Exhibit 10.30
Intellectual Property Agreement, dated November 30, 2001, by and among
the Registrant and Lucent Technologies, Inc. and Lucent Technologies
GRL Corporation relating to the sale of Lucent's Echo Cancellation
Business. Pursuant to Item 601(b)(2) of Regulation S-K, the schedules
and exhibits referred to in the agreement are omitted. The Registrant
hereby undertakes to furnish supplementally a copy of any omitted
schedule or exhibit to the Commission upon request. Confidential
treatment has been requested as to certain portions of this agreement
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934, as
amended. Confidential portions have been filed separately with the
Securities and Exchange Commission.
Intellectual Property AGREEMENT
by and among
NMS COMMUNICATIONS CORPORATION
and
LUCENT TECHNOLOGIES INC.
and
LUCENT TECHNOLOGIES GRL CORPORATION
Relating to
THE SALE OF LUCENT'S ECHO CANCELLATION BUSINESS
Effective as of November 30, 2001
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement by among Lucent Technologies Inc.
("Lucent"), a Delaware corporation having an office at 000-000 Xxxxxxxx Xxxxxx,
Xxxxxx Xxxx, Xxx Xxxxxx 00000-0000, Lucent Technologies GRL Corporation
("Lucent-GRL"), a Delaware corporation having an office at Suite 105, 14645 N.W.
00xx Xxxxxx, Xxxxx Xxxxx, Xxxxxxx 00000, and NMS Communications Corporation
("Purchaser"), a Delaware corporation having an office at 000 Xxxxxxxx
Xxxxxxxxx, Xxxxxxxxxx, XX 00000-0000, is being entered into pursuant to the
Asset Purchase Agreement dated October 15, 2001, between Lucent and Purchaser
(hereinafter referred to as the "Purchase Agreement"), and shall become
effective on November 30, 2001 ("Effective Date").
WHEREAS, Lucent has agreed to sell and Purchaser has agreed to buy Lucent's
Echo Cancellation business pursuant to the Purchase Agreement;
WHEREAS, in connection with the above sale and purchase of Lucent's Echo
Cancellation business, Lucent agrees to license and assign certain intellectual
property rights to Purchaser to enable Purchaser to conduct the Business (as
defined below).
NOW, THEREFORE, IT IS HEREBY AGREED BETWEEN THE PARTIES AS FOLLOWS:
ARTICLE 1 - DEFINITIONS
Capitalized terms not defined in this Article shall have the meaning as
defined in the body of this Intellectual Property Agreement or in the Purchase
Agreement.
1.01 "Agere" shall mean Agere Systems Inc., a Delaware corporation having
an office at 0 Xxx Xxx, Xxxxxxxx Xxxxxxx, XX 00000, the legal entity formed by
Lucent Technologies Inc. on February 1, 2001, and all subsidiaries of Agere
Systems Inc., including without limitation, Agere Systems Guardian Corp. and
Agere Systems Optoelectronics Guardian Corp.
1.02 "Assigned Marks" shall mean those marks identified in the Trademark
Assignment Agreement set forth in Exhibit D hereto.
1.03 "Assigned Patents" shall mean those patents identified in the Patent
Assignment Agreement set forth in Exhibit E hereto.
1.04 "Assigned Software" shall mean the Code, Software Development
Documents and Documentation, owned by Lucent as of the Effective Date which is
specific to (a) the "Product-embedded Programs" developed solely by the members
of, or on behalf of, the Business as of the Closing Date which are specifically
listed in Exhibit A hereto, and (b) the Wireless Software as described and
listed in Exhibit G hereto.
1.05 "Assigned Technology" shall mean that Technical Information, owned by
Lucent as of the Effective Date, which has been developed solely by the members
of, or on behalf of, the Business and which is specific to the product-level or
system-level designs of the Products of the Business, but expressly excluding:
(i) that Technical Information which relates to any Components of the Products
of the Business and (ii) any Technical Information and all masks and other
manufacturing information or tools used for the manufacture of any versions of
the ASIC-ECPR4 and ASIC-ECPR5 (including without limitation all related process
information, mask works, mask sets, macro cells, and the like). Assigned
Technology further includes any and all masks and other manufacturing
information or tools specifically created for the manufacture of Lucent's
ASIC-ECPR6 (including without limitation all related process information, mask
works, mask sets, macro cells, and the like, but expressly excluding any
information or tools created or used for the ASIC-ECPR4 and/or ASIC-ECPR5), to
the extent Lucent has the right to assign the same.
