EXHIBIT 2.4
EXECUTION COPY
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
ADAPTEC, INC.
AND
ROXIO, INC.
EFFECTIVE AS OF MAY 5, 2001
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
PAGE
ARTICLE 1 DEFINITIONS.................................................................................................1
1.1 ADAPTEC PATENTS.....................................................................................1
1.2 ANCILLARY AGREEMENTS................................................................................1
1.3 ASSIGNED PATENTS....................................................................................2
1.4 CONFIDENTIAL INFORMATION............................................................................2
1.5 DISPUTES............................................................................................2
1.6 FIRST EFFECTIVE FILING DATE.........................................................................2
1.7 INVENTION DISCLOSURE................................................................................2
1.8 MASTER ASSIGNMENT AND ASSUMPTION AGREEMENT..........................................................3
1.9 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT............................................................3
1.10 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........................................................3
1.11 PATENTS.............................................................................................3
1.12 PERSON..............................................................................................3
1.13 RESTRICTED FIELD....................................................................................3
1.14 SEPARATION DATE.....................................................................................3
1.15 SUBSIDIARY..........................................................................................3
1.16 THIRD PARTY.........................................................................................4
1.17 WILD FILE PATENTS...................................................................................4
ARTICLE 2 OWNERSHIP...................................................................................................4
2.1 OWNERSHIP OF PATENTS................................................................................4
2.2 PRIOR GRANTS........................................................................................5
2.3 ASSIGNMENT DISCLAIMER...............................................................................5
ARTICLE 3 PATENT LICENSES.............................................................................................5
3.1 LICENSE TO WILD FILE PATENTS........................................................................5
3.2 TRANSFER OF PRODUCT BY ADAPTEC......................................................................6
3.3 ADAPTEC LICENSE TO ROXIO FOR CURRENT PRODUCTS.......................................................6
3.4 ROXIO LICENSE TO ADAPTEC FOR CURRENT PRODUCTS.......................................................6
3.5 ADAPTEC LICENSE TO ROXIO FOR SUBSEQUENT PRODUCTS....................................................6
3.6 ROXIO LICENSE TO ADAPTEC FOR SUBSEQUENT PRODUCTS....................................................7
3.7 NO LICENSE GRANTED UNDER EXCLUSIVELY LICENSED PATENTS...............................................7
3.8 EXTENSION OF LICENSES TO SUBSIDIARIES...............................................................7
3.9 LICENSE RIGHTS AS TO CERTAIN OTHER PATENTS..........................................................7
ARTICLE 4 ADDITIONAL OBLIGATIONS......................................................................................7
4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS..............................................8
4.2 RECORDATION OF LICENSES.............................................................................8
-i-
TABLE OF CONTENTS
(CONTINUED)
PAGE
ARTICLE 5 CONFIDENTIALITY.............................................................................................9
ARTICLE 6 TERM AND TERMINATION........................................................................................9
6.1 TERM OF AGREEMENT...................................................................................9
6.2 VOLUNTARY TERMINATION...............................................................................9
6.3 SURVIVAL............................................................................................9
6.4 NO OTHER TERMINATION...............................................................................10
ARTICLE 7 DISPUTE RESOLUTION.........................................................................................10
7.1 NEGOTIATION........................................................................................10
7.2 PROCEEDINGS........................................................................................10
7.3 CONTINUITY OF SERVICE AND PERFORMANCE..............................................................11
ARTICLE 8 LIMITATION OF LIABILITY....................................................................................11
ARTICLE 9 REPRESENTATIONS AND WARRANTIES.............................................................................11
9.1 FULL POWER AND AUTHORITY...........................................................................11
9.2 EXECUTION DULY AUTHORIZED..........................................................................11
ARTICLE 10 MISCELLANEOUS PROVISIONS..................................................................................12
10.1 DISCLAIMER.........................................................................................12
10.2 NO IMPLIED LICENSES................................................................................12
10.3 INFRINGEMENT SUITS.................................................................................12
10.4 NO OTHER OBLIGATIONS...............................................................................12
10.5 ENTIRE AGREEMENT...................................................................................13
10.6 CONFLICTING AGREEMENTS.............................................................................13
10.7 GOVERNING LAW......................................................................................13
10.8 DESCRIPTIVE HEADINGS...............................................................................13
10.9 NOTICES............................................................................................13
10.10 NONASSIGNABILITY...................................................................................14
10.11 SEVERABILITY.......................................................................................15
10.12 WAIVER OF BREACH...................................................................................15
10.13 AMENDMENT AND EXECUTION............................................................................15
-ii-
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
This Master Patent Ownership and License Agreement (the "Agreement") is
effective as of May 5, 2001, at 12:01 A.M., P.S.T. (the "Effective Date"),
between Adaptec, Inc., a Delaware corporation ("Adaptec"), having an office 000
Xxxxx Xxxxxxxx Xxxxxxxxx, Xxxxxxxx, XX 00000, and Roxio, Inc., a Delaware
corporation ("Roxio"), having an office at 000 Xxxxx Xxxxxxxx xxxxxxxxx,
Xxxxxxxx, Xxxxxxxxx, Xxxxxxxx, XX 00000.
