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Exhibit 10.20
EXHIBIT FF
AT&T TRADEMARK AND PATENT AGREEMENT
THIS AT&T TRADEMARK AND PATENT AGREEMENT ("Agreement") is
being entered into as of July 31, 1996 by and between AT&T CORP., a corporation
of the State of New York ("AT&T"), AT&T PARADYNE CORPORATION, a corporation of
the State of Delaware ("PARADYNE"), and CAP ACQUISITION CORP., a corporation of
the State of Delaware ("CAPCo"), and is Exhibit FF to the Purchase Agreement
("Purchase Agreement") dated June 18, 1996 between PARADYNE, CAPCo, LUCENT
TECHNOLOGIES, INC., a corporation of the State of Delaware ("LUCENT"), PARADYNE
PARTNERS, L.P., a Delaware limited partnership, PARADYNE ACQUISITION CORP., a
Delaware limited partnership ("BUYER"), RENTAL ACQUISITION CORP., a corporation
of the State of Delaware, and LEASE ACQUISITION CORP., a corporation of the
State of Delaware.
WHEREAS, LUCENT, a majority-owned subsidiary of AT&T; has
agreed to sell and BUYER has agreed to buy PARADYNE pursuant to the Purchase
Agreement; and
WHEREAS, the Purchase Agreement provides for an AT&T Trademark
and Patent Agreement between the parties hereto;
NOW, THEREFORE, it is hereby agreed by the parties:
ARTICLE 1
Definitions
Capitalized terms without definition in this Agreement shall
have the meanings assigned to them in the Purchase Agreement. As used herein,
the following terms have the following meanings:
1.1 "AT&T's Patents" shall mean every Patent as defined below
in Section 1.4, (including, without limitation, utility models, design patents
and design registrations) issued in any country of the world on patent
applications filed prior to the Closing Date with respect to which AT&T:
(a) prior to the Closing Date has ownership or
control, and
(b) as of the Closing Date otherwise has the right to
grant any licenses of the type herein granted by AT&T.
Notwithstanding the foregoing, "AT&T's Patents" do not include
(a) any patents or patent applications first filed prior to February 1, 1996
which patents or patent applications are (i) owned or controlled by AT&T
Wireless Services, Inc. ("AWS") or any of its Subsidiaries, and (ii) relate to
the business of wireless telecommunications services; or (b) any patents or
patent applications first filed on or after February 1, 1996 but before the
Closing Date and covering
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inventions made by employees of AWS or by third parties other than AT&T or any
of its Subsidiaries, which patents and applications (i) are owned or controlled
by AWS or any of its Subsidiaries, and (ii) which relate to the business of
wireless telecommunications services.
1.2 "Inherent Use" shall mean a use that would be completely
performed by a product and/or service as furnished by PARADYNE and/or CAPCo,
without the need for any additional product, service, development, modification
or programming by a customer of PARADYNE and/or CAPCo, or by a third party.
1.3 "PARADYNE/CAPCo Products" shall mean the products and/or
services of PARADYNE and of CAPCo in development by PARADYNE and/or CAPCo as of
the Closing Date and sold prior to one (1) year from the Closing Date and
products and/or services listed in Appendix 4, which must be sold prior to three
(3) years from the Closing Date.
1.4 "Patent" shall mean all the patents listed in Appendix 5
hereto, including all divisionals, continuations, re-examinations, renewals,
provisionals, continuations-in-part, re-issues, and foreign equivalents thereof
in existence as of the Closing Date and any other patents used by PARADYNE
and/or CAPCo as of the Closing Date, and identified in writing by PARADYNE
and/or CAPCo, and agreed to in writing by AT&T, within thirty (30) days after
the Closing Date. PARADYNE and CAPCo agree that they will make reasonably
diligent efforts to ascertain which patents of AT&T read on the PARADYNE/CAPCo
Products, and PARADYNE, CAPCo and AT&T will during the foregoing thirty (30) day
period, in mutual good faith, include only such patents in Appendix 5.
1.5 "Subsidiary" shall mean a corporation or other legal
entity: (i) the majority of whose shares or other securities entitled to vote
for election of directors (or other managing authority) is now or hereafter
owned or controlled by such company either directly or indirectly; or (ii) which
does not have outstanding publicly traded shares or securities but the majority
of whose ownership interest representing the right to manage such corporation or
other legal entity is now or hereafter owned or controlled by such company
either directly or indirectly; but any such corporation or the other legal
entity shall be deemed to be a Subsidiary of such company only as long as such
ownership or control exists.
1.6 "Telecommunication Services" means the operation of a
communications network to provide communication services to customers, including
the processing of information to the extent needed to transfer information
between locations. The term "Telecommunications Services" includes online and
Internet services, and wireless service, whether fixed or mobile. The provision
by PARADYNE and/or CAPCo of goods or services to entities which are themselves
providers of Telecommunication Services shall not be deemed to constitute the
provision of Telecommunication Services by PARADYNE and/or CAPCo.
