Exhibit 10.3
Master Technology Ownership and License Agreement
by and among
Schlumberger Technologies, Inc.,
Schlumberger Technology Corporation,
Schlumberger BV
and
NPTest, Inc.
_______ __, 2002
TABLE OF CONTENTS
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ARTICLE I DEFINITIONS ............................................................ 1
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Section 1.1 Affiliate ..................................................... 1
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Section 1.2 Ancillary Agreements .......................................... 1
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Section 1.3 Copyrights .................................................... 2
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Section 1.4 Database Rights ............................................... 2
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Section 1.5 General Assignment and Assumption Agreement ................... 2
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Section 1.6 Invention Disclosure .......................................... 2
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Section 1.7 Improvements .................................................. 2
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Section 1.8 Licensed NPT Technology ....................................... 2
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Section 1.9 Licensed Schlumberger Technology .............................. 2
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Section 1.10 Mask Work Rights .............................................. 3
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Section 1.11 Master Confidential Disclosure Agreement ...................... 3
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Section 1.12 Master Separation and Sale Agreement .......................... 3
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Section 1.13 NPT Business .................................................. 3
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Section 1.14 NPT Group ..................................................... 3
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Section 1.15 NPT Proprietary Technology .................................... 3
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Section 1.16 NPT Products .................................................. 3
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Section 1.17 Patents ....................................................... 3
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Section 1.18 Person ........................................................ 4
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Section 1.19 Schlumberger Business ......................................... 4
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Section 1.20 Schlumberger Group ............................................ 4
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Section 1.21 Schlumberger Products ......................................... 4
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Section 1.22 Sell .......................................................... 4
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Section 1.23 Separation Date ............................................... 4
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Section 1.24 Subsidiary .................................................... 4
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Section 1.25 Technology .................................................... 4
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Section 1.26 Third Party ................................................... 4
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Section 1.27 VAD ........................................................... 5
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Section 1.28 VAR ........................................................... 5
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ARTICLE II ALLOCATION OF OWNERSHIP ............................................... 5
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Section 2.1 Assignment ................................................... 5
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Section 2.2 Prior Grants ................................................. 5
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Section 2.3 ASSIGNMENT DISCLAIMER ........................................ 5
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Section 2.4 Copies in Its Possession ..................................... 6
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ARTICLE III LICENSE GRANTS ...................................................... 6
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Section 3.1 License to the Schlumberger Group ............................ 6
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Section 3.2 License to the NPT Group ..................................... 8
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Section 3.3 Have Made Rights ............................................. 11
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Section 3.4 Improvements ................................................. 11
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Section 3.5 Duration of Sublicenses ...................................... 11
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Section 3.6 No Patent Licenses ........................................... 11
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Section 3.7 Third Party Technology ....................................... 12
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ARTICLE IV CONFIDENTIALITY ...................................................... 12
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ARTICLE V TERMINATION ........................................................... 12
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Section 5.1 Voluntary Termination ........................................ 12
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Section 5.2 Survival ..................................................... 12
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Section 5.3 No Other Termination ......................................... 12
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ARTICLE VI DISPUTE RESOLUTION ................................................... 12
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ARTICLE VII LIMITATION OF LIABILITY ............................................. 12
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ARTICLE VIII MISCELLANEOUS PROVISIONS ........................................... 13
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Section 8.1 Disclaimer ................................................... 13
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Section 8.2 No Implied Licenses .......................................... 13
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Section 8.3 Infringement Suits ........................................... 13
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Section 8.4 No Other Obligations ......................................... 14
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Section 8.5 Entire Agreement ............................................. 14
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Section 8.6 Governing Law ................................................ 14
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Section 8.7 Descriptive Headings ......................................... 14
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Section 8.8 Notices ...................................................... 14
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Section 8.9 Binding Effect; Assignment ................................... 15
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Section 8.10 Severability ................................................. 16
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Section 8.11 Failure or Indulgence Not Waiver; Remedies Cumulative ........ 16
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Section 8.12 Amendment .................................................... 16
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ii
Section 8.13 Counterparts ..................................................... 16
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Section 8.14 Authority ........................................................ 16
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MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the "Agreement") is
entered into as of _______ __, 2002, by and among Schlumberger Technologies,
Inc., a Delaware corporation ("STI"), Schlumberger Technology Corporation, a
Texas corporation ("STC"), Schlumberger BV, a company organized and existing
under the laws of the Netherlands ("SBV") and, together with STI and STC,
"Schlumberger"), and NPTest, Inc., a Delaware corporation ("NPT").