RECITALS
WHEREAS, the Boards of Directors of each of Adaptec and Roxio have
determined that it is appropriate and desirable for Adaptec to contribute and
transfer to Roxio, and for Roxio to receive and assume, directly or indirectly,
substantially all of the assets and liabilities currently associated with the
Roxio Business and the stock, investments or similar interests currently held by
Adaptec in subsidiaries and other entities that conduct such business (the
"Separation");
WHEREAS, Adaptec has caused Roxio to be incorporated in order to effect
the Separation and Adaptec currently owns all of the issued and outstanding
capital stock of Roxio; and
WHEREAS, the parties intend in this Agreement, including the Exhibits
and Schedules hereto, to set forth the principal arrangements between them
regarding patent ownership and licenses upon the Separation.
NOW, THEREFORE, in consideration of the foregoing and the covenants and
agreements set forth below, the parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 ADAPTEC PATENTS. "Adaptec Patents" means all Patents, other than
the Assigned Patents and Wild File Patents, having the benefit of a First
Effective Filing Date before the Separation Date which are owned or licensable
(without payment of royalties for the granting of licenses thereunder) by
Adaptec as of the Separation Date.
1.2 ANCILLARY AGREEMENTS. "Ancillary Agreements" has the meaning set
forth in the Master Separation and Distribution Agreement.
1.3 ASSIGNED PATENTS. "Assigned Patents" means only those
-1-
(a) Patents, Patent applications and Invention Disclosures that
are listed in Schedule A;
(b) Patent applications filed on the foregoing Invention
Disclosures described in Section 1.3(a);
(c) continuations, continuations-in-part, divisionals and
substitutions of any of the foregoing Patent applications described in Sections
1.3(a) and (b);
(d) Patents which may issue on any of the foregoing Patent
applications described in Sections 1.3(a)-(c);
(e) renewals, reissues, reexaminations and extensions of the
foregoing Patents described in Sections 1.3(a) and (d); and
(f) foreign Patent applications and Patents that are counterparts
of any of the foregoing Patent applications or Patents described in Sections
1.3(a)-(e), including any Patent application or Patent to the extent that it
claims priority from any of the foregoing Patent applications or Patents
described in Sections 1.3(a)-(e).
1.4 CONFIDENTIAL INFORMATION. "Confidential Information" has the
meaning set forth in the Master Confidential Disclosure Agreement.
1.5 DISPUTES. "Disputes" has the meaning set forth in the Master
Separation and Distribution Agreement.
1.6 FIRST EFFECTIVE FILING DATE. "First Effective Filing Date" means
the earliest effective filing date in the particular country for any Patent or
any application for any Patent. By way of example, it is understood that the
First Effective Filing Date for a United States Patent is the earlier of (i) the
actual filing date of the United States Patent application which issued into
such Patent, (ii) the priority date under 35 U.S.C. Section 119 for such Patent,
or (iii) the priority date under 35 U.S.C. Section 120 for such Patent.