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ARTICLE 2
Grants of Licenses
2.1 Grant.
AT&T hereby grants to PARADYNE and CAPCo under AT&T's Patents
non-exclusive, non-transferable (except as otherwise provided in Section 5.2),
irrevocable, world-wide licenses for PARADYNE/CAPCo Products. No license is
granted for the provision of Telecommunication Services.
2.2 Duration.
(a) All licenses granted herein under any Patent
shall continue for the entire unexpired term of such Patent. Notwithstanding the
foregoing, and notwithstanding Section 5.2 hereof, in the event that PARADYNE
and/or CAPCo, and/or the part(s) of their respective businesses, including their
Subsidiaries to whom sublicenses of AT&T's Patents have been granted, are sold
to any of the companies listed in Section 2.2(b), the licenses and/or
sublicenses extended to them under AT&T's Patents pursuant to this Agreement
shall immediately terminate. PARADYNE and/or CAPCo, as the case may be, will
promptly notify AT&T in writing of any such sale.
(b) MCI, Sprint, Microsoft Corporation, Excel and/or
any of the Regional Xxxx Operating Companies ("RBOCs").
2.3 Scope.
(a) The licenses granted herein are licensed to (i)
make, have made, use, lease, sell, offer to sell and import PARADYNE/CAPCo
Products; (ii) make, have made, use and import machines, tools, materials and
other instrumentalities, insofar as such machines, tools, materials and other
instrumentalities are involved in or incidental to the development, manufacture,
testing or repair of PARADYNE/CAPCo Products which are or have been made, used,
leased, owned, sold, offered for sale or imported by PARADYNE and/or CAPCo; and
(iii) convey to any customer of PARADYNE and/or CAPCo with respect to any
PARADYNE/CAPCo Product which is sold or leased by PARADYNE and/or CAPCo to such
customer, rights to use and resell such PARADYNE/CAPCo Product as sold or leased
by PARADYNE and/or CAPCo (whether or not as part of a larger combination);
provided, however, that no rights may be conveyed to customers with respect to
any invention which is directed to (1) a combination of such PARADYNE/CAPCo
Product (as sold or leased) with any other product, (2) a method or process
which is other than the Inherent Use of such Product itself (as sold or leased),
or (3) a method or process involving the use of a PARADYNE/CAPCo Product to
manufacture (including associated testing) any other product.
(b) Licenses granted herein are not be construed
either (i) as consent by AT&T to any act which may be performed by PARADYNE
and/or CAPCo except to the extent covered by AT&T's Patents licensed herein to
PARADYNE and/or CAPCo, or (ii) to include
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licenses to conributorily infringe or induce infringement under U.S. law or a
foreign equivalent thereof; provided, however, that any products licensed under
this Agreement may be used by the end user thereof for its intended purpose.
(c) The grant of each license hereunder includes the
right of PARADYNE and/or CAPCo to grant sublicenses within the scope of such
license to PARADYNE's and/or CAPCo's Subsidiaries for so long as they remain
their respective Subsidiaries, and thereafter as provided in Section 5.2
("Nonassignability"). Any such sublicense may be made effective retroactively,
but not prior to the effective date hereof, nor prior to the sublicensee
becoming a Subsidiary of PARADYNE and/or CAPCo.
ARTICLE 3
Trademarks
3.1 AT&T owns all right, title and interest in and to the
trademarks and common law marks set forth on Appendix 1 attached hereto
("Assigned Marks"). AT&T hereby assigns pursuant to the Trademark Assignment
Agreement attached hereto as Appendix 2 all of its worldwide rights, title and
interest in and to the Assigned Marks to PARADYNE, including the goodwill of the
business represented by the Assigned Marks, any AT&T registrations of Assigned
Marks, any AT&T applications of Assigned Marks, and any AT&T common law rights
in the Assigned Marks.
3.2 PARADYNE and CAPCo shall not use after the Closing Date
(1) the xxxx AT&T as a tradename or as part of a corporate name, (2) the
trademark AT&T and/or the AT&T Globe design, nor will PARADYNE or CAPCo use any
derivations or combination marks containing the elements AT&T and/or the AT&T
Globe design. However, PARADYNE and/or CAPCo is allowed to use up for a period
not exceeding one year after the Closing Date (1) all of PARADYNE's inventory of
products existing as of the Closing Date which bears the trademark AT&T and/or
AT&T Globe design, and (2) all printed matter other than letterheads, business
cards, etc. now used, bearing the trademark AT&T and/or AT&T Globe design.
3.3 AT&T shall not use after the Closing Date (1) the xxxx
PARADYNE as a tradename or as part of a corporate name; (2) the trademark
PARADYNE and/or the PARADYNE logo design, nor will AT&T use any derivations or
combination marks containing the elements PARADYNE and/or the PARADYNE logo
design; or (3) any of the Assigned Marks; provided, however, that AT&T
acknowledge and agrees that PARADYNE may use and register VOICESPAN for the
PARADYNE VOICESPAN GOODS as defined below and PARADYNE and CAPCo acknowledges
and agree that AT&T may use and register VOICESPAN for the AT&T VOICESPAN GOODS
as defined below. In no event will PARADYNE or CAPCo use VOICESPAN in connection
with the AT&T VOICESPAN GOODS and in no event will AT&T use VOICESPAN in
connection with the PARADYNE VOICESPAN GOODS. The parties agree to grant each
other consents to use and register VOICESPAN for their respective PARADYNE
VOICESPAN GOODS and AT&T VOICESPAN GOODS.