RECITALS
WHEREAS, STI and SBV collectively own all of the currently issued and
outstanding common stock of NPT;
WHEREAS, NPT is engaged in certain aspects of the automated test equipment
business and related businesses as defined in the Master Separation and Sale
Agreement (collectively, the "NPT Business");
WHEREAS, the Board of Directors of each of STI, SBV and NPT has determined
that it would be appropriate and desirable for the Schlumberger Group (as
defined below) to contribute and transfer to NPT, and for NPT to receive and
assume, directly or indirectly, certain assets and liabilities currently held by
the Schlumberger Group and associated with the NPT Business;
WHEREAS, certain Prior Transfers, as defined in the Master Separation and
Sale Agreement, have already occurred; and
WHEREAS, as part of the foregoing, the parties wish to allocate ownership
of technology directly associated with the NPT Business to NPT (and to confirm
the allocation of ownership of such technology to NPT which was accomplished in
the Prior Transfers) and to license certain technology to each other.
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 Article I and shall have the meaning specified herein:
Section 1.1 Affiliate. "Affiliate" has the meaning set forth in the Master
Separation and Sale Agreement.
Section 1.2 Ancillary Agreements. "Ancillary Agreements" has the meaning
set forth in the Master Separation and Sale Agreement.
Section 1.3 Copyrights. "Copyrights" means (i) any copyright in any
original works of authorship fixed in any tangible medium of expression as set
forth in 17 U.S.C. Section 101 et. seq., whether registered or unregistered,
including any applications for registration thereof, (ii) any corresponding
foreign copyrights under the laws of any jurisdiction, in each case, whether
registered or unregistered, and any applications for registration thereof,
including rights under international treaties, and (iii) moral rights under the
laws of any jurisdiction.
Section 1.4 Database Rights. "Database Rights" means any rights in
databases under the laws of the United States or any other jurisdiction, whether
registered or unregistered, and any applications for registration thereof.
Section 1.5 General Assignment and Assumption Agreement. "General
Assignment and Assumption Agreement" means that certain General Assignment and
Assumption Agreement by and among STI, STC, SBV and NPT.
Section 1.6 Invention Disclosure. "Invention Disclosure" means a written
disclosure of an invention (i) prepared for the purpose of allowing legal and
business people to determine whether to file a Patent application with respect
to such invention and (ii) recorded with a control number in the owning party's
records prior to the Separation Date.
Section 1.7 Improvements. "Improvements" to Technology means (i) with
respect to Copyrights, any modifications, derivative works, and translations of
works of authorship, (ii) with respect to Database Rights, any database that is
created by extraction or re-utilization of another database, and (iii) with
respect to Mask Work Rights, trade secrets and other intellectual property
rights included within the definition of Technology and not covered by Sections
1.7(i) - (ii) above, any improvements of Technology. For the purposes of
clarification, an item of Technology will be deemed to be an Improvement of
another item of Technology only if it is actually derived from such other item
of Technology and not merely because it may have the same or similar
functionality or use as such other item of Technology.
Section 1.8 Licensed NPT Technology. "Licensed NPT Technology" means any
Technology:
(a) which, as of the Separation Date, NPT (i) owns or controls or
(ii) otherwise has the right to grant any licenses of the type and on the terms
contemplated herein without the obligation to pay royalties or other
consideration to Third Parties; and
(b) which has been disclosed to or is in the possession of
Schlumberger as of the Separation Date.
Section 1.9 Licensed Schlumberger Technology. "Licensed Schlumberger
Technology" means any Technology:
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(a) which, as of the Separation Date, Schlumberger (i) owns or
controls or (ii) otherwise has the right to grant any licenses of the type and
on the terms contemplated herein without the obligation to pay royalties or
other consideration to Third Parties; and
(b) which has been disclosed to or is in the possession of NPT as
of the Separation Date.