1.7 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of
an invention conceived before the Separation Date and which is (i) written for
the purpose of allowing legal and business people to determine whether to file a
Patent application with respect to such invention and (ii) recorded with a
control number in the owning party's records).
1.8 MASTER ASSIGNMENT AND ASSUMPTION AGREEMENT. "Master Assignment and
Assumption Agreement" means the Master Assignment and Assumption Agreement
between the parties.
1.9 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT. "Master Confidential
Disclosure Agreement" means the Master Confidential Disclosure Agreement between
the parties.
-2-
1.10 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation
and Distribution Agreement" means the Master Separation and Distribution
Agreement between the parties.
1.11 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions or industrial designs anywhere in the world and
all reissues, renewals, re-examinations and extensions of any of the foregoing.
1.12 PERSON. "Person" has the meaning set forth in the Master
Separation and Distribution Agreement.
1.13 RESTRICTED FIELD. "Restricted Field" means software products (a)
which do not have a hardware component as a material part of the solution sold
or licensed to the customer, and (b) which are intended for use primarily on
desktop, laptop, palmtop or similar personal computers (as distinguished from
use primarily on servers, storage area networks, or other products primarily
designed as storage products).
1.14 SEPARATION DATE. "Separation Date" has the meaning set forth in
the Master Separation and Distribution Agreement.
1.15 SUBSIDIARY. "Subsidiary" has the meaning set forth in the Master
Separation and Distribution Agreement.
1.16 THIRD PARTY. "Third Party" means a Person other than Adaptec and
its Subsidiaries and Roxio and its Subsidiaries.
1.17 WILD FILE PATENTS. "Wild File Patents" means only the following
held legally or beneficially by Adaptec's wholly owned Subsidiary Wild File,
Inc. on the Separation Date, all of which are transferred to Roxio, together
with the capital stock of Wild File, Inc., under the General Assignment and
Assumption Agreement:
(a) Patents, Patent applications and Invention Disclosures that
are listed in Schedule B;
(b) Any other Patents, Patent applications and Invention
Disclosures legally or beneficially held by Wild File, Inc.;
(c) Patent applications filed on the foregoing Invention
Disclosures described in Sections 1.17(a) and (b);
(d) continuations, continuations-in-part, divisionals and
substitutions of any of the foregoing Patent applications described in Sections
1.17(a), (b) and (c);
-3-
(e) Patents which may issue on any of the foregoing Patent
applications described in Sections 1.17(a)-(d);
(f) renewals, reissues, reexaminations and extensions of the
foregoing Patents described in Sections 1.17(a), (b) and (e); and
(g) foreign Patent applications and Patents that are counterparts
of any of the foregoing Patent applications or Patents described in Sections
1.17(a)-(f), including any Patent application or Patent to the extent that it
claims priority from any of the foregoing Patent applications or Patents
described in Sections 1.17(a)-(f).
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF PATENTS.
(a) ASSIGNED PATENTS. Subject to Sections 2.2 and 2.3 below,
Adaptec hereby grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Roxio, by execution hereof (or,
where appropriate or required, by execution of separate instruments of
assignment), all its (and their) right, title and interest in and to the
Assigned Patents, to be held and enjoyed by Roxio, its successors and assigns.
Adaptec further grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Roxio all its (and their) right,
title and interest in and to any and all causes of action and rights of recovery
for past infringement of the Assigned Patents and the right to claim priority
from the Assigned Patents. Adaptec will, without demanding any further
consideration therefor, at the request and expense of Roxio (except for the
value of the time of Adaptec employees), do (and cause its Subsidiaries to do)
all lawful and just acts, that may be or become necessary for prosecuting,
sustaining, obtaining continuations, continuations-in-part and divisionals of,
or reissuing or re-examining, said Assigned Patents and for evidencing,
maintaining, recording and perfecting Roxio's rights to said Assigned Patents,
including but not limited to execution and acknowledgement of (and causing its
Subsidiaries to execute and acknowledge) assignments and other instruments in a
form reasonably required by Roxio for each Patent jurisdiction.