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PARADYNE VOICESPAN GOODS shall mean electronic products,
namely a microchip which allows the simultaneous transmission of voice and data
over analog communications lines, computer software to operate
telecommunications modems and to allow for simultaneous transmission of voice
and data over a telecommunications network, telecommunications modems and
microprocessors, and computer software for telecommunications purposes.
AT&T VOICESPAN GOODS shall mean satellite-related products and
software and satellite telecommunications services.
3.4 With respect to the registered marks described in Appendix
6 hereto, AT&T agrees that it will withdraw any and all of registrations of such
marks promptly upon prior written instruction by PARADYNE and/or CAPCo.
ARTICLE 4
Termination
4.1 Breach.
In the event of a material breach of this Agreement by any
party hereto, the other parties shall have all rights available to them under
law, including the right to terminate this Agreement upon the delivery of
written notice to the breaching party, such breach having remained uncured for a
period of thirty (30) days from the date of receipt of such notice; provided,
however, that such termination shall not affect in any way any rights or
licenses granted by any party hereto prior to such breach.
4.2 Voluntary Termination.
By written notice to AT&T, PARADYNE and/or CAPCo may
voluntarily terminate all or a specified portion of the licenses and rights
granted to them hereunder. Such notice shall specify the effective date (not
more than six (6) months prior to the giving of said notice) of such termination
and shall clearly specify any affected Patent, invention or product; provided,
however, that such termination shall not affect in any way any rights or
licenses already granted by any party hereto.
ARTICLE 5
Miscellaneous Provisions
5.1 Disclaimer.
OTHER THAN AS EXPRESSLY SET FORTH IN THIS AGREEMENT, WITH
RESPECT TO THE SUBJECT MATTER HEREOF, NEITHER AT&T NOR ANY OF ITS SUBSIDIARIES
MAKE ANY REPRESENTATIONS, EXTEND ANY WARRANTIES OF ANY KIND, ASSUME ANY
RESPONSIBILITY OR OBLIGATIONS WHATSOEVER, OR CONFER ANY RIGHT BY IMPLICATION,
ESTOPPEL OR OTHERWISE, OTHER THAN THE LICENSES AND RIGHTS HEREIN EXPRESSLY
GRANTED.
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5.2 Nonassignability.
(a) Except as otherwise expressly provided herein, no
party hereto may assign this Agreement or any part thereof, transfer licenses or
rights or grant any sublicenses hereunder, to anyone other than a Subsidiary of
such party without the prior, written consent of the other party. However, if
PARADYNE and/or CAPCo sells part or all of their respective businesses,
including without limitation Subsidiaries (the "Sold Entity"), and if PARADYNE
and/or CAPCo have granted sublicenses thereto prior to such sale, then such
sublicenses shall survive such sale.
(b) Any purported assignment or transfer of this
Agreement or licenses or rights hereunder by any party hereto without the prior,
written consent of all other parties shall be void (without affecting any other
licenses or rights hereunder).
5.3 Addresses.
Any notice or other communication hereunder shall be
sufficiently given to PARADYNE when sent by certified mail, return receipt
requested, addressed to: AT&T Paradyne Corporation, 0000 000xx Xxxxxx Xxxxx,
Xxxxxxxxx: Xxxxxxx Xxxxxxx, Xxxxx, XX 00000-0000, or to CAPCo when sent by
certified mail, return receipt requested, addressed to: CAP Acquisition Corp.,
000 Xxxx Xxxxxx, Xxxxx 0000, Xxxxxxxxx: Xxxxxxx X. Xxxxxxxxx, Esq., Xxxxx Xxxxx,
XX 00000, or to AT&T when sent by certified mail, return receipt requested,
addressed to: AT&T Corp., 00 Xxxxxxxxxxxx Xxxx., Xxxxxx, XX 00000.
5.4 Validity.
Should any provision hereof be ineffective or infeasible the
validity of the Agreement shall not be affected in other respects. The parties
shall cooperate to replace the ineffective or infeasible provision by coming as
close as possible in the economic result of the ineffective or infeasible
provision.
5.5 Taxes.
PARADYNE and/or CAPCo shall pay any tax, duty, levy, customs
fee, or similar charge ("taxes"), including interest and penalties thereon,
however designated, imposed as a result of the operation or existence of this
Agreement, including taxes which PARADYNE and/or CAPCo is required to withhold
or deduct from payments to AT&T, except (i) net income taxes imposed upon AT&T
by any governmental entity within the United States (the fifty (50) states and
the District of Columbia), and (ii) net income taxes imposed upon AT&T by
jurisdictions outside the United States.
5.6 Choice of Law.
The parties are familiar with the principles of New York
commercial law, and desire and agree that the law of New York shall apply in any
dispute arising with respect to this Agreement.
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5.7 Integration.