Section 1.10 Mask Work Rights. "Mask Work Rights" means (i) any rights in
mask works, as defined in 17 U.S.C. Section 901, whether registered or
unregistered, including applications for registration thereof, and (ii) any
foreign rights in semiconductor topologies under the laws of any jurisdiction,
whether registered or unregistered, including applications for registration
thereof.
Section 1.11 Master Confidential Disclosure Agreement. "Master Confidential
Disclosure Agreement" means that certain Master Confidential Disclosure
Agreement by and among STI, STC, SBV and NPT.
Section 1.12 Master Separation and Sale Agreement. "Master Separation and
Sale Agreement" means that certain Master Separation and Sale Agreement by and
among STI, STC, SBV and NPT.
Section 1.13 NPT Business. "NPT Business" has the meaning set forth in the
Recitals.
Section 1.14 NPT Group. "NPT Group" has the meaning set forth in the Master
Separation and Sale Agreement.
Section 1.15 NPT Proprietary Technology. "NPT Proprietary Technology" means
(i) all Technology directly associated with the development, design, testing,
manufacture, maintenance, support, debugging, quality control, repair, use,
marketing and sale of the products developed or being developed directly by or
for the NPT Business as of the Separation Date, (ii) all Technology developed or
being developed directly by or for the NPT Business as of the Separation Date
and (iii) all other Technology used by the NPT Business and not by the
Schlumberger Business.
Section 1.16 NPT Products. "NPT Products" means any and all products and
services of the businesses in which any member of the NPT Group is now or
hereafter engaged (including the business of making (but not having made) Third
Party products for Third Parties when such member of the NPT Group is acting as
a contract manufacturer or foundry for such Third Parties).
Section 1.17 Patents. "Patents" means patents, utility models, design
patents, design registrations, certificates of invention and other governmental
grants for the protection of inventions or industrial designs anywhere in the
world and all reissues, renewals, reexaminations and extensions of any of the
foregoing.
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Section 1.18 Person. "Person" has the meaning set forth in the Master
Separation and Sale Agreement.
Section 1.19 Prior Transfers. "Prior Transfers" has the meaning set forth
in the Master Separation and Sale Agreement.
Section 1.20 Schlumberger Business. "Schlumberger Business" means the
businesses of the Schlumberger Group as of the Separation Date, but specifically
excluding the NPT Business.
Section 1.21 Schlumberger Group. "Schlumberger Group" has the meaning set
forth in the Master Separation and Sale Agreement.
Section 1.22 Schlumberger Products. "Schlumberger Products" means any and
all products and services of the businesses in which any member of the
Schlumberger Group is now or hereafter engaged (including the business of
making, but not having made, Third Party products for Third Parties when such
member of the Schlumberger Group is acting as a contract manufacturer or foundry
for such Third Parties).
Section 1.23 Sell. To "Sell" a product means to sell, transfer, lease or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
Section 1.24 Separation Date. "Separation Date" has the meaning set forth
in the Master Separation and Sale Agreement.
Section 1.25 Subsidiary. "Subsidiary" has the meaning set forth in the
Master Separation and Sale Agreement.
Section 1.26 Technology. "Technology" means technological models,
algorithms, manufacturing processes, design processes, behavioral models, logic
diagrams, schematics, test vectors, know-how, computer and electronic data
processing and other apparatus programs and software (object code and source
code), optical, hydraulic and fluidic apparatus and processes, apparatuses and
prototypes, processes, detection and analytical devices, databases and
documentation thereof, trade secrets, technical information, specifications,
drawings, records, documentation, works of authorship or other creative works,
websites, ideas, knowledge, data or the like. The term Technology includes
Copyrights, Database Rights, Mask Work Rights, trade secrets and any other
intellectual property right, but expressly does not include (i) any trademark,
trade name, trade dress or service xxxx, or applications for registration
thereof or (ii) any Patents or applications therefor, including any of the
foregoing that may be based on Invention Disclosures, which are covered by the
Master Patent Ownership Agreement between the parties, but does include trade
secret rights in and to inventions disclosed in such Patent applications and
Invention Disclosures.
Section 1.27 Third Party. "Third Party" means a Person other than any
member of the NPT Group or the Schlumberger Group.
