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EXHIBIT 10.10
MASTER CONFIDENTIAL DISCLOSURE AND LICENSE AGREEMENT
BETWEEN
XXX XXXXXXXXXXX,
MCDATA HOLDINGS CORPORATION
AND
MCDATA CORPORATION
Effective as of May 31, 2000
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MASTER CONFIDENTIAL DISCLOSURE AND LICENSE AGREEMENT
This Master Confidential Disclosure and License Agreement (this
"Agreement") effective as of May 31, 2000, is between XXX Xxxxxxxxxxx, a
Massachusetts corporation ("EMC"), having an office at 000 Xxxxx Xxxxxx,
Xxxxxxxxx, XX 00000-0000; McDATA Holdings Corporation, a Delaware Corporation
("Holdings"), having an office at 000 Xxxxx Xxxxxx, Xxxxxxxxx, XX 00000-0000;
and McDATA Corporation, a Delaware corporation ("McDATA"), having an office at
000 Xxxxxxxxxxx Xxxxxxx, Xxxxxxxxxx, XX 00000.
WHEREAS, in connection with a corporate restructuring of McDATA, EMC
and McDATA entered into various agreements (the "1997 Agreements") as of October
1, 1997, relating to the allocation of various assets and liabilities between
EMC and McDATA and as to certain continuing rights and obligations of EMC and
McDATA; and
WHEREAS, McDATA and EMC currently propose that McDATA sell shares of
its Class B common stock, $.01 par value, to the public in an underwritten
public offering (the "IPO"); and
WHEREAS, EMC currently proposes to distribute to the stockholders of
EMC, approximately six to twelve months after the closing of the IPO, the Class
A common stock, $.01 par value, that EMC currently beneficially owns; and
WHEREAS, EMC and McDATA have entered into a Master Transaction
Agreement as of the date hereof (the "Master Transaction Agreement"), to further
delineate the relationship between EMC and McDATA following the IPO, set forth
certain rights and obligations of EMC and McDATA following the IPO, address
certain matters relating to the Distribution and provide for the execution and
delivery of certain additional agreements in order to facilitate and provide for
the foregoing; and
WHEREAS, as part of the foregoing, the parties desire to set forth
certain agreements regarding intellectual property; and
WHEREAS, also as part of the foregoing, the parties further desire to
enter into this Agreement to provide for the protection of their Confidential
Information (as defined below);
NOW, THEREFORE, in consideration of the mutual promises of the parties,
and of good and valuable consideration, it is agreed by and between the parties
as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this
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Article I and shall have the meaning specified herein:
Section 1.1 AFFILIATED COMPANY. "Affiliated Company" of any Person
means any entity that controls, is controlled by, or is under common control
with such Person. As used herein, "control" means the possession, directly or
indirectly, of the power to direct or cause the direction of the management and
policies of such entity, whether through ownership of voting securities or other
interests, by contract or otherwise.
Section 1.2 ANCILLARY AGREEMENTS. "Ancillary Agreements" has the
meaning set forth in Section 2.1 of the Master Transaction Agreement.
Section 1.3 CONFIDENTIAL INFORMATION.
(a) "Confidential Information" means information, technical
data and know-how which is not otherwise in the public domain and which is (i)
disclosed to the Receiving Party by the Disclosing Party or which the Receiving
Party had access to on or before the Effective Date or (ii) the subject of any
Transaction Agreement or Ancillary Agreement and known to or in the possession
of the Receiving Party as of the Effective Date. Confidential Information may
include information relating to, by way of example, research, products,
services, customers, markets, software, developments, inventions, processes,
designs, drawings, engineering, marketing or finances, and may be in writing,
disclosed orally or learned by inspection of computer programming code,
equipment or facilities.
(b) Confidential Information of Third Parties that is known
to, in the possession of or acquired by a Receiving Party pursuant to a
relationship with the Disclosing Party shall be deemed the Disclosing Party's
Confidential Information for purposes hereof.
