patent or patent application if the subject matter of such claim is disclosed by one or more Varex Licensed Invention Disclosures entered into the patent database maintained by Varian’s legal department on or before the Distribution Date. For clarity, except as provided in clauses (ii) through (v) above, Varex Licensed Patents shall not include any patents or patent applications filed with any patent authority after the Effective Time.
(bbb) “Varex Licensed Software” shall mean only the specific items of Software set forth on Schedule A, in each case in the form in which such items exist as of the Effective Time.
(ccc) “Varex Licensed Technology” shall mean any Technology (other than Trademarks) Controlled by the Varex Group as of the Effective Time (after giving effect to the Separation and Distribution), in each case in the form in which such Technology exists as of the Effective Time.
(ddd) “Varex Operating Activities” has the meaning set forth in the Separation and Distribution Agreement.
(eee) “Varex Shares” shall mean the shares of common stock, par value $0.01 per share, of Varex.
(fff) “Varex Deliverable Items” has the meaning set forth in Section 2.03(a).
(ggg) “Varian” has the meaning set forth in the Preamble.
(hhh) “Varian Board” has the meaning set forth in the Recitals.
(iii) “Varian Business” shall mean the Parent Business (as such term is defined in the Separation and Distribution Agreement).
(jjj) “Varian Field” shall mean products and services used in oncology therapy, radiation therapy and radiation medicine, including medical devices and software for treating cancer with radiotherapy, radiosurgery, proton therapy and brachytherapy and imaging technology and information technology related to oncology therapy, radiation therapy and radiation medicine.
(kkk) “Varian Group” has the meaning set forth in the Separation and Distribution Agreement.
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(lll) “Varian Invention Disclosures” shall mean the Parent Invention Disclosures (as such term is defined in the Separation and Distribution Agreement).
(mmm) “Varian Licensed Accelerator Technology” shall mean only the specific items of Accelerator Technology set forth on Schedule B, in each case in the form in which such items exist as of the Effective Time. For clarity, without expanding the foregoing, Varian Licensed Accelerator Technology excludes the Accelerator Technology set forth on Schedule C.
(nnn) “Varian Licensed Invention Disclosures” shall mean any Varian Invention Disclosure that is included in the Varian Licensed Technology.
(ooo) “Varian Licensed IP” shall mean, collectively, (i) the Varian Licensed Patents, (ii) the Varian Licensed Software and (iii) the Varian Licensed Technology.
(ppp) “Varian Licensed Patents” shall mean (i) any Patents Controlled by the Varian Group as of the Effective Time (after giving effect to the Separation and Distribution); (ii) any patent issuing on any patent application included in clause (i) above; (iii) any patent claims issuing on any patent application that claims priority from, and that cover exclusively subject matter that is entitled to priority to, any patent or patent application included in clause (i) above (including any divisional, continuation, continuation-in-part, reissue, reexamination, or extension) with a priority date that is on or before the Distribution Date; (iv) any foreign counterpart of any of the foregoing patents and patent applications with a priority date that is on or before the Distribution Date; and (v) any claim of any patent or patent application if the subject matter of such claim is disclosed by one or more Varian Licensed Invention Disclosures entered into the patent database maintained by Varian’s legal department on or before the Distribution Date. For clarity, except as provided in clauses (ii) through (v) above, Varian Licensed Patents shall not include any patents or patent applications filed with any patent authority after the Effective Time.
(qqq) “Varian Licensed Software” shall mean only the specific items of Software set forth on Schedule D, in each case in the form in which such items exist as of the Effective Time.
(rrr) “Varian Licensed Technology” shall mean any Technology (other than Trademarks) Controlled by the Varian Group as of the Effective Time (after giving effect to the Separation and Distribution), in each case in the form in which such Technology exists as of the Effective Time; provided, however, that Varian Licensed Technology shall not include any Accelerator Technology other than the Varian Licensed Accelerator Technology.