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Section 1.28 VAD. "VAD" means value-added dealer.
Section 1.29 VAR. "VAR" means value-added reseller or value-added retailer.
ARTICLE II
ALLOCATION OF OWNERSHIP
Section 2.1 Assignment. Subject to Sections 2.2 and 2.3 below,
Schlumberger has granted, conveyed and assigned, or hereby grants, conveys and
assigns (and agrees to cause other members of the Schlumberger Group to grant,
convey and assign) to NPT, by execution hereof (or, where appropriate or
required, by execution of separate instruments of assignment), all its (and
their) right, title and interest in and to the NPT Proprietary Technology, to be
held and enjoyed by NPT, its successors and assigns. Schlumberger further has
granted, conveyed and assigned, or hereby grants, conveys and assigns (and
agrees to cause other members of the Schlumberger Group to grant, convey and
assign) to NPT all its (and their) right, title and interest in and to any and
all causes of action and rights of recovery for past infringement of Copyrights,
Database Rights and Mask Work Rights in and to the NPT Proprietary Technology,
and for past misappropriation of trade secrets in and to the NPT Proprietary
Technology. Where necessary, Schlumberger further covenants that it will,
without demanding any further consideration therefor, at the request and expense
of NPT (except for the value of the time of the Schlumberger Group employees),
provide (and cause other members of the Schlumberger Group to provide)
reasonable assistance in evidencing, maintaining, recording and perfecting NPT's
rights to such NPT Proprietary Technology consistent with its general business
practice as of the Separation Date, including but not limited to, execution and
acknowledgement of (and causing other members of the Schlumberger Group to
execute and acknowledge) assignments and other instruments in a form reasonably
required by NPT for each Copyright, Mask Work Right or Database Right
jurisdiction.
Section 2.2 Prior Grants. NPT acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have been
granted by the Schlumberger Group with respect to the NPT Proprietary Technology
prior to the Separation Date. Schlumberger shall respond to reasonable inquiries
from NPT regarding any such prior grants.
Section 2.3 ASSIGNMENT DISCLAIMER. NPT ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS HAVE BEEN AND ARE MADE ON AN "AS IS", "WHERE IS",
QUITCLAIM BASIS AND THAT NEITHER SCHLUMBERGER NOR OTHER MEMBERS OF THE
SCHLUMBERGER GROUP HAVE 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.
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Section 2.4 Copies in Its Possession. Notwithstanding the allocation of
ownership in this Article II, each party has the right to retain copies of any
Technology that it has in its possession as of the Separation Date.
ARTICLE III
LICENSE GRANTS
Section 3.1 License to the Schlumberger Group. (a) NPT grants to the
Schlumberger Group the following personal, irrevocable, nonexclusive, worldwide,
fully paid, royalty-free and non-transferable (except as specified in Section
8.9 below) licenses:
(i) under its Copyrights in and to the Licensed NPT Technology,
(A) to reproduce and have reproduced the works of authorship included in the
Licensed NPT Technology and Improvements thereof prepared by or for
Schlumberger, in whole or in part, as part of Schlumberger Products, (B) to
prepare Improvements or have Improvements prepared for it based upon the works
of authorship included in the Licensed NPT Technology in order to create
Schlumberger Products, (C) to distribute (by any means and using any technology,
whether now known or unknown, including without limitation electronic
transmission) copies of the works of authorship included in the Licensed NPT
Technology and Improvements thereof prepared by or for Schlumberger to the
public by sale or other transfer of ownership or by rental, lease or lending, as
part of Schlumberger Products, and (D) to perform (by any means and using any
technology, whether now known or unknown, including without limitation
electronic transmission) and display the works of authorship included in the
Licensed NPT Technology and Improvements thereof prepared by or for
Schlumberger, as part of Schlumberger Products;
(ii) under its Database Rights in and to the Licensed NPT
Technology, to extract data from the databases included in the Licensed NPT
Technology and to re-utilize such data to design, develop, manufacture and have
manufactured Schlumberger Products and to Sell such Schlumberger Products that
incorporate such data, databases and Improvements thereof prepared by or for
Schlumberger;
(iii) under its Mask Work Rights in and to the Licensed NPT
Technology, (A) to reproduce and have reproduced mask works and semiconductor
topologies included in the Licensed NPT Technology and embodied in Schlumberger
Products by optical, electronic or any other means, (B) to import or distribute
a product in which any such mask work or semiconductor topology is embodied, and
(C) to induce or knowingly to cause a Third Party to do any of the acts
described in Sections 3.1(a)(iii)(A) and (B) above; and
(iv) under its trade secrets and other intellectual property
rights in and to the Licensed NPT Technology (except the intellectual property
rights excluded from the definition of Technology), to use the Licensed NPT
Technology and
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Improvements thereof prepared by or for Schlumberger to design, develop,
manufacture and have manufactured Schlumberger Products and to Sell such
Schlumberger Products.