1.06 "Business" shall mean the worldwide development, manufacturing,
marketing, sales and distribution of echo cancellation (including acoustic echo
cancellation), noise reduction, speech and Sound Quality Enhancement systems,
products and components, as conducted by Lucent's Switching and Access Systems
Group as of the Closing Date.
1.07 "Code" shall mean both Object Code and Source Code.
1.08 "Components" shall mean any and all components of specified products
at or below the board-level design, and including without limitation, any
electronic boards, systems on a chip, integrated circuits or semiconductor
products.
1.09 "Confidential Information" shall mean (i) subject to Section 6.01(b),
the existence and terms of this Intellectual Property Agreement (except for
statements as to the assignment and/or licensing by one party of the Products of
the Business or the intellectual property rights specific thereto by the other
party) and (ii) any non-public, confidential or proprietary information relating
to a disclosing party, whether or not technical in nature, including any
information that is designated by the disclosing party as Confidential
Information at the time of its disclosure, either by a written or visual
confidentiality designation, or orally, provided that (i) written confirmation
of such confidential status is provided to the receiving party within ten (10)
days thereafter or (ii) such information would, under the circumstances, appear
to a reasonable person to be confidential or proprietary.
1.10 "Derivative Work" shall mean any work that is based, in whole or in
part, upon one or more pre-existing works, such as a revision, modification,
translation, abridgment, condensation, expansion or any other form in which such
pre-existing works may be recast, transformed or adapted, or which, if prepared
without authorization of the owner of the copyright in such pre-existing work,
would constitute a copyright infringement. A Derivative Work shall also include
any compilation that incorporates such a pre-existing work.
1.11 "Documentation" shall mean all information in human and/or
machine-readable form, relating to the use or execution of the Code including
but not limited to user manuals.
1.12 "Intellectual Property Rights" shall mean those (i) copyrights
(whether or not registered) and registrations and applications for registration
thereof in the United States and all other nations throughout the world and all
moral rights, renewals, extensions, reversions or restorations associated with
such copyrights, and (ii) statutory and common law rights to trade secrets and
know-how in the United States and all other nations throughout the world. The
term Intellectual Property Rights does not include rights under any of the
Licensed Patents (or any other patent) or any patent owned or controlled by
Agere.
1.13 "Licensed Patents" shall mean every patent (including reissues,
re-examinations and extensions thereof and utility models, but excluding design
patents and design registrations) that either (a) is issued or issues on an
application (including any provisional, continuations, continuations-in-part and
divisional applications thereof) filed in any country of the world as of the
Closing Date, or (b) is issued or issues on an application (including any
provisional, continuations, continuations-in-part and divisional applications
thereof) filed in any country of the world on an invention which is first
conceived solely by an employee of the Business as of the Closing Date and is
specific to the Products of the Business; which has claims directed to the
Products of the Business and which either Lucent or Lucent-GRL has the right to
grant licenses of the type herein granted without payment of fees or royalties,
but only to the extent of such rights. All patents (regardless when issued)
owned or controlled by Agere are expressly excluded from this definition of
Licensed Patents.
1.14 "Licensed Products" shall mean [omitted text, separately filed with
the Commission].
1.15 "Licensed Software" shall mean the Code, and any Software Development
Documents and Documentation relating thereto, owned by Lucent as of the
Effective Date and which either (a) is embodied within the Products of the
Business or (b) relates to the software programs specifically listed in Exhibit
B hereto; to the extent that Lucent has the right to grant licenses to such
Code. Licensed Software does not include any of the Assigned Software nor any
Code, Software Development Documents or Documentation owned or controlled by
Agere.
1.16 "Licensed Technology" shall mean that Technical Information which has
been developed by the members of, or on behalf of, the Business, which is owned
by Lucent as of the Effective Date and which is embedded within or directly
relates to and is necessary for the operation, development or manufacture of the
Components of the Products of the Business; to the extent that Lucent has the
right to grant licenses to such Technical Information. Licensed Technology does
not include any Code or Software Development Documents or any of the Assigned
Technology, and further, does not include any Technical Information of Agere.
