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Exhibit 10.17
LICENSE AGREEMENT
THIS License Agreement ("Agreement") is made as of 07/18/96 (the
"Effective Date") by and between Read-Rite Corporation, a Delaware corporation,
located at 000 Xxx Xxxxxx Xxxxxx, Xxxxxxxx, XX 00000 ("RRC"), and Censtor
Corporation, a California corporation, located at 000 Xxxx Xxxxxx, Xxx Xxxx, XX
00000 ("Censtor").
BACKGROUND
Censtor has sold certain assets to RRC pursuant to an Agreement for
Purchase and Sale of Assets dated as of March 29, 1996 ("Asset Purchase
Agreement"). This Agreement sets forth the terms under which Censtor will
license its intellectual property rights to RRC in conjunction with the Asset
Purchase Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
1. DEFINITIONS
1.1 "Patents" shall mean any and all rights in and to any and all (i)
patents owned by Censtor as of the Effective Date (ii) patent
applications whenever filed if based on inventions made by Censtor on or
prior to the Effective Date, (iii) patents issuing on such patent
applications, and (iv) patents licensed by Censtor from a third party
licensor as of the Effective Date which Censtor has a right to license
to RRC without additional payments or other obligations to such third
party licensor, including without limitation those patents listed in
Exhibit A hereto, provided that Censtor shall sublicense the patents to
RRC that require such additional payments or obligations to the extent
they may be sublicensed if RRC elects to make such additional payments
or assume such other obligations. This definition of Patents shall
include any foreign counterparts, divisions, substitutions,
re-examinations, continuations, continuations-in-part, reissues, patents
of addition, renewals and extensions of any patents or patent
applications owned by Censtor.
1.2 "Software" shall mean all software (i) owned by Censtor as of the
Effective Date, (ii) developed by Censtor on or prior to the Effective
Date, or (iii) licensed to Censtor from a third party licensor as of
the Effective Date which Censtor has a right to license to RRC without
additional payments or other obligations to such third party licensor,
provided that Censtor shall sublicense the software that requires such
additional payments or obligations to RRC to the extent it may be
sublicensed if RRC elects to make such additional payments or assume
such other obligations. The Software licensed hereunder shall be
provided in source code form, except that if such Software is licensed
by Censtor from a third party and can only be licensed to RRC in binary
code form, such Software shall be provided in binary code form to RRC.
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1.3 "Technology" shall mean any and all rights in and to any and all
technology and know-how (i) owned by Censtor as of the Effective Date,
(ii) developed by Censtor on or prior to the Effective Date, or (iii)
licensed to Censtor from a third party licensor as of the Effective Date
which Censtor has a right to license to RRC without additional payments
or other obligations to such third party licensor, provided that Censtor
shall sublicense the technology to RRC that requires such additional
payments or obligations to the extent it may be sublicensed if RRC
elects to make such additional payments or assume such other
obligations. "Technology" shall include without limitation, technical
information, know-how, negative know-how, trade secrets, processes,
procedures, compositions, devices, methods, formulas, protocols,
techniques, designs, drawings, mask works, or data.
1.4 "Intellectual Property Rights" means, collectively, the Patents,
Technology and Software and all current and future worldwide patents,
trade secrets, copyrights, copyright registrations and applications
therefor, moral rights, and all other intellectual property rights and
proprietary rights arising under the Patents, Technology or Software,
whether arising under the laws of the United States or any other state,
country or jurisdiction, excluding any trademarks or servicemarks.
1.5 "Affiliate" shall mean a company that is controlled by,
controlling, or in common control with a party hereto. Control shall
mean that more than fifty percent (50%) of the stock entitled to vote
for the election of directors is directly owned by a party hereto, but
only so long as such ownership exists. An "RRC Affiliate" shall
include, but not be limited to, Read-Rite International.
II. GRANT
2.1 Grant. Censtor grants to RRC a worldwide, perpetual, royalty-free,
fully-paid up, non-exclusive license, including the right to sublicense
to RRC Affiliates, under the Intellectual Property Rights to make, have
made, use, sell, offer for sale, import, export, display, modify, and
distribute any products, create derivative works, practice any method,
process, or procedure, and otherwise exploit the Patents, Technology or
Software. The license granted under this Section 2.1 shall be revocable
solely in the event that RRC fails to make the Final Payment referenced
in the Asset Purchase Agreement on the Final Payment Date defined
therein, net of any amounts withheld as security for claims under
Section 8 thereof. Upon RRC's payment to Censtor of such Final Payment,
the licenses granted hereunder shall become irrevocable, notwithstanding
any withholding by RRC of a portion of such Final Payment pursuant to
Section 8.2 of the Asset Purchase Agreement.
2.2 Delivery. Censtor has delivered to RRC copies of all the Patents,
Technology and Software as of the Effective Date, which copies shall be
the property of RRC.
2.3 Security Interest. 23.1 Grant. RRC hereby retains and Censtor
hereby grants to RRC a security interest in the Intellectual Property
Rights licensed hereunder to RRC to secure Censtor's obligations under
Sections 2.4, 3.1 or 3.2 of this Agreement (the "Secured Obligations")
for the period commencing on the Effective Date and terminating
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on the sixth anniversary of the Effective Date (the "Termination Date"). Censor
agrees to promptly execute documents requested by RRC to perfect and protect
such security interest at the Effective Date.