(sss) “Varian Shares” shall mean the common shares, par value $1.00 per share, of Varian.
(ttt) “Varian Deliverable Items” has the meaning set forth in Section 2.03(b).
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ARTICLE II
Section 2.01 Grant of License.
(a) Subject to the terms and conditions of this Agreement, and subject to any rights of Third Parties that may be in effect, effective as of the Effective Time, Varex (and each other member of the Varex Group) hereby grants to Varian (and each other member of the Varian Group) a nonexclusive, perpetual (except to the extent terminated in accordance with the provisions of this Agreement), fully paid-up, worldwide, non-sublicensable (except as set forth in Section 2.02), non-assignable (except as provided in Section 10.04), royalty-free and irrevocable (except to the extent terminated in accordance with the provisions of this Agreement) license or sublicense, as applicable, under all of Varex’s (and such Varex Group member’s) right, title and interest in and to the Varex Licensed IP, to use (including to reproduce, distribute, perform, display and prepare Derivative Works based upon) the Varex Licensed IP, solely for the purpose of Exploiting products and services in the Varian Field.
(b) Subject to the terms and conditions of this Agreement, and subject to any rights of Third Parties that may be in effect, effective as of the Effective Time, Varian (and each other member of the Varian Group) hereby grants to Varex (and each other member of the Varex Group) a nonexclusive, perpetual (except to the extent terminated in accordance with the provisions of this Agreement), fully paid-up, worldwide, non-sublicensable (except as set forth in Section 2.02), non-assignable (except as provided in Section 10.04), royalty-free and irrevocable (except to the extent terminated in accordance with the provisions of this Agreement) license or sublicense, as applicable, under all of Varian’s (and such Varian Group member’s) right, title and interest in and to the Varian Licensed IP, to use (including to reproduce, distribute, perform, display and prepare Derivative Works based upon) the Varian Licensed IP, solely for the purpose of Exploiting products and services in the Varex Field.
(c) Notwithstanding anything to the contrary herein, and except as permitted by the Attila XXXX or any other agreement between the Parties or any members of their respective Groups, (i) Varian and the other members of its Group shall have the right hereunder to use the source code to the Attila Program solely for the purposes of (x) researching and developing Varian’s and its Group members’ own products and services in the Varian Field and (y) performing shielding calculation services in the Varian Field for Third Parties (and, for clarity, Varian and the other members of its Group shall not have the right hereunder to sell or license any product or software-as-a-service consisting of or including any source code or object code to the Attila Program, it being understood that the performance by Varian or any member of its Group of shielding calculation services in the Varian Field for Third Parties shall not be considered the sale or license of any product or software-as-a-service for purposes of this clause (i)), (ii) Varex and the other members of its Group shall not have the right hereunder to sell or otherwise commercialize any product or service consisting of, including or using the Varian Licensed Software other than products and services in the Varex Field that use the Varian Licensed Software in conjunction with, and solely in conjunction with, a flat panel detector sold by Varex or any member of its Group and (iii) neither Licensee nor any member of its Group shall sell, transfer, disclose or otherwise provide or make available to any Third Party any source code that is included in Licensor’s Licensed IP or otherwise delivered under Section 2.03 of this Agreement.
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members’ own products and services in the Varex Field or the Varian Field, as applicable (“Limited Sublicenses”); provided, however, that (a) any such Limited Sublicense shall exclude the right to grant further have-made rights or sublicenses, (b) any such Limited Sublicense shall be made pursuant to a written agreement (i) that is consistent with, and subject and subordinate to, the terms and conditions of this Agreement (including the requirement in this Section 2.02 that such Limited Sublicense be for the sole purpose of Exploiting Licensee’s and its Group members’ own products and services in the Varex Field or the Varian Field, as applicable) and (ii) pursuant to which the grantee agrees to be bound by any applicable terms or conditions of this Agreement, including any restrictions on Licensee’s use of Licensor’s Licensed IP and any confidentiality obligations of Licensee hereunder (the “Applicable Terms”), and (c) Licensee shall remain responsible to Licensor for the performance of Licensee’s obligations under this Agreement and shall be responsible to Licensor for any failure of any such grantee to comply with the Applicable Terms.
