Technology License Agreement
between Hewlett-Packard GmbH
and The DII Group, Inc.
TABLE OF CONTENTS
PAGE
RECITALS.......................................... 2
DEFINITIONS.......................................2
OWNERSHIP.........................................3
LICENSE GRANT.....................................4
DELIVERY..........................................6
PAYMENT...........................................6
WARRANTY AND INDEMNIFICATION......................7
TERMINATION.......................................8
GENERAL PROVISIONS................................8
TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement is entered into by Hewlett-Packard GmbH, a
company registered and incorporated under the laws of Germany ("HP"), and The
DII Group, Inc., a Delaware corporation ("DII GROUP"). This Technology License
Agreement is effective as of Closing.
RECITALS:
The parties have entered into the MAPA, and it is a condition to closing of the
transactions contemplated by the MAPA that the parties enter into this
Agreement.
The parties agree as follows:
1. DEFINITIONS
1.1 The following definitions have the same meaning as in the MAPA:
1.1.1 Affiliate"
1.1.2 "CDA"
1.1.3"Closing"
1.1.4 "Closing Date"
1.1.5 "Effective Time"
1.1.6 "Memorandum of Understanding"
1.1.7 "New CDA"
1.1.8 PRCO"
1.1.9 "Site"
1.1.10 Transition Services Agreement
1.2 "Laser Patent" means the improvements disclosed in the invention
entitled "Apparatus for Laser Machining with a Plurality of Beams"
having Xxxxxxxxx Xxxxxx, et al, as named inventors and which is found
in European Patent No. 0683007 and any legal equivalent in a foreign
country (including U.S. Patent No. 5,676,866), including the right to
claim priority, and in all patents obtained for the invention by this
application or its continuation, division, renewal, or substitute, and
any reissue or re-examination of the patents.
1.3 "LicensedTechnology" means the technology licenses described in
Schedule 1.6 to this Agreement to be licensed by HP pursuant to this
Agreement.
1.4 "MAPA" means the Master Asset Purchase Agreement, made and effective
as of Closing between HP, Multilayer Technology and Co KG and DII
GROUP.
1.5 "PRCO Trade Secrets" means trade secrets owned by HP in use within
PRCO at the Effective Time including, but not limited to, any
processes, data, designs, know-how or other technical or commercial
information.
1.6 "Schedule 1.6" (Licensed Technology) consists of Subset A and Subset
B.
1.7 "Software" means software program(s), associated files and utilities
provided with or used by the software programs(s), databases, and all
associated documentation, associated instruction manuals and
supporting material.
1.8 "Subset A" lists HP standard commercial software and is a subset of
Schedule 1.6.
1.9 "Subset B" lists HP patents and patent applications identified with
the PRCO manufacturing operation and is a subset of Schedule 1.6.
2. OWNERSHIP
2.1 HP will assign to DII GROUP all right, title and interest in the Laser
Patent except the assignment is subject to the following:
2.1.1 HP will have no obligation to assign until DII GROUP obtains the
consent of each of the Xxxx Zeiss firm, Lambda Physik GmbH and
Microlas GmbH. HP will use reasonable efforts to complete a
consent agreement with the co-owners of the Laser Patent and DII
GROUP ("Consent Agreement") by Closing with materially the same
terms and conditions as the current draft of the Consent
Agreement under negotiation attached as Exhibit B. HP will
complete the assignment within a reasonable time after all
necessary consents are received. HP will have no obligation for
any fees, payments or royalties, if any, necessary to obtain the
Consent Agreement except for HP's obligations with respect to
paying its share of patent prosecution costs stated in the
current draft of the Consent Agreement.
2.1.2 HP retains a worldwide, non-transferable, irrevocable fully
paid-up license without the right to grant sublicenses to make,
have made, use, sell, offer for sale and import any technology or
product within the scope of the Laser Patent claims, except that
HP's license remains subject to the current agreements, as
currently amended, with the Xxxx Zeiss firm, Lambda Physik GmbH
and Microlas GmbH and this Section 2.1.2. will take precedence
over the Consent Agreement listed in Section 2.1.1. with respect
to transferability of the license granted under this Section
2.1.2.
2.1.3 DII GROUP agrees to be subject to the limitations of HP's
agreements with the Xxxx Zeiss firm, Lambda Physik GmbH and
Microlas GmbH related to the Laser Patent.
2.1.4 DII GROUP receives no right, title or interest to any
modifications or additions made by HP after Closing to any
Licensed Technology. HP receives no right, title or interest to
any modifications or additions made by DII GROUP after Closing to
any Licensed Technology.
2.1.5 HP will instruct its agent to pay any maintenance fees that
become due within three years after Closing for any issued patent
listed in Subset B or any patents that issue after Closing based
on a patent application listed in Subset B. HP will continue to
prosecute any patent applications listed in Subset B at HP's own
cost for a period of three years after Closing, except that HP
may choose to discontinue prosecution of such a patent
application based on HP's commercially reasonable judgment. HP
will have no obligation with respect to any patents or patent
applications listed in Subset B after three years after Closing.