2.3.2. Termination of Security Interest; Escrow. Censtor may terminate the
security interest created hereunder on the third (3rd) anniversary of the
Effective Date by depositing an amount (the "Escrow Amount") that is the
greater of (i) four million dollars ($4,000,000) or (ii) the full amount of any
claim or claims asserted in writing by RRC against Censtor for breach of any
Secured Obligations (a "Secured Obligation Claim") on or prior to such
anniversary in cash into an escrow account established pursuant to a mutually
agreeable escrow agreement. Said escrow agreement shall provide for a release
of all or a portion of the Escrow Amount to RRC to satisfy claims by RRC
against Censtor hereunder relating to any breach of the Secured Obligations.
Thereafter, Censtor may reduce the Escrow Amount by one million dollars
($1,000,000) on each of the fourth (4th) and fifth (5th) anniversaries of the
Effective Date, respectively, provided, however, that any such reduction shall
not cause the funds remaining in the escrow to be less than the amount of any
Secured Obligation Claim or Claims by RRC outstanding on such anniversaries. If
RRC has an outstanding Secured Obligation Claim at the Termination Date then
(i) if Censtor has not terminated the security interest by depositing the
Escrow Amount, the security interest shall survive until the claims are finally
resolved unless Censtor deposits cash in the full amount of such claim in an
escrow account to secure such claims, or (ii) if Censtor has terminated the
security interest, the escrow shall survive the Termination Date until such
claims are finally resolved.
2.3.3. Senior Security Interest: Subordination. Censtor represents and warrants
that the security interest granted herein is senior to any other security
interest granted in the Patents, Software or Technology. Censtor shall not
grant, issue, or convey security interests to which the security interest
granted herein would be subordinate, except (i) any security interest granted
for money borrowed, provided that the amount borrowed shall not exceed two
million dollars ($2,000,000) at any time, and any such obligation to repay
money shall be a Secured Obligation hereunder, and RRC shall have the option to
repay on Censtor's behalf such borrowings at any time and to add the amount of
such repayments to any amounts due upon exercise of the security interest, and
(ii) RRC acknowledges that Denki Kagaku Kogyo Kabushiki Kaisha ("Denka") holds
a security interest in certain Censtor Patents. To address said security
interest, concurrently herewith Censtor has delivered to Censtor's counsel such
sums as are required to satisfy any obligations of Censtor to Denka necessary
to obtain a release of said security interest (the "Satisfaction Payment"), and
caused to be delivered by Denka to Censtor's counsel a fully executed,
irrevocable release of said security interest (the "Release"). Censtor
covenants that, on or before July 31, 1996, it will cause its counsel to
simultaneously deliver the Satisfaction Payment to Denka, and the Release to
RRC. RRC hereby agrees that the security interest granted hereunder is and will
be subject to (i) any license granted by Censtor in the Intellectual Property
Rights, including licenses granted after the date of this Agreement, and (ii)
any security interest to secure obligations for money borrowed as provided
above, including any such security interest granted after the date of this
Agreement. RRC hereby agrees to promptly execute documents reasonably requested
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Censtor to acknowledge release of the security interest at the
Termination Date (or such later date as provided above) and to
acknowledge the subordination of its security interest for money
borrowed granted by Censtor as provided above.
2.4 Most Favored Licensee. If Censtor licenses the Intellectual
Property Rights to any person, firm or corporation under more favorable
terms and conditions than those granted to RRC, it shall provide RRC the
benefit of those terms and conditions effective upon the date of
execution of the more favorable license. For the purposes of determining
whether a license is more favorable than the present Agreement under
this Section 2.4, the parties agree to consider each transaction as a
whole. The parties agree that should Censtor enter into a new components
supply license, it shall deliver to RRC an initial summary of the terms
of such license. RRC shall have fifteen (15) days following receipt of
such summary to elect to retain RRC's existing license per the terms set
forth herein, or to elect on a preliminary basis to accept the terms of
said new license. In the latter event, Censtor shall prepare and submit
for RRC's review a draft license agreement, together with a signed
certificate of an officer of Censtor stating that said license
agreement is the same as the new components supply license in all
material respects. RRC shall thereafter have fifteen (15) additional
days to make its final election to accept or reject said new proposed
license. In addition, Censtor shall not grant rights in the Intellectual
Property Rights to any disk drive manufacturer under terms and
conditions more favorable than those granted by Censtor to Western
Digital Corporation ("WDC") or Maxtor Corporation ("MC"), respectively,
without offering such terms to WDC and MC; provided, however, that
Censtor shall not be required to (i) compare any terms granted to either
WDC or MC to those granted to the other, or (ii) offer license terms to
WDC or MC if at any time following the Effective Date WDC or MC, as the
case may be, ceases to be a licensee of Censtor. If Censtor is required
by this Section to offer license terms to either WDC or MC, Censtor
shall offer such terms pursuant to procedures specified in its licenses
with WDC or MC to the extent such procedures exist and, to the extent
they do not, pursuant to the procedures specified above for offering
license terms to RRC.
2.5 Limitations. No license or other right is granted, by
implication, estoppel or otherwise, to RRC or any other third parties
except for the licenses and rights expressly granted in this Agreement.
