Exhibit 2.2
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INTELLECTUAL PROPERTY AGREEMENT
by and between
AGERE SYSTEMS INC.
and
XXXXX CORPORATION
and
EMCORE CORPORATION
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TABLE OF CONTENTS
Article I Definitions
Article II Assignment Of Software
Article III Software Licenses
Article IV Assignment Of Information
Article V Licenses To Information
Article VI Patent Licenses
Article VII Assignment Of Patents and Marks
Article VIII Export Control
Article IX Term And Termination
Article X Assignability
Article XI Licenses To Related Companies And Improvements
Article XII Rights and Obligations
Article XIII Warranties And Covenants
Article XIV General Provisions
Article XV Notices
Appendix A Definitions Appendix
Appendix B Assigned Software
Appendix C Licensed Software
Appendix D Assigned Technical Information
Appendix E Licensed Technical Information
Appendix F Trademark and Domain Name Assignment
Schedule A - Trademark Registrations and
Applications, and Domain Names
Appendix G Patent Assignment
Schedule A - Assigned Patents and
Applications
Appendix H Joint Patent Assignment
Appendix I Future Roadmaps
INTELLECTUAL PROPERTY AGREEMENT
THIS INTELLECTUAL PROPERTY AGREEMENT (this "Agreement") is made by and
between AGERE SYSTEMS INC., a Delaware corporation ("Agere") and XXXXX
corporation ("Ortel", collectively herein "Seller"), and EMCORE Corporation, a
New Jersey corporation ("Buyer"). Seller and Buyer are sometimes referred to
herein individually as a "Party" and collectively as the "Parties".
RECITALS
A. WHEREAS, this Agreement is provided as Exhibit B to a certain Asset
Purchase Agreement dated as of January 21, 2003 (the "Purchase Agreement")
entered into by and between Agere and Buyer pursuant to which Agere is selling
and Buyer is acquiring certain Purchased Assets, as that term is defined in the
Purchase Agreement. This Agreement is executed upon the signing by all Parties
and shall become effective concurrent with and on the Closing Date of the
Purchase Agreement (the "Effective Date");
B. WHEREAS, this Agreement is intended by the parties to address, among
other things, the intellectual property rights and Information either included
in the Purchased Assets or licensed to Buyer; and
C. WHEREAS, in connection with the sale and purchase of the CATV
Business, Seller agrees to assign certain intellectual property rights to Buyer
and to license certain intellectual property rights to Buyer, in each case in
accordance with the terms hereof.
NOW, THEREFORE, in consideration of the mutual agreements and covenants
herein contained and intending to be legally bound thereby, the Parties agree as
follows:
ARTICLE I
DEFINITIONS
1.01 Unless otherwise defined in Appendix A attached hereto, as used in
this Agreement any term in initial capital letters shall have the meaning
ascribed thereto in the Purchase Agreement.
ARTICLE II
ASSIGNMENT OF SOFTWARE
2.01 Seller hereby transfers and assigns, subject to Section 2.02, to
Buyer all worldwide right, title and interest in the Assigned Software,
including all copyrights and other intellectual property rights therein, as well
as the right to bring actions, at law or in equity for the infringement or other
impairment thereof prior to the Closing Date, including the right to receive all
proceeds or damages therefrom. Such transfer does not include a transfer of, or
license under, any patents; any such license under any such patent being
specifically set forth in Article VI herein. The transfer of the Assigned
Software shall be subject to all prior written agreements (or replacement
agreements thereof) between Seller, its predecessors (including AT&T Corp. and
its Subsidiaries and Lucent Technologies Inc. and its Subsidiaries) or its
Related Companies, and one or more third parties that have an effective date
prior to the Effective Date of this Agreement, none of which will have a
material adverse affect on Buyer's use of the Assigned Software in operation of
the CATV Business as it existed as of the Closing Date.
2.02 Buyer grants to Seller, in consideration for the transfer and
assignment of the Assigned Software by Seller to Buyer pursuant to Section 2.01,
a personal, nonexclusive, non-transferable (except as provided in Article X),
irrevocable, worldwide, royalty-free license to use, copy and distribute the
Assigned Software, and create, use, copy and distribute Derivative Works from
the Assigned Software with respect to any products or services of the businesses
in which Seller or any of its Related Companies is now or hereafter engaged, but
solely with respect to use of such products and services outside the CATV
Business.
