Exhibit 2.12
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Cross-License Agreement
This License Agreement is effective as of the 28/h/ day of August 2000 (the
"Effective Date") by and between ENTERASYS NETWORKS, INC., a Delaware
Corporation ("Enterasys") and APRISMA MANAGEMENT TECHNOLOGIES, INC., a Delaware
corporation ("Aprisma"). Licensor and Licensee may also be referred to below as
the "Parties," and, individually, as a "Party".
WHEREAS, the Parties are among the parties to the Transformation Agreement;
and
WHEREAS, in Section 4.1.3 of the Transformation Agreement, the Parties
agreed to enter into a License Agreement in which they would each grant one
another certain licenses provided the other complied with the terms and
conditions of those licenses;
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements, provisions and covenants contained herein and therein, and for other
good and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties agree as follows:
1. DEFINITIONS.
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For the purposes of this Agreement, capitalized words or phrases will have
the meanings ascribed to them below.
1.1 "Affiliate" means any company, corporation, business, or other entity
that is both (i) a direct or indirect subsidiary of a Party and (ii)
controlled by that Party. For purposes of this definition, "control"
means direct or indirect beneficial ownership of at least fifty
percent (50%) of the voting stock (or the equivalent) of an entity.
1.2 "Ancillary Agreements" has the meaning given it in the Transformation
Agreement.
1.3 "Aprisma Business as of the Effective Date" means the "Company
Business" as that term is defined in the Aprisma Contribution
Agreement and as that Company Business exists as of the Effective
Date.
1.4 "Aprisma Contribution Agreement" means the Asset Contribution
Agreement effective June 3, 2000, by and between Cabletron Systems,
Inc. and Aprisma
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Management Technologies, Inc.
1.5 "Aprisma Know-How" means that technology, inventions, or technical
information, whether patentable or not, (a) that was discovered,
invented or developed before the Effective Date, (b) that is useful in
connection with the conduct of the Enterasys Business as of the
Effective Date, and (c) which constitutes and will continue to
constitute Confidential Information of Aprisma.
1.6 "Aprisma Patents" means (i) those patents and patent applications that
are included within the term "Contributed Registered Intellectual
Property", as defined in the Aprisma Contribution Agreement; (ii)
those patent applications filed by Aprisma or its Affiliates within
the two (2) years of the Effective Date and any patents that issue as
a result of any such patent applications; (iii) any foreign or
domestic counterparts to any patent or patent application within (i)
or (ii); and any and all reissues, divisions, renewals, extensions,
provisionals, continuations, and continuations-in-part thereof of any
patent or patent application within (i), (ii), or (iii).
1.7 "Aprisma Products" means the "Products" as that term is defined in the
Aprisma Contribution Agreement.
1.8 "Business as of the Effective Date" means, depending on the context
either the Aprisma Business as of the Effective Date or the Enterasys
Business as of the Effective Date.
1.9 "Confidential Information" means any and all information of or about
Party, including all information relating to any technology, product,
process or intellectual property of a Party (including, but not
limited to, owned or licensed intellectual property rights, data,
know-how, samples, technical and non-technical materials and
specifications) as well as any business plan, financial information or
other confidential commercial information of or about a Party .
1.10 "Enterasys Business as of the Effective Date" means the "Company
Business" as that term is defined in the Enterasys Contribution
Agreement and as that Company Business exists as of the Effective
Date.
1.11 "Enterasys Contribution Agreement" means the Asset Contribution
Agreement effective June 3, 2000, by and between Cabletron Systems,
Inc. and Enterasys Networks, Inc.
1.12 "Enterasys Know-How" means that technology, inventions, or technical
information, whether patentable or not, (a) that was discovered,
invented or
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developed before the Effective Date, (b) that is useful in connection
with the conduct of the Aprisma Business as of the Effective Date, and
(c) which constitutes and will continue to constitute Confidential
Information of Enterasys .
1.13 "Enterasys Patents" means (i) those patents and patent applications
that are included within the term "Contributed Registered Intellectual
Property", as defined in the Enterasys Contribution Agreement; (ii)
those patent applications filed by Enterasys or its Affiliates within
the two (2) years of the Effective Date and any patents that issue as
a result of any such patent applications; (iii) any foreign or
domestic counterparts to any patent or patent application within (i)
or (ii); and any and all reissues, divisions, renewals, extensions,
provisionals, continuations, and continuations-in-part of any patent
or patent application within (i), (ii), or (iii).
1.14 "Enterasys Products" means the "Products" as that term is defined in
the Enterasys Contribution Agreement.
1.15 "Know-How" means, depending on the context, either Aprisma Know-How or
Enterasys Know-How.
1.16 "Patents" means, depending on the context, either Aprisma Patents or
Enterasys Patents.
