EXHIBIT 99.3
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PATENT LICENSE AGREEMENT
BETWEEN
AGERE SYSTEMS GUARDIAN CORPORATION,
AGERE SYSTEMS INC.
AND
PROXIM CORPORATION
EFFECTIVE AUGUST 5, 2002
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PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - GRANTS OF LICENSES
1.01 Grant
1.02 Licensing Provisions
1.03 Joint Inventions
ARTICLE II - CONSIDERATION
2.01 Consideration
ARTICLE III - TERMINATION
3.01 Termination
3.02 Survival
ARTICLE IV - PUBLICITY AND CONFIDENTIALITY
4.01 Publicity
4.02 Confidentiality
ARTICLE V - MISCELLANEOUS PROVISIONS
5.01 Disclaimer
5.02 Limited Assignability
5.03 Addresses
5.04 Taxes
5.05 Choice of Law
5.06 Integration
5.07 Outside the United States
5.08 Releases
5.09 Bankruptcy
ARTICLE VI - EFFECT ON PENDING LITIGATION
6.01 Consent Order
APPENDIX A
APPENDIX B
PATENT LICENSE AGREEMENT
Effective August 5, 2002, Agere Systems Guardian Corporation ("AGERE
GUARDIAN"), a Delaware corporation having an office at 0000 X. Xxxx Xxxxx
Xxxxxxx, Xxxxxxx, Xxxxxxx 00000-0000, Agere Systems Inc. ("AGERE SYSTEMS"), a
Delaware corporation having an office at 000 Xxxxx Xxxxxxxxx, Xxxxxxxxx,
Xxxxxxxxxxxx 00000, (AGERE GUARDIAN and AGERE SYSTEMS being collectively or
individually referred to as "AGERE", as the context requires) and PROXIM
CORPORATION ("PROXIM"), a Delaware corporation having an office at 000 Xxxxxxx
Xxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000, agree as follows*:
ARTICLE I
GRANTS OF LICENSES
1.01 GRANT
(a) AGERE grants to PROXIM under AGERE'S PATENTS a personal,
nonexclusive and non-transferable license to make, have made, use, lease, sell,
offer to sell and import WIRELESS NETWORKING PRODUCTS. The have made rights do
not apply to 802.11-based integrated circuit products, unless developed
according to a custom design of PROXIM. Notwithstanding the foregoing, any
injunctive relief obtained against a supplier will not apply to products sold to
PROXIM, unless PROXIM is acting as a reseller. This license shall be in effect
from the effective date of this Agreement until the earlier of the end of the
LIMITED PERIOD or the expiration of each patent, unless terminated sooner
pursuant to Article III.
(b) AGERE grants to PROXIM under AGERE'S WIRELESS LAN PATENTS a
personal, nonexclusive and non-transferable license to make, have made, use,
lease, sell, offer to sell and import PRODUCTS OF THE ORINOCO BUSINESS. The have
made rights do not apply to 802.11-based integrated circuit products, unless
developed according to a custom design of PROXIM. Notwithstanding the foregoing,
any injunctive relief obtained against a supplier will not apply to products
sold to PROXIM, unless PROXIM is acting as a reseller. This license shall be in
effect until the expiration date of each patent, unless terminated sooner
pursuant to Article III.
(c) PROXIM grants to AGERE under PROXIM'S PATENTS a personal,
nonexclusive, and non-transferable license to make, have made, use, lease, sell,
offer to sell and import all products and services of any kind. The have made
rights do not apply to 802.11-based integrated circuit products, unless
developed according to a custom design of AGERE. Notwithstanding the foregoing,
any injunctive relief obtained against a supplier will not apply to products
sold to
--------
*ANY TERM IN CAPITAL LETTERS WHICH IS DEFINED IN APPENDIX A SHALL HAVE THE
MEANING SPECIFIED THEREIN, OTHERWISE IT WILL HAVE THE MEANING AS USED OR DEFINED
IN THIS AGREEMENT.
AGERE, unless AGERE is acting as a reseller. This license shall be in effect
from the effective date of this Agreement until the earlier of the end of the
LIMITED PERIOD or the expiration of each patent, unless terminated sooner
pursuant to Article III.