2.03 Seller agrees to deliver to Buyer copies of all Code of whatever
kind in whatever medium that embody the Assigned Software within 30 days of
Closing. To Seller's knowledge, all of the Assigned Software will, at closing,
be included in the Principal Equipment transferred to the Buyer or otherwise in
the possession of the Transferred Employees. However, Seller agrees to take all
steps reasonably requested by Buyer in connection with delivering to Buyer any
missing parts of the Assigned Software to the extent such Assigned Software
exists within Seller. Buyer agrees that the previous sentence provides Buyer's
sole remedy for Seller's failure to deliver the Assigned Software.
ARTICLE III
SOFTWARE LICENSES
3.01 Seller hereby grants to Buyer a fully paid-up, royalty-free
worldwide, irrevocable, non-transferable (except as provided in Article X) and
nonexclusive license to use, copy, sublicense and distribute the Licensed
Software, and create, use, copy, sublicense and distribute Derivative Works from
the Licensed Software in connection with the conduct or operation of the CATV
Business, under any and all copyright, trade secret and other intellectual
property rights (other than patent rights which are specifically granted
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in Article VI herein) in the Licensed Software owned by Seller or its Related
Companies or in which Seller or its Related Companies have a right to license as
of the Effective Date including, without limitation, the right (i) to reproduce
the Code of and Documentation for such Licensed Software; (ii) to sell, lease,
sublicense (but only to the extent that Seller has a right to authorize Buyer to
grant such a sublicense and provided that Seller shall not be obligated to pay
any consideration for such sublicense authorization) or otherwise transfer
copies of the Licensed Software and Derivative Works therefrom, in whole or in
part for use within the scope of the CATV Business; and (iii) to combine the
Licensed Software and Derivative Works therefrom with other software or hardware
within the scope of the CATV Business.
3.02 Seller agrees to deliver to Buyer, within 30 days of Closing,
complete and useable copies of the Licensed Software and any related
documentation. To Seller's knowledge, all of the Licensed Software will, at
Closing, be included in the Principal Equipment transferred to Buyer or
otherwise in the possession of the Transferred Employees. Notwithstanding the
foregoing, Seller agrees to take all steps reasonably requested by Buyer in
connection with promptly delivering to Buyer any copies of any components of the
Licensed Software or documentation not delivered to Buyer at Closing. Buyer
agrees that the previous sentence provides Buyer's sole remedy for Seller's
failure to deliver the Licensed Software.
3.03 The Parties recognize that the best or only available copy of
certain Assigned Software and Licensed Software may reside, after the Closing
Date, within the CATV Business or in the possession of the CATV Business, and
that Seller may require certain access to or copies of the Assigned Software and
Licensed Software for purposes consistent with this Agreement, which, because of
inadvertence or oversight, a copy was not retained by or made available to
Seller prior to the Closing Date. To that end, Buyer agrees, upon receiving a
written request from Seller, to provide, within a commercially reasonable amount
of time after receipt of Seller's written request, copies of any portion of the
Assigned Software and Licensed Software necessary for Seller or one of its
Related Companies to exercise its rights in accordance with this Agreement. Any
reasonable costs associated with the assembling, copying and delivering of such
requested Assigned Software and Licensed Software shall be borne by Seller.
ARTICLE IV
ASSIGNMENT OF INFORMATION
4.01 Seller hereby transfers and assigns, subject to Section 4.02, to
Buyer all worldwide right, title and interest in and to the Assigned Technical
Information including all copyright, trade secret and intellectual property
rights therein, as well as the right to bring actions at law or in equity for
the infringement or other impairment thereof prior to the Closing, including the
right to receive all proceeds or damages therefrom. Such transfer does not
include a transfer of, or license under, any patents; any such license under any
such patent being specifically set forth in Article VI herein. The transfer of
such Assigned Technical Information shall be subject to all prior written
agreements (or replacement
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agreements thereof) between Seller, its predecessors (including AT&T Corp. and
its Subsidiaries and Lucent Technologies Inc. and its Subsidiaries) or its
Related Companies, and one or more third parties that have an effective date
prior to the Effective Date of this Agreement, none of which will have a
material adverse affect on Buyer's use of the Assigned Technical Information in
operation of the CATV Business as it existed as of the Closing Date.