(c) Notwithstanding the foregoing provisions of this Section
1.3, Confidential Information shall exclude information that: (i) was in the
Receiving Party's possession before receipt from the Disclosing Party and
obtained from a source other than the Disclosing Party and other than through
the prior relationship of the Disclosing Party and the Receiving Party before
the Effective Date; (ii) is or becomes a matter of public knowledge through no
fault of the Receiving Party; (iii) is rightfully received by the Receiving
Party from a Third Party without a duty of confidentiality; (iv) is disclosed by
the Disclosing Party to a Third Party without a duty of confidentiality on the
Third Party; (v) is independently developed by the Receiving Party or (vi) is
disclosed by the Receiving Party with the Disclosing Party's prior written
approval.
Section 1.4 CONFIDENTIALITY PERIOD. "Confidentiality Period" means, (i)
with respect to Confidential Information that is not Highly Confidential
Information, three (3) years, and (ii) with respect to Highly Confidential
Information, ten (10) years, after either (A) the Effective Date with respect to
Confidential Information of the Disclosing Party that is known to or in the
possession of the Receiving Party as of the Effective Date or (B) the date of
disclosure with respect to Confidential Information that is disclosed by the
Disclosing Party to the Receiving Party after the Effective Date.
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Section 1.5 DISCLOSING PARTY. "Disclosing Party" means the party owning
or disclosing the relevant Confidential Information.
Section 1.6 EFFECTIVE DATE. "Effective Date" means the date of the
closing of the IPO.
Section 1.7 EMC PATENTS. "EMC Patents" means all patents throughout the
world owned by EMC: (i) issued or issuing on a patent or patent application
entitled to an effective filing date prior to the Effective Date; and (ii) under
which EMC or any company which is an Affiliated Company of EMC as of the
Effective Date ("EMC Affiliated Company") has, as of the Effective Date, the
right to grant licenses, covenants or releases to McDATA or any company which is
an Affiliated Company of McDATA as of the Effective Date ("McDATA Affiliated
Company") without such grant or exercise of such license, covenant or release to
McDATA or such McDATA Affiliated Company resulting in the payment of royalties
or other consideration by EMC or such EMC Affiliated Company. EMC Patents shall
also include any patent issuing on a patent application which is a division,
continuation, continuation-in-part (but, only as to those claims that have a
priority date on or before the Effective Date), or reissue of any of the
aforesaid patents or patent applications.
Section 1.8 EMC PRODUCTS. "EMC Products" means any products which are
sold or otherwise distributed by EMC at any time prior to the Effective Date.
Section 1.9 HIGHLY CONFIDENTIAL INFORMATION. "Highly Confidential
Information" means Confidential Information that is (i) source code for products
that are commercially released or for which substantial steps have been taken to
commercialization; or (ii) which has been reasonably designated by either party
as Highly Confidential Information.
Section 1.10 MCDATA PATENTS. "McDATA Patents" means all patents
throughout the world owned by McDATA: (i) issued or issuing on a patent or
patent application entitled to an effective filing date prior to the Effective
Date; and (ii) under which McDATA or a McDATA Affiliated Company has, as of the
Effective Date, the right to grant licenses, covenants or releases to EMC or an
EMC Affiliated Company without such grant or exercise of such license, covenant
or release to EMC or an EMC Affiliated Company resulting in the payment of
royalties or other consideration by McDATA or a McDATA Affiliated Company.
McDATA Patents shall also include any patent issuing on a patent application
which is a division, continuation, continuation-in-part (only as to those claims
that have a priority date on or before the Effective Date), or reissue of any of
the aforesaid patents or patent applications.
Section 1.11 MCDATA PRODUCTS. "McDATA Products" means any products
which are sold or otherwise distributed by McDATA at any time prior to the
Effective Date.
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Section 1.12 PERSON. "Person" means an individual, a partnership, a
corporation, a limited liability company, an association, a joint stock company,
a trust, a joint venture, an unincorporated organization, and a governmental
entity or any department, agency or political subdivision thereof.
Section 1.13 RECEIVING PARTY. "Receiving Party" means the non-owning
party or recipient of the relevant Confidential Information.