III. REPRESENTATIONS, WARRANTIES AND INDEMNIFICATION.
3.1 Representations and Warranties. As of the Effective Date of this
Agreement, Censtor represents and warrants that, except as set forth in
Schedule 3.1 hereto, (i) Censtor has the right and authority to enter
into this Agreement and to grant the rights and licenses set forth
herein; (ii) to Censtor's best knowledge the use of the Intellectual
Property Rights in connection with Censtor's business operations in the
ordinary course prior to the Effective Date does not constitute a direct
infringement of the intellectual property rights of any other person,
(iii) Censtor, to its best knowledge is not aware of any express
challenge to, or any facts or circumstances that, on their face,
constitute the basis for a challenge to, the validity, scope,
enforceability, ownership or inventorship of the
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Intellectual Property Rights; (iv) Censtor has not received any notice
or other communication alleging that the manufacture, sale or use of
products incorporating the Patents, Software or Technology infringe the
intellectual property rights of any third party or violate any other
third party rights; (v) Censtor has not granted any rights in the
Patents, Software and Technology to any third party that are
inconsistent with the rights and licenses granted to RRC by this
Agreement, and (vi) Censtor has delivered to RRC all of the Patents,
Technology and Software.
3.2 Covenants. Censtor covenants (i) that it will not grant any
rights in the Patents, Software or Technology to any third party that
conflict with the rights and licenses granted to RRC by this Agreement;
and (ii) that as of the Effective Date of this Agreement there are no
circumstances other than RRC's breach of this Agreement or patent
expiration whereby the rights and licenses granted hereunder would be
materially diminished, or have the effect of materially diminishing
such rights and licenses. RRC may, upon breach of this Section,
exercise its security interests under Section 2.2 above and the right
to seek indemnification under Section 3.4 below.
3.3 RRC Representations and Warranties. As of the Effective Date of
this Agreement, RRC represents and warrants that RRC has the right and
authority to enter into this Agreement.
3.4 Indemnification. As the sole remedy for a material breach of a
party's obligations under this Section 3, each party (as indemnitor)
agrees to defend, indemnify, and hold the other party (as indemnitee),
its Affiliates, shareholders, employees and agents harmless against any
loss, liability, and expense (including reasonable attorneys' fees)
arising from such material breach except in the case of RRC, RRC may
also exercise the remedies provided by Section 7.2. The indemnitor
shall have no obligation to indemnify the indemnitee under this section
unless the indemnitee provides the indemnitor with (i) prompt written
notice of such claim or action, (ii) control and authority over the
defense or settlement of such claim or action, and (iii) proper and
full information and reasonable assistance to defend and/or settle such
claim or action.
3.5 Disclaimer. EXCEPT AS EXPRESSLY WARRANTED IN SECTION 3.1 ABOVE,
(I) CENSTOR'S PATENTS, SOFTWARE, TECHNOLOGY AND INTELLECTUAL PROPERTY
RIGHTS ARE PROVIDED TO RRC "AS IS" WITHOUT WARRANTY OF ANY KIND, (II)
THE ENTIRE RISK AS TO THE RESULTS AND PERFORMANCE OF ANY HARDWARE OR
SOFTWARE IS ASSUMED BY THE RECEIVING PARTY; AND (III) CENSTOR DISCLAIMS
ALL WARRANTIES, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO ITS
DELIVERABLES, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY, NON-INFRINGEMENT AND FITNESS FOR A PARTICULAR PURPOSE.
IN NO EVENT SHALL CENSTOR BE LIABLE FOR COST OF PROCUREMENT OF
SUBSTITUTE PRODUCTS, SERVICES, OR TECHNOLOGY. THESE LIMITATIONS SHALL
APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED
REMEDY.
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IV. CONFIDENTIAL INFORMATION
4.1 General. The parties may, from time to time, in connection with
this Agreement, disclose to each other Confidential Information.
"Confidential Information" shall mean any information disclosed in
writing by a party to this Agreement to any of the other parties to this
Agreement, and marked by the disclosing party with the legend
"CONFIDENTIAL" or other similar legend sufficient to identify such
information as confidential proprietary information of the disclosing
party. Confidential Information shall include the terms and conditions
of this Agreement, but either party may disclose the existence and
purpose of this Agreement as recited in the Background section. Neither
party shall use any Confidential Information of the other party except
as expressly authorized under this Agreement, and each party will use
best efforts to prevent the disclosure of the other party's Confidential
Information to third parties; provided that the parties may disclose
Confidential Information, with similar protections in place, to the
extent reasonably necessary to exploit the rights and license granted to
such party hereunder (including the rights to grant and authorize
sublicenses); and provided further that the recipient party's
obligations under this Section 4 shall not apply to Confidential
Information that:
4.1.1 is disclosed orally without express designation as
Confidential Information; provided, however, that the
recipient party's obligations under this Section 4
shall apply to information disclosed orally if such
information is confirmed in writing as "CONFIDENTIAL"
by the disclosing party within thirty (30) days after
disclosure thereof;
4.1.2 is in the recipient party's possession at the time of
disclosure thereof;
4.1.3 is or later becomes part of the public domain through
no fault of the recipient party;
4.1.4 is received from a third party having no obligations of
confidentiality to the disclosing party;
4.1.5 is developed independently by the recipient party without
reliance upon or use of the disclosing party's
Confidential Information; or
4.1.6 is required by law or regulation to be disclosed;
provided, however, that the party subject to such
disclosure requirement has provided written notice to
the other party promptly to enable such other party to
seek a protective order or otherwise prevent disclosure
of such Confidential Information.