Section 2.03 Deliveries; Escrow.
(a) In connection with the Separation, subject to the license grant in Section 2.01(a) of this Agreement, Varian shall have the right to retain (i) each item of Varex Licensed Software and (ii) each of the items listed on Schedule E (the “Varex Deliverable Items”), in each case ((i) and (ii)) in the form, condition and format in which such Varex Licensed Software or Varex Deliverable Item exists as of the Effective Time, and upon Varian’s request (which request must be made no later than 180 days following the Distribution Date), Varex shall provide to Varian a copy of any such Varex Licensed Software or Varex Deliverable Item that is not in Varian’s possession as of the Distribution Date.
(b) Subject to the license grant in Section 2.01(b) of this Agreement, no more than 30 days following the Distribution Date, Varian shall provide to Varex (i) each item of Varian Licensed Software and (ii) each of the items listed on Schedule F (the “Varian Deliverable Items”), in each case ((i) and (ii)) in the form, condition and format in which such Varian Licensed Software or Varian Deliverable Item exists as of the Effective Time.
(c) If Licensee at any time reasonably believes that a patent issuing after Effective Time contains any claim described in clause (v) of the definition of Varian Licensed Patents (in the case of Varex as Licensee) or clause (v) of the definition of Varex Licensed Patents (in the case of Varian as Licensee), then, upon Licensee’s written request to Licensor identifying such patent, Licensor shall inform Licensee of Licensor’s good faith belief as to whether or not any claims of such patent are described in such clause and, if Licensor believes in good faith that any claims of such patent are described in such clause, provide Licensee with a list of such claims.
(d) Subject to Section 2.03(a), Section 2.03(b) and Section 2.03(c) above and clauses (ii) and (iii) of Section 6.1(a) of the Separation and Distribution Agreement, neither Licensor nor any other member of its Group shall have any obligation under this Agreement or the Separation and Distribution Agreement to, or use any efforts to, provide or make available, or cause to be provided or made available, to Licensee or any member of Licensee’s Group any information or materials related to Licensor’s Licensed IP.
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(e) On or promptly after the Distribution Date, the Parties shall enter into the Attila XXXX, covering one copy of the object code to the Attila Program and one copy of the Attila4MC Module, in each case for (i) a perpetual license, at no charge, and (ii) annual maintenance, at no charge for the initial year and thereafter at Varex’s standard rates.
(f) After the Distribution Date, the Parties shall enter into a mutually agreeable escrow arrangement, pursuant to which Varian will place the Acuros CTS source code into escrow. The material terms of the escrow agreement will be set forth on Schedule G.
(g) Nothing in this Section 2.03 shall transfer ownership of any Assets or otherwise affect or change the ownership of Assets set forth in the Separation and Distribution Agreement. Without limiting the foregoing, (i) Section 2.03(a) shall not cause any of the Varex Licensed Software or Varex Deliverable Items to be Parent Assets under Section 2.2(b)(i) of the Separation and Distribution Agreement and (ii) Section 2.03(b) shall not cause any of the Varian Licensed Software or Varian Deliverable Items to be Varex Assets under Section 2.2(a)(iv) of the Separation and Distribution Agreement.