Section 1.14 SOFTWARE PRODUCT. "Software Product" means any software
product which constitutes an EMC Product.
Section 1.15 SUBSIDIARY. "Subsidiary" means with respect to any
specified Person, any corporation, any limited liability company, any
partnership or other legal entity of which such Person owns, directly or
indirectly, more than 50% of the stock or other equity interest entitled to vote
on the election of the members of the board of directors or similar governing
body.
Section 1.16 THIRD PARTY. "Third Party" means a Person other than EMC
and its Subsidiaries and Affiliated Companies and McDATA and its Subsidiaries
and Affiliated Companies.
Section 1.17 TECHNOLOGY RIGHTS AGREEMENT. "Technology Rights Agreement"
or "TRA" means the Technology Rights Agreement entered into October 1, 1997 by
and among EMC, McDATA Holdings Corporation and McDATA.
Section 1.18 TRANSACTION AGREEMENTS. "Transaction Agreements" means the
Master Transaction Agreement and the Asset Transfer Agreement ("Asset Transfer
Agreement") among EMC, McDATA and McDATA Holdings Corporation, dated as of
October 1, 1997.
ARTICLE II
CONFIDENTIALITY
Section 2.1 CONFIDENTIALITY AND NON-USE OBLIGATIONS. During the
Confidentiality Period, the Receiving Party shall (i) protect the Confidential
Information of the Disclosing Party by using the same degree of care, but no
less than a reasonable degree of care, to prevent the unauthorized use,
dissemination, or publication of the Confidential Information as Receiving Party
uses to protect its own confidential information of a like nature, (ii) not use
such Confidential Information in violation of any use restriction in any
Transaction Agreement or Ancillary Agreement, and (iii) not disclose such
Confidential Information to any Third Party, except as expressly permitted under
this Agreement, in the Transaction Agreements, the Ancillary Agreements or in
any other agreements entered into between the parties in writing, without prior
written consent of the Disclosing Party.
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Section 2.2 DISCLOSURE TO SUBLICENSEES. The Receiving Party has the
right to disclose to its sublicensees permitted under this Agreement portions of
Confidential Information as reasonably necessary in the exercise of the
Receiving Party's sublicense rights under this Agreement, subject to the
sublicensee's agreement in writing to confidentiality and non-use terms at least
as protective of the Disclosing Party as the provisions of this Agreement.
Section 2.3 CONTRACT MANUFACTURERS. The Receiving Party has the right
to disclose to its contract manufacturers permitted under any Transaction
Agreement or Ancillary Agreement portions of the Confidential Information as
reasonably necessary in the exercise of the Receiving Party's "have made" rights
under any Transaction Agreement or Ancillary Agreement, subject to the contract
manufacturer's agreement in writing to confidentiality and non-use terms at
least as protective of the Disclosing Party as the provisions of this Agreement.
Section 2.4 RESIDUALS. Notwithstanding any other provision of this
Agreement, the Receiving Party shall be free, and the Disclosing Party hereby
grants to the Receiving Party the right, to use for any purpose the Residuals
resulting from access to or work with the Confidential Information of the
Disclosing Party. "Residuals" means information retained in the unaided memory
of an individual who has had access to Confidential Information without
conscious attempt by such individual to memorize such information. The Receiving
Party shall have no obligation to pay royalties for any use of Residuals.
However, this Section 2.4 does not grant the Receiving Party any rights under
any patents or copyrights of the Disclosing Party.
Section 2.5 COMPELLED DISCLOSURE. If the Receiving Party or any of its
respective Subsidiaries or Affiliated Companies believes that it will be
compelled by a court or other authority to disclose Confidential Information of
the Disclosing Party, it shall (i) give the Disclosing Party prompt written
notice so that the Disclosing Party may take steps to oppose such disclosure,
and (ii) cooperate with the Disclosing Party in its attempts to oppose such
disclosure. If the Receiving Party complies with the above, it shall not be
prohibited from complying with such requirement to disclose, but shall take all
reasonable steps to make such disclosure subject to a suitable protective order
or otherwise prevent unrestricted or public disclosure.