1.17 "Object Code" shall mean code in machine-readable form generated by
compilation, assembly or other translation of Source Code and contained in a
medium which permits it to be loaded into and operated on by a microprocessor or
similar device.
1.18 "Products of the Business" shall mean those products or systems of the
Business existing as of the Effective Date which are listed in Exhibit C hereto
and defined by their product-level or system-level designs described in the
referenced J-Drawings.
1.19 "Scope of the Business" shall mean [omitted text, separately filed
with the Commission.]
1.20 "Software Development Documents" shall mean all software-related
development documents, owned by Lucent as of the Effective Date, such as, but
not limited to, technical information, schematics, designs, flow charts,
algorithms, and developer notebook entries relating to software or any other
software-related development materials. Software Development Documents does not
include any Code of the Assigned Software or Licensed Software.
1.21 "Sound Quality Enhancement" shall mean specifically electrical echo
cancellation, acoustic echo control, noise compensation, automatic gain control
and reverse link noise reduction.
1.22 "Source Code" shall mean code in human-readable form represented in
any programming language, and including all comments and procedural code.
1.23 "Stand-alone Echo Cancellation Products" shall [omitted text,
separately filed with the Commission.]
1.24 "Subsidiary" means any entity of which at least a majority of the
securities or ownership interests having by their terms ordinary voting power to
elect a majority of the board of directors or other persons performing similar
functions is directly or indirectly owned or controlled by Seller or by one or
more of its respective Subsidiaries.
1.25 "Technical Information" shall mean all requirements and specification
documents, designs, plans, drawings, flow charts, algorithms, prototypes,
technical manuals, user manuals, employee notebook entries and other technical
information, know-how or copyrightable works.
1.26 "Wireless Product" shall mean [omitted text, separately filed with the
Commission.]
1.27 "Wireless Software" shall mean [omitted text, separately filed with
the Commission].
ARTICLE 2 - ASSIGNMENT OF TECHNOLOGY, SOFTWARE, PATENTS AND TRADEMARKS
2.01 Lucent transfers and assigns to Purchaser all of its worldwide right,
title and interest in and to the Assigned Technology, Assigned Software and the
Intellectual Property Rights specific thereto, including but not limited to the
right to recover damages and pursue equitable relief and undertake all
proceedings therefor as may be necessary in respect of past, present and future
infringement related to the Assigned Technology, Assigned Software and the
Intellectual Property Rights pertaining thereto. Such assignment shall be
subject to all agreements entered into between Lucent (as it presently exists
and as it formerly existed as the equipment manufacturing division of AT&T
Corp.), its predecessors (including AT&T Corp.) or its Subsidiaries, and third
parties prior to the Closing Date. Such assignment does not include an
assignment of or license under any inventions, patent applications or patents.
2.02 Lucent transfers and assigns to Purchaser all of its worldwide right,
title and interest in and to the Assigned Patents in accordance with the Patent
Assignment Agreement attached hereto as Exhibit E hereto. In partial
consideration for the transfer and assignment of the Assigned Patents by Lucent
to Purchaser pursuant to such Patent Assignment Agreement, Purchaser grants to
Lucent and its Subsidiaries a personal, nonexclusive, non-transferable (except
as permitted in Section 8.09), perpetual, irrevocable, worldwide, fully paid-up
license, under the Assigned Patents, to make, have made, use, lease, sell, offer
to sell and import any products or services (present or future) of the
businesses in which Lucent or any of its Subsidiaries is now or hereafter
engaged except for the manufacture by Lucent or its Subsidiaries of Stand-alone
Echo Cancellation Products. The exercise of such rights shall be subject in all
respects to Section 5.01.
2.03 Lucent transfers and assigns to Purchaser all of its worldwide right,
title and interest in and to the Assigned Marks in accordance with the Trademark
Assignment Agreement attached hereto as Exhibit D.
2.04 Lucent, at Purchaser's reasonable request, shall execute all documents
and perform all acts as required for the assignment of the Assigned Software,
Assigned Patents, Assigned Technology and Assigned Marks, including but not
limited to the Intellectual Property Rights that are specific thereto, to
Purchaser under this Agreement. Purchaser and Lucent shall bear equally any and
all administrative and similar costs and expenses external to Purchaser and
Lucent related to such assignments.