2.2 PRIOR GRANTS. Roxio acknowledges and agrees that the foregoing
assignments are subject to any and all licenses or other rights that may have
been granted by Adaptec or its Subsidiaries with respect to the Assigned Patents
prior to the Effective Date. Adaptec shall respond to reasonable inquiries from
Roxio regarding any such prior grants.
2.3 ASSIGNMENT DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS-IS," QUITCLAIM BASIS AND THAT NEITHER
PARTY NOR ANY SUBSIDIARY OF SUCH PARTY HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF
-4-
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, ENFORCEABILITY,
NON-INFRINGEMENT, OR VALIDITY OF PATENT CLAIMS (ISSUED OR PENDING).
ARTICLE 3
PATENT LICENSES
3.1 LICENSE TO WILD FILE PATENTS. Roxio hereby grants to Adaptec a
nonexclusive, irrevocable, fully paid-up, worldwide license, without the right
to grant sublicenses, under the Wild File Patents to make (including the right
to practice methods, processes and procedures), have made, use, lease, sell,
offer for sale and import any products and services embodying or made in
accordance with any invention of the Wild File Patents, but excluding products
within the Restricted Field.
3.2 TRANSFER OF PRODUCT BY ADAPTEC. If Adaptec shall transfer to a
third party (a "Transferee") a product licensed under the Wild File Patents
under Section 3.1 (a "Transferred Product"), as part of a transfer of assets,
stock or other rights in a product line, then, after Adaptec's notification to
Roxio of such transfer, Adaptec may transfer its license for the Transferred
Product to the Transferee on the condition that Adaptec becomes unlicensed for
the Transferred Product (as that term is defined in the agreement transferring
the product from Adaptec to the Transferee ("Product Transfer Agreement")). The
foregoing shall not affect Adaptec's license under the Wild File Patents with
respect to any other product.
Roxio hereby grants Adaptec an option for a royalty free license under
the Wild File Patents of the same scope as the license transferred to the
Transferee, provided that the scope of the license in such option shall be
reduced to conform with such restrictions (including time restrictions), if any,
on Adaptec's ability to compete with the Transferred Product as may be agreed to
between Adaptec and the Transferee. Adaptec may exercise such option, by giving
written notice to Roxio after such transfer, during such time as Roxio holds
such Wild File Patents and subject to such restrictions, and, if any such
restrictions have been agreed to, including with such notice a copy of the
relevant sections of the Product Transfer Agreement or related agreement that
sets forth such restrictions.
3.3 ADAPTEC LICENSE TO ROXIO FOR CURRENT PRODUCTS. Adaptec hereby
grants to Roxio a nonexclusive, irrevocable, fully paid-up, worldwide license,
without the right to grant sublicenses, under the Adaptec Patents to make
(including the right to practice methods, processes and procedures), have made,
use, lease, sell, offer for sale and import any products and services that are
commercially released by Roxio prior to or on the Separation Date that embody or
are made in accordance with any invention of the Adaptec Patents ("Current Roxio
Licensed Products").
3.4 ROXIO LICENSE TO ADAPTEC FOR CURRENT PRODUCTS. Roxio hereby grants
to Adaptec a nonexclusive, irrevocable, fully paid-up, worldwide license,
without the right to grant
-5-
sublicenses, under the Assigned Patents to make (including the right to practice
methods, processes and procedures), have made, use, lease, sell, offer for sale
and import any products and services that are commercially released by Adaptec
prior to or on the Separation Date that embody or are made in accordance with
any invention of the Assigned Patents ("Current Adaptec Licensed Products").
3.5 ADAPTEC LICENSE TO ROXIO FOR SUBSEQUENT PRODUCTS. Adaptec hereby
grants to Roxio a nonexclusive, irrevocable, fully paid-up, worldwide license,
without the right to grant sublicenses, under the Adaptec Patents to make
(including the right to practice methods, processes and procedures), have made,
use, lease, sell, offer for sale and import products or services containing
functionality (a) embodied in a Current Roxio Licensed Product, and (b)
embodying or made in accordance with any invention(s) of the Adaptec Patents.