4.02 In consideration for the transfer and assignment of the Assigned
Technical Information by Seller to Buyer pursuant to Section 4.01, Buyer grants
to Seller a personal, nonexclusive, non-transferable (except as provided in
Article X), irrevocable, worldwide, royalty-free license to use, copy and
distribute the Assigned Technical Information, and create, use, copy and
distribute Derivative Works from the Assigned Technical Information with respect
to any products or services of the businesses in which Seller or any of its
Related Companies is now or hereafter engaged ., but solely with respect to use
of such products and services outside the CATV Business.
4.03 Seller agrees to deliver to Buyer, within 30 days of Closing,
copies of all documents of whatever kind in whatever medium that embody the
Assigned Technical Information. To Seller's knowledge, all of the Assigned
Technical Information will, at Closing, be included in the Business Records
transferred to Buyer or otherwise in possession of the Transferred Employees.
Notwithstanding the foregoing, Seller agrees to take all steps reasonably
requested by Buyer in connection with delivering to Buyer any documents that
embody the Assigned Technical Information not delivered to Buyer at Closing.
Buyer agrees that the previous sentence provides Buyer's sole remedy for
Seller's failure to deliver the Assigned Technical Information.
4.04 The Parties recognize that the best or only available copy of
certain Assigned Technical Information may reside, after the Closing Date,
within the CATV Business or in the possession of the CATV Business, and that
Seller may require certain access to or copies of the Assigned Technical
Information for purposes consistent with this Agreement, which, because of
inadvertence or oversight, a copy was not retained by or made available to
Seller prior to the Closing Date. To that end, Buyer agrees, upon receiving a
written request from Seller, to provide, within a commercially reasonable amount
of time after receipt of Seller's written request, copies of any portion of the
Assigned Technical Information necessary for Seller or one of its Related
Companies to exercise its rights in accordance with this Agreement. Any
reasonable costs associated with the assembling, copying and delivering of such
requested Assigned Technical Information shall be borne by Seller.
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ARTICLE V
LICENSES TO INFORMATION
5.01 Seller grants to Buyer a fully paid-up, royalty-free worldwide,
irrevocable, non-transferable (except as provided in Article X) and nonexclusive
license to use, copy, sublicense and distribute Licensed Technical Information,
and create, use, copy, sublicense and distribute Derivative Works from the
Licensed Technical Information, in connection with the conduct and operation of
the CATV Business under any and all copyright, trade secret and other
intellectual property rights in such Licensed Technical Information (other than
patent rights which are specifically granted in Article VI herein) owned by
Seller as of the Effective Date.
5.02 Seller grants to Buyer a personal, non-transferable and
nonexclusive right, as an attribute of the right to use the Licensed Technical
Information in Section 5.01, to communicate (subject to confidentiality
provisions as least as restrictive as those in Section 13.03) portions of and
grant nonexclusive sublicenses (of the same scope as the licenses granted to
Buyer under Section 5.01) to such Licensed Technical Information to third party
suppliers or manufacturers for the procurement by Buyer of materials,
manufacturing facilities, parts and/or components reasonably necessary for use
by Buyer in the manufacture and assembly of products of the CATV Business in
accordance with this Agreement.
5.03 Seller agrees to deliver to Buyer, within 30 days of Closing,
copies of all documents of whatever kind in whatever medium that embody the
Licensed Technical Information. To Seller's knowledge, all of the Licensed
Technical Information will, at Closing, be included in the Business Records
transferred to Buyer or otherwise in possession of the Transferred Employees.
Notwithstanding the foregoing, Seller agrees to take all steps reasonably
requested by Buyer in connection with delivering to Buyer any documents that
embody the Licensed Technical Information not delivered to Buyer at Closing.
Buyer agrees that the previous sentence provides Buyer's sole remedy for
Seller's failure to deliver the Licensed Technical Information.
5.04 The Parties recognize that the best or only available copy of
certain Licensed Technical Information may reside, after the Closing Date,
within the CATV Business or in the possession of the CATV Business, and Seller
may require certain access to or copies of the Licensed Technical Information
for purposes consistent with this Agreement, which because of inadvertence or
oversight, a copy was not retained by or made available to Seller prior to the
Closing Date. To that end, Buyer agrees, upon receiving a written request from
Seller, to provide, within a commercially reasonable amount of time after
receipt of Seller's written request, copies of any portion of the Licensed
Technical Information necessary for Seller or one of its Related Companies to
exercise its rights in accordance with this Agreement. Any reasonable costs
associated with the assembling, copying and delivering of such requested
Licensed Technical Information shall be borne by Seller.