1.02 LICENSING PROVISIONS
(a) The licenses granted herein also include licenses to convey to any
customer of the grantee, with respect to any LICENSED PRODUCT(S) which is sold
or leased by such grantee to such customer, rights to use and resell such
LICENSED PRODUCT(S) as sold or leased by such grantee (whether or not as part of
a larger combination); provided, however, that no rights may be conveyed to
customers with respect to any invention which is directed to (1) a combination
of such LICENSED PRODUCT (as sold or leased) with any other product unless such
LICENSED PRODUCT has no substantial use except in such combination, (2) a method
or process which is other than the inherent use of such LICENSED PRODUCT itself
(as sold or leased), or (3) a method or process involving the use of a LICENSED
PRODUCT to manufacture (including associated testing) any other product.
(b) Licenses granted herein are not to be construed either (i) as
consent by the grantor to any act which may be performed by the grantee, except
to the extent impacted by a patent licensed herein to the grantee, or (ii) to
include licenses to contributorily infringe or induce infringement under U.S.
law or a foreign equivalent thereof, except that no party shall xxx another
party for contributory infringement or inducement of infringement by virtue of
the sale by a party of a LICENSED PRODUCT until all remedies have been exhausted
against a direct infringer.
(c) The grant of each license hereunder includes the right to grant
sublicenses within the scope of such license to a SUBSIDIARY of a party for so
long as it remains its SUBSIDIARY and only to the extent that such SUBSIDIARY
grants to the other party licenses of similar scope and duration as provided in
this Agreement. Any such sublicense granted hereunder may be made effective
retroactively, but not prior to the Effective Date hereof, nor prior to the
sublicensee's becoming a SUBSIDIARY of such party. The parties agree that if
either party forms a holding company for patents licensed herein, that party
shall cause such holding company to grant licenses under such patents, of the
scope and duration granted herein, to the other party.
(d) The grant of each license hereunder also includes the right of a
party to sublicense (commensurate with its own licenses) any business which is
divested by that party or any licensed SUBSIDIARY of that party provided that
the sublicense is granted within sixty (60) days of divestiture and the divested
business is itself a legal entity at the time of divestiture or within sixty
(60) days
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thereafter. Such sublicense may continue for so long as the divested business
remains a legal entity and shall extend only to the LICENSED PRODUCTS sold or
furnished by the divested business prior to the divestiture and only for the
patents of the non-divesting party licensed to the divesting party in this
Agreement that are issued as of the date of divestiture. Furthermore, any
sublicense shall not extend to the products sold or services furnished by a
third party which acquires the divested business, even if they are of the same
kind or similar to those of the divested business and even if made, sold or
provided by the divested business.
1.03 JOINT INVENTIONS
(a) There are countries (not including the United States) which require
the express consent of all inventors or their assignees to the grant of licenses
or rights under patents issued in such countries for joint inventions.
(b) Each party shall give such consent, or shall obtain such consent
from each SUBSIDIARY, its employees or employees of any SUBSIDIARY, as required
to make full and effective any such licenses and rights respecting any joint
invention granted to the grantee hereunder by such party and by another licensor
of such grantee.
(c) Each party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents are necessary
to make full and effective such licenses and rights respecting any joint
invention purported to be granted by it hereunder. If, in spite of such
reasonable steps, such party is unable to obtain the requisite consents from
such third parties, the resulting inability of such party to make full and
effective its purported grant of such licenses and rights shall not be
considered to be a breach of this Agreement.
ARTICLE II
CONSIDERATION
2.01 CONSIDERATION
In consideration of the purchase by PROXIM and the sale by AGERE of the
ORiNOCO business according to the ASSET PURCHASE AGREEMENT, the licenses granted
herein will be deemed paid up.
ARTICLE III
TERMINATION
3.01 TERMINATION
This Agreement shall be effective during the term commencing on the
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effective date hereof and shall continue unless terminated by mutual agreement
of the parties.
3.02 SURVIVAL
(a) If a company ceases to be a SUBSIDIARY of a party, licenses and
rights granted hereunder with respect to patents of such company on inventions
made prior to the date of such cessation, shall not be affected by such
cessation.