The parties agree to terminate on the Effective Date, all prior
confidentiality and nondisclosure agreements between the parties
including the Bilateral Non-Disclosure Agreement dated January 11, 1996;
provided, however, that disclosures of Confidential
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Information made prior to the Effective Date shall continue to be
governed by the terms of the applicable confidentiality or
nondisclosure agreement.
V. PATENTS AND INVENTIONS
5.1 Disclosure of Inventions. Censtor will promptly disclose to RRC
in writing any invention conceived of or reduced to practice by Censtor,
its employees, contractors, or agents, alone or jointly with others, as
of the Effective Date of the Agreement. Censtor shall release its
employees from any confidentiality obligations to the extent such
obligations prohibit the disclosure of Censtor Confidential Information
to RRC; provided, however, that nothing in this Agreement shall require
Censtor, or its employees, contractors, or agents, to disclose
Confidential Information of any third party unless Censtor is authorized
to do so by license or agreement with such third party.
5.2 Applications. Censtor shall file patent applications based on
the Patents and maintain the Patents during the term of this Agreement.
During the term of this Agreement, Censtor shall provide RRC with a
report once per month containing a list of patent applications based on
the patents that Censtor elects to abandon, or Patents for which Censtor
elects not to pay any fee required to maintain such Patent. Censtor
shall consider any request by RRC to file or continue the prosecution of
applications for Patents. If Censtor elects not to file or continue the
prosecution of an application requested by RRC, RRC may request
Censtor's consent to pursue and have assigned to RRC such draft patent
application or patent application, which consent may be withheld only if
Censtor determines that the coverage of such draft patent application or
application is substantially covered by another application that is
being pursued by Censtor. If consent is granted and RRC files or
continues the prosecution application, RRC shall pay for the costs,
including reasonable attorney's fees and related filing and maintenance
costs, and RRC agrees to license Censtor on a world-wide, royalty-free,
fully paid, irrevocable, non-exclusive basis with a right of sublicense
to Patents issuing on such applications, provided Censtor pays one-half
of the legal fees and costs incurred by RRC for such Patents.
VI. INFRINGEMENT
6.1 Notice of Infringement. If RRC learns of any infringement of
Censtor's Intellectual Property Rights, RRC shall so inform Censtor in
writing and shall provide Censtor with reasonable evidence of the
infringement.
6.2 Legal Action. RRC may request that Censtor take legal action
against an alleged infringement of the Intellectual Property Rights. If
Censtor initiates such action at RRC's request, it shall do so at its
sole expense and RRC shall render all reasonable assistance that may be
required by Censtor for such action. RRC shall not make any claim for
damages recovered by Censtor. If Censtor does not initiate the legal
action requested by RRC, RRC may request Censtor to consent to RRC
initiating such action in Censtor's
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name. If Censtor consents to such representation, RRC may initiate such
action at its sole expense and shall be entitled to take all necessary
steps in the name of Censtor. Censtor shall render all reasonable
assistance that may be required by RRC for such action and Censtor shall
not make any claim for damages recovered by RRC.
If Censtor does not consent to RRC commencing such action, then upon the
request of RRC the following representatives of RRC and Censtor shall
meet within ten (10) days after the date of the Censtor decision to
attempt to resolve the matter: the General Counsel of RRC and the
President of Censtor. If the matter has not been resolved within twenty
(20) days of their first meeting, the parties shall attempt in good
faith to resolve the controversy or claim in accordance with the
Mediation Service of the Santa Xxxxx County Bar Association.
6.3 Cooperation. Each party shall cooperate with the other in
litigation proceedings instituted under this Agreement (including
without limitation by joining as a nominal party), but at the expense of
the party by whom suit is brought. The party bringing the suit will
control that litigation, except that the other party may elect to be
represented at its own expense by counsel of its choice. Upon the
request and at the expense of the requesting party, the other party
shall make available at reasonable times and under appropriate
conditions all relevant personnel, records, papers, information,
samples, specimens and other similar materials in its possession.
6.4 Attorneys' Fees. Except as set forth in Section 3
(Indemnification), each party shall bear its own attorney's fees and
costs in connection with any dispute between the parties arising under
this Agreement.
VII. TERM AND REMEDIES
7.1. Term. This Agreement shall be perpetual.
7.2 Remedies for Breach. If Censtor is in material default of any
provision of this Agreement other than the Secured Obligations, and such
material default is not corrected within thirty (30) day of receipt of
written notice of such default from RRC, RRC may pursue its available
remedies in law or equity. If Censtor is in material default of the
Secured Obligations, and such material default is not corrected within
thirty (30) days of receipt of written notice of such material default,
RRC shall first pursue a remedy of monetary damages or injunctive relief
pursuant to Section 3.4. If RRC does not receive full and complete
payment or settlement of a claim based on a material default by Censtor
of a Secured Obligation within thirty (30) days after the date of final
determination of such claim, RRC shall have the right to proceed against
the security interest as provided under Section 2.3, including all
rights of a secured party under the California Uniform Commercial Code,
in addition to any other rights it may have in law or equity.