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ARTICLE VI
PATENT LICENSES
6.01 (a) Subject to the consideration recited in the Purchase
Agreement, Seller hereby grants to Buyer a personal, fully paid-up,
royalty-free, worldwide, non-transferable (except as provided in Article X),
irrevocable and nonexclusive license under the Licensed Patents to make, have
made, use, sell, offer to sell, lease and import Products of the CATV Business.
Licenses granted in this Section 6.01 to Buyer are not to be construed either
(i) as consent by Seller to any act which may be performed by Buyer, except to
the extent impacted by a patent licensed herein to Buyer, or (ii) to include
licenses to contributorily infringe or induce infringement under U.S. law or a
foreign equivalent thereof.
(b) In addition to the license granted in Section 6.01(a),
Seller grants to Buyer a personal, fully paid-up, royalty-free, worldwide,
non-transferable (except as set forth herein), irrevocable and nonexclusive
license, without the right to sublicense, under the Licensed Patents to make,
have made, use, sell, offer to sell, lease and import future products as set
forth in the column titled "Future Roadmaps" in Appendix I herein. The license
granted under this Section 6.01(b) may be assigned only to any of the Buyer's
Related Companies or any direct or indirect successor to all or a portion of the
CATV Business, which successor shall thereafter be deemed substituted as the
Party hereto, effective upon such assignment subject to written acceptance of
such assignment by such successor. Notwithstanding any assignment, should the
there be a Change of Control of the CATV Business, the license assigned under
this Section 6.01(b) will remain in force only for products being manufactured
by, and generally available from, the Buyer at the time of the Change of
Control.
6.02 The patent licenses granted hereunder to Licensed Patents shall
extend until the patent's expiration or the expiration of as much of such term
as Seller has the right to grant.
6.03 Seller's failure to meet any obligation hereunder, due to
assignment of title to any invention or patent, or the granting of any licenses,
to the United States Government or any agency or designee thereof pursuant to a
statute, regulation of such Government or agency shall not constitute a breach
of this Agreement.
6.04 (a) Seller grants to the Buyer a sublicense limited to the
Products of the CATV Business under those patent license rights granted to
Seller by any third party pursuant to any patent license agreement between such
third party and Seller existing as of the Effective Date of this Agreement, but
only to the extent that Seller has a right to grant such a sublicense and
provided that Seller shall not be obligated to pay any consideration for such
sublicense or relinquish its own licenses.
(b) The sublicense granted to Buyer under Section 6.04(a)
includes a sublicense, within the scope of the Seller's license, under the
TriQuint Applications to
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Products of the CATV Business, except that the sublicense granted under this
Section 6.04(b) does not include any past or future licenses to products which
are sold or otherwise distributed, directly or indirectly, by the Buyer prior to
the Effective Date even if they are of the same kind or similar to those of the
CATV Business.
6.05 The have made rights granted to Buyer hereunder shall not be
exercised in a manner that the exercise of such have made rights is a sham to
sublicense the Licensed Patents to a third party and not for bona fide business
purposes of the Buyer.
6.06 Any subsequent transfer by Seller of the patents licensed to Buyer
under this Article VI shall be subject to the licenses granted to Buyer in this
Agreement.
6.07 Seller agrees not to assert patents which are directly infringed
by a 1310 nm Advanced Laser Module with in-line predistortion manufactured and
sold by Motorola as a result of Motorola exercising its force majeure limited
license right under an October 1999 Purchase Agreement between General
Instruments and Xxxxx Corporation and assigned to Buyer. Seller also agrees not
to assert patents relating to predistortion technology against Scientific
Atlanta products incorporating either an A371 uncooled laser or an A1612 cooled
laser module supplied under the May 17, 2002, Technology License and Equipment
Purchase Agreement between Scientific Atlanta and Agere Systems and assigned to
Buyer.