2.05 (a) In part consideration for the assignments set forth in this
Article 2, Purchaser hereby grants to Lucent and its Subsidiaries a fully
paid-up, personal, worldwide, perpetual and non-exclusive licenses to use,
reproduce, execute, perform, display, modify and create Derivative Works of the
Assigned Software (including all Code, Software Development Documents and
Documentation thereof) and Assigned Technology, and to distribute (pursuant to
Section 2.05(b)) the Assigned Software, Assigned Technology and Derivative Works
thereof with respect to any products or services of the businesses in which
Lucent or any of its Subsidiaries is now or hereafter engaged (except for the
manufacture of Stand-alone Echo Cancellation Products). The exercise of such
rights shall be subject in all respects to Section 5.01.
(b) Lucent's distribution right in Section 2.05(a) shall be limited to
distributions to customers, suppliers, or other third parties as reasonably
necessary with respect to any products or services of the businesses in
which Lucent or any of its Subsidiaries is now or hereafter engaged (except
for the manufacture of stand-alone Products of the Business) and as is
consistent with current practices within the businesses of Lucent and its
Subsidiaries.
2.06 To Lucent's knowledge, a copy of all of the Assigned Software and
Assigned Technology already is in possession of the Business Employees or is
part of the Purchased Assets. However, Lucent shall, upon the Closing Date,
furnish to Purchaser any of the Assigned Technology and copies of the Assigned
Software (not already in Purchaser's possession as of the Closing Date) which
shall be deemed delivered on the date furnished unless and to the extent
Purchaser identifies in writing within sixty (60) days after such delivery
additional materials required to complete the delivery of such items pursuant to
this Agreement.
ARTICLE 3 - LICENSE OF PATENTS
3.01 Lucent and Lucent-GRL grant to Purchaser a personal, nonexclusive,
non-transferable (except as is otherwise set forth in Section 8.09), worldwide,
and fully paid-up license, under the Licensed Patents, to make, have made, use,
lease, sell, offer to sell and import the Products of the Business for use
within the Scope of the Business.
3.02 In return for the additional consideration specified in Exhibit F
hereto, Lucent and Lucent-GRL grant to Purchaser a personal, nonexclusive,
non-transferable (except as is otherwise set forth in Section 8.09), worldwide,
and fully paid-up license, under the Licensed Patents, to make, have made, use,
lease, sell, offer to sell and import Stand-alone Echo Cancellation Products
and/or Licensed Products.
3.03 The patent licenses granted in this Article 3 also include licenses,
where appropriate, (a) to make, have made, use and import machines, tools,
materials and other instrumentalities, insofar as such machines, tools,
materials and other instrumentalities are reasonably required for the
development, manufacture, testing or repair of the Products of the Business,
Licensed Products and Stand-alone Echo Cancellation Products which are or have
been made, used, leased, owned, sold or imported by the Purchaser; and (b) to
convey to any customer or authorized distributor of the Purchaser, with respect
to any such Product which is sold or leased by the Purchaser to such customer or
distributor, rights to use and resell such Product as sold or leased by the
Purchaser (whether or not as part of a larger combination); provided, however,
that no rights may be conveyed to customers or distributors with respect to any
invention which is directed to (i) a combination of such Product (as sold or
leased) with any other product, or (ii) a method or process which is other than
the inherent use of such Product itself (as sold or leased), or (iii) a method
or process involving the use of any such Product to manufacture (including
associated testing) any other product.
3.04 The patent licenses granted herein to Purchaser 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. Without limiting
the foregoing, the have made rights granted hereunder shall not be exercised in
a manner such that the exercise of the have made rights is a sham to sublicense
the Licensed Patents to a third party and not for BONA FIDE business purposes of
the Purchaser.
3.05 All patent licenses granted herein shall continue for the entire
unexpired term of such patent or for as much of such term as Lucent has the
right to license such patent.
3.06 Except as expressly provided in this Article 3, no rights are granted
under Lucent's inventions, patent applications or patents, whether by
implication, estoppel or otherwise.
ARTICLE 4 - LICENSE OF INTELLECTUAL PROPERTY RIGHTS
4.01 Lucent hereby grants to Purchaser a personal, nonexclusive,
non-transferable (except as is otherwise set forth in Section 8.09), worldwide,
and fully paid-up license, under Intellectual Property Rights owned by Lucent as
of the Effective Date and in which Lucent has a right license, to manufacture,
use and reproduce the Licensed Technology and Licensed Software, and to create
Derivative Works thereof which are based upon the Licensed Technology and/or
Licensed Software, for use of the Products of the Business within the Scope of
the Business.