(b) Any termination of licenses and rights of a party under the
provisions of this Article III shall not affect such party's licenses, rights
and obligations with respect to any LICENSED PRODUCTS made or furnished prior to
such termination, and shall not affect the other party's licenses and rights
(and obligations related thereto) hereunder.
ARTICLE IV
PUBLICITY AND CONFIDENTIALITY
4.01 PUBLICITY
Nothing in this Agreement shall be construed as conferring upon either
party or any SUBSIDIARY any right to include in advertising, packaging or other
commercial activities related to a LICENSED PRODUCT, any reference to the other
party (or any SUBSIDIARY), its trade names, trademarks or service marks in a
manner which would be likely to cause confusion or to indicate that such
LICENSED PRODUCT is in any way certified by the other party hereto or a
SUBSIDIARY.
4.02 CONFIDENTIALITY
(a) The terms, but not the existence, of this Agreement shall be treated
as confidential information by the parties, and neither party shall disclose the
terms or conditions of this Agreement to any third party (other than a
SUBSIDIARY and divested businesses licensed pursuant to this Agreement) without
the prior written permission of the other party. Each party, however, shall have
(i) the right to represent to third parties that such party is licensed for the
products and patents as provided by this Agreement, and (ii) the right to make
disclosures to the extent required by an order of court, or otherwise by law,
provided that the party shall promptly provide written notice to the
non-disclosing party of the intended disclosure and of the court order or
regulation prior to such disclosure and that the party takes all reasonable
steps to minimize such disclosure by, for example, obtaining a protective order
and/or appropriate confidentiality provisions requiring that such information to
be disclosed be used only for the purpose for which such law, or order was
issued. Additionally, each party may disclose this Agreement or its contents to
the extent reasonably
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necessary, under a suitable confidentiality agreement, to its accountants,
attorneys, financial advisors and in connection with due diligence activities
relating to the sale of the stock or a portion of the business of a party or a
SUBSIDIARY.
(b) Notwithstanding the foregoing, the parties agree that they will
jointly issue any press release as provided for in the ASSET PURCHASE AGREEMENT.
ARTICLE V
MISCELLANEOUS PROVISIONS
5.01 DISCLAIMER
OTHER THAT THE PROVISIONS OF SECTION 1.03, NEITHER PARTY NOR ANY
SUBSIDIARY MAKES ANY REPRESENTATIONS, EXTENDS ANY WARRANTIES OF ANY KIND,
ASSUMES ANY RESPONSIBILITY OR OBLIGATIONS WHATEVER, OR CONFERS ANY RIGHT BY
IMPLICATION, ESTOPPEL OR OTHERWISE, OTHER THAN THE LICENSES, RIGHTS AND
WARRANTIES HEREIN EXPRESSLY GRANTED.
5.02 LIMITED ASSIGNABILITY
The parties hereto have entered into this Agreement in contemplation of
personal performance, each by the other, and intend that the licenses and rights
granted hereunder to a party not be extended to entities other than a SUBSIDIARY
thereof without the other party's express written consent. All of AGERE's
rights, title and interest in this Agreement and any licenses and rights granted
to it hereunder may be assigned to any direct or indirect successor to the
business of AGERE that is relevant to the business or subject matter of this
Agreement as the result of any internal reorganization or acquisition of
substantially all the business of AGERE, which successor shall thereafter be
deemed substituted for AGERE as the party hereto, effective upon such
assignment, provided that upon an acquisition the licenses granted herein to
AGERE shall be limited in scope to products of AGERE that were sold at least
thirty (30) days prior to the announcement of the acquisition, and natural
extensions of said products after the acquisition, but not to products of the
acquiring party that existed prior to the acquisition. All of PROXIM'S rights,
title and interest in this Agreement and any licenses and rights granted to it
hereunder may be assigned to any direct or indirect successor to the business of
PROXIM that is relevant to the business or subject matter of this Agreement as
the result of any internal reorganization or acquisition of substantially all
the business of PROXIM, provided that upon an acquisition the licenses granted
herein to PROXIM shall be limited in scope to products of PROXIM that were sold
at least thirty (30) days prior to the announcement of the acquisition, and
natural extensions of said products after the acquisition, but not to products
of the acquiring party that existed prior to the acquisition.