3. LICENSE GRANT
3.1 HP grants DII GROUP and DII GROUP accepts a license under the terms
and conditions of the HP standard product license attached as Exhibit
A for the HP products listed in Subset A. The terms and conditions of
the HP standard product license will control in the event of conflicts
with the terms and conditions of this Agreement or the MAPA, except
this Agreement will control with respect to the following sections of
the HP standard product license: Prices, Orders, Delivery, Shipment
and Risk of Loss, Installation and Acceptance and Payment.
3.2 HP grants to DII GROUP and its Affiliates a non-exclusive,
non-transferable, worldwide, perpetual license to use the PRCO Trade
Secrets for the purpose of building, manufacturing, designing, selling
or marketing goods, services, or products with respect to any
technical or commercial applications DII GROUP deems appropriate
within facilities controlled or operated by DII GROUP or its
Affiliates, without a right of sublicense and subject to the
confidentiality restrictions contained in the New CDA.
3.2 HP grants to DII GROUP and its Affiliates a non-exclusive,
non-transferable, worldwide, perpetual license to make, use, sell,
offer for sale, and import the inventions within the scope of the
patents, patent applications, utility models and utility model
applications listed in Subset B for the purpose of building,
manufacturing, designing, selling or marketing goods, services, or
products with respect to any technical or commercial applications DII
GROUP deems appropriate within facilities controlled or operated by
DII GROUP or its Affiliates, without a right of sublicense and subject
to the confidentiality restrictions contained in the New CDA, except
that this license grant will not be effective prior to DII GROUP
obtaining any necessary consents related to the inventions. HP will
have no obligation for any fees, payments or royalties, if any,
necessary to obtain the consents.
3.3 Upon HP's request at any time after the Closing Date, DII GROUP will
grant HP a sublicense to the Dycostrate technology under the terms of
the Technical Cooperation and License Agreement between
Hewlett-Packard GmbH (Boeblingen, Germany) and Dyconex AG (Zurich,
Switzerland), Dyconex Patente AG (Zug, Switzerland) signed April 30,
1993 and the Amendment of the Technical Cooperation and License
Agreement signed June 3, 1996 (together known as the "Dyconex
Agreement"). DII GROUP will make reasonable efforts to make the
essential terms of the sublicense reflect DII GROUP's intention to
grant HP the broadest available sublicense and to grant HP the lowest
available cost sublicense. DII GROUP will not amend the Dyconex
Agreement to make the essential terms of such a sublicense unavailable
to HP without HP's prior written approval, which may not be
unreasonably withheld. If such a sublicense is unavailable due to the
limitations of the Dyconex Agreement in place at Closing, then DII
GROUP will have no obligation to grant HP such a sublicense and HP's
option to request such a sublicense will terminate.
3.4 HP grants to DII GROUP and its Affiliates a non-exclusive,
non-transferable, worldwide, perpetual license to make, produce,
modify, copy, execute, assemble, disassemble, compile, decompile,
reproduce, translate, synchronize and use the IPDA software in any
location owned or controlled by DII GROUP or its Affiliates and the
Sspice software (which is dependent on the HP Spice software licensed
in Section 3.6) within the Site only in source code and object code
format without a right of sublicense, except that the Sspice software
may be remotely accessed from other sites. This license does not
extend the license granted in Section 3.6.
3.5 HP grants to DII GROUP and its Affiliates a non-exclusive,
non-transferable, worldwide, perpetual license to make, produce,
modify, copy, execute, assemble, disassemble, compile, decompile,
reproduce, translate, synchronize and use the HP Spice software in
source code and object code format within the Site without a right of
sublicense for a period ending one year after Closing. DII GROUP and
its Affiliates agree to remove and destroy all copies of the HP Spice
software from all its computer systems at the end of the one-year
period.
4. DELIVERY
4.1 HP will provide DII GROUP and its Affiliates any requested or required
assistance related to the prosecution of the Laser Patent, or any
activity associated with any interference, litigation or proceeding
related to the Laser Patent. DII GROUP will reimburse HP reasonable
costs for such requests or assistance.
4.2 HP will provide DII GROUP copies of available documentation for the
Licensed Technology and all available elements of the Software for the
Licensed Technology as specified in Schedule 1.6 on or before the
Effective Time so as to enable DII GROUP and its Affiliates to comply
with its obligations towards third parties relating thereto. DII GROUP
may take delivery of the provided copies of the Licensed Technology at
the Effective Time, or at the time of availability if HP makes
additional elements available after the Effective Time. DII GROUP
acknowledges that the provision of access by HP defined above is
sufficient to meet all HP obligations with respect to delivery of the
Licensed Technology.
4.3 HP has no other delivery obligations other than as expressly set forth
in this Section 4, and as expressly set forth in the MAPA and its
related operational agreements.
5. PAYMENT
5.1 All licenses granted under this Agreement are non-royalty-bearing,
fully paid-up licenses with respect to HP, with the exception of
inventor compensation described in Section 5.2, any ongoing support
obligations and any sublicense granted under Section 3.4.