1.17 "Products" means, depending on the context, either Aprisma Products or
Enterasys Products.
1.18 "Territory" means all territories.
1.19 "Transformation Agreement" means the Transformation Agreement entered
into as of June 3, 2000, by and among Cabletron Systems, Inc.; Aprisma
Management Technologies, Inc.; Enterasys Networks, Inc.; GlobalNetwork
Technology Services, Inc.; and Riverstone Networks, Inc.
2. GRANTS OF LICENSES
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2.1 License Grant to Aprisma. Subject to the terms and conditions of this
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Agreement, Enterasys grants Aprisma and its Affiliates, as they may exist from
time to time, a limited, royalty-free, fully-paid, non-exclusive, non-
transferable, perpetual license under the Enterasys Patents and the Enterasys
Know-How in the Territory only:
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2.1.1 to use the Enterasys Patents and the Enterasys Know-How in the
conduct of the Aprisma Business as of the Effective Date, and
2.1.2 to design, develop, make, have made, use, market, distribute
(directly and indirectly), license, sell, maintain and support
Aprisma Products, and products that are extensions to, modifications
of, improvements on, or successor products that fulfill a similar or
enhanced function to those Products,
provided, however, that no license is given for any use that is competitive
with the Enterasys Business as of the Effective Date or that would allow
Aprisma to design, develop, make, have made, use, market, distribute
(directly and indirectly), license, or sell any products that are directly
or indirectly competitive with any Enterasys Products.
2.2 License Grant to Enterasys. Subject to the terms and conditions of this
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Agreement, Aprisma grants Enterasys and its Affiliates, as they may exist
from time to time, a limited, royalty-free, fully-paid, non-exclusive, non-
transferable, perpetual license under the Aprisma Patents and the Aprisma
Know-How in the Territory only:
2.2.1 to use the Aprisma Patents and the Aprisma Know-How in the conduct
of the Enterasys Business as of the Effective Date, and
2.2.2 to design, develop, make, have made, use, market, distribute
(directly and indirectly), license, sell, maintain, and support
Enterasys Products, and products that are extensions to,
modifications of, improvements on, or successor products that
fulfill a similar or enhanced function to those Products,
provided, however, that no license is given for any use that is competitive
with the Aprisma Business as of the Effective Date or that would allow
Enterasys to design, develop, make, have made, use, market, distribute
(directly and indirectly), license, sell any products that are directly or
indirectly competitive with any Aprisma Products.
2.3 Affiliates. For any entity that becomes an Affiliate of Party after the
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Effective Date, the licenses to that Affiliate will only become effective
as of the date that entity becomes an Affiliate of that Party. Any rights
granted to an entity that is an Affiliate of a Party under this Agreement
shall terminate, without any action on the other Party's part, upon that
entity's ceasing to be an Affiliate of such Party.
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2.4 Sublicenses. A Party may not grant any sublicenses or licenses under
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the licenses granted to it under this Agreement.
2.5 Reservation of Rights. All rights, title and interest in and to one
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Party's Patents and Know-How not specifically granted by this
Agreement are reserved to that Party for that Party's own use and
benefit.
3 MARKING
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3.1 Marking Requirement. A Party shall xxxx all its Products, or their
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respective containers, labels, or documentation, with the numbers of
each of the other Party's Patents licensed under this Agreement that
has one or more claims that cover such Products.
4 REPRESENTATIONS AND WARRANTIES
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4.1 Aprisma's Representations. Aprisma hereby represents and warrants to
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the Enterasys that (a) Aprisma is a corporation duly organized,
validly existing and in good standing under the laws of the
jurisdiction of the State of Delaware, and (b) Aprisma has full
corporate power and authority to execute, deliver and perform this
Agreement.
4.2 Enterasys's Representations. Enterasys hereby represents and warrants
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to the Aprisma that (a) Enterasys is a corporation duly organized,
validly existing and in good standing under the laws of the
jurisdiction of the State of Delaware, and (b) Enterasys has full
corporate power and authority to execute, deliver and perform this
Agreement.