(b) Without limiting the generality of the foregoing licenses granted
in Section 3.1(a) above, with respect to software included within the Licensed
NPT Technology, such licenses include the right to use, modify, and reproduce
such software and Improvements thereof made by or for Schlumberger to create
Schlumberger Products, in source code and object code form, and to Sell such
software and Improvements thereof made by or for Schlumberger, in source code
and object code form, as part of Schlumberger Products; provided, however, that,
(i) with respect to NPT's software products that are
commercially released as of the Separation Date, Schlumberger shall be limited
to using no more than ten percent (10%) of the lines of code of any such
commercially released software product in any the Schlumberger Product Sold by
Schlumberger to a Third Party. Any other rights of Schlumberger to Sell such
commercially released software products of NPT shall be solely as set forth in a
separate written agreement. For purposes of this Section 3.1(b), a "commercially
released" product shall mean a product that has been placed on a NPT corporate
price list or released by NPT to Third Parties for beta testing; and
(ii) with respect to NPT software that is only used internally,
Schlumberger recognizes that such software was not designed for use in products
that are Sold to Third Parties and that NPT has no obligation whatsoever to
support such software. Accordingly, Schlumberger agrees to use reasonable care
in selecting any such software for use in Schlumberger Products, taking into
account that such software will be difficult to support.
(c) The foregoing licenses in this Section 3.1 include the right to
have contract manufacturers and foundries manufacture Schlumberger Products for
Schlumberger.
(d) Schlumberger may grant sublicenses within the scope of the
licenses granted under Sections 3.1(a) and (b) above as follows:
(i) Schlumberger may grant sublicenses to other members of the
Schlumberger Group for so long as they remain a Schlumberger Group member, with
no right to grant further sublicenses other than, in the case of a sublicensed
Schlumberger Group member, to another Schlumberger Group member and as described
in Section 3.2(d)(ii) below; provided that any such sublicense may be made
effective retroactively but not prior to the sublicensee's becoming a
Schlumberger Group member;
(ii) Schlumberger may grant sublicenses with respect to
Schlumberger Products in the form of software, in object code and source code
form, to its distributors, resellers, OEM customers, VAR customers, VAD
customers, systems integrators and other channels of distribution and to its end
user customers; and
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(iii) Schlumberger may grant sublicenses with respect to the
relevant Licensed NPT Technology to the Transferee (as defined below), in the
event that Schlumberger transfers, after the Separation Date, a going business
(but not all or substantially all of its business or assets), regardless of
whether such transfer is part of an asset sale to a Third Party or a sale of
shares or securities to a Third Party (in each case, any such Third Party shall
be referred to herein as a "Transferee"); provided that:
(1) the Transferee shall have no right to grant further
sublicenses except as described in Section 3.1(d)(ii) above;
(2) such sublicenses shall not come into effect unless
and until such Transferee agrees in writing for the benefit of NPT to be
bound by the terms of this Agreement, including but not limited to the
confidentiality obligations under Article IV;
(3) this Section 3.1(d)(iii) shall be excluded from
such sublicense in any event; and
(4) Schlumberger shall give NPT prompt written notice
of any such sublicense and a copy of the portions of the relevant agreement
between Schlumberger and such Transferee containing the sublicense terms.
(e) The licenses granted above to the Licensed NPT Technology shall
continue in perpetuity (or, in the case of Copyrights, Database Rights
and Mask Work Rights, until the expiration of the term thereof).