Such license shall not extend to any functionality or feature of the product or
service not embodied in a Current Roxio Licensed Product.
3.6 ROXIO LICENSE TO ADAPTEC FOR SUBSEQUENT PRODUCTS. Roxio hereby
grants to Adaptec a nonexclusive, irrevocable, fully paid-up, worldwide license,
without the right to grant sublicenses, under the Assigned Patents to make
(including the right to practice methods, processes and procedures), have made,
use, lease, sell, offer for sale and import products or services containing
functionality (a) embodied in a Current Adaptec Licensed Product, and (b)
embodying or made in accordance with any invention(s) of the Assigned Patents.
Such license shall not extend to any functionality or feature of the product or
service not embodied in a Current Adaptec Licensed Product.
3.7 NO LICENSE GRANTED UNDER EXCLUSIVELY LICENSED PATENTS. Not
withstanding any other statement in this Agreement, no license is granted by
Roxio to Adaptec under any Patent to the extent such Patent was exclusively
licensed or exclusively optioned to a third party by Adaptec before the
Separation Date.
3.8 EXTENSION OF LICENSES TO SUBSIDIARIES. Notwithstanding any
prohibition on sublicenses set forth in this Article 3, the licenses granted in
this Agreement shall include the right of the parties hereto to sublicense their
respective Subsidiaries. Each sublicensed Subsidiary shall be bound by the terms
and conditions of this Agreement as if it were named herein in the place of the
party with whom the sublicense originated. If a sublicensed Subsidiary ceases to
be a Subsidiary and holds any patents or patent applications under which a party
hereto is licensed, such license will continue for the life of such patents or
patent applications. Any sublicense granted to a Subsidiary shall terminate on
the date such Subsidiary ceases to be a Subsidiary.
3.9 LICENSE RIGHTS AS TO CERTAIN OTHER PATENTS. If Adaptec holds rights
under any patent that would qualify as one of the Adaptec Patents solely but for
the requirement of payment of royalties for the granting of licenses thereunder
("Royalty Bearing Patent"), Adaptec agrees, within a reasonable time of Roxio's
written request, to grant Roxio a license under the Royalty Bearing Patent
("Royalty Bearing Patent License"). Such Royalty Bearing Patent License shall be
granted under the terms and conditions of licenses granted to Roxio herein under
the Adaptec Patents, but only during such time as Adaptec holds such rights
under the Royalty Bearing
-6-
Patent and at the royalty rate which Adaptec is obligated to pay for the grant
of such Royalty Bearing Patent License.
ARTICLE 4
ADDITIONAL OBLIGATIONS
4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS
(a) The parties will cooperate to effect a smooth transfer of the
responsibility for prosecution, maintenance and enforcement of the Assigned
Patents and Wild File Patents from Adaptec or any Subsidiary to Roxio. Until
such transfer has been effected, Adaptec agrees to continue the prosecution and
maintenance of, and ongoing litigation (if any) with respect to, the Assigned
Patents and Wild File Patents (including payment of maintenance fees), and to
maintain its files and records relating to the Assigned Patents and Wild File
Patents using the same standard of care and diligence that it uses with respect
to Adaptec's Patents. Roxio will reimburse Adaptec for all actual and reasonable
expenses (excluding the value of the time of Adaptec employees) to continue to
prosecute and maintain the Assigned Patents and Wild File Patents after the
Effective Date until the transfer of responsibility for the Assigned Patents and
Wild File Patents has been completed and to continue any such ongoing
litigation. The parties shall agree on a case by case basis on compensation, if
any, of Adaptec for the value of time of Adaptec's employees as reasonably
required in connection with any such litigation. Adaptec will provide Roxio with
the originals or copies of its files relating to the Assigned Patents and Wild
File Patents upon such transfer or at such earlier time as the parties may
agree.