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5.03 ADDRESSES
Any notice or other communication hereunder shall be sufficiently given
to PROXIM when sent by overnight or certified mail to the address set out above
or to AGERE when sent by overnight or certified mail addressed to Contract
Administrator, Agere Systems Guardian Corporation, 0000 Xxxxx Xxxx Xxxxx
Xxxxxxx, Xxxxxxx, Xxxxxxx 00000-0000 Xxxxxx Xxxxxx of America, Telephone # (407)
000-0000. Changes in such addresses may be specified by written notice.
5.04 TAXES
Each party and SUBSIDIARY shall bear its own taxes, duties, levies and
similar charges (and any related interest and penalties), however designated or
imposed as a result of the existence or operation of this Agreement.
5.05 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, exclusive of its conflict of law
provisions, shall apply in any dispute arising with respect to this Agreement.
5.06 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 modifications,
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.
5.07 OUTSIDE THE UNITED STATES
(a) There are countries in which the owner of an invention is entitled
to compensation, damages or other monetary award for another's unlicensed
manufacture, sale, lease, use or importation involving such invention prior to
the date of issuance of a patent for such invention but on or after a certain
earlier date, hereinafter referred to as the invention's "protection
commencement date" (e.g., the date of publication of allowed claims or the date
of publication or "laying open" of the filed patent application). In some
instances, other conditions precedent must also be fulfilled (e.g., knowledge or
actual notification of the filed patent application). The parties agree that (i)
an invention which has a protection commencement date in any such country may be
used in such country pursuant to the terms of this Agreement on and after any
such date, and (ii) all such
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conditions precedent are deemed satisfied by this Agreement.
(b) There may be countries in which a party hereto may have, as a
consequence of this Agreement, rights against infringers of the other party's
patents licensed hereunder. Each party hereby waives any such right it may have
by reason of any third party's infringement or alleged infringement of any such
patents.
(c) Each party hereby agrees to register or cause to be registered, to
the extent required by applicable law, and without expense to the other party or
any SUBSIDIARY thereof, any agreements wherein sublicenses are granted by it.
Each party hereby waives any and all claims or defenses, arising by virtue of
the absence of such registration, that might otherwise limit or affect its
obligations to the other party or SUBSIDIARY.
5.08 RELEASES
(a) In consideration of the covenants and conditions set forth herein
and other good and valuable consideration, each party, for itself and any
SUBSIDIARY hereby releases, to the full extent of its right to do so, the other
party and any SUBSIDIARY for any patent infringement arising prior to the
effective date of this Agreement for which the rights and licenses expressly
granted under this Agreement to the other party and any SUBSIDIARY would be a
complete defense had this Agreement been in effect at the time such patent
infringement arose.
(b) The releases granted in Section 5.08(a) shall extend to customers of
a party with respect to products purchased by those customers from such party
provided that the releases shall not extend to any patent which is directed to
(1) a combination of such LICENSED PRODUCT (as sold or leased) with any other
product regardless of whether such product is hardware or software unless such
LICENSED PRODUCT has no substantial use except in such combination, (2) a method
or process which is other than the inherent use of such LICENSED PRODUCT itself
(as sold or leased), or (3) a method or process involving the use of a LICENSED
PRODUCT to manufacture (including associated testing) any other product.
(c) The releases in this Section 5.08 shall not operate with respect to
acquisitions of any sort. That is, if a party or any SUBSIDIARY, individually or
collectively, acquire one or more companies, or the business or assets or any
portion thereof of one or more companies or other entities, then engaged in
whole or in part in the business of making, importing, selling, using or leasing
products and/or services of the kinds which are furnished or used by a party or
any SUBSIDIARY in the operation of the business in which they are engaged as of
that party's signing of this Agreement, but such companies or entities were not
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part of either party or any SUBSIDIARY as of such party's signing of this
Agreement, then such companies or entities shall not be covered by the releases
granted in Section 5.08.