Section 2.6 NO RESTRICTION ON DISCLOSING PARTY. Nothing in this
Agreement shall restrict the Disclosing Party from using, disclosing, or
disseminating its own Confidential Information in any way.
Section 2.7 NO RESTRICTION ON REASSIGNMENT. This Agreement shall not
restrict reassignment of the Receiving Party's employees.
Section 2.8 THIRD PARTY RESTRICTIONS. Nothing in the Agreement
supersedes any restriction imposed by Third Parties on their Confidential
Information, and there is no obligation on the Disclosing Party to conform Third
Party agreements to the terms of this Agreement except as expressly set forth
therein.
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ARTICLE III
WARRANTY DISCLAIMER
EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL CONFIDENTIAL INFORMATION IS
PROVIDED ON AN "AS IS, WHERE IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES OR AFFILIATED COMPANIES HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING, WITHOUT LIMITATION, ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT.
ARTICLE IV
INTELLECTUAL PROPERTY RIGHTS
Section 4.1 INTELLECTUAL PROPERTY RIGHTS.
(a) McDATA shall retain all right, title, and interest in its
copyright, trade secret, patent, trademark and other intellectual property
rights.
(b) EMC shall retain all right, title and interest in its
copyright, trade secret, patent, trademark and other intellectual property
rights.
Section 4.2 GRANT OF LICENSES.
(a) EMC grants to McDATA, effective as of the Effective Date,
a fully paid-up, unrestricted, non-exclusive, non-assignable (including by
operation by law or otherwise except as provided in subsection (e) of this
Section 4.2), non-transferable, non-sublicenseable (except as provided in
Section 4.7), irrevocable, world-wide right and license under EMC Patents, to
make, have made, manufacture, use, lease and sell or otherwise dispose of McDATA
Products, including products under development as of the Effective Date that are
first sold or otherwise distributed by McDATA within one year of the Effective
Date.
(b) McDATA grants to EMC, effective as of the Effective Date,
a fully paid-up, unrestricted, non-exclusive, non-assignable (including by
operation of law or otherwise except as provided in subsection (e) of this
Section 4.2), non-transferable, non-sublicenseable (except as provided in
Sections 4.3 and 4.7), irrevocable, world-wide right and license under McDATA
Patents, to make, have made, manufacture, use, lease and sell or otherwise
dispose of EMC Products, including products under development as of the
Effective Date that are first sold or otherwise distributed by EMC within one
year of the Effective Date.
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(c) EMC grants to McDATA, effective as of the Effective Date,
a fully paid-up, unrestricted, non-exclusive, non-assignable (by operation of
law or otherwise), non-transferable (except as provided in Section 9.8),
irrevocable, world-wide right and license to use (including, without limitation,
the right to copy, reproduce, distribute copies of, modify and create derivative
works of) (i) EMC code that is specifically designed to provide interoperability
between a McDATA Product and an EMC Product and is in the possession of McDATA
as of the Effective Date; and (ii) documentation related to such EMC code in the
possession of McDATA as of the Effective Date.
(d) McDATA grants to EMC, effective as of the Closing Date, a
fully paid-up, unrestricted, non-exclusive, non-assignable (by operation of law
or otherwise), non-transferable (except as provided in Section 9.8),
irrevocable, world-wide right and license to use (including, without limitation,
the right to copy, reproduce, distribute copies of, modify and create derivative
works of) (i) McDATA code that is specifically designed to provide
interoperability between a McDATA Product and a EMC Product and is in the
possession of EMC as of the Effective Date; and (ii) documentation related to
such McDATA code in the possession of EMC as of the Effective Date.
(e) In the event of a change of control of either party which
would otherwise cause an assignment pursuant to Section 9.8, or in the event
this Agreement is assigned by either party by operation of law, such assignment
shall be effective (notwithstanding the provisions of Section 9.8) and the
assignee shall have a license under the same terms as the license granted in
Section 4.2(a) or 4.2(b), as the case may be (other than any right to sublicense
granted thereunder, which shall in any case be non-transferable and
non-assignable, including by operation of law or in connection with any change
of control), by the other party to the assignor and solely for the products
licensed herein to the assignor only if the assignee shall grant to such other
party a royalty-free license under the same terms as the license granted herein
by the assignor to such other party under all assignee patents for all products
licensed in Section 4.2(a) or 4.2(b), as the case may be, to such other party.