(b) Adaptec shall provide continuing reasonable support to Roxio
with respect to the Assigned Patents and Wild File Patents, including by way of
example the following:
(i) executing all documents prepared by Roxio necessary for
prosecution, maintenance, and litigation of the Assigned Patents and Wild File
Patents,
(ii) making available to Roxio or its counsel, inventors and
other persons employed by Adaptec for interviews and/or testimony to assist in
good faith in further prosecution, maintenance or litigation of the Assigned
Patents and Wild File Patents, including the signing of documents related
thereto,
(iii) forwarding copies of all correspondence sent and
received concerning the Assigned Patents and Wild File Patents within a
reasonable period of time after receipt by Adaptec, and
(iv) making all relevant documents in the possession or
control of Adaptec and corresponding to the Assigned Patents and Wild File
Patents, or any licenses thereunder, available to Roxio or its counsel.
-7-
Any actual and reasonable out-of-pocket expenses associated with any such
assistance shall be borne by Roxio, expressly excluding the value of the time of
such Adaptec employees; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of Adaptec for the value of the time of Adaptec's employees as reasonably
required in connection with such litigation.
4.2 RECORDATION OF LICENSES
(a) For any country, now or in the future, that requires the
express consent of all inventors or their assignees to the grant of licenses or
rights under Patents issued in such countries for Assigned Patents, Wild File
Patents or Adaptec Patents:
(i) each party shall give such consent, or shall obtain such
consent from its employees, its Subsidiaries or employees of any of its
Subsidiaries, as required to make full and effective any such licenses and
rights respecting any Patent license granted to a grantee hereunder by such
party; and
(ii) each party shall take steps that 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
Patent license 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.
(b) Each party agrees, without demanding any further
consideration, to execute (and to cause its Subsidiaries to execute) all
documents reasonably requested by the other party to effect recordation of the
license relationship between the parties created by this Agreement.
ARTICLE 5
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information which is the subject matter
of this Agreement.
ARTICLE 6
TERM AND TERMINATION
6.1 TERM OF AGREEMENT. The term of this Agreement shall be from the
Effective Date until the last to expire of the Assigned Patents and the Wild
File Patents.
6.2 VOLUNTARY TERMINATION. By written notice to the other party, either
party may voluntarily terminate all or a specified portion of the licenses and
rights granted to it hereunder by
-8-
the other party. Such notice shall specify the effective date of such
termination and shall clearly specify any affected Patent, Patent application,
Invention Disclosure, product or service.
6.3 SURVIVAL. Any voluntary termination of licenses and rights of a
party under Section 6.2 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 such party
hereunder.
6.4 NO OTHER TERMINATION. Each party acknowledges and agrees that its
remedy for breach by the other party of the licenses granted to it hereunder or
of any other provision hereof, shall be, subject to the requirements of Article
7, to bring a claim to recover damages and to seek any other appropriate
equitable relief.
ARTICLE 7
DISPUTE RESOLUTION
Resolution of any and all Disputes arising from or in connection with
this Agreement shall be exclusively governed by and settled in accordance with
the provisions of this Article 7.
7.1 NEGOTIATION. The parties shall make a good faith attempt to resolve
any Dispute arising out of or relating to this Agreement through informal
negotiation between appropriate representatives from each of Adaptec and Roxio.
If at any time either party feels that such negotiations are not leading to a
resolution of the Dispute, such party may send a notice to the other party
describing the Dispute and requesting a meeting of the senior executives from
each party. Within ten (10) business days after such notice of a Dispute is
given, each party shall select appropriate senior executives (e.g., director or
V.P. level) of each party who shall have the authority to resolve the matter and
shall meet to attempt in good faith to negotiate a resolution of the Dispute
prior to pursuing other available remedies. During the course of negotiations
under this Section 7.1, all reasonable requests made by one party to the other
for information, including requests for copies of relevant documents, will be
honored. The specific format for such negotiations will be left to the
discretion of the designated negotiating senior executives but may include the
preparation of agreed upon statements of fact or written statements of position
furnished to the other party. In the event that any Dispute arising out of or
related to this Agreement is not settled by the parties within thirty (30) days
after the first meeting of the negotiating senior executives, either party may
commence litigation with respect to the Dispute. However, except as provided
below in Section 7.2, neither party shall commence litigation against the other
party to resolve the Dispute (i) until the parties try in good faith to settle
the Dispute by negotiation for at least thirty (30) days after the first meeting
of the negotiating senior executives or (ii) until forty (40) days after notice
of a Dispute is given by either party to the other party, whichever occurs
first.