This Agreement sets forth the entire agreement and
understanding between the parties as to the subject matter hereof and merges all
prior discussions between them. Neither of the parties shall be bound by any
warranties, understandings or representations with respect to such subject
matter other than as expressly provided herein or in a writing signed with or
subsequent to execution hereof by an authorized representative of the party to
be bound thereby.
5.8 Dispute Resolution.
(a) All contractual disputes, controversies and
differences between the parties relating to any breach of this Agreement, shall
be settled exclusively by binding arbitration pursuant to the Commercial
Arbitration Rules of the American Arbitration Association, upon thirty (30)
days' written notice of the demand therefor served by one party hereto upon the
other party. Judgment upon the award rendered may be entered in any court having
proper jurisdiction. The arbitrators shall be instructed, in connection with the
issuance of their award, to prepare a written finding of facts and law
concerning the award. If any arbitration or other proceeding is commenced
pursuant to this Section 5.8, the prevailing party shall be entitled to recover
from the other party all reasonable attorneys' fees, costs and other
disbursements actually incurred by it in connection with such arbitration or
other proceeding and in enforcing any award, order or judgment thereby obtained.
If AT&T is the party serving such notice, the arbitration shall be held in New
York, New York, in which case this Agreement shall be interpreted in accordance
with the laws of the State of New York, without reference to its principles of
conflicts of laws. If either PARADYNE or CAPCo is the party serving such notice,
the arbitration shall be held in Tampa, Florida, in which case this Agreement
shall be interpreted in accordance with the laws of the State of Florida, also
without reference to its principles of conflicts of laws.
(b) The requirement for arbitration shall not be
deemed a waiver of any right of termination under this Agreement and the
arbitrators shall not be empowered to act or make any award other than based
solely on the rights and obligations of the parties prior to any such
termination.
(c) The arbitrators shall not limit, expand or
otherwise modify the terms of this Agreement.
(d) This Agreement shall be interpreted in accordance
with the laws of the State of New York, without reference to its principles of
conflicts of law, unless otherwise dictated by invocation by one party of its
rights under Section 5.8(a), above.
(e) Discovery shall be held in accordance with the
provisions of the Federal Rules of Civil Procedure of the taking of depositions.
(f) This Article 5.8 shall survive any termination of
this Agreement or rights granted hereunder.
(a)
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IN WITNESS WHEREOF, each of the parties has caused this
Agreement to be executed in duplicate originals by its duly authorized
representatives on the respective dates entered below.
AT&T Corp. AT&T Paradyne Corporation
By: /s/ Xxxxx X. Xxxx By: /s/ Xxxxxxx X. Osl, Jr.
---------------------------------- ---------------------------------
Print Name: Xxxxx X. Xxxx Print Name: Xxxxxxx X. Osl. Jr.
---------------------------------- ---------------------------------
Title: General Attorney - IP Law Title: Authorized Agent
---------------------------------- ---------------------------------
Date: 7/31/96 Date: 7/31/96
CAP Acquisition Corp.
By: /s/ Xxxxx X. Xxxxxxx
----------------------------------
Print Name: Xxxxx X. Xxxxxxx
--------------------------
Title: President
-------------------------------
Date: 7/31/
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LIST OF APPENDICES TO EXHIBIT FF
APPENDIX 1 - ASSIGNED MARKS
APPENDIX 2 - TRADEMARK ASSIGNMENT AGREEMENT (AT&T CORP. TO AT&T PARADYNE CORPORATION)
APPENDIX 3 - SUMMARY OF SETTLEMENT AGREEMENT RELATING TO "KEEP IN TOUCH" TRADEMARKS
APPENDIX 4 - PARADYNE/CAPCO PRODUCTS
APPENDIX 5 - AT&T'S PATENTS LICENSED TO AT&T PARADYNE CORPORATION
APPENDIX 6 - AT&T REGISTRATIONS DISCUSSED IN SECTION 3.4 OF EXHIBIT FF
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APPENDIX 1 TO EXHIBIT FF
ASSIGNED MARKS
ACCULINK
ANALYSIS
CHANNELVIEW
CHANNELWATCH
COMSPHERE
DATAPHONE
DATAPORT
DCX
ETC
GLOBESPAN
INFO-LOCK
KEEP IN TOUCH CARD
KEEPINTOUCH CARD
KIT
PARADYNE
PARADYNE DCX
SHARED EXPECTATIONS
SOFTCALL
VOICESPAN
VOICESPAN AND DESIGN
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APPENDIX 1
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APPENDIX 2 TO EXHIBIT FF
TRADEMARK ASSIGNMENT AGREEMENT
(AT&T CORP. TO AT&T PARADYNE CORPORATION)
This Trademark Assignment Agreement, effective as of the
Closing Date, is made between AT&T CORP., a New York corporation duly organized
and existing under the laws of the State of New York, whose registered office is
at 32 Avenue of the Americas, Xxx Xxxx, Xxx Xxxx 00000-0000, Xxxxxx Xxxxxx of
America (hereinafter referred to as the "Assignor") and AT&T PARADYNE
CORPORATION, a Delaware corporation, having an office at 0000 000xx Xxxxxx
Xxxxx, X.X. Xxx 0000, Xxxxx, Xxxxxxx 00000-0000 (hereinafter referred to as the
"Assignee").