4.02 In return for the additional consideration specified in Exhibit F
hereto, Lucent hereby grants to Purchaser a personal, nonexclusive,
non-transferable (except as is otherwise set forth in Section 8.09), worldwide,
and fully paid-up license, under Intellectual Property Rights owned by Lucent as
of the Effective Date and in which Lucent has a right license, to manufacture,
use and reproduce the Licensed Technology and/or Licensed Software, and to
create Derivative Works thereof based upon the Licensed Technology and/or
Licensed Software, for use of Stand-alone Echo Cancellation Products and/or
Licensed Products.
4.03 The intellectual property licenses granted in this Article 4 also
include licenses, where appropriate, to (a) execute, perform and display Object
Code copies of the Licensed Software and Derivative Works thereof for use of the
Products of the Business, Licensed Products and Stand-alone Echo Cancellation
Products within the Scope of the Business, and (b) sell, lease, distribute,
sublicense or otherwise transfer Object Code copies of the Licensed Software and
Derivative Works thereof, in whole or in part, for use of the Products of the
Business, Licensed Products and Stand-alone Echo Cancellation Products.
4.04 Subject to the confidentiality and non-disclosure obligations set
forth in Article 6, the licenses granted to Purchaser in this Article 4, include
the right to grant non-exclusive sublicenses to third party manufacturers and
distributors who agree to the obligations of Article 6, of the same scope and to
the same extent as the licenses granted to Purchaser under such Sections, to the
extent reasonably necessary for Purchaser to carry on the business of supplying
its customers with products or components within the Scope of the Business.
4.05 The licenses granted in this Article 4 are subject to all agreements
entered into between Lucent (as it presently exists and as it formerly existed
as the equipment manufacturing division of AT&T Corp.), its predecessors
(including AT&T Corp.) or its Subsidiaries, and third parties prior to the
Closing Date.
4.06 To Lucent's knowledge, a copy of all of the Licensed Technology and
the Licensed Software already is in possession of such Business Employees or is
part of the Purchased Assets. However, Lucent shall, upon the Closing Date,
furnish to Purchaser copies any of the Licensed Technology and the Licensed
Software (not already in Purchaser's possession as of the Closing Date) which
shall be deemed delivered on the date furnished unless and to the extent
Purchaser identifies in writing within sixty (60) days after such delivery
additional materials required to complete the delivery of such items pursuant to
this Agreement.
ARTICLE 5 - COVENANT NOT TO COMPETE
[omitted text, separately filed with the Commission].
ARTICLE 6 - CONFIDENTIALITY
6.01 Each party agrees that it will hold in confidence for the other party
all Confidential Information of the other party that such party's personnel may
receive or have access to in anticipation of and during the performance of this
Intellectual Property Agreement. Each party further agrees that, except as is
otherwise expressly provided in this Agreement, all such information shall
remain the property of the other party and that such party shall not make any
disclosure of such information to anyone, except (a) to such party's employees,
customers and contractors to whom such disclosure is reasonably necessary to the
use for which rights are granted hereunder, and (b) for Confidential Information
specifically concerning the nature and terms of this Intellectual Property
Agreement, to third parties (and their representatives) with whom such party is
in discussions with respect to the merger, acquisition or divestiture of a
business to which the subject matter of this Intellectual Property Agreement
relates or with respect to the lending or investment or purchase of equity
involving a party, but only to the extent and for the purpose of such
discussions. Each party agrees to take reasonable steps to notify and obtain
agreement by all employees, customers, contractors or other authorized third
parties in writing to whom any such disclosure is made, that such disclosure is
made in confidence, shall be kept in confidence by them and shall only be used
for purposes incident to the rights granted under this Intellectual Property
Agreement. The restrictions on each party under this Article on the disclosure
of Confidential Information shall not apply to information:
(i) which is independently developed by such party as evidenced
by documentation in its possession, or is lawfully received free of
restriction from another source having the right to so furnish such
information; or
(ii) after it has become generally available to the public by
acts not attributable to such party, its employees, customers or
contractors; or
(iii) which at the time of disclosure to such party was known to
such party, or its employees and contractors, free of restriction as
evidenced by documentation in their possession; or
(iv) which the other party agrees in writing is free of such
restrictions; or
(v) which is requested pursuant to a judicial or governmental
request, requirement or order under law, provided that such party
provides the other party with sufficient prior notice and reasonable
assistance in order to contest such request, requirement or order or
seek protective measures; or
(vi) which is furnished, in connection with a potential financing
transaction, sale of all or a portion of the Business or similar
transaction, to a prospective financing source or a prospective
purchaser or their advisors or a government agency; or
(vii) which is inherently embodied in products of the Business
and necessarily disclosed by virtue of the normal lease, license or
sale of such products within the Scope of the Business.