Section 4.3 SUBLICENSE TO TECHNOLOGY
(a) Section 2.3 of the Technology Rights Agreement, as
currently written, is hereby stricken in its entirety, and the following new
Section 2.3 is hereby substituted in its place, and deemed incorporated within
and made a part of the TRA (terms used and not otherwise defined shall have the
meanings set forth in the TRA):
"2.3 Holdings retains and reserves for its and its parent's
(EMC) own benefit, the nonexclusive, irrevocable, royalty-free, nonassignable
right and license to make, use and sell all OldCo Technology, except that
Holdings and EMC shall have no license to any of the trademarks and service
marks rights assigned to New McDATA which exclusively shall belong to New
McDATA, and further provided that, except for ESCON Products, Holdings and EMC
may only embed OldCo Technology as additional functionality into EMC Products.
Neither Holdings nor EMC shall have the right to sublicense OldCo Technology,
except, in the event that
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OldCo Technology is incorporated within a EMC Product, to the extent necessary
to enable EMC to license and distribute such EMC Product, directly or
indirectly, to its end-user customers."
Section 4.4 NONCOMPETITION CLAUSE.
(a) Effective as of the Effective Date, Section 5.1 of the
Technology Rights Agreement, as currently written, shall be stricken in its
entirety, and the following new Section 5.1 substituted in its place, and deemed
incorporated within and made a part of the TRA:
"5.1 For a period of two (2) years from the Effective Date,
EMC and Holdings agree that they will not develop or manufacture products
competitive to McDATA Products. For the same period, McDATA agrees that it will
not develop or manufacture products competitive to EMC Products. Notwithstanding
the foregoing, the provisions of this section shall not restrict (i) a party
from developing or manufacturing products which it is developing or
manufacturing as of the Effective Date; (ii) the conduct of a business acquired
by a party where, in the case of an acquisition by EMC, not more than 20% of the
revenues of the acquired entity for its most recently completed fiscal period
are derived from products competitive to McDATA Products, and in the case of an
acquisition by McDATA, not more than 20% of the revenues of the acquired entity
for its most recently completed fiscal period are derived from products
competitive to EMC Products; (iii) an investment by EMC in any entity, provided
that such investment does not exceed 20% of the capital stock of such entity; or
(iv) an investment by McDATA in any entity, provided that such investment does
not exceed 20% of the capital stock of such entity."
Section 4.5 TECHNOLOGY RIGHTS AGREEMENT.
(a) The TRA, as modified by Sections 4.3 and 4.4 hereof, shall
remain in full force and effect.
Section 4.6 MUTUAL RELEASES.
(a) BY EMC. EMC hereby releases, acquits, and forever
discharges, and shall cause its Subsidiaries, which are Subsidiaries as of the
Effective Date, to release, acquit and forever discharge McDATA, its
Subsidiaries which are Subsidiaries as of the Effective Date, and its customers
for such customers' use of McDATA Products, from any and all claims or liability
for infringement of any EMC Patents based upon acts which occur prior to the
Effective Date, to the extent such infringement would have been licensed under
the license granted to McDATA under Section 4.2(a) if such license had been in
existence at the time of such infringing activity.
(b) BY MCDATA. McDATA hereby releases, acquits, and forever
discharges, and shall cause its Subsidiaries which are Subsidiaries as of the
Effective Date, to release, acquit and forever discharge EMC, its Subsidiaries,
which are Subsidiaries as of the Effective Date, and its customers for such
customers' use of EMC Products, from any and all claims or liability for
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infringement of any McDATA Patents based upon acts which occur prior to the
Effective Date, to the extent such infringement would have been licensed under
the license granted to EMC under Section 4.2(b) if such license had been in
existence at the time of such infringing activity.