7.3 Remedies for Insolvency. RRC shall have the right to exercise the
security interest cited under Section 2.3, in addition to any other
rights it may have in law and equity, by
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writing immediately if Censtor (i) voluntarily or involuntarily becomes
the subject of a petition in bankruptcy or of any proceeding relating to
insolvency, receivership, liquidation, or composition for the benefit of
creditors; or (ii) admits in writing its inability to pay its debts as
they become due.
7.4 Survival. The rights and obligations under Sections 2, 3, 4, 5,
6, 8 and 9 shall survive termination of this Agreement.
VIII. LIMITATION ON LIABILITY
UNDER NO CIRCUMSTANCES, OTHER THAN AS PROVIDED FOR IN SECTION 3 ABOVE,
SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR ANY LOST DATA, LOST
PROFITS, BUSINESS INTERRUPTION OR FOR ANY INDIRECT, INCIDENTAL, SPECIAL,
CONSEQUENTIAL, EXEMPLARY OR PUNITIVE DAMAGES (EVEN IF THAT PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES), INCLUDING WITHOUT
LIMITATION, LOSS OF REVENUE OR ANTICIPATED PROFITS OR LOST BUSINESS.
NOTWITHSTANDING THE FOREGOING, THE MAXIMUM LIABILITY OF EITHER PARTY TO
THE OTHER FOR DAMAGES, OTHER THAN LIABILITY OF CENSTOR UNDER SECTION 3,
FOR ANY AND ALL CAUSES WHATSOEVER, REGARDLESS OF THE FORM OF ACTION,
WHETHER IN CONTRACT, TORT OR OTHERWISE, SHALL BE LIMITED TO THE PURCHASE
PRICE SET FORTH IN THE ASSET PURCHASE AGREEMENT OF NINE MILLION
TWENTY-FIVE THOUSAND DOLLARS ($9,025,000); THE MAXIMUM LIABILITY OF
CENSTOR UNDER SECTION 3 TO RRC FOR DAMAGES FOR ANY AND ALL CAUSES
WHATSOEVER, REGARDLESS OF THE FORM OF ACTION, WHETHER IN CONTRACT, TORT
OR OTHERWISE, SHALL BE LIMITED TO TEN MILLION DOLLARS ($10,000,000).
IX. GENERAL
9.1. Assignment. This Agreement may not be assigned by Censtor
without the prior written consent of RRC, except to a party that
succeeds to all or substantially all of Censtor's business or assets
relating to this Agreement whether by sale, merger, operation of law or
otherwise; provided that such assignee or transferee promptly agrees in
writing to be bound by the terms and conditions of this Agreement.
9.2 Complete Agreement. This Agreement, the exhibits attached
hereto, and the Asset Purchase Agreement, constitute the entire
understanding and only agreements between the parties with respect to
the subject matter hereof and supersede any and all prior negotiations,
representations, agreements, and understandings, written or oral, that
the parties may have reached with respect to the subject matter hereof.
No provision of this Agreement shall be varied, contradicted or
explained by any oral agreement, course of
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dealing or performance or any other matter not set forth in an agreement
in writing and signed by all parties.
9.3. Force Majeure. In the event either party hereto is prevented from
or delayed in the performance of any of its obligations hereunder by
reason of acts of God, war, strikes, riots, storms, fires, or any other
cause whatsoever beyond the reasonable control of the party, the party
so prevented or delayed shall be excused from the performance of any
such obligation to the extent and during the period of such prevention
or delay. In the event of such an event, the party whose performance is
prevented or delayed shall give prompt notice to the other party of the
occurrence of such event and of removal of such event.
9.4. Notices. All notices, requests, consents and other communications
required or permitted hereunder shall be in writing and shall be
delivered, sent by telecopy, or mailed first-class postage prepaid,
registered or certified mail, and shall be effective upon receipt by the
addressee, if addressed as follows:
If to RRC: Read-Rite Corporation
000 Xxx Xxxxxx Xxxxxx
Xxxxxxxx, XX 00000-0000
Attention: Xxx X. Xxxxxxx, V.P. & General Counsel
Telephone: (000) 000-0000
Telecopy: (000) 000-0000
with a copy to: Xxxxxx Xxxxxxx Xxxxxxxx & Xxxxxx, P.C.
000 Xxxx Xxxx Xxxx
Xxxx Xxxx, XX 00000-0000
Attention: Xxxxxxx X. Xxxxxx, Esq.
Telephone: (000) 000-0000
Telecopy: (000) 000-0000
If to Censtor: Censtor Corporation
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx X. Xxxxxxxxxx, President & CEO
Telephone: (000) 000-0000
Telecopy: (000) 000-0000
with a copy to: Heller, Ehrman, White & XxXxxxxxx
000 Xxxxxxxxxx Xxxxxx
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxxxxx X. Xxxxxxx, Esq.
Telephone: (000) 000-0000
Telecopy: (000) 000-0000
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9.5 Governing Law. This Agreement shall be governed by, and construed and
interpreted in accordance with, the laws of the State of California; provided,
however, that all questions with respect to validity of any patents or patent
applications shall be determined in accordance with the laws of the respective
country in which such patents or patent applications shall have been granted or
filed, as applicable.
9.6 Dispute Resolution. The parties shall resolve any disputes arising
under this Agreement utilizing the procedures set forth in Section 8.4 of the
Asset Purchase Agreement, to which this Agreement is attached as Exhibit C.