ARTICLE 7 - WARRANTIES AND LIABILITY
7.01 Except as set forth in Section 7.03 below, all of the warranties with
respect to the subject matter of this Intellectual Property Agreement are
included in the Purchase Agreement. Except as set forth in the Purchase
Agreement, Lucent, Lucent- GRL and their Subsidiaries makes no representations
or warranties, expressed or implied, including but not limited to, any
representations or warranties of merchantability or fitness for a particular
purpose or that the use of any of the Assigned Marks, Assigned Patents, Assigned
Technology, Assigned Software, Licensed Patents, Licensed Software and Licensed
Technology will not infringe any patent or other intellectual property right of
any third party.
7.02 All obligations of defense or indemnification and restrictions or
limitations on liability are included in the Purchase Agreement. Except as set
forth in the Purchase Agreement, (a) Lucent, Lucent-GRL and their Subsidiaries
shall not be held to any liability with respect to any copyright or patent
infringement, any trade secret misappropriation, or any other claim whatsoever
made by Purchaser or any third party on account of, or arising from the use by
anyone or any entity of any of the Assigned Marks, Assigned Patents, Assigned
Technology, Assigned Software, Licensed Patents, Licensed Software and Licensed
Technology, or any Derivative Works of any of them, (b) Lucent shall not be held
to any liability for errors, omissions, defects or bugs in the Assigned
Technology, Assigned Software, Licensed Software and Licensed Technology
furnished hereunder, and (c) in no event shall either party be liable under this
Intellectual Property Agreement for any special, consequential, incidental,
indirect, punitive or exemplary damages, or lost profits, however caused,
whether for breach of warranty, contract, tort negligence, strict liability or
otherwise, even if the other party has been advised of the possibility of such
damages.
7.03 Lucent-GRL represents and warrants to Purchaser that:
(a) Organization and Qualification
Lucent-GRL is a corporation duly organized, validly existing and in
good standing under the Laws of the State of Delaware and has all requisite
corporate power and authority to grant the patent licenses that it is
granting to Purchaser in accordance with Article 3 of this Intellectual
Property Agreement.
(b) Authorization; Binding Effect
(i) Lucent-GRL has all requisite corporate power and authority to
execute and deliver this Agreement and to effect the transactions
contemplated hereby and has duly authorized the execution, delivery
and performance of this Agreement by all requisite corporate action.
(ii) This Agreement has been duly executed and delivered by
Lucent-GRL and this Agreement is a valid and legally binding
obligation of Lucent-GRL, enforceable against it in
accordance with its terms, except to the extent that enforcement of
the rights and remedies created hereby and thereby may be affected by
bankruptcy, reorganization, moratorium, insolvency and similar Laws of
general application affecting the rights and remedies of creditors and
by general equity principles.
(c) Non-Contravention; Consents
(i) The execution, delivery and performance of this Agreement by
Lucent-GRL and the consummation of the transactions contemplated
hereby do not and will not: (A) result in a breach or violation of any
provision of Lucent-GRL's charter or by-laws, (B) violate or result in
a breach of or constitute an occurrence of default under any provision
of, result in the acceleration or cancellation of any obligation
under, or give rise to a right by any party to terminate or amend its
obligations under, any mortgage, deed of trust, conveyance to secure
debt, note, loan, indenture, lien, lease, agreement, instrument,
order, judgment, decree or other arrangement or commitment to which it
is a party or by which it is bound and which relates to the patents
licensed hereunder, which violation, breach or default could be
reasonably expected to have a material adverse effect on the patents
being assigned or licensed hereunder, or (iii) violate in any material
respect any material order, judgment, decree, rule or regulation of
any court or any Governmental Body having jurisdiction over Lucent-GRL
or the patents being assigned or licensed hereunder.