(a) In connection with the Separation (and in any event within 14 business days after the Distribution Date), Varex shall (i) use its reasonable best efforts to identify any documents or materials, including any drawings, subdrawings and content related thereto in the possession or under the control of Varex or any member of its Group, in each case in any form whatsoever (including all copies thereof and all notes, extracts or summaries based thereon), that in any way contain, disclose or describe any Accelerator Technology other than (1) the Varian Licensed Accelerator Technology or (2) any Accelerator Technology that is a Varex Asset (“Excluded Accelerator Technology Materials”) and (ii) either deliver to Varian or destroy (1) any Excluded Accelerator Technology Materials set forth on Schedule C and (2) any other Excluded Accelerator Technology Materials identified pursuant to clause (i) above (and, notwithstanding anything to the contrary in the Separation and Distribution Agreement, neither Varex nor any member of its Group shall retain any electronic back-up versions of any such Excluded Accelerator Technology Materials on any computer system backup tapes, disks or other backup storage devices or in any other manner). Promptly following the completion of such delivery and destruction, Varex shall deliver to Varian written confirmation of compliance with its obligations under this Section 2.04(a), which confirmation shall be signed by an authorized representative of Varex.
(b) Without limiting Varex’s obligations under Section 2.04(a), if at any time after the Distribution Date Varex or any member of its Group becomes aware of, or Varian notifies Varex of, any Excluded Accelerator Technology Materials that were not delivered to Varian or destroyed pursuant to Section 2.04(a), then Varex shall promptly (i) deliver to Varian or destroy such Excluded Accelerator Technology Materials (and, notwithstanding anything to the contrary in the Separation and Distribution Agreement, neither Varex nor any member of its Group shall retain any electronic back-up versions of such Excluded Accelerator Technology Materials on any computer system backup tapes, disks or other backup storage devices or in any other manner) and (ii) deliver to Varian written confirmation of compliance with its obligations under this Section 2.04(b) with respect to such Excluded Accelerator Technology Materials, which confirmation shall be signed by an authorized representative of Varex.
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(c) For a period of four (4) years after the Distribution Date, Varian shall have the right to cause a Third Party auditor selected by Varian and reasonably acceptable to Varex, upon reasonable notice, during regular business hours and under customary obligations of confidence to Varex, to audit the records and databases of Varex and the other members of its Group to confirm that Varex has complied with its obligations under Section 2.04(a) and Section 2.04(b) and to identify any Excluded Accelerator Technology Materials that have not otherwise been delivered to Varian or destroyed. Varex and the other members of its Group shall reasonably cooperate with any such audit, including by making their personnel reasonably available to provide information and assistance reasonably required by the Third Party auditor. Upon completion of any such audit, the Third Party auditor shall prepare and deliver to the Parties a report (i) stating whether the audit identified any Excluded Accelerator Technology Materials that have not otherwise been delivered to Varian or destroyed and (ii) if the audit identified any such Excluded Accelerator Technology Materials, a description thereof. Except as provided in the preceding sentence, the Third Party auditor shall not provide Varian with any information regarding the audited records and databases. Without limiting Varex’s obligations under Section 2.04(a) or Section 2.04(b), if the audit identifies any Excluded Accelerator Technology Materials that have not otherwise been delivered to Varian or destroyed, then Varex shall promptly (x) deliver to Varian or destroy such Excluded Accelerator Technology Materials (and, notwithstanding anything to the contrary in the Separation and Distribution Agreement, neither Varex nor any member of its Group shall retain any electronic back-up versions of such Excluded Accelerator Technology Materials on any computer system backup tapes, disks or other backup storage devices or in any other manner) and (y) deliver to Varian written confirmation of compliance with its obligations under this sentence with respect to such Excluded Accelerator Technology Materials, which confirmation shall be signed by an authorized representative of Varex. Varian shall pay the costs of the Third Party auditor, unless the audit identifies any breach of Varex’s obligations under Section 2.04(a) or Section 2.04(b), in which case (without limiting any other rights or remedies that may be available to Varian) Varex shall pay the costs of the Third Party auditor.
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member of its Group shall (a) use any of Licensor’s Licensed IP in any manner that exceeds the scope of the licenses and sublicenses granted to Licensee and the other members of its Group hereunder or (b) use in any manner any Software or Technology owned or controlled by Licensor or any member of its Group other than Licensor’s Licensed IP.