WHEREAS, the Assignor has adopted, used, registered or applied
to register in certain countries throughout the world certain trademarks and
service marks set forth in Appendix 1 annexed hereto, including without
limitation, the registrations and applications and common law marks set out in
Appendix 1 (hereinafter referred to as the "Assigned Marks"); and
WHEREAS, the Assignor wishes to transfer and assign to the
Assignee, and the Assignee wishes to acquire from the Assignor, all of the
Assignor's rights, title and interest in and to the Assigned Marks and all of
the goodwill associated therewith, as well as all registrations and applications
and other rights, including common law rights, the Assignor may have throughout
the world with respect to such Assigned Marks.
NOW, THEREFORE, the Assignor and the Assignee agree as
follows:
Section 1
Effective the Closing Date, and for good and valuable
consideration, the receipt and adequacy of which is hereby acknowledged, the
Assignor does hereby assign to the Assignee all proprietary rights and
applications for proprietary rights, title and interest in and to the Assigned
Marks, including without limitation, the registrations and applications and
common law marks set forth in Appendix 1, any common law rights in the Assigned
Marks, the goodwill of the business relating to the Assigned Marks, and the
right to xxx for past infringement of the Assigned Marks.
The Assignee does hereby accept this assignment.
Section 2
This Assignor will promptly transfer to or provide to the
Assignee copies of all files relating to the use, registration of, and
applications for registration of, the Assigned Marks.
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Section 3
(A) This agreement in the form of a notarial deed is intended in original and in
certified copy to be lodged with the competent domestic and foreign
institutions, more particularly administrative agencies and courts, together
with an application for assignment of the corresponding proprietary rights and
applications for proprietary rights.
(B) Should the lodging of this deed be insufficient for the assignment of the
proprietary rights and applications for proprietary rights, both parties hereto
shall immediately attend to the necessary formalities and will execute all
reasonable documents necessary to effect transfer of the Assigned Marks.
(C) The Assignee shall bear the costs arising out of or in connection with the
implementation of the assignment contained herein.
(D) Amendments hereto and amplifications hereof shall be in writing.
Assignor Assignee
Given at Basking Ridge Accepted at New York,
New Jersey, USA New York, USA
on July 31, 0000 Xx July 31, 1996
AT&T CORP. AT&T PARADYNE CORPORATION
By: By:
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Name: Xxxxxxx Xxxxxx, Esq. Name: Xxxxxxx X. Osl, Jr.
Trademark and Copyright Attorney Title: Authorized Agent
Authorized Signatory Authorized Signatory
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NOTARIAL CERTIFICATIONS
I, a Notary Public, certify that on July 31, 1996, before me
personally appeared Xxxxxxx X. Xxxxxx, to me known to be an authorized signatory
of AT&T CORP. and that she executed the foregoing Trademark Assignment
Agreement.
I attest:
Signed in: Basking Ridge, NJ USA
Dated: July 31, 1996
Notary Public "Official Seal"
Signature of Notary Public
I, a Notary Public, certify that on July 31, 1995, before me
personally appeared Xxxxxxx X. Osl, to me known to be an Authorized Signatory of
AT&T PARADYNE, and that he executed the foregoing Trademark Assignment
Agreement.
I attest:
Signed in: New York, NYC
Dated: July 31, 1996
Notary Public "Official Seal"
Signature of Notary Public
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APPENDIX 1
TO TRADEMARK ASSIGNMENT AGREEMENT
ASSIGNED MARKS
ACCULINK
ANALYSIS
CHANNELVIEW
CHANNELWATCH
COMSPHERE
DATAPHONE
DATAPORT
DCX
ETC
GLOBESPAN
INFO-LOCK
KEEP IN TOUCH CARD
KEEPINTOUCH CARD
KIT
PARADYNE
PARADYNE DCX
SHARED EXPECTATIONS
SOFTCALL
VOICESPAN
VOICESPAN AND DESIGN
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APPENDIX 1
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APPENDIX 3 TO EXHIBIT FF
SUMMARY OF SETTLEMENT AGREEMENT
RELATING TO "KEEP IN TOUCH" TRADEMARKS
The following is a partial summary of a Settlement Agreement
dated April 17, 1995 between AT&T Corp. and Gnossos Software, Inc., a Delaware
corporation having offices at 000 XX Xxxxxx, Xxxxx 000, Xxxxxxxxxx, X.X.