(ii) No consent, approval, order or authorization of, or
registration, declaration or filing with, any Person is required to be
obtained by Lucent-GRL in connection with the execution and delivery
of this Agreement or for the consummation of the transactions
contemplated hereby or thereby by Lucent-GRL, except for such other
consents, approvals, orders, authorizations, registrations,
declarations or filings where failure of compliance could not
reasonably be expected to have a material adverse effect on the
patents being assigned or licensed hereunder.
ARTICLE 8 - MISCELLANEOUS
8.01 Neither party confers any license, right or warranty, by implication,
estoppel or otherwise, other than the licenses and rights expressly set forth in
this Intellectual Property Agreement and the warranties expressly set forth in
the Purchase Agreement. Purchaser agrees not to use the Licensed Software,
Licensed Technology or Licensed Patents except as is expressly set forth in
Articles 3 and 4. Lucent agrees not to use the Assigned Software or Assigned
Technology except as is expressly set forth in this Agreement.
8.02 Nothing contained in this Intellectual Property Agreement shall be
deemed or construed to constitute or create between the parties hereto a
partnership, association, joint venture or other agency.
8.03 This Intellectual Property Agreement and the Purchase Agreement
establish the rights, duties, and obligations of Purchaser and Lucent with
respect to the subject matter hereof. Except as otherwise agreed in this
Intellectual Property Agreement or in the Purchase Agreement, Lucent and
Purchaser shall have no right or interest whatsoever in any product of the other
party whether such product is conceived or developed by the other party, during,
or after the course of performance of this Intellectual Property Agreement or
the Purchase Agreement. Nothing in this Intellectual Property Agreement shall be
construed to obligate Purchaser or Lucent to a specified level of effort in its
promotion and marketing of any product or enforcement of any intellectual
property right.
8.04 This Agreement shall be governed by and construed and interpreted in
accordance with the laws of the State of New York, irrespective of the choice of
laws principles of the State of New York, as to all matters, including matters
of validity, construction, effect, performance and remedies.
8.05 If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the parties agree to submit the dispute
to a sole mediator selected by the parties or, at any time at the option of a
party, to mediation by the American Arbitration Association ("AAA"). If not thus
resolved, it shall be referred to a sole arbitrator selected by the parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United States Arbitration Act.
Any such mediation or arbitration shall be in accordance with the following:
(a) Any award made (i) shall be a bare award limited to a holding for
or against a party and affording such remedy as is deemed equitable, just
and within the scope of the agreement; (ii) shall be without findings as to
issues (including but not limited to patent validity and/or infringement)
or a statement of the
reasoning on which the award rests; (iii) may in appropriate circumstances
(other than patent disputes) include injunctive relief; (iv) shall be made
within four (4) months of the appointment of the arbitrator; and (v) may be
entered in any court.
(b) The requirement for mediation and arbitration shall not be deemed
a waiver of any right of termination under this Agreement and the
arbitrator is not empowered to act or make any award other than based
solely on the rights and obligations of the parties under this Agreement.
(c) The arbitrator shall be knowledgeable in the legal and technical
aspects of this Agreement and shall determine issues of arbitrability but
may not limit, expand or otherwise modify the terms of this Agreement.
(d) The place of mediation and arbitration shall be in New York, NY,
USA.
(e) Each party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne
equally.
(f) A request by a party to a court for interim equitable relief shall
not be deemed a waiver of the obligation to mediate and arbitrate.
(g) The arbitrator shall have authority to award only compensatory
damages. The arbitrator shall have no authority to award punitive or other
damages, and each party irrevocably waives any claim thereto.
(h) The parties, their representatives, other participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
8.06 This Intellectual Property Agreement and the Purchase Agreement (and
any other collateral agreements thereto) set forth the entire agreement and
understanding between the parties as to the subject matter hereof and merges all
prior discussions between them. A party shall not be bound by any warranties,
understandings or representations with respect to such subject matter other than
as expressly provided herein, in the Purchase Agreement, or in a writing signed
with or subsequent to execution hereof by an authorized representative of the
party to be bound thereby.