7.2 PROCEEDINGS. Any Dispute regarding the following is not required to
be negotiated prior to seeking relief from a court of competent jurisdiction:
breach of any obligation of confidentiality; infringement, misappropriation, or
misuse of any intellectual property right; or any other claim where interim
relief from the court is sought to prevent serious and irreparable injury to
-9-
a party. However, the parties shall make a good faith effort to negotiate such
Dispute, according to Section 7.1, while such court action is pending.
7.3 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement during the course
of dispute resolution pursuant to the provisions of this Article 7 with respect
to all matters not subject to such dispute, controversy or claim.
ARTICLE 8
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY THEORY
OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT,
WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT DAMAGES FOR
INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS TO THE EXTENT NOT LICENSED OR
COVENANTED HEREIN; PROVIDED FURTHER THAT THE FOREGOING LIMITATIONS SHALL NOT
LIMIT EACH PARTY'S INDEMNIFICATION OBLIGATIONS FOR LIABILITIES TO THIRD PARTIES
AS SET FORTH IN THE INDEMNIFICATION AND INSURANCE MATTERS AGREEMENT.
ARTICLE 9
REPRESENTATIONS AND WARRANTIES
9.1 FULL POWER AND AUTHORITY. Each party represents and warrants that
as of the Effective Date it has the full legal right, power and authority to
enter into and perform this Agreement.
9.2 EXECUTION DULY AUTHORIZED. Each party represents and warrants that
the execution, delivery and performance of this Agreement have been duly
authorized by all necessary corporate action and that the individual executing
such document on its behalf is duly authorized to do so.
ARTICLE 10
MISCELLANEOUS PROVISIONS
-10-
10.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL PATENTS
AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE
LICENSED OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER,
EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION
ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of
the foregoing, neither party nor any of its Subsidiaries makes any warranty or
representation as to the validity and/or scope of any Patent licensed by it to
the other party hereunder or any warranty or representation that any
manufacture, use, importation, offer for sale or sale of any product or service
will be free from infringement of any Patent or other intellectual property
right of any Third Party.
10.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Assigned Patents, Wild File Patents and Adaptec
Patents. Neither party is required hereunder to furnish or disclose to the other
any technical or other information except as specifically provided herein.
10.3 INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Patent or to defend any action or suit brought by a Third Party which
challenges or concerns the validity of any Patent. Unless the parties otherwise
agree in writing, neither party shall have any right to institute any action or
suit against Third Parties for infringement of any Patent owned by the other
party.
10.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES
OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries is obligated to (i) file any Patent application, or
to secure any Patent or Patent rights, (ii) to maintain any Patent in force, or
(iii) provide any technical assistance, except for the obligations expressly
assumed in this Agreement.
10.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements and the Exhibits and
Schedules referenced or attached hereto and thereto, constitute the entire
agreement between the parties with respect to the subject matter hereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof.
10.6 CONFLICTING AGREEMENTS. In the event of a conflict between this
Agreement and the Master Separation and Distribution Agreement or the other
Ancillary Agreements, the provisions of this Agreement shall prevail.
-11-
10.7 GOVERNING LAW. This Agreement shall be construed in accordance
with and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Santa Xxxxx County and/or the United States District Court for the Northern
District of California, San Xxxx Division, shall have jurisdiction and venue
over all Disputes between the parties that are permitted to be brought in a
court of law pursuant to Article 7 above.
10.8 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in
any Exhibit or Schedule hereto and in the table of contents to this Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
10.9 NOTICES. Any notice, demand, offer, request or other communication
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be in writing and shall be deemed effectively given the earlier
of (i) when received, (ii) when delivered personally, (iii) one (1) Business Day
after being delivered by facsimile (with electronic receipt of appropriate
confirmation), (iv) one (1) Business Day after being deposited with a nationally
recognized overnight courier service or (v) four (4) days after being deposited
in the U.S. mail, First Class with postage prepaid, and addressed to the
attention of:
IF TO ADAPTEC, INC.:
Adaptec, Inc.