Consideration for the licenses granted and authorizations provided
under this Agreement is found within the MAPA.
5.2 HP and DII GROUP will determine initial compensation offers under the
German Employee Invention Act to be made to inventors for patents and
patent applications owned by either HP or Multek and licensed under
this Agreement, using HP's current process to determine amounts,
timing and mode of payments. The patent owner will present the initial
offer to the inventor, negotiate, if necessary, with the inventor to
determine the final amount and pay the final amount to the inventor,
while communicating the status of the negotiation to the other party.
The other party will pay the patent owner the portion of the final
amount based on its use of the technology covered in the patent or
patent application. Either party may request that this process be
initiated at any time. Any employee invention compensation arising
from the use of any Licensed Technology or the patent or patent
applications in Subset B prior to the Closing Date shall, for the
avoidance of doubt, be borne by HP.
6. WARRANTY AND INDEMNIFICATION
6.1 HP warrants that it has the necessary authority from its parent
company, Hewlett-Packard Company and any Affiliates, to license or
assign rights under this Agreement on behalf of Hewlett-Packard
Company or its Affiliates.
6.2 Any Licensed Technology provided to DII GROUP from HP under this
Agreement is provided "AS IS" and without warranty of any kind,
except with respect to the following:
6.2.1 HP will provide any services and fulfill any obligations under
this Agreement with reasonable care; and
6.2.2 Except as otherwise disclosed, HP, to the best knowledge of only
the following named list of HP representatives: Xxxxxx Xxxxxxx,
Xxxxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxx Bring, and Xxxx Xxxxxx, is not
aware of any third party claims relating to the Laser Patent or
the Licensed Technology.
6.3 EXCEPT AS SET FORTH IN SECTION 2.3, 6.1 AND 6.2 ABOVE, IN NO EVENT
SHALL HP HAVE ANY LIABILITY FOR ANY BREACH OF ANY EXPRESS OR IMPLIED
WARRANTY UNDER THIS AGREEMENT.
6.4 HP provides NO WARRANTY that the Licensed Technology referred to
herein will operate in accordance with or substantially conform to the
Documentation, manuals, any specifications provided or agreed to, and
any relevant data sheet or promotional literature distributed by HP.
6.5 HP provides NO WARRANTY that the Licensed Technology referred to
herein are "Year 2000 Compliant." Year 2000 Compliant means that the
Licensed Technology will perform without error, loss of data or loss
of functionality arising from any failure to process, calculate,
compare or sequence date data accurately.
6.6 HP provides NO WARRANTY that the Licensed Technology, accompanying
documentation, trademarks, copyrights and trade names referred to in
this Agreement do not violate or infringe any patent, copyright,
trademark, trade secret or other proprietary right of any third party,
except where expressly provided under Section 6.2.
6.7 THIS SECTION 6 STATES THE COMPLETE AND ENTIRE TERMS, LIABILITY AND
REMEDIES OF THE PARTIES WITH RESPECT TO ANY EXPRESS OR IMPLIED
WARRANTIES OR FOR ANY CLAIM OF INFRINGEMENT OF INTELLECTUAL PROPERTY
RIGHTS BY THE LICENSED TECHNOLOGY OR DOCUMENTATION.
6.8 HP MAKES NO WARRANTIES, EITHER EXPRESS OR IMPLIED, REGARDING THE
LICENSED TECHNOLOGY AND THE DOCUMENTATION. HP SPECIFICALLY DISCLAIMS
ANY IMPLIED WARRANTIES OF HP OF NON-INFRINGEMENT, MERCHANTABILITY, AND
FITNESS OF THE LICENSED TECHNOLOGY FOR ANY PARTICULAR PURPOSE.
7. TERMINATION
7.1 This Agreement may be terminated with the mutual consent of DII GROUP
and HP.
7.2 If terminated, all rights, obligations, representations and any other
aspects of this Agreement are ended, except that the following shall
survive: warranty and indemnity.
8. GENERAL PROVISIONS
8.1 The provisions of MAPA Sections 16.2 through 16.8 and 16.10 through
16.19 apply to this Agreement and are hereby incorporated by
reference, except that references to Multek Europe in the incorporated
sections will be deemed references to DII GROUP for the purposes of
this Agreement.
8.2 The parties will comply with all applicable export laws.
8.3 This Agreement is not transferable, except in connection with the sale
of substantially all the assets provided to Multek Europe in the MAPA.
However, in the event of a transfer under this Section, DII GROUP must
obtain HP's consent with respect to the license granted in Section
3.6, which HP may reasonably withhold.
The parties indicate their agreement to this Technology License
Agreement by their signatures below:
Hewlett-Packard GmbH
/s/ Xxxx Xxxxxx
-------------------------
By: Xxxx Xxxxxx
Title: Managing Director,
Finance and Administration
The DII Group
/s/ Xxxxxx X. Xxxxxxx
--------------------------
By:Xxxxxx X. Xxxxxxx
Printed name: Xxxxxx X. Xxxxxxx
Title: Senior Vice President,
Interconnect Technologies