(f) Schlumberger acknowledges and agrees that the foregoing license is
subject to any and all licenses or other rights that may have been granted under
the Licensed NPT Technology prior to the Separation Date. NPT shall respond to
reasonable inquiries from Schlumberger regarding any such prior grants.
Section 3.2 License to the NPT Group. (a) Schlumberger grants (and agrees
to cause other members of the Schlumberger Group to grant) to the NPT Group the
following personal, irrevocable, nonexclusive, worldwide, fully paid,
royalty-free and non-transferable (except as specified in Section 8.9 below)
licenses:
(i) under its and their Copyrights in and to the Licensed
Schlumberger Technology, (A) to reproduce and have reproduced the works of
authorship included in the Licensed Schlumberger Technology and Improvements
thereof prepared by or for NPT, in whole or in part, as part of NPT Products,
(B) to prepare Improvements or have Improvements prepared for it based upon the
works of authorship included in the Licensed Schlumberger Technology in order to
create NPT Products, (C) to distribute (by any means and using any technology,
whether now known or unknown, including without limitation electronic
transmission) copies of the works of authorship included in the Licensed
Schlumberger Technology and Improvements thereof prepared
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by or for NPT to the public by sale or other transfer of ownership or by rental,
lease or lending, as part of NPT Products, and (D) to perform (by any means and
using any technology, whether now known or unknown, including without limitation
electronic transmission) and display the works of authorship included in the
Licensed Schlumberger Technology and Improvements thereof prepared by or for
NPT, as part of NPT Products;
(ii) under its and their Database Rights in and to the Licensed
Schlumberger Technology, to extract data from the databases included in the
Licensed Schlumberger Technology and to re-utilize such data to design, develop,
manufacture and have manufactured NPT Products and to Sell such NPT Products
that incorporate such data, databases and Improvements thereof prepared by or
for NPT;
(iii) under its and their Mask Work Rights in and to the Licensed
Schlumberger Technology, (A) to reproduce and have reproduced mask works and
semiconductor topologies included in the Licensed Schlumberger Technology and
embodied in NPT Products by optical, electronic or any other means, (B) to
import or distribute a product in which any such mask work or semiconductor
topology is embodied, and (C) to induce or knowingly to cause a Third Party to
do any of the acts described in Sections 3.2(a)(iii)(A) and (B) above; and
(iv) under its and their trade secrets and other intellectual
property rights in and to the Licensed Schlumberger Technology (except the
intellectual property rights excluded from the definition of Technology), to use
the Licensed Schlumberger Technology and Improvements thereof prepared by or for
NPT to design, develop, manufacture and have manufactured NPT Products and to
Sell such NPT Products.
(b) Without limiting the generality of the foregoing licenses granted
in Section 3.2(a) above, with respect to software included within the Licensed
Schlumberger Technology, such licenses include the right to use, modify, and
reproduce such software and Improvements thereof made by or for NPT to create
NPT Products, in source code and object code form, and to Sell such software and
Improvements thereof made by or for NPT, in source code and object code form, as
part of NPT Products; provided, however, that,
(i) with respect to Schlumberger's software products that are
commercially released as of the Separation Date, NPT shall be limited to using
no more than ten percent (10%) of the lines of code of any such commercially
released software product in any NPT Product Sold by NPT to a Third Party. Any
other rights of NPT to Sell such commercially released software products of
Schlumberger shall be solely as set forth in a separate written agreement. For
purposes of this Section 3.2(b), a "commercially released" product shall mean a
product that has been placed on a corporate price list of Schlumberger or
released by Schlumberger to Third Parties for beta testing; and
(ii) with respect to Schlumberger's software that is only used
internally, NPT recognizes that such software was not designed for use in
products that
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are Sold to Third Parties and that Schlumberger has no obligation whatsoever to
support such software. Accordingly, NPT agrees to use reasonable care in
selecting any such software for use in NPT Products, taking into account that
such software will be difficult to support.
(c) The foregoing licenses in this Section 3.2 include the right to
have contract manufacturers manufacture NPT Products (or components thereof) for
NPT.