ARTICLE VII
ASSIGNMENT OF PATENTS AND MARKS
Seller assigns all Assigned Patents to Buyer, as follows:
7.01 Seller agrees to transfer and assign, at Buyer's sole expense,
pursuant to the Patent Assignment attached as Appendix G hereto, to Buyer all
worldwide right, title and interest in and to the Assigned Patents and all
rights, privileges, obligations and priorities of Seller in such Assigned
Patents, including but not limited to (i) the right to xxx at law or in equity
in respect of past, present and future infringement of any of such Assigned
Patents; and (ii) the right to receive all proceeds or damages from any such
infringement. Upon the Effective Date, Buyer shall assume all expenses related
to the Assigned Patents incurred after the Effective Date. The transfer of such
Assigned Patents shall be subject to all prior written agreements (or
replacement agreements thereof) between Seller, its predecessors (including AT&T
Corp. and its Subsidiaries and Lucent Technologies Inc. and its Subsidiaries) or
its Related Companies, and one or more third parties that have an effective date
prior to the Effective Date of this Agreement, none of such prior written
agreements will have a material adverse affect on Buyer's use of the Assigned
Patents in operation of the CATV Business as it existed as of the Effective
Date.
7.02 (a) Seller agrees to transfer and assign to Buyer, at Buyer's
sole expense and pursuant to the Joint Patent Assignment attached as Appendix H
hereto, a joint, worldwide right, title and interest in and to the Assigned
Joint Patent and all rights, privileges, obligations and priorities of Seller in
such Assigned Patent, including but not
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limited to (i) the right to xxx at law or in equity in respect of past, present
and future infringement of any of such Assigned Joint Patent, except as provided
in Section 7.02(b); and (ii) the right to receive all proceeds or damages from
any such infringement without accounting therefore to the non-licensing party.
Buyer and Seller shall each have the right to bring any litigation against a
third party under the Assigned Joint Patent without the consent of the other
party. The other party hereby consents to be joined as a party to the
litigation, if required.
(b) Seller and Buyer have the aforementioned right to xxx at
law or in equity in respect of past, present and future infringement of such
Assigned Joint Patent provided that the suing party shall notify the other, in
writing, and identify the accused infringing third party within five (5) days
after instituting any litigation involving the Assigned Joint Patent. Following
the giving of such notice, the party receiving the notice shall not, during the
course of the litigation and until its conclusion by settlement or execution of
judgment, license or attempt to license any such Assigned Joint Patent to the
third party.
7.03 Buyer hereby licenses to Seller the Assigned Patents and any and
all patents issuing from patent applications having a priority date on or before
the Effective Date resulting from inventions described in the Assigned Technical
Information and/or the Assigned Software. Said licenses shall be for the all
products and services of Seller outside the CATV Business, on terms reciprocal
to the terms of Article VI provided, however, that Seller has the right to make,
use, sell, have made, offer for sale, lease, and import, integrated circuits.
Notwithstanding the foregoing rights identified in the previous sentence, no
such sale shall convey to any customer of Seller any right, by implication,
estoppel, or otherwise, to combinations of the integrated circuits with other
components, where the combination is covered by one or more claims of the
Assigned Patents.
7.04 Seller agrees to transfer and assign, pursuant to the Trademark
and Domain Name Assignment attached as Appendix F hereto, to Buyer all worldwide
right, title and interest in and to the Assigned Marks and good will associated
therewith as well as all rights, privileges and priorities of Seller, together
with all income, royalties or payments due or payable as of the Closing, as well
as the right to xxx at law or in equity in respect of past, present and future
infringement of any of such Assigned Marks, including the right to receive all
proceeds or damages therefrom. Such assignment shall be subject to all
agreements entered into between Seller, its predecessors (including AT&T Corp.
and its Subsidiaries, and Lucent Technologies and its Subsidiaries) or its
Related Companies, and one or more third parties prior to the Effective Date of
this Agreement, none of which will have a material adverse affect on Buyer's use
of the Assigned Marks in operation of the CATV Business as it existed as of the
Closing Date.
7.05 Buyer shall bear any and all administrative and similar costs
external to Seller related to the recordation or transfer of title of the
Assigned Patents, Assigned Joint Patent, and the Assigned Marks from Seller to
Buyer pursuant to Sections 7.01, 7.02, and 7.04 above. Seller shall execute all
documents and perform all acts as required to give
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effect to the assignment and recording of the transfer of the Assigned Patents,
Assigned Joint Patent, and Assigned Marks to Buyer under this Agreement.
ARTICLE VIII
EXPORT CONTROL
8.01 The Parties acknowledge that any information and software
(including, but not limited to, services and training) provided under this
Agreement are subject to U.S. export laws and regulations and any use or
transfer of such information and software must be authorized under those
regulations. Each party hereby assures the other party that it will comply with
all applicable export laws of the U.S. as may be in effect at the time any
export of such information or software is made.