000 X. Xxxxxxxx Xxxx.
Xxxxxxxx, XX 00000
Attention: Vice President and General Counsel
Facsimile No.: (000) 000-0000
with a copy to:
Xxxxxx Xxxxxxx Xxxxxxxx & Xxxxxx, Professional Corporation
000 Xxxx Xxxx Xxxx
Xxxx Xxxx, XX 00000-0000
Attention: Xxxxx X. Xxxxxx, Xx.
Facsimile No.: (000)-000-0000
IF TO ROXIO, INC.:
Roxio, Inc.
000 Xxxxx Xxxxxxxx Xxxx.
Xxxxxxxx, XX 00000
Attention: Xxxxxxx Xxxxxxxxxxx Xxxxx
-12-
Facsimile No.: (000) 000-0000
with a copy to:
Xxxx Xxxx Xxxx & Freidenrich LLP
000 Xxxxxxx Xxxx, Xxxxx 0000
Xxxxxxxxxx, XX 00000
Attention: Xxxxx X. Xxxxx
Facsimile No.: 000-000-0000
Adaptec and Roxio may substitute a different address or facsimile number, from
time to time, if such substitute is provided to the intended notice recipient in
writing by notice given in the manner provided in this Section 10.8.
10.10 NONASSIGNABILITY. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its successive assignees or transferees hereunder)
may, without such consent, assign or transfer this Agreement to a Person (i)
that succeeds to all or substantially all of its business or assets of such
party, or (ii) in a merger, acquisition or other corporate reorganization in
which such party is a constituent corporation, as long as such Person agrees to
accept all of the terms set forth herein. Without limiting the foregoing, this
Agreement will be binding upon and inure to the benefit of the parties and their
permitted successors and assigns.
10.11 SEVERABILITY. The parties hereto have negotiated and prepared the
terms of this Agreement in good faith with the intent that each and every one of
the terms, covenants and conditions herein be binding upon and inure to the
benefit of the respective parties. Accordingly, if any one or more of the terms,
provisions, promises, covenants or conditions of this Agreement or the
application thereof to any person or circumstance shall be adjudged to any
extent invalid, unenforceable, void or voidable for any reason whatsoever by a
court of competent jurisdiction, such provision shall be as narrowly construed
as possible, and each and all of the remaining terms, provisions, promises,
covenants and conditions of this Agreement or their application to other persons
or circumstances shall not be affected thereby and shall be valid and
enforceable to the fullest extent permitted by law. To the extent this Agreement
is in violation of applicable law, then the parties agree to negotiate in good
faith to amend the Agreement, to the extent possible consistent with its
purposes, to conform to law.
10.12 WAIVER OF BREACH. A waiver of breach hereof shall be made only by
a writing signed by the party making such waiver. The waiver by either party
hereto of a breach or violation of any provision of this Agreement shall not
operate as, or be construed to constitute, a waiver of any subsequent breach of
the same or another provision hereof.
10.13 AMENDMENT AND EXECUTION. This Agreement and amendments hereto
shall be in writing and executed in multiple copies via facsimile or otherwise
on behalf of Adaptec and
-13-
Roxio by their respective duly authorized officers and representatives. Each
multiple copy shall be deemed an original, but all multiple copies together
shall constitute one and the same instrument.
-14-
WHEREFORE, the parties have signed this Master Patent Ownership and
License Agreement effective as of the date first set forth above.
ADAPTEC, INC. ROXIO, INC.
By: /s/ Xxxxxx X. Xxxxxxxx By: /s/ Wm. Xxxxxxxxxxx Xxxxx
------------------------------- --------------------------------
Name: Xxxxxx X. Xxxxxxxx Name: Wm. Xxxxxxxxxxx Xxxxx
---------------------------- ------------------------------
Title: President, Title: President and
Chief Executive Officer Chief Executive Officer
---------------------------- -----------------------------
[SIGNATURE PAGE TO MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT]