9.7 Absence of Third Party Beneficiary Rights. No provisions of this
Agreement are intended, nor will be interpreted, to provide or create any third
party beneficiary rights or any other rights of any kind in any client,
customer, affiliate, stockholder, partner or employee of any party hereto or any
other person or entity unless specifically provided otherwise herein, and,
except as so provided, all provisions hereof will be personal solely between the
parties to this Agreement.
9.8 Bankruptcy Code. All rights and licenses granted under or pursuant to
this Agreement by Censtor to RRC are and shall otherwise be deemed for the
purposes of Section 365(n) of the United States Bankruptcy Code, 11 U.S.C.
Section 101, et seq. (the "Bankruptcy Code"), licenses of rights to
"intellectual property" as defined under Section 101(56) of the Bankruptcy
Code. The parties agree that RRC, as a licensee of such rights and licenses,
shall retain and may fully exercise all of its rights and elections under the
Bankruptcy Code.
9.9 No Waiver. A waiver, express or implied, by either party of any right
under this Agreement or of any failure to perform or breach hereof by the other
party hereto shall not constitute or be deemed to be a waiver of any other
right hereunder or of any other failure to perform or breach hereof by such
other party, whether of a similar or dissimilar nature thereto.
9.10 Headings. Headings included herein are for convenience only, do not
form a part of this Agreement and shall not be used in any way to construe or
interpret this Agreement.
9.11 Severability. If any provision of this Agreement shall be found by a
court of competent jurisdiction to be void, invalid or unenforceable, the same
shall be reformed to comply with applicable law or stricken if not so
reformable, so as not to affect the validity or enforceability of the remainder
of this Agreement, provided that the reformation complies with the intent of
the parties.
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9.12. Counterparts. This Agreement may be executed in counterparts,
each of which shall be deemed an original, but which together shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this Agreement.
Censtor Corporation ("Censtor") Read-Rite Corporation ("RRC")
By: /s/ X.X. Xxxxx By: /s/ Xxx X. Xxxxxxx
---------------------------- ----------------------------
Name: Xxxxxxx X. Xxxxx Name: Xxx X. Xxxxxxx
------------------------- -------------------------
Title: President Title: Vice President and
------------------------ General Counsel
-------------------------
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13
EXHIBIT A
Patents
13
14
CONFIDENTIAL
CENSTOR PATENTS
ISSUED PATENTS
CNR-341 RECORDING HEAD SLIDER ASSEMBLY
U.S. Xxx. No. 4,636,894 Granted Jan. 13, 1987
Inventor Mo Filed March 22, 1984
CNR-34101 European Patent Based On CNR-341
EP Xxx. No. 0,155,756 Granted Oct. 24, 1990
CNR-34102 Japanese Patent Based On CNR-341
Jap. Xxx. No. 1,696,196 Granted Sept. 28, 1992
CNR-342 SLIDER ASSEMBLY FOR SUPPORTING A MAGNETIC HEAD
U.S. Xxx. No. 4,757,402 Granted July 12, 0000
Xxxxxxxx Xx Filed Oct. 3, 1986
CNR-34201 European Patent Based On CNR-342
EP Xxx. No. 0,262,655 Granted Jan. 13, 1994
CNR-343 MAGNETIC HEAD AND MULTI-TRACK TRANSDUCER FOR
PERPENDICULAR RECORDING AND METHOD FOR FABRICATING
U.S. Xxx. No. 4,423,450 Granted Dec. 23, 1983
Inventor Xxxxxxxx Filed May 6, 1981
CNR-34301 Great Britain Patent Based On CNR-343
GB Xxx. No. 2,111,741 Granted April 16, 1986
CNR-34302 European Patent Based On CNR-343
EP Xxx. No. 0,077,832 Granted July 1, 1988
CNR-34304 Japanese Patent Based On CNR-343
Jap. Xxx. No. 1,822,410 Granted Feb. 10, 1994
15
CONFIDENTIAL
CENSTOR PATENTS
ISSUED PATENTS CONT'D
---------------------
CNR-001 THIN-FILM, CROSS-FIELD, CLOSED-FLUX, ANISOTROPIC
ELECTROMAGNETIC FIELD DEVICE