ARTICLE III
(a) Any information or materials relating to the Licensed IP of a Party (the “Disclosing Party”) that is disclosed or provided by the Disclosing Party or any member of its Group or their respective Representatives to the other Party (the “Receiving Party”) or any member of the Receiving Party’s Group or their respective Representatives under or in connection with this Agreement, or is otherwise is in the possession or under the control of the Receiving Party or any member of the Receiving Party’s Group (such information and materials, collectively, “IP Agreement Information”), shall be deemed confidential and proprietary information concerning the Disclosing Party or a member of the Disclosing Party’s Group or their respective businesses for purposes of Section 6.9(a) of the Separation and Distribution Agreement;
(b) The Receiving Party’s use and disclosure of IP Agreement Information to the extent reasonably required to exercise its rights (including pursuant to Section 2.01) or perform its obligations under this Agreement shall be deemed a purpose expressly permitted under this Agreement for purposes of Section 6.9(a) of the Separation and Distribution Agreement;
(c) The Receiving Party’s disclosure of IP Agreement Information to the extent required to file, prosecute or maintain registrations or applications for registration with respect to its intellectual property or to prosecute or defend against litigation shall be deemed purposes expressly permitted under this Agreement for purposes of Section 6.9(a) of the
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Separation and Distribution Agreement; provided, however, that the Receiving Party shall use reasonable best efforts to secure confidential treatment any IP Agreement Information disclosed pursuant to this clause (c); and
(d) The Receiving Party’s disclosure of IP Agreement Information in communications with bona fide existing or prospective acquirers, merger partners, lenders, investors, licensees, sublicensees or collaborators, in each case solely on a need to know basis and under confidentiality restrictions substantially equivalent to those applicable to the Receiving Party under this Agreement and the Separation and Distribution Agreement, shall be deemed a purpose expressly permitted under this Agreement for purposes of Section 6.9(a) of the Separation and Distribution Agreement; provided, however, that the Receiving Party shall be responsible to the Disclosing Party for any violation of such confidentiality restrictions by any Person receiving IP Agreement Information under this clause (d).
For clarity, nothing in this Section 3.03 is intended or shall be construed to permit Licensee or any member of its Group to sell, transfer, disclose or otherwise provide or make available to any Third Party any source code that is included in Licensor’s Licensed IP or otherwise delivered under Section 2.03 of this Agreement.
ARTICLE IV
PROSECUTION, MAINTENANCE, ENFORCEMENT AND DEFENSE
Section 4.02 Enforcement and Defense.
(a) Licensee shall advise Licensor reasonably promptly if (and in no event later than 10 business days after) Licensee or any member of its Group becomes aware of any unauthorized Third-Party use of Licensor’s Licensed IP. Neither Licensee nor any member of its Group shall take any steps to contact any Third Party with respect to any such unauthorized use.
(b) As between the Parties, Licensor shall have the sole right, but not any obligation, to determine whether and in what manner to respond to any unauthorized Third-Party use of Licensor’s Licensed IP and shall be exclusively entitled to any remedies, including monetary damages, related thereto or resulting therefrom. As between the Parties, Licensor shall have the sole right, but not any obligation, to defend and control the defense of the validity and enforceability of Licensor’s Licensed IP. If reasonably requested by Licensor, Licensee and the other members of its Group shall reasonably cooperate with Licensor in connection with any such activities, at Licensor’s cost and expense.
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ARTICLE V
The rights and licenses granted under this Agreement are intended and shall be deemed to be a license of “intellectual property” within the meaning of Section 365(n) of the United States Bankruptcy Code (and any analogous provision of applicable Law outside the United States). If Section 365(n) of the United States Bankruptcy Code (or any analogous provision of applicable Law outside the United States) is applicable and the trustee or debtor-in-possession has rejected this Agreement and Licensee (or any other member of its Group) has elected pursuant to Section 365(n) of the United States Bankruptcy Code (or any analogous provision of applicable Law outside the United States) to retain its rights hereunder, then upon the written request of Licensee, the trustee or debtor-in-possession shall provide to Licensee a complete duplicate of (or complete access to, as appropriate) any such intellectual property (including embodiments thereof) held or controlled by the trustee or debtor-in-possession.