4.3 Aprisma's Disclaimer of All Other Warranties. EXCEPT AS EXPRESSLY
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STATED IN SECTION 4.1, APRISMA IS PROVIDING THE LICENSES AND RIGHTS IT
HAS GRANTED IN THIS AGREEMENT AS IS AND AS AVAILABLE. APRISMA MAKES
NO, AND EXPESSLY DISCLAIMS, ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF TITLE, NON-
INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
4.4 Enteresys's Disclaimer of All Other Warranties. EXCEPT AS EXPRESSLY
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STATED IN SECTION 4.2, ENTERASYS IS PROVIDING THE LICENSES AND RIGHTS
IT HAS GRANTED IN THIS AGREEMENT AS IS AND AS AVAILABLE. ENTERASYS
MAKES NO, AND EXPESSLY DISCLAIMS, ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT
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LIMITED TO THE IMPLIED WARRANTIES OF TITLE, NON-INFRINGEMENT,
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
5 EXCLUSION OF DAMAGES AND INDEMNIFICATION
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5.1 Exclusion of Damages. EXCEPT FOR A BREACH OF ANY PROVISION OF SECTIONS
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2, 3, 8.4 AND 8.5 OF THIS AGREEMENT, IN NO EVENT SHALL EITHER PARTY BE
LIABLE FOR ANY INDIRECT OR CONSEQUENTIAL DAMAGES, INCLUDING ANY LOSS
OF TIME, MONEY, PROFITS, DATA, OR GOODWILL, RESULTING FROM OR THROUGH
THE EXERCISE OR ATTEMPTED EXERCISE OF ANY RIGHTS GRANTED IN THIS
AGREEMENT, EVEN IF SUCH PARTY HAS BEEN APPRISED OF THE POSSIBILITY OF
SUCH DAMAGES.
5.2 Indemnification. The provisions of Section 6 of the Transformation
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Agreement shall apply to indemnity claim for or obligation of
indemnity between the Parties under this Agreement.
6 INFRINGEMENT BY OTHERS; PROTECTION OF PATENTS
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6.1 Notice of Infringement. Each Party shall promptly inform the other
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Party of any suspected infringement by a third party of any of such
other Party's Patents or Know-How licensed under this Agreement.
6.2 Right to Request Permission to Assert Patent Rights. During the term
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of this Agreement, if a Party is named as a defendant in any action
claiming that any of its Products or the operation of its Business as
of the Effective Date infringes a patent owned by a third party, that
Party may request permission from the other Party to assert against
that third party a claim of infringement of one or more of the such
other Party's Patents licensed under this Agreement. Any such request
shall identify the third party and also include that information
necessary for such other Party to consider whether a basis for such a
claim exists; the likelihood of success of such a claim; and the risks
associated with asserting such a claim.
6.3 Assertion of Patent Rights. The Party owning a Patent in its sole
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discretion may grant or not grant permission to the other Party to
assert a claim of infringement of one or more of its Patents against a
third party. If such permission is granted, the Parties may proceed as
follows:
6.3.1 The Party owning a Patent may institute suit jointly with the
other Party, the suit being brought in both their names, the
out-of-pocket costs
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thereof being borne equally, and any recovery or settlement
being shared equally. The Parties shall agree to the manner in
which they shall exercise control over such action, with the
Party owning the Patent having ultimate decision authority as
to all matters as to which the Parties cannot agree. The Party
not owning the Patent may, if it so desires, also be
represented by separate counsel of its own selection, the fees
for which counsel shall be paid by such Party;
6.3.2 The Party owning a Patent may institute suit on its own. Such
Party shall bear the entire cost of such litigation and shall
be entitled to retain the entire amount of any recovery or
settlement. The other Party shall have no right or interest in
such action or any recovery or settlement achieved through it;
or
6.3.3 The Party owning a Patent may allow the other Party to
institute the suit, naming the Party owning the Patent as a
party. Such other Party shall bear the entire cost of such
litigation, including expenses incurred by the Party owning the
Patent. Such other Party may not settle or otherwise compromise
such claims absent the express written permission of the Party
owning the Patent. Any recovery in excess of litigation costs
will be shared equally by the Parties. The Parties agree to
negotiate in good faith an appropriate compensation to the
Party owning the Patent for any non-cash settlement or non-cash
cross-license.
6.4 Abandonment of Actions. Should either Party commence a suit under the
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provisions of Section 6.3 and thereafter elect to abandon the same, it
shall give timely notice to the other Party who may, if it so desires,
continue prosecution of such suit, provided, however, that the sharing
of expenses and any recovery in such suit shall be as agreed upon
between Parties.
7 TERMINATION
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7.1 Term. Unless otherwise terminated in accordance with the terms of
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this Agreement or by mutual consent, the term of this Agreement is
perpetual.
7.2 Termination By Mutual Consent. The Parties may terminate this
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Agreement by mutual consent, in writing.
7.3 Effect of Termination. Upon a termination of this Agreement, any
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Confidential Information of one Party in the possession of the other
Party and its Affiliates shall be returned and all licenses granted
hereunder shall terminate.
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7.4 Survival. Sections 4, 5, and 8 shall survive any termination of this
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Agreement.
8 MISCELLANEOUS
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8.1 Entire Agreement. This Agreement, the Transformation Agreement and the
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other Ancillary Agreements, including the Schedules and Exhibits
hereto and thereto, and the other documents delivered hereunder and
thereunder constitute the entire agreement among the Parties hereto
pertaining to the subject matter hereof and supersede all prior or
contemporaneous agreements, understandings, negotiations and
discussions, whether oral or written, of the Parties with respect to
such subject matter.