ARTICLE IX
TERM AND TERMINATION
9.01 This Agreement shall be effective during the term commencing on
the Effective Date hereof and shall continue unless terminated by mutual
agreement between the Parties.
9.02 The rights and obligations of Buyer and Seller which by their
nature would continue beyond termination of this Agreement shall survive and
continue after any termination of this Agreement.
ARTICLE X
ASSIGNABILITY
10.01 The Parties hereto have entered into this Agreement in
contemplation of personal performance, each by the other, and intend that the
licenses and rights granted hereunder to a Party not be extended to entities
other than such Party's Related Companies without the other Party's express
written consent.
10.02 Notwithstanding the foregoing, all of a Party's rights, title and
interest in this Agreement and any licenses and rights granted to it hereunder
may be assigned to any of its Related Companies or any direct or indirect
successor to all or a portion of the business of the Party, which successor
shall thereafter be deemed substituted as the Party hereto, effective upon such
assignment subject to written acceptance of such assignment by such successor.
Notwithstanding any such assignment to a successor, any licenses assigned herein
to the successor do not include any past or future licenses to products that are
sold or otherwise distributed, directly or indirectly, by such successor prior
to any assignment.
ARTICLE XI
LICENSES TO RELATED COMPANIES AND IMPROVEMENTS
11.01 The grant of each license hereunder includes the right to grant
sublicenses
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within the scope of such license to a Party's Related Companies for so long as
they remain its Related Companies. Any and all licenses or sublicenses granted
to Related Companies pursuant to this Agreement may be made effective
retroactively, but not prior to the Effective Date hereof, nor, unless otherwise
authorized pursuant to another provision of this Agreement, prior to the
sublicensee's becoming a Related Company of such Party.
11.02 Unless otherwise specifically expressed in this Agreement, the
Purchase Agreement or the Collateral Agreements, no license to, or right of a
Party, under any patent, copyright, trademark, trade secret, or any other
intellectual property right, is either granted or implied by conveying any
information to such Party.
11.03 Except as otherwise expressly provided for herein or the Purchase
Agreement or the Collateral Agreements, no rights are granted to a Party under
any improvements or derivative works of the Software or the Technical
Information to the extent made by the other Party after the Effective Date.
11.04 The grant of each license hereunder also includes the right of a
Party to sublicense (commensurate with its own licenses) any business which is
divested by that party or any of its Related Companies provided that the
sublicense is granted within sixty (60) days of divestiture. Such sublicense
shall extend only to the products licensed hereunder and sold or furnished by
the divested business prior to the divestiture and only for the patents of the
non-divesting party licensed to the divesting party in this Agreement.
Furthermore, any sublicense shall not extend to the products sold or services
furnished at the time of the divestiture 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.
ARTICLE XII
RIGHTS AND OBLIGATIONS
12.01 For any license provided from one party to the other, the
licensee shall, at its sole expense, comply at all times with all applicable
laws and regulations in connection with the use of the rights licensed to it
hereunder, and obtain all appropriate permits and approvals, as applicable.
12.02 The licenses granted herein by Seller or Buyer, as the case may
be, shall be deemed to be, for purposes of Section 365(n) of the U.S. Bankruptcy
Code, to the fullest extent permitted by law, licenses to rights in
"intellectual property" as defined in Section 101 of the Bankruptcy Code. The
parties agree that the licensee to any such licenses, as the case may be, shall
retain and may fully exercise all of its rights and elections under the
Bankruptcy Code. In the event that a bankruptcy proceeding under the Bankruptcy
Code is commenced by or against the licensor of any such licenses, the licensee
shall be entitled to retain all of its rights under this Agreement (including
without limitation all rights and licenses granted herein) pursuant to Section
365(n) of the U.S. Bankruptcy Code.
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ARTICLE XIII
WARRANTIES AND COVENANTS
13.01 Except as expressly provided herein, all warranties and
representations are exclusively set forth in the Purchase Agreement.