ARTICLE VI
Section 6.01 Termination for Material Breach.
(a) Licensor may terminate this Agreement with respect to any item of Licensor’s Licensed IP in the event of a material breach of this Agreement by Licensee or any member its Group with respect to such item, if such breach is not cured within 30 days following Licensee’s receipt of written notice of such breach from Licensor.
(b) Varian may terminate this Agreement with respect to the Varian Licensed Accelerator Technology in the event of a material breach of this Agreement by Varex or any member of its Group with respect to the Accelerator Technology, if such breach is not cured within 30 days following Varex’s receipt of written notice of such breach from Varian.
(c) Varex may terminate this Agreement with respect to the license of the Attila Program in the event of a material breach of this Agreement by Varian or any member of its Group with respect to the Attila Program (and, for clarity, Varian and the other members of its Group will be deemed to have committed such a material breach if they sell or license any product or software-as-a-service consisting of or including any source code or object code to the Attila Program, except as permitted by the Attila XXXX or any other agreement between the Parties or any members of their respective Groups, it being understood that the performance by Varian or any member of its Group of shielding calculation services in the Varian Field for Third
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Parties shall not be considered the sale or license of any product or software-as-a-service for purposes of this sentence), if such breach is not cured within 30 days following Varian’s receipt of written notice of such breach from Varex.
ARTICLE VII
Each Party shall cause to be performed, and hereby guarantees the performance of, all actions, agreements and obligations set forth herein to be performed by any other member of such Party’s Group.
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ARTICLE VIII
DISCLAIMER OF WARRANTIES; LIMITATION OF LIABILITY
Section 8.02 Exclusion of Certain Damages. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR ANY INDIRECT, PUNITIVE, EXEMPLARY, REMOTE, SPECULATIVE OR SIMILAR DAMAGES IN EXCESS OF COMPENSATORY DAMAGES OF THE OTHER PARTY IN CONNECTION WITH THE PERFORMANCE OF THIS AGREEMENT, AND EACH PARTY HEREBY WAIVES ON BEHALF OF ITSELF, EACH OTHER MEMBER OF ITS GROUP AND ITS AND THEIR REPRESENTATIVES ANY CLAIM FOR SUCH DAMAGES, WHETHER ARISING IN CONTRACT, TORT OR OTHERWISE; PROVIDED, HOWEVER, THAT THE FOREGOING EXCLUSION SHALL NOT APPLY IN RESPECT OF ANY LIABILITY ARISING OUT OF OR IN CONNECTION WITH (A) ANY BREACH OF A PARTY’S CONFIDENTIALITY OBLIGATIONS WITH RESPECT TO IP AGREEMENT INFORMATION, (B) ANY BREACH BY VAREX OR ANY MEMBER OF ITS GROUP OF ANY OF ITS OBLIGATIONS UNDER THIS AGREEMENT WITH RESPECT TO ACCELERATOR TECHNOLOGY, (C) ANY GROSS NEGLIGENCE, WILLFUL MISCONDUCT, OR FRAUD OF OR BY A PARTY, OR (D) ANY CLAIMS FOR INDEMNIFICATION IN RESPECT OF THIRD-PARTY CLAIMS UNDER ARTICLE IX.
ARTICLE IX
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of its Group, (ii) any use by Licensee or any member of its Group of Licensor’s Licensed IP or (iii) any gross negligence or willful misconduct of Licensee or any member of its Group, or any of their directors, officers, employees or agents, in connection with this Agreement.
ARTICLE X
Section 10.02 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, and shall become effective when one or more counterparts have been signed by each of the Parties and delivered to the other Party.
(b) This Agreement, the Separation and Distribution Agreement and the Ancillary Agreements and the Exhibits, Schedules and appendices hereto and thereto 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 or therein. The Separation and Distribution Agreement and the Ancillary Agreements, including this Agreement, together govern the arrangements in connection with the Separation and Distribution and would not have been entered independently.