0000-0000, effecting AT&T's (and its successor's) use of certain trademarks
identified below. Whenever the term "Paradyne" is used, it shall also be meant
to include Paradyne's successor or assignee:
1. Paradyne may use the xxxx "KIT" without restriction.
2. So long as Gnossos has not abandoned use of "KEEP IN TOUCH"
for computer software, Paradyne shall use "KeepInTouch" only as part of a
compound xxxx, such as "KeepInTouch Card", "KeepInTouch Express", "Paradyne
KeepInTouch", "KeepInTouch Cellular Modem" and "KeepInTouch 2000" (the "Agreed
Marks"). For the purposes of the Settlement Agreement, any such Agreed Xxxx used
by Paradyne shall be comprised of the "KeepInTouch" element plus at least one
other alphabetical and/or numeric element depicted in the same type face and
size as the "KeepInTouch" element, so as to create a unitary commercial
impression. If the other element in the compound xxxx is comprised of word(s) or
letters of the alphabet, that other element is to be depicted with at least
initial capitalization. Thus, "KeepInTouch Card" or "KeepInTouch Cellular Modem"
would be Agreed Marks, while "KeepInTouch card" or "KeepInTouch cellular modem"
would not. Moreover, while "KeepInTouch 2000" is acceptable, the use of a number
that merely connotes a version number (e.g., "KeepInTouch 5.1") would not be an
acceptable compound xxxx. Paradyne may register acceptable compound Agreed
Marks, as defined herein. However, Paradyne shall not use or register the marks
"KeepInTouch" by itself or "KEEP IN TOUCH" by itself, and shall not use or TM
symbols, or a trademark legend to indicate rights in "KeepInTouch" by itself.
These restrictions apply to use on the products, packaging, advertising and
promotional material.
3. So long as Gnossos has not abandoned use of "KEEP IN TOUCH"
for computer software, Paradyne shall use the Agreed Marks in proximity to any
Paradyne xxxx, or any successor thereof then functioning as Paradyne's house
xxxx, or the house xxxx of any assignee or successor to Paradyne.
4. So long as Gnossos has not abandoned use of "KEEP IN TOUCH"
for computer software, Paradyne shall limit its use of the Agreed Marks to
modems and software used for operating such modems, including software sold for
the purpose of upgrading the functionality of modems ("Related Software").
Specifically excluded from the definition of Related Software is communications
applications software, such as faxing software and e-mail software. Such
exclusion, however, shall not apply to any software that is used to allow a
modem to operate to send and receive facsimile, data, information, voice, video
and electronic mail transmissions when such software is sold as a unit with or
as an upgrade to modems sold under the Agreed Marks. A "modem" shall mean any
machine, device, or computer software, now
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known or later developed, which converts digital signals to analog signals and
analog signals to digital signals for transmission of facsimile, data,
information, voice, video or electronic mail over a telecommunications network.
For purposes of this definition analog signals include any signal which becomes
analog at any point in the transmission.
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APPENDIX 4 TO EXHIBIT FF
PARADYNE PRODUCTS
- All products offered commercially at any time prior to Closing Date
- GENESIS AND GENEVA FAMILY (3800/3900)
- Triple Modem nest for the 3000 Carrier
- Synchronous data compression
- Integrated Diagnostics
- Mocha
- XXXXX FAMILY - SUBRATE DIGITAL LEASED LINE (3600/3500)
- ISDN DBM
- V.34 DBM
- Extended Range
- Autorate
- Cross Pair Detection
- Integrated Diagnostics
- Multiplexor Options
- Paddle Cards
- 64k/128k NTU's
- SPINNAKER FAMILY - T1/E1/HDSL CSU & DSU (31XX,33XX)
- ASCII Interface Redesign
- TCP & Telnet
- Device Specific SNMP MIBs
- Voice Compression
- International Power
- Integrated Diagnostics
- Optical Interface
- CARRIBEAN SUBRATE FAMILY - DDS FRAME RELAY
- Aruba - DDS Frame Relay
- Frame Relay Aware/Frame Relay Aggregation
- Synchronous Data Compression
- BRI DBM
- FTP Down Line Loan
- 14 Slot Nest
- FRAD
- PCMCIA Management Interfaces
- Cost Reduction (Antigua)
- Curacao - DDS Frame Relay Edge Router
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- Single Card Router with 1-port Native Ethernet DTE
- Supports above Aruba Functionality
- CARRIBEAN NxDSO FAMILY - T1/E1
- Barbados - T1/FT1 Low End Multiplexor & DSU
- SNMP, Telnet, TCP
- PRI
- 5 Slot Carrier
- 2 Slot Stand Alone Package
- 14 Slot Nest
- Single T1 Leased Line NAM with DSX, with 2 ports
- Dual T1 Leased Line NAM without DSX, no ports
- Dual DSX APM without ports
- PCMCIA Management (via Ethernet or Token Ring LAN,
V.34)
- 8-port FXS, FSO, or E&M Voice APM
- Voice Compression APM
- 4-port Synchronous Data APM
- Synchronous Data Compression APM
- 6-port OCU APM
- 5-port SRU APM
- 6-port Management Interface APM
- 6-port BRI APM
- 8-port V.34 Modem Pool APM
- Martinique - E1/FE1 Low End Multiplexor & DSU
- Dual E1 Leased Line NAM with ports
- Dual E1 Leased Line NAM without ports