Section 4.7 EXTENSION OF LICENSES TO SUBSIDIARIES. The licenses granted
herein shall include the non-assignable right of each party to grant sublicenses
to its Subsidiaries existing on or after the Effective Date, which sublicenses
may include the non-assignable right of sublicensed Subsidiaries to sublicense
other Subsidiaries of said party. No sublicense shall be broader in any respect
at any time during the life of this Agreement than the license held at that time
by the party that granted the sublicense. A sublicense granted to a Subsidiary
shall terminate on the earlier of: (a) the date such Subsidiary ceases to be a
Subsidiary except where the same results from a recapitalization, reorganization
or acquisition of more than 50% of the voting stock of such Subsidiary by a
third party and the resulting or surviving corporation in the case of any
recapitalization or reorganization, or the acquiring party, in any acquisition
of voting stock provides to the licensor a royalty-free license on the same
terms as the sublicense granted to such Subsidiary under all patents held by the
resulting or surviving corporation or acquiring party, as the case may be, for
all products licensed under this Section 4.7 to the Subsidiary; and (b) the date
of termination or expiration of the license of the party or Subsidiary that
granted the sublicense. Each licensed or sublicensed Subsidiary shall be bound
by the terms and conditions of this Agreement as if it were named herein in the
place of the party of which it is a Subsidiary. If a Subsidiary ceases to be a
Subsidiary and holds any patents under which a party hereto is licensed, such
license shall continue for the term defined herein.
Section 4.8 EFFECT OF TRANSFER OF SUBSIDIARY. In the event of a
transfer of a Subsidiary after the Effective Date (i) which includes the
transfer of products licensed to the transferring party pursuant to Section
4.2(a) or 4.2(b), as the case may be, and (ii) revenues from such products as of
the Effective Date equal or exceed 35% of transferring party's product revenues
as of the Effective Date and (iii) there are patents relating to the such
products licensed hereunder, then after written request given within sixty (60)
days following the transfer by the transferring party, the other party hereto
shall grant a license under the same terms as the license granted to the
transferring party in Section 4.2(a) or 4.2(b) (excluding any right to grant
sublicenses), as the case may be, to the former Subsidiary (the "Recipient");
provided that:
(a) the applicable licensed field shall be defined as being
limited to the particular product lines being marketed and
sold by the Subsidiary as of the date of transfer, including
products under development as of the date of such transfer,
provided that such product lines and such products under
development would have been covered by the license to the
transferring party under Section 4.2(a) or 4.2(b) as the case
may be;
(b) the license granted shall be limited in the twelve (12) months
immediately following such transfer to a volume of licensed
products having an aggregate selling price equal to no more
than the aggregate selling prices of such products by the
transferring party in the twelve (12) months preceding such
transfer plus thirty percent (30%); and shall be limited, in
each of the successive twelve-month
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periods following such transfer, to a volume of licensed
products having an aggregate selling price equal to no more
than the limit for the immediately preceding twelve-month
period plus thirty percent (30%);
(c) the Recipient shall grant to such other party a royalty-free
license (under the same terms as the license granted to such
other party herein) under all recipient patents for all
products licensed herein to such other party on the date of
the transfer; and
(d) the license granted to the Recipient shall terminate three
years from the date of the transfer, unless terminated earlier
(i) automatically, upon any termination of the license granted
to the transferring party or (ii) for any reason.
ARTICLE V
ASSET TRANSFER AND SUBLICENSE OF RIGHTS
Section 5.1 ASSET TRANSFER. EMC and Holdings hereby represent and
warrant that all of the tangible and intangible assets and related rights and
interests of Holdings, including all intellectual property rights, have been
conveyed, transferred, assigned and delivered to McDATA, with the sole exception
of the Excluded Assets (as such term is defined in the Asset Transfer
Agreement).
Section 5.2 SUBLICENSE OF RIGHTS UNDER CROSS LICENSE. EMC hereby
confirms that it has sublicensed and, for the avoidance of doubt, does hereby
sublicense to McDATA, pursuant to Section 2.4 of the License Agreement between
EMC and IBM entered into March 19, 1999 ("License Agreement") EMC's rights and
licenses under such Agreement to the extent permitted under Section 2.4 and
subject to the terms and conditions of such Agreement.