13.02 (a) EXCEPT AS EXPRESSLY PROVIDED HEREIN OR IN THE PURCHASE
AGREEMENT, THE TECHNICAL INFORMATION, SOFTWARE OR OTHER INFORMATION ASSIGNED OR
LICENSED UNDER THIS AGREEMENT IS ASSIGNED OR LICENSED "AS IS" WITH ALL FAULTS,
LATENT AND PATENT AND WITHOUT ANY WARRANTY OF ANY TYPE. SELLER AND ITS RELATED
COMPANIES MAKE NO REPRESENTATIONS OR WARRANTIES, EXPRESSED OR IMPLIED. BY WAY OF
EXAMPLE, BUT NOT OF LIMITATION, SELLER AND ITS RELATED COMPANIES MAKE NO
REPRESENTATIONS OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR THAT
THE USE OF THE TECHNICAL INFORMATION, SOFTWARE OR OTHER INFORMATION WILL NOT
INFRINGE ANY PATENT OR OTHER INTELLECTUAL PROPERTY RIGHT OF ANY THIRD PARTY AND
IT SHALL BE THE SOLE RESPONSIBILITY OF BUYER TO MAKE SUCH DETERMINATION AS IS
NECESSARY WITH RESPECT TO THE ACQUISITION OF LICENSES UNDER PATENTS OR OTHER
INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
(b) EXCEPT AS EXPRESSLY PROVIDED HEREIN OR IN THE PURCHASE
AGREEMENT, SELLER AND ITS RELATED COMPANIES SHALL NOT BE HELD TO ANY LIABILITY
WITH RESPECT TO ANY PATENT INFRINGEMENT OR ANY OTHER CLAIM MADE BY BUYER OR ANY
THIRD PARTY ON ACCOUNT OF, OR ARISING FROM THE USE OF, THE TECHNICAL
INFORMATION, SOFTWARE OR OTHER INFORMATION ASSIGNED OR LICENSED HEREUNDER.
13.03 Each party agrees:
(a) that it will not, without the other party's express written
permission or as provided herein or in the Purchase Agreement, or as otherwise
agreed to in writing, (i) use in advertising, publicity, or otherwise any trade
name, trademark, trade device, service xxxx, symbol or any other identification
or any abbreviation, contraction or simulation thereof owned or used by the
other party or any of its Related Companies, or (ii) represent, directly or
indirectly, that any product or service produced in whole or in part with the
use of any of the Software or Technical Information is a product or service of
the other party or any of its Related Companies; and
(b) that except as otherwise expressly provided for in this
Agreement, it will hold in confidence for the other party all private or
confidential information of the other party, including any Software or Technical
Information licensed hereunder that such
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party's personnel may unavoidably receive or have access to during the
performance of this Agreement. Such party further agrees that 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 to employees
of such party to whom such disclosure is necessary to the use for which rights
are granted hereunder. Such party shall appropriately notify all employees to
whom any such disclosure is made that such disclosure is made in confidence and
shall be kept in confidence by them.
(c) The restrictions under this Section 13.03 on the use or
disclosure of such information shall not apply to such information:
(i) which is independently developed by such party 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 or its employees, agents or contractors;
or
(iii) which at the time of disclosure to such party was
known to such party free of restriction and evidenced by documentation in such
party's 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 in order to contest such
request, requirement or order or seek protective measures.
13.04 Seller shall have recorded in the United States Patent and
Trademark Office the assignment of the patents listed in Appendix G herein to
AGERE prior to the Effective Date of this agreement.
13.05 In the event of any conflict between the representations and
warranties in this Agreement and the representations and warranties in the
Purchase Agreement, the representations and warranties in the Purchase Agreement
shall prevail.
ARTICLE XIV
GENERAL PROVISIONS
14.01 Consideration. The consideration for the transfers, assignments
and grant of rights and licenses under this Agreement by Seller to Buyer is
provided in the Purchase Agreement and no further payment of royalties will be
due under this Agreement.
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14.02 Agreement Prevails. This Agreement shall prevail in the event of
any conflicting terms or legends, which may appear on documents, the Software,
the Documentation or the Technical Information transferred or licensed
hereunder.
14.03 Relationship Between Parties. Neither Party to this Agreement
shall have the power to bind the other by any guarantee or representation that
it may give, or to incur any debts or liabilities in the name of or on behalf of
the other Party. The Parties acknowledge and agree that nothing contained in
this Agreement shall be deemed or construed to constitute or create between the
Parties hereto a partnership, association, joint venture or other agency.