- Support for above Barbados configurations and options
- Trinidad - T1/FT1 Frame Relay DSU
- SNMP, Telnet, TCP
- 2 Slot Stand Alone Package
- 14 Slot Nest
- T1 Frame Relay NAM with DSX, with 2 ports
- BRI DBM
- Frame Relay Aware, Frame Relay Aggregation with
Compression APM
- FRAD APM
- HEARTLAN FAMILY - LOW END/LOW COST SUBRATE AND T1
- Beagle-Subrate Leased Line DSU
- DDS NI with 1 port
- SNMP, Telnet, TCP
- Ethernet Management Interface
X-00
00
- Xxxxxxxxx - X0/X0 Leased Line DSU
- T1/FT1 NI without DSX, with 1 port
- T1/FT1 NI with DSX, with 1 port
- T1/FT1 NI with DSX, with 2 ports
- T1/FT1 NI with DSX, without ports (CSU)
- SNMP, Telnet, TCP
- With or without Ethernet Management Interface
- Poodle - V.11 NTU
- 64k V.11 NI with 1 port DTE
- 64k V.11 NI with 5 port DTE, with X.50
- SYSTEM PRODUCTS
- ADSL/SDSL/HDSL/VDSL/RADSL PC Cards, Workstation Interface
Cards, and Stand Alone "Modems"
- Open Access Gateway (Multiplexor)
- Central Site Concentrators for ADSL/SDSL/VDSL/RADSL
Lines
- xDSL with packet or cell protocols
- TDM extensions
- Modem Pool extensions for analog, mu-law, ISDN
- Service Translation for broadband, video transmission
- Acculink Access Controller (AAC) Cards
- (DACS)
- Modem Pool
- TDM Access Multiplexor
- HAWK - REMOTE ACCESS AND TELECOMMUTING SERVER
- V.34, V.34Q and ISDN BRI Remote Access Port Concentrators
- T1 PRI Network Interface
- Windows NT
- Novell
- Temporary Office Extensions
- Remote Office Extensions
- High Card Density (16 ports OCD)
- Very High Card Density (30 ports OCD)
- Mocha
- E1 Interface
- WIRELESS SYSTEMS
- ETC2 for Wireless Data Gateway, Hawk and Open Access Gateway
- CDPD and PCS protocols (TDMA, CDMA, GSM)
A-13
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- SOFTWARE PRODUCTS
- Network Management System Applications for all Present
Paradyne Products and Other Products Listed Herein
- Element Management Applications for all Present Paradyne
Products and Other Products Listed Herein.
- Extended Leased Line Network Management Applications on HP
Openview and IBM SystemView
- Performance Management Applications for all Present Paradyne
Products and Other Products Listed Herein, on HP Openview
and IBM SystemView
- Service Management Applications for all Present Paradyne
Products and Other Products Listed Herein, on HP Openview
and IBM SystemView
- TL-1 Interface for HP Openview and IBM SystemView
- CMIP/NMP Wrappers for HP Openview and IBM SystemView
- The following products are to be assessed in January, 1997. The
commercial development status of each product will be determined and
such product will be added to this Appendix C if the product is either
- (I) at the time of assessment under development for a
scheduled commercial release, or
- (II) firmly committed for development to begin no later than
March 31, 1997 for a scheduled commercial release; in this
case, the product is added to this Appendix C only to the
extent that such development does begin before March 31
- The products to be assessed are
- The following modules for CARIBBEAN NxDSO
- ATM NAM
- Encryption APM
- Security APM
- Cayman - FT3 ATM DSU
- ATM Access Multiplexor
- The following modules for Open Access Gateway
- PDTS Splitting
- Encryption
- Security
A-14
23
APPENDIX 5
AT&T CORPORATION PATENTS LICENSED TO AT&T PARADYNE CORPORATION
PATENT DATE
NO. ISSUED TITLE AREA OF APPLICATION
--- ------ ----- -------------------
4348554 9/7/92 Method of providing virtual private Modem, DSU, Mux
network telephone service
4383332 5/10/83 High capacity digital mobile radio Wireless Data Gateway
system
4472832 9/18/84 Digital speech coder Modem, Access Server
4578531 3/25/86 Encryption system key distribution Modem, DSU, Mux, Access Server
method and apparatus
4586186 4/29/86 Maintenance response signaling Mux, Access, Server
arrangement for digital transmission
system
4611094 9/9/86 Method for customer definable telephony Modem, Access Server
capability
4616359 10/07/86 Adaptive preferential flow control for Mux, DSU, Access Server
packet switching system
4633464 12/30/86 Control signaling management for DSU, Mux, Access Server
digital transmission system
4700339 10/13/87 Wavelength division multiplexed silicon DSU, Mux
optical fiber telecommunication system
4756020 7/6/88 Method and apparatus for disallowing the Access Server
extension of a call through a network
4827600 6/2/89 Automatic speech recognition to select Access Server
among call destinations
4899373 2/6/90 Method and apparatus for providing Access Server
personalized telephone subscriber
features at remote locations
4814655 4/3/90 Multiplexing arrangement for digital DSU, Mux
transmission system
4922348 4/10/90 Facsimile service Modem, Access Server
4932042 6/6/90 Spontaneous voice and data managing Mux, Access Server
4959849 7/31/89 End-to-end network surveillance Mux, DSU, Access Server
5033079 7/16/91 Establishment of facsimile calls Modem, Access Server
5063659 11/5/91 Optimized Wavelength Division DSU, Mux
Multiplexed Lightwave Communication
System
15
24
5086460 2/4/92 Communications system ingress and egress Mux, Access Server
arrangement