(c) Varian represents on behalf of itself and each other member of the Varian Group and Varex represents on behalf of itself and each other member of the Varex Group, as follows:
(i) each such Person 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 hereof.
(d) Each Party acknowledges and agrees that delivery of an executed counterpart of a signature page to this Agreement (whether executed by manual, stamp or mechanical signature) by facsimile or by email in portable document format (PDF) shall be effective as delivery of such executed counterpart of this Agreement. Each Party expressly
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adopts and confirms each such facsimile, stamp or mechanical signature (regardless of whether delivered in person, by mail, by courier, by facsimile or by email in portable document format (PDF)) made in its respective name as if it were a manual signature delivered in person, agrees that it will not assert that any such signature or delivery is not adequate to bind such Party to the same extent as if it were signed manually and delivered in person and agrees that, at the reasonable request of the other Party at any time, it will as promptly as reasonably practicable cause this Agreement to be manually executed (any such execution to be as of the date of the initial date thereof) and delivered in person, by mail or by courier.
Section 10.03 Governing Law. This Agreement (and any Dispute arising out of or related hereto or to the transactions contemplated hereby or to the inducement of any Party to enter herein, whether for breach of contract, tortious conduct or otherwise and whether predicated on common law, statute or otherwise) shall be governed by and construed and interpreted in accordance with the Laws of the State of Delaware, irrespective of the choice of laws principles of the State of Delaware, including all matters of validity, construction, effect, enforceability, performance and remedies.
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If to Varian, to:
Varian Medical Systems, Inc. 0000 Xxxxxx Xxx Xxxx Xxxx, Xxxxxxxxxx 00000 | ||
Attention: | General Counsel | |
Facsimile: | [●] | |
with a copy to: | ||
Wachtell, Lipton, Xxxxx & Xxxx 00 Xxxx 00xx Xxxxxx Xxx Xxxx, Xxx Xxxx 00000 | ||
Attention: | Xxxxx X. Xxxx | |
Xxxxxx X. Xxxx | ||
Facsimile: | (000) 000-0000 | |
and a copy to: | ||
Xxxxxx XxXxxxx LLP 000 Xxxx Xxxxxx, 00xx Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx 00000 | ||
Attention: | Xxxxxxx Xxxxxx | |
Facsimile: | (000) 000-0000 | |
If to Varex, to: | ||
Varex Imaging Corporation 0000 X. Xxxxxxx Xxxx Xxxx Xxxx Xxxx, Xxxx 00000 | ||
Attention: | General Counsel | |
Facsimile: | [●] | |
with a copy to: | ||
Wachtell, Lipton, Xxxxx & Xxxx 00 Xxxx 00xx Xxxxxx Xxx Xxxx, Xxx Xxxx 00000 | ||
Attention: | Xxxxx X. Xxxx | |
Xxxxxx X. Xxxx | ||
Facsimile: | (000) 000-0000 |
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Any Party may, by notice to the other Party, change the address to which such notices are to be given.
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No failure or delay by any Party in exercising any right, power or privilege under this Agreement shall operate as a waiver thereof, nor shall a single or partial exercise thereof prejudice any other or further exercise thereof or the exercise of any other right, power or privilege.
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VARIAN MEDICAL SYSTEMS, INC. | ||
By: |
| |
Name: | ||
Title: | ||
VAREX IMAGING CORPORATION | ||
By: |
| |
Name: | ||
Title: |
[Signature Page to Intellectual Property Matters Agreement]
Schedule A
Varex Licensed Software
Schedule B
Varian Licensed Accelerator Technology
Schedule C
Exemplary Excluded Accelerator Technology
Schedule D
Varian Licensed Software
Schedule E
Varex Deliverable Items
Schedule F
Varian Deliverable Items
Schedule G
Source Code Escrow Agreement Terms