5.09 BANKRUPTCY
The licenses granted herein to each party, as the case may be, shall be
deemed to be, for purposes of Section 365(n) of the U.S. Bankruptcy Code, to the
fullest extent permitted by law, licenses to rights in "intellectual property"
as defined in Section 101 of the Bankruptcy Code. The parties agree that the
licensee to any such licenses, as the case may be, shall retain and may fully
exercise all of its rights and election under the Bankruptcy Code. In the event
that a bankruptcy proceeding under the Bankruptcy Code is commenced by or
against the licensor of any such licenses, the licensee shall be entitled to
retain all of its rights under this Agreement (including without limitation all
rights and licenses granted herein) pursuant to Section 365(n) of the U.S.
Bankruptcy Code.
ARTICLE VI
EFFECT ON PENDING LITIGATION
6.01 CONSENT ORDER
The parties agree to enter a consent order or consent judgment
substantially in the form as attached as Appendix B, and to perform any other
acts necessary to result in (i) the dismissal of the pending litigation between
AGERE and PROXIM in the U.S. District Court for the District of Delaware, (ii)
the dismissal of AGERE SYSTEMS (as an intervener) and any customers of AGERE or
any SUBSIDIARY of AGERE as parties to the International Trade Commission action
initiated by PROXIM with respect to those products that AGERE'S customers buy
from AGERE or any SUBSIDIARY of AGERE, and (iii) the dismissal of any pending
litigation by PROXIM against any of AGERE'S customers, with respect to those
products that AGERE'S customers buy from AGERE or any SUBSIDIARY of AGERE.
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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.
AGERE SYSTEMS GUARDIAN CORPORATION
By: /s/ Xxxxxx X. xxXxxxx
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Xxxxxx X. xxXxxxx
Vice President
Date: August 5, 2002
AGERE SYSTEMS INC.
By: /s/ Xxxxxx X. xxXxxxx
------------------------------------
Xxxxxx X. xxXxxxx
Vice President
Date: August 5, 2002
PROXIM CORPORATION
By: /s/ Xxxxx X. Xxxx
------------------------------------
Xxxxx X. Xxxx
President and Chief Operating
Officer
Date: August 5, 2002
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES.
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APPENDIX A
DEFINITIONS
AGERE'S PATENTS means all patents having enforceable rights in any country of
the world issuing from an application filed as of the effective date of this
Agreement and from any continuation or division of such application, which AGERE
(or any company while a SUBSIDIARY of AGERE), at any time during the LIMITED
PERIOD, has the right to grant any licenses of the type herein granted, but only
to the extent of such right.
AGERE'S WIRELESS LAN PATENTS means all of AGERE'S PATENTS that claim an
invention used in any PRODUCTS OF THE ORINOCO BUSINESS.
ASSET PURCHASE AGREEMENT means the agreement to which this Agreement is attached
as Exhibit B-2, and by which PROXIM is acquiring the ORiNOCO Business from AGERE
SYSTEMS.
LICENSED PRODUCTS means WIRELESS NETWORKING PRODUCTS, PRODUCTS OF THE ORINOCO
BUSINESS, or all products and services of any kind, as the case may be,
according to Section 1.01.
LIMITED PERIOD means the period commencing on the effective date of this
Agreement and continuing for seven and one half (7.5) years thereafter.
PRODUCTS OF THE ORINOCO BUSINESS means any IEEE 802.11 based product, including
each ORiNOCO-branded product and each private label systems product, of the
ORiNOCO business of AGERE SYSTEMS existing and under development prior to and as
of the effective date of this Agreement, and subsequent extensions thereof, as
well as all services related to such products.
PROXIM'S PATENTS means all patents having enforceable rights in any country of
the world issuing from an application filed as of the effective date of this
Agreement and from any continuation or division of such application, which
PROXIM (or any company while a SUBSIDIARY of PROXIM), at any time during the
LIMITED PERIOD has the right to grant any licenses of the type herein granted,
but only to the extent of such right.
SUBSIDIARY of a company means a corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a SUBSIDIARY of such
company only as long as such control or ownership and control exists.
WIRELESS NETWORKING PRODUCTS means any product involved in connecting together
electronic devices using a wireless network, as well as all services related to
such products.
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