U.S. Xxx. No. 4,751,598 Granted June 14, 1988
Inventor Xxxxxxxx Filed Feb. 1, 1985
CNR-304 PLANARIZED READ/WRITE HEAD AND METHOD
U.S. Xxx. No. 4,860,139 Granted Aug. 22, 1989
Inventor Xxxxxxxx Filed June 19, 1987
CNR-309 INTEGRATED MAGNETIC READ/WRITE
HEAD/FLEXURE/CONDUCTOR STRUCTURE
U.S. Xxx. No. 5,041,932 Granted Aug. 20, 1991
Inventor Xxxxxxxx Filed Nov. 27, 1989
CNR-30901 Canadian Patent Based On CNR-309
Can. Xxx. No. 2,026,871 Granted Aug. 17, 1993
CNR-309A METHOD OF MAKING INTEGRATED MAGNETIC READ/WRITE
HEAD/FLEXURE/CONDUCTOR STRUCTURE
U.S. Xxx. No. 5,073,242 Granted Dec. 17, 1991
Inventor Xxxxxxxx Filed Dec. 21, 1990
CNR-309B INTEGRATED MAGNETIC READ/WRITE
HEAD/FLEXURE/CONDUCTOR STRUCTURE
U.S. Xxx. No. 5,111,351 Granted May 5, 1992
Inventor Xxxxxxxx Filed June 5, 1990
CNR-309C METHOD OF MAKING INTEGRATED MAGNETIC READ/WRITE
HEAD/FLEXURE/CONDUCTOR STRUCTURE
U.S. Xxx. No. 5,163,218 Granted Nov. 17, 1992
Inventor Xxxxxxxx Filed June 11, 1991
16
CONFIDENTIAL
CENSTOR PATENTS
ISSUED PATENTS CONT'D
CNR-309C1 Canadian Patent Based On CNR-309C
Can. Xxx. No. 2,047,563 Granted Aug. 17, 1993
CNR-309D METHOD OF MAKING INTEGRATED MAGNETIC READ/WRITE
HEAD/FLEXURE/CONDUCTOR STRUCTURE
U.S. Xxx. No. 5,174,012 Granted Dec. 29, 1992
Inventor Xxxxxxxx Filed Dec. 12, 1991
CNR-310 MICRO-BURNISHING FLEX HEAD STRUCTURE
U.S. Xxx. No. 5,063,712 Granted Nov. 12, 1991
Inventors Xxxxxxxx et al. Filed April 2, 1990
CNR-31001 Canadian Patent Based On CNR-310
Can. Xxx. No. 2,026,694 Granted July 26, 1994
CNR-31003 Japanese Patent Based On CNR-310
Jap. Xxx. No. 1,945,281 Granted June 23, 1995
CNR-313A UNITARY MICRO-FLEXURE STRUCTURE AND METHOD OF MAKING
SAME
U.S. Xxx. No. 5,453,315 Granted Sept. 26, 1995
Inventors Xxxxxxxx et al. Filed Dec. 14, 1992
CNR-313CA UNITARY MICRO-FLEXURE STRUCTURE AND METHOD OF MAKING
SAME
U.S. Xxx. No. 5,483,025 Granted Jan. 9, 1996
Inventors Xxxxxxxx et al. Filed Dec. 14, 1992
CNR-313D UNITARY MICRO-FLEXURE STRUCTURE AND METHOD OF MAKING
SAME
U.S. Xxx. No. 5,476,131 Granted Dec. 19, 1995
Inventors Xxxxxxxx et al. Filed Dec. 14, 1992
17
CONFIDENTIAL
CENSTOR PATENTS
ISSUED PATENTS CONT'D
CNR-322 GIMBALED MICRO-HEAD/FLEXURE/CONDUCTOR ASSEMBLY AND
SYSTEM
U.S. Xxx. No. 5,490,027 Granted Feb. 6, 1996
Inventors Xxxxxxxx et al. Filed Oct. 28, 1991
CNR-324 COMPACT, HIGH-SPEED, ROTARY ACTUATOR AND TRANSDUCER
ASSEMBLY WITH REDUCED MOMENT OF INERTIA AND MASS-
BALANCED STRUCTURAL OVERLAP WITH DRIVE MOTOR AND
ORGANIZING METHOD FOR THE SAME
U.S. Xxx. No. 5,396,388 Granted March 7, 1995
Inventor Xxxxxxx Xxxxx Filed April 8, 1992
PENDING PATENTS
CNR-321A Rigid disk drive with small effective mass head, gimbal.
Continuation-In-Part of CNR-321, which was filed
Nov. 6, 1991.
CNR-322A Continuation-in-Part of CNR-322. Rigid disk drive with
small effective mass head, gimbal. Recently received
Indication of Allowance of numerous claims and filed
brief responsive amendment designed for quick
Allowance of those claims.
CNR-324A COMPACT, HIGH-SPEED, ROTARY ACTUATOR, AND TRANSDUCER
ASSEMBLY WITH REDUCED MOMENT OF INERTIA AND MASS-
BALANCED STRUCTURAL OVERLAP WITH DRIVE MOTOR AND
ORGANIZING METHOD FOR THE SAME
CNR-329 TRANSDUCER/FLEXURE/CONDUCTOR STRUCTURE FOR
ELECTROMAGNETIC READ/WRITE SYSTEM. Filed Nov. 14, 1994.
CNR-335 CONTACT INTERFACE, SYSTEM AND MEDIUM IN
ELECTROMAGNETIC, READ/WRITE, RIGID RECORDING MEDIA
ENVIRONMENT. Filed March 21, 1995.
18
CONFIDENTIAL
CENSTOR PATENTS
PENDING PATENTS CONT'D
CNR-345 INTERACTIVE SYSTEM FOR LAPPING TRANSDUCERS.
Filed May 26, 1995.
CNR-348 LOW FRICTION SLIDING HARD DISK DRIVE SYSTEM.
Filed August 15, 1995.
CNR-349 CONTACT PLANAR RING HEAD. Filed September 15, 1995.
CNR-350 RING HEAD SLIDING ON PERPENDICULAR MEDIA.
Filed December 22, 1995.
CNR-347 CONTACT HARD DISK DRIVE SYSTEM HAVING A FLEXURE
ORIENTED ALONG THE DIRECTION OF SLIDING.
Filed March 25, 1996.