8.07 The parties hereto agree that the invalidity or unenforceability of
any of the provisions hereof shall not in anyway affect the validity or
enforceability of any other provisions of this Intellectual Property Agreement
except those of which the invalidated or unenforceable provisions comprise an
integral part of or are otherwise clearly inseparable from such other
provisions.
8.08 Purchaser hereby assures Lucent that it will not without a license or
license exception authorized by the Bureau of Export Administration of the U.S.
Department of Commerce, Xxxxxxxxxx, X.X. 00000, Xxxxxx Xxxxxx of America, if
required
(a) export or release the information or software (including source
code) obtained pursuant to this Agreement to a national of Country Groups
D:1 or E:2 (15 C.F.R. Part 740, Supp. 1), Iran, Iraq, Sudan, or Syria; or
(b) export to Country Groups D:1 or E:2, or to Iran, Iraq, Sudan, or
Syria, the direct product (including processes and services) of the
information or software; or
(c) if the direct product of the information is a complete plant or
any major component of a plant, export to Country Groups D:1 or E:2, or to
Iran, Iraq, Sudan, or Syria, the direct product of the plant or major
component.
8.09 Except as expressly authorized herein, neither this Intellectual
Property Agreement nor any rights under this Intellectual Property Agreement may
be assigned, sublicensed or otherwise transferred by either party, in whole or
in part, whether voluntarily or by operation of law (other than to (a) a
Subsidiary of such party provided such party guarantees the performance of such
Subsidiary hereunder or (b) a person that is a successor by sale of assets,
merger or otherwise to substantially all of the assets of such party who
executes a written agreement of assumption by which it agrees to be bound
hereby), without the prior written consent of the other party, which consent
will not be
unreasonably withheld. The parties agree that a change in control of a party
shall not be deemed an "assignment" of this Intellectual Property Agreement.
8.10 The grant of each license hereunder also includes the right of a party
to sublicense (within the scope of such party's own licenses and subject to the
provisions of this Agreement) any business which is divested by that party or
any of its Subsidiaries 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 thereafter. Such sublicense
may continue for so long as the divested business remains a legal entity and
shall extend only to the licensed products of the kind sold or furnished by the
divested business prior to the divestiture and only for the rights of the
non-divesting Party licensed to the divesting party in this Agreement 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. This
Section shall apply regardless of whether the business is divested by a
distribution to existing shareholders, a sale of assets or as a sale of a legal
entity (e.g., sale of a Subsidiary).
8.11 This Intellectual Property Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
8.12 All article headings and the table of contents are for convenience
purposes only and shall in no way affect, or be used in, the interpretation of
this Agreement.
ARTICLE 9 - NOTICES
9.01 All notices, requests and other communications hereunder shall be in
writing and shall be deemed to have been duly given if addressed, and delivered
by hand, telex or facsimile, and confirmed by registered mail, with postage
pre-paid, to the addresses set forth below (or to such other addresses as may be
given by written notice).
For Lucent: Contract Administrator
Intellectual Property Business
Lucent Technologies Inc.
00000 X.X. 00xx Xxxxxx, Xxxxx 000
Xxxxx Xxxxx, Xxxxxxx 00000
With Copy to: Lucent Technologies Inc.
Intellectual Property Law Department
000 Xxxxxxx Xxxxxx Xxxx
Xxxxxx, Xxx Xxxxxx 00000 XXX
Vice President Corporate and Securities Law
Lucent Technologies Inc.
000-000 Xxxxxxxx Xxxxxx
Xxxxxx Xxxx, Xxx Xxxxxx 00000-0000 XXX
For Buyer: NMS Communications Corporation
000 Xxxxxxxx Xxxxxxxxx
Xxxxxxxxxx, XX 00000
Facsimile: (000) 000-0000
Attn: General Counsel
With a copy to: Xxxxxx, Xxxx & Xxxxxxx
Exchange Place, 00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Facsimile: (000) 000-0000
Attn: Xxxxxxx X. Xxxxx, Esq.
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.
Lucent TECHNOLOGIES INC.
By:
--------------------------
X.X. Xxxxxxx
President - Intellectual Property Business
Date:
------------------------
LUCENT TECHNOLOGIES GRL CORPORATION
By:
--------------------------
X.X. Xxxxxxx
Chairman
Date:
------------------------
NMS COMMUNICATIONS CORPORATION
By:
--------------------------
Name:
------------------------
Title
------------------------
Date:
------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES.