5164983 11/17/92 Telemarketing complex performance Access Server
management system
5181238 1/19/93 Authenticated communications access Access Server
service
5182744 1/26/93 Telecommunications Network Restoration Mux, DSU, Modem
Architecture
5195132 3/16/93 Telephone network speech signal Modem, Access Server
enhancement
5222125 5/22/93 A system for providing personalized Access Server
telephone calling features
5243645 9/7/93 Automatic System for Forwarding of call Access Server
5270919 12/14/93 Network planning tool Mux, Access Server
5276444 1/4/94 Centralized security control system Mux, Access Server
5278889 1/11/94 Video Telephony dialing Modem, Access Server
5283624 2/1/94 Calling Line identification Access Server
5287199 2/16/94 Facsimile message processing and Access Server
routing system
5291551 2/1/94 Home agent telecommunication technique Access Server
6311572 5/10/94 Cooperative databases call processing Access Server
system
5325421 6/28/94 Voice directed communications system Modem, Access Server
platform
5329308 7/12/94 Bidirectional video telephony between Mux, Access Server
cable television and switched telephone
systems
5329581 7/12/94 Target area calling system Access Server
5333195 7/26/94 Telephone network speech signal Modem, Access Server
enhancement
5333308 7/26/94 Method and apparatus for operating a Modem, DSU, Mux, Access Server
communication network monitor
arrangement
5335224 8/2/94 Service guarantee/congestion control at Mux, Access Server
high-speed networks
5353396 10/4/94 Voice directed communication system Modem, Access Server
architecture
5353339 10/4/94 Simplified Uniform Network Provisioning Modem, DSU, Mux, Access Server
and Restoration
5369695 11/29/94 Method of redirecting a telephone call Access Server
to an alternate destination (ADCR)
5375124 12/20/94 Method and apparatus for providing ISDN Mux, Access Server
access
5384831 1/24/95 A system for providing personalized Access Server
telephone call features
5386467 1/31/95 Intelligent Network Communication System Mux, Access Server
5392345 2/21/95 Work at home ACD agent network Access Server
A-16
25
5409526 4/18/95 Conference Calling System Mux, Access Server
5410538 4/25/95 Method and apparatus for transmitting Modem, DSL
signals in a multi-tone code
5420851 5/30/96 Method of Multiple Access Modem, Access Server
5420917 5/30/95 Automated Recovery of telecommunication DSU, Modem, Mux, Access Server
network elements
5428608 6/27/95 Call connection technique Modem, Access Server
5434920 7/18/95 Secure telecommunications DSU, Modem, Mux, Access Server
5442625 8/15/95 Code division multiple access system Modem, Wireless Data Gateway
providing variable data rate access to
a user
5448632 9/5/95 Call monitoring system for intelligent Access Server
call processing
5450123 9/12/95 A method to enhance voice communications Modem, Access Server
using encoded one-way video signals
under bi-directional user or network
control for transmitting stored or
real-time video or image
information
5450479 9/12/95 Method and apparatus for facilitating Modem, Access Server
the making of card calls
5463677 10/31/95 Method and apparatus for facilitating Modem, Access Server
the making of collect calls
5463683 10/31/95 Blocked call notification system Modem, Access Server
5463685 10/31/95 Network based outbound call management Mux, Access Server
5473468 12/5/95 Soliton data transmission using DSU, Mux
non-soliton transmitter
5473671 12/5/95 Selective Screening of Incoming Calls Wireless Data Gateway
for Cellular
5473677 12/5/95 Telecommunications network architecture Modem, DSU, Mux, Access Server
and system
5473679 12/5/95 A signaling system for broadbased Mux, DSL
communications networks
5473681 12/5/95 Method for Use in completing telephone Mux, Access Server
calls
5475746 12/12/95 Method for permitting subscriber to Access Server
change call features in real-time
5481603 1/2/96 Intelligent call processing based upon Modem, Access Server
complete identification of calling station
5485515 1/16/96 Background noise compensation in a Modem, Access Server
telephone network
5487171 1/23/96 Telecommunications system sequences Modem, Access Server
calling
5488569 1/30/96 Application-oriented telecommunication Access Server
system interface
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26
5491576 2/13/96 Dual-wavelength data transmitter for DSU, Mux
reducing fading in an optical
transmission system
5509055 4/16/96 Inbound telecommunications services Mux, Access Server
resources management system
5509060 4/16/96 Network accessible intelligent Modem, Access Server
telephone services
5513254 4/30/96 Method and apparatus for processing Modem, Access Server
facsimile transmissions
5515425 5/7/96 Telecommunications system with active Access Server
databases
5521966 5/26/96 Method & system for mediating Modem, Access Server
transactions that use portable smart
cards
5521969 5/28/96 Telephone caller identity delivery Modem, Access Server
system and method with enhanced caller
privacy
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APPENDIX 6 TO EXHIBIT FF
A-19