Section 5.3 SUBMISSION OF JOINT REQUEST. Upon request of McDATA to EMC,
EMC will submit jointly with McDATA, as provided in Section 2.8 of the License
Agreement, and within the time frame therein stipulated, a written request to
IBM for the grant from IBM to McDATA of a royalty-free license under IBM
Licensed Patents, upon the terms and conditions set forth in such Section.
ARTICLE VI
TERM AND TERMINATION
Section 6.1 TERM. This Agreement shall remain in full force and effect
unless and until terminated by the mutual written agreement of the parties.
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Section 6.2 SURVIVAL. Articles II (with respect to Confidential
Information acquired or disclosed prior to the date of termination), III, IV,
VII, VIII and IX shall survive any termination of this Agreement.
ARTICLE VII
DISPUTE RESOLUTION
Section 7.1 ARBITRATION. If a dispute, controversy or claim ("Dispute")
arises between the parties relating to the interpretation or performance of this
Agreement or the grounds for the termination hereof, unless otherwise mutually
agreed, it shall be submitted to final and binding arbitration under the then
current Commercial Arbitration Rules of the American Arbitration Association
("AAA"), by three (3) arbitrators in New York, New York. Such arbitrators shall
be selected by the mutual agreement of the parties or, failing such agreement,
shall be selected according to the aforesaid AAA rules. The arbitrators will be
instructed to prepare and deliver a written, reasoned opinion stating their
decision within thirty (30) days of the completion of the arbitration. The
arbitrators shall have the authority to allocate expenses in their sole
discretion, including costs and reasonable attorneys' and other professional
fees, incurred in connection with the arbitration (but excluding any costs and
fees associated with prior negotiation or mediation). The decision of the
arbitrator shall be final and non-appealable and may be enforced in any court of
competent jurisdiction. The use of any alternate dispute resolutions procedures
will not be construed under the doctrine of laches, waiver or estoppel to
adversely affect the rights of either party.
Section 7.2 COURT ACTION. Any Dispute regarding any of the following is
not required to be arbitrated prior to seeking relief from a court of competent
jurisdiction: breach of any obligation of confidentiality; infringement,
misappropriation, or misuse of any intellectual property right; any other claim
where interim relief from the court is sought to prevent serious and irreparable
injury to one of the parties or to others.
ARTICLE VIII
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES OR AFFILIATED
COMPANIES BE LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES OR AFFILIATED
COMPANIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE
DAMAGES, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE)
ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
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ARTICLE IX
MISCELLANEOUS PROVISIONS
Section 9.1 EXPORT RESTRICTIONS. Both parties shall adhere to all
applicable laws, regulations and rules relating to the export of technical data,
and shall not export or reexport any technical data, any products received from
Disclosing Party, or the direct product of such technical data, to any
proscribed country listed in such applicable laws, regulations and rules unless
properly authorized.
Section 9.2 NO IMPLIED LICENSES. Nothing contained in this Agreement
shall be construed as conferring any rights by implication, estoppel or
otherwise, under any intellectual property right, other than the rights
expressly granted in this Agreement with respect to Confidential Information.
Neither party is required hereunder to furnish or disclose to the other any
technical or other information.
Section 9.3 INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for
misappropriation of any of its Confidential Information or to defend any action
or suit brought by a Third Party that alleges infringement of any intellectual
property rights by the Receiving Party's authorized use of the Disclosing
Party's Confidential Information.
Section 9.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY
RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND
OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR IN A SEPARATE WRITTEN
AGREEMENT BETWEEN THE PARTIES.
Section 9.5 ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement between the parties with respect to the subject matter hereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof,
provided, however, that the Transaction Agreements and the Ancillary Agreements
shall remain in full force and effect in accordance with their terms.
Section 9.6 GOVERNING LAW. This Agreement shall be governed by and
construed and enforced in accordance with the laws of the State of New York as
to all matters regardless of the laws that might otherwise govern under
principles of conflicts of laws applicable thereto.