8.2 Amendment or Modification. Except as otherwise provided in the
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Transformation Agreement, the Parties may not amend or modify this
Agreement except by a written instrument executed by the Parties.
8.3 Severability. In the event that any provision hereof would, under
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applicable law, be invalid or unenforceable in any respect, such
provision shall (to the extent permitted under applicable law) be
construed by modifying or limiting it so as to be valid and
enforceable to the maximum extent compatible with, and possible under,
applicable law. The provisions hereof are severable, and in the event
any provision hereof should be held invalid or unenforceable in any
respect, it shall not invalidate, render unenforceable or otherwise
affect any other provision hereof.
8.4 Confidential Information. Each Party shall maintain the Confidential
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Information of the other Party in confidence to the same extent that
such Party maintains and protects its own confidential information,
and shall not disclose, divulge or otherwise communicate such
Confidential Information to others, or use it for any purpose, except
pursuant to, and in order to carry out, the terms and objectives of
this Agreement or with the express written consent of the Party that
provided the Confidential Information. Each Party also hereby agrees
to take reasonable steps to prevent and restrain the unauthorized
disclosure of such Confidential Information by any of its directors,
officers, employees, consultants, sub-contractors or agents. The
provisions of this paragraph shall not apply to any Confidential
Information of a Party which is required to be disclosed by the other
Party to comply with any applicable laws or regulations, but only to
the extent required by such law or regulation and further provided
that the Party, before making any disclosure pursuant to the
provisions of this sentence, shall provide prior written notice of
such disclosure to the other Party sufficiently in advance of such
disclosure to allow such Party to respond and to
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take reasonable and lawful action to avoid and/or minimize the degree
of such disclosure.
8.5 Successors and Assigns. Neither Party may transfer or assign this
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Agreement without the express written consent of the other Party,
provided, however, that a Party may transfer or assign this Agreement
in connection with the sale of all or substantially all its business
to a successor to that business. Any attempt to assign this Agreement
in violation of this Section shall be null and void. All the terms and
provisions of this Agreement shall be binding upon and shall inure to
the benefit of the Parties hereto and their respective permitted
transferees and assigns (each of which transferees and assigns shall
be deemed to be a Party hereto for all purposes hereof).
8.6 Notices. Any notices or other communications required or permitted
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hereunder shall be sufficiently given if in writing and delivered
personally or sent by telecopier, Federal Express, or registered or
certified mail, postage prepaid, addressed as follows:
If to Aprisma,
to it at: Aprisma Management Technologies, Inc.
000 Xxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: President
Telecopier No.: (000) 000-0000
with a copy to: Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Fine
Telecopier No.: (000) 000-0000
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If to Enterasys,
to it at: Enterasys Networks, Inc.
00 Xxxxxxxxxx Xxx
Xxxxxxxxx, XX 00000
Attention: President
Telecopier No.: (000) 000-0000
with a copy to: Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Fine
Telecopier No.: (000) 000-0000
Unless otherwise specified herein, such notices or other
communications shall be deemed received (a) on the date delivered, if
delivered personally, (b) two Business Days after being sent by
Federal Express, if sent by Federal Express, (c) one Business Day
after being delivered, if delivered by telecopier and (d) three
Business Days after being sent, if sent by registered or certified
mail. Each of the Parties hereto shall be entitled to specify a
different address by giving notice as aforesaid to each of the other
Parties hereto.
8.7 Interpretation. Section and subsection headings are not to be
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considered part of this Agreement, are included solely for
convenience, are not intended to be full or accurate descriptions of
the content thereof and shall not affect the construction hereof. No
rule of strict construction shall apply to or be used against any
Party hereto.
8.8 Third Party Beneficiaries. Nothing in this Agreement is intended or
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shall be construed to entitle any person or entity other than the
Parties and their respective transferees and assigns permitted hereby
to any claim, cause of action, remedy or right of any kind.
8.9 Counterparts. This Agreement may be executed in any number of
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counterparts, each of which shall be deemed an original, but all of
which together shall constitute but one and the same instrument.
8.10 Governing Law. This Agreement shall be governed by and construed in
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accordance with the domestic substantive laws of the State of
Delaware, without giving effect to any choice or conflict of law
provision or rule that would cause the application of the laws of any
other jurisdiction.
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IN WITNESS WHEREOF, the Parties hereto, intending to be legally bound
hereby, have caused this Agreement to be executed, as of the date first above
written by their respective officers thereunto duly authorized.
APRISMA MANAGEMENT
TECHNOLOGIES, INC.
By: /s/ Xxxxxxx Xxxxxxx
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Title: President
ENTERASYS NETWORKS, INC
By: /s/ Xxxxxxx Xxxxxx
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Title: President
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