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SCHEDULE 3.1 TO LICENSE AGREEMENT
BETWEEN CENSTOR CORPORATION AND
READ-RITE CORPORATION, DATED
July 18, 1996
-------------
1. IBM patents with an effective filing date prior to September 1, 1991.
2. Censtor's "best knowledge" under Sections 3.1(ii) and (iii) does not
include a detailed review of the copies of all third party patents
within Censtor's possession.
20
operation of law its obligations under this Agreement (provided that any such
assignment which imposes a withholding tax or similar burden shall require the
prior written consent of the other party). This Agreement shall be binding upon
and inure to the benefit of the respective successors and permitted assigns of
the parties.
9.5 Authority. Each party represents that all corporate action
necessary for the authorization, execution and delivery of this Agreement by
such party and the performance of its obligations hereunder has been taken.
9.6 Notices. All notices and other communications required or
permitted hereunder shall be in writing and shall be deemed effective when
mailed by registered or certified mail, postage prepaid, or otherwise delivered
by hand, by messenger or by telecommunication, addressed to the addresses first
set forth above or at such other address furnished with a notice in the manner
set forth herein. Such notices shall be deemed to have been served when
delivered or, if delivery is not accomplished by reason of some fault of the
addressee, when tendered.
9.7 Force Majeure. Neither party shall be liable to the other for
failure or delay in the performance of any obligations under this Agreement for
the time of and to the extent such failure or delay is caused by riots, civil
commotion, wars or hostilities between nations, governmental laws, orders, or
regulations, embargoes, actions by the government or any agency thereof, acts
of God, earthquakes, storms, fires, accidents, strikes, sabotages, explosives,
or other similar or different contingencies beyond the reasonable control of
the parties.
9.8 Partial Invalidity. If any provision in this Agreement is held to
be invalid or unenforceable in any jurisdiction in which this Agreement is
being performed, the remainder of this Agreement shall be valid and enforceable
and the parties shall negotiate, in good faith, a substitute, valid and
enforceable provision which most nearly effects the parties' intent in entering
into this Agrement.
9.9 Counterparts. This Agreement may be executed in two (2)
counterparts all of which, taken together, shall be regarded as one and the
same instrument.
9.10 Relationship of Parties. The parties are independent contractors.
Nothing in this Agreement shall constitute either party the agent of the other
party for any purpose or in any sense whatsoever, or constitute the parties as
partners or joint venturers.
9.11 Modification. This Agreement may be modified or amended only by a
written agreement signed by each party.
9.12 Waiver. The failure of either party to enforce at any time the
provisions of this Agreement, or the failure to require at any time performance
by the other party of any of provisions of this Agreement, shall in no way be
constituted to be a present or future waiver of such provisions, nor in any way
affect the validity of either party to enforce each and every provision
thereafter. The express waiver by either party of any provision, condition or
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21
requirement of this Agreement shall not constitute a waiver of any future
obligation to comply with such provision, condition or requirement.
9.13 Entire Agreement. The terms and conditions herein constitute the
entire agreement between the parties and supersede all previous agreements and
understandings, whether oral or written, between the parties hereto with
respect to the subject matter hereof and no agreement or understanding varying
or extending the same shall be binding upon either party unless in a written
document signed by the party to be bound.
9.14 Section Headings and Language. The section headings contained
in this Agreement are for reference purposes only and shall not affect in any
way the meaning or interpretation of this Agreement.
9.15 Construction. Each party acknowledges and agrees that this
Agreement has been the result of arms' length negotiation by the parties and
their respective counsel, with each party participating in the preparation
hereof. As a consequence, there shall be no presumption that the provisions
hereof are to be construed for or against either party on the basis of the
relative participation of the parties in the drafting of this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed and delivered effective as of the date first written above.
Censtor Corp. Western Digital Corporation
By: /s/ Xxxxxxx X. Xxxxx By: /s/ Xxxxxxx Xxxxxx
----------------------------- -----------------------------
Name: Xxxxxxx X. Xxxxx Name: Xxxxxxx Xxxxxx
--------------------------- ---------------------------
Title: President CEO Title: Vice President, Finance
Personal Storage Group
-------------------------- ---------------------------
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requirement of this Agreement shall not constitute a waiver of any future
obligation to comply with such provision, condition or requirement.
9.13 Entire Agreement. The terms and conditions herein constitute the
entire agreement between the parties and supersede all previous agreements and
understandings, whether oral or written, between the parties hereto with
respect to the subject matter hereof and no agreement or understanding varying
or extending the same shall be binding upon either party unless in a written
document signed by the party to be bound.
9.14 Section Headings and Language. The section headings contained
in this Agreement are for reference purposes only and shall not affect in any
way the meaning or interpretation of this Agreement.
9.15 Construction. Each party acknowledges and agrees that this
Agreement has been the result of arms' length negotiation by the parties and
their respective counsel, with each party participating in the preparation
hereof. As a consequence, there shall be no presumption that the provisions
hereof are to be construed for or against either party on the basis of the
relative participation of the parties in the drafting of this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed and delivered effective as of the date first written above.
Censtor Corp. Western Digital Corporation
By: By: /s/ Xxxxxxx Xxxxxx
----------------------------- -----------------------------
Name: Name: Xxxxxxx Xxxxxx
--------------------------- ---------------------------
Title: Title: Vice President, Finance
-------------------------- ---------------------------
Personal Storage Group
12