Section 9.6 DESCRIPTIVE HEADINGS. The descriptive headings herein are
inserted for convenience of reference only and are not intended to be part of or
to affect the meaning or interpretation of this Agreement.
Section 9.7 NOTICES. All notices and other communications hereunder
shall be in writing and shall be deemed to have been duly given when delivered
in person, by telecopy with
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answer back, by express or overnight mail delivered by a nationally recognized
air courier (delivery charges prepaid), by registered or certified mail (postage
prepaid, return receipt requested) to the respective parties as follows:
if to EMC:
c/o XXX Xxxxxxxxxxx
000 Xxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Attention: Vice President of Corporate Development
cc: Office of the General Counsel
Telecopy: 000-000-0000
if to McDATA:
c/o McDATA Corporation
000 Xxxxxxxxxxx Xxxxxxx
Xxxxxxxxxx, XX 00000
Attention: Chief Financial Officer
cc: Corporate Counsel
Telecopy: (000) 000-0000
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing in the manner set forth above. Any
notice or communication delivered in person shall be deemed effective on
delivery. Any notice or communication sent by telecopy or by air courier shall
be deemed effective on the first day following the day on which such notice or
communication was sent. Any notice or communication sent by registered or
certified mail shall be deemed effective on the third day following the day on
which such notice or communication was mailed.
Section 9.8 NONASSIGNABILITY. Neither party may, directly or
indirectly, in whole or in part, assign or transfer this Agreement, without the
other party's prior written consent, and any attempted assignment, transfer or
delegation without such prior written consent shall be voidable at the sole
option of such other party. Subject to the provisions of Section 4.2(e), a
change of control of a party shall constitute an assignment of this Agreement by
such party. The provisions of this Section 9.8 notwithstanding, (i) the licenses
granted in Sections 4.2(a) and 4.2(b) hereof may be assigned only in accordance
with the provisions of Section 4.2(e) hereof and (ii) Sections 4.6 and 4.8
hereof shall be non-transferable and non-assignable in any event, including by
operation of law or in connection with any change of control. Without limiting
the foregoing, this Agreement will be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
Section 9.9 SEVERABILITY. If any term or other provision of this
Agreement is determined by a nonappealable decision of a court, administrative
agency or binding arbitrator by
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any court or in any binding arbitration to be invalid, illegal or incapable of
being enforced by any rule of law or public policy, all other conditions and
provisions of this Agreement shall nevertheless remain in full force and effect
so long as the economic or legal substance of the transactions contemplated
hereby is not affected in any manner materially adverse to either party. Upon
such determination that any term or other provision is invalid, illegal or
incapable of being enforced, the parties hereto shall negotiate in good faith to
modify this Agreement so as to effect the original intent of the parties as
closely as possible in an acceptable manner to the end that the transactions
contemplated hereby are fulfilled to the fullest extent possible.
Section 9.10 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No
failure or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
Section 9.11 AMENDMENT. No change or amendment will be made to this
Agreement except by an instrument in writing signed on behalf of each of the
parties to such agreement.
Section 9.12 COUNTERPARTS. This Agreement may be executed in two or
more counterparts, all of which, taken together, shall be considered to be one
and the same instrument.
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WHEREFORE, the parties have signed this Master Confidential Disclosure
and License Agreement effective as of the date first set forth above.
XXX XXXXXXXXXXX MCDATA CORPORATION
By: /s/ Xxxxxxx X. Xxxx By: /s/ Xxx X. Xxxxx
------------------------------------- -------------------------------
Name: Xxxxxxx X. Xxxx Name: Xxx X. Xxxxx
----------------------------------- -----------------------------
Title: Vice President, TITLE: Chief Financial Officer
Corporate Development ----------------------------
----------------------------------
MCDATA HOLDINGS CORPORATION
By: /s/ Xxxx X. Xxxxxx
-------------------------------------
Name: Xxxx X. Xxxxxx
-----------------------------------
Title:
----------------------------------
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