14.04 Entire Agreement. This Agreement, the Purchase Agreement and
Collateral Agreements set forth the entire agreement and understanding between
the Parties as to the subject matter hereof and merge all prior discussions
between them, and none of the Parties shall be bound by any conditions,
definitions, warranties, modifications, understandings or representations with
respect to such subject matter other than as expressly provided herein or
therein set forth on or subsequent to the Effective Date hereof in writing and
signed by a proper and duly authorized representative of the Party to be bound
thereby.
14.05 Headings. Section and subsection headings contained in this
Agreement are inserted for convenience of reference only, shall not be deemed to
be a part of this Agreement for any purpose, and shall not in any way define or
affect the meaning, construction or scope of any of the provisions hereof.
14.06 Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement. This provision shall survive termination of this Agreement.
14.07 Governing Law. The Parties agree that this Agreement shall be
governed by and construed and interpreted in accordance with the laws of the
State of New York, excluding the choice of law rules thereof.
14.08 Force Majeure. Neither Party shall lose any rights hereunder or
be liable to the other Party for damages or losses on account of failure of
performance by the defaulting Party if the failure is occasioned by government
action, war, acts of terrorism, fire, explosion, flood, strike, lockout,
embargo, act of God, or other cause beyond the reasonable control of the
defaulting Party, provided that the Party claiming force majeure has exerted
commercially reasonable efforts to avoid or remedy such force majeure.
14.09 Waiver. Except as specifically provided for herein, the waiver
from time to time by either of the Parties of any of their rights or their
failure to exercise any remedy shall not operate or be construed as a continuing
waiver of the same or of any other of such Party's rights or remedies provided
in this Agreement.
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14.10 Severability. If any term, covenant or condition of this
Agreement or the application thereof to any Party or circumstances shall, to any
extent, be held to be invalid or unenforceable, then the remainder of this
Agreement, or the application of such term, covenant or condition to parties or
circumstances other than those as to which it is held invalid or unenforceable,
shall not be affected thereby and each term, covenant or condition of this
Agreement shall be valid and be enforced to the fullest extent permitted by law.
14.11 No Rights to Other Products. Except as otherwise agreed in this
Agreement, in the Purchase Agreement, or in a Collateral Agreement, Seller and
Buyer 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 Agreement, the Purchase Agreement or
any Collateral Agreement. Nothing in this Agreement shall be construed to
obligate Buyer or Seller to a specified level of effort in its promotion and
marketing of any product.
14.12 Execution in Counterparts. This 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.
ARTICLE XV
NOTICES
15.01 Until further notice in writing, any notice or other
communication hereunder shall be deemed to be sufficiently given to the
addressee and any delivery hereunder deemed made when sent by certified mail to
the addresses set out below.
For Agere: Agere Systems
Intellectual Property
Attn: Contract Administrator
0000 Xxxxx Xxxx Xxxxx Xxxxxxx
Xxxxxxx, Xxxxxxx 00000-0000
Xxxxxx Xxxxxx of America
With a copy to: Agere Systems Inc.
Attn: Vice President - Law
0000 Xxxxxxxx Xxxxxxx, XX
Xxxxxxxxx, XX 00000
Xxxxxx Xxxxxx of America
Facsimile: (000) 000-0000
For Buyer: EMCORE Corporation
Attn: General Counsel
000 Xxxxxxx Xxxxx
Xxxxxxxx, XX 00000
Xxxxxx Xxxxxx of America
Facsimile: (000) 000-0000
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With a copy to: Skadden, Arps, Slate, Xxxxxxx & Xxxx LLP
Attn: Xxx Xxxxxx
000 Xxxxx Xxxxx Xxxxxx
Xxx Xxxxxxx, XX 00000
Xxxxxx Xxxxxx of America
Facsimile: (000) 000-0000
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IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed by its duly authorized representative on the respective dates entered
below.
AGERE SYSTEMS INC.
By: /s/ Xxxxxx XxXxxxx
Name: Xxxxxx XxXxxxx
Title: Vice President
Date: January 21, 2003
XXXXX CORPORATION
By: /s/ Xxxxxx XxXxxxx
Name: Xxxxxx XxXxxxx
Title: Vice President
Date: January 21, 2003
EMCORE CORPORATION
By: /s/ Xxxxxx X. Xxxxxx
Name: Xxxxxx X. Xxxxxx, Esq.
Title: Vice President and General Counsel
Date: January 21, 2003
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES
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