(d) NPT may grant sublicenses within the scope of the licenses
granted under Sections 3.2(a) and (b) above as follows:
(i) NPT may grant sublicenses to other members of the NPT Group
for so long as they remain an NPT Group member, with no right to grant further
sublicenses other than, in the case of a sublicensed NPT Group member, to
another NPT Group member and as described in Section 3.2(d)(ii) below; provided
that any such sublicense may be made effective retroactively but not prior to
the sublicensee's becoming an NPT Group member;
(ii) NPT may grant sublicenses with respect to NPT Products in
the form of software, in object code and source code form, to its distributors,
resellers, OEM customers, VAR customers, VAD customers, systems integrators and
other channels of distribution and to its end user customers; and
(iii) NPT may grant sublicenses with respect to the relevant
Licensed Schlumberger Technology to the Transferee (as defined below), in the
event that NPT transfers, after the Separation Date, a going business (but not
all or substantially all of its business or assets), regardless of whether such
transfer is part of an asset sale to a Third Party or a sale of shares or
securities in a Subsidiary to a Third Party (in each case, any such Third Party
shall be referred to herein as a "Transferee"); provided that:
(1) the Transferee shall have no right to grant further
sublicenses except as described in Section 3.2(d)(ii) above;
(2) such sublicenses shall not come into effect unless
and until such Transferee agrees in writing for the benefit of Schlumberger
to be bound by the terms of this Agreement including but not limited to the
confidentiality obligations under Article IV;
(3) this Section 3.2(d)(iii) shall be excluded from
such sublicense in any event; and
(4) NPT shall give Schlumberger prompt written notice
of any such sublicense and a copy of the portions of the relevant agreement
between NPT and such Transferee containing the sublicense terms.
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(e) The licenses granted above to the Licensed Schlumberger
Technology shall continue in perpetuity (or, in the case of Copyrights, Database
Rights and Mask Work Rights, until the expiration of the term thereof).
(f) NPT acknowledges and agrees that the foregoing license is
subject to any and all licenses or other rights that may have been granted by
the Schlumberger Group with respect to the Licensed Schlumberger Technology
prior to the Separation Date. Schlumberger shall respond to reasonable inquiries
from NPT regarding any such prior grants.
Section 3.3 Have Made Rights. Each party understands and acknowledges that
the "have made" rights granted to it in Section 3.1 or 3.2, as applicable, and
the sublicenses of such "have made" rights granted pursuant to Sections 3.1(d)
and 3.2(d), as applicable, are intended to cover only the products of such party
and its Affiliates and Subsidiaries (including private label or OEM versions of
such products), and are not intended to cover foundry or contract manufacturing
activities that such party may undertake through Third Parties for Third
Parties.
Section 3.4 Improvements. As between the parties, after the Separation
Date, NPT hereby retains all right, title and interest, including all
intellectual property rights, in and to any Improvements to Licensed
Schlumberger Technology made by or for NPT or for the Probe systems, Test
Systems, or Saber business lines of Schlumberger Semiconductor Solutions in the
exercise of the licenses granted to it hereunder, subject only to the ownership
by Schlumberger in the underlying Licensed Schlumberger Technology, and
Schlumberger hereby retains all right, title and interest, including all
intellectual property rights, in and to any Improvements to Licensed NPT
Technology made by or for Schlumberger in the exercise of the licenses granted
to it hereunder, subject only to the ownership by NPT in the underlying Licensed
NPT Technology. Neither party shall have any obligation under this Agreement to
notify the other party of any Improvements made by or for it or to disclose or
license any such Improvements to the other party.
Section 3.5 Duration of Sublicenses. A sublicense to a particular
Affiliate or Subsidiary of a party hereto shall terminate upon the date that
such Affiliate or Subsidiary ceases to be an Affiliate or Subsidiary of such
party; provided, however, that such cessation shall not affect such party's
rights to grant further sublicenses to such terminated Affiliate or Subsidiary
as set forth in Section 3.1(d)(ii) or 3.2(d)(iii) above. In the event that, at
the time of such cessation, such terminated Affiliate or Subsidiary owns any
Technology to which the other party is licensed, such license shall continue for
the term thereof.
Section 3.6 No Patent Licenses. Nothing contained in this Agreement shall
be construed as conferring to either party by implication, estoppel or otherwise
any license or right under any Patent or applications therefor, whether or not
the exercise of any right herein granted necessarily employs an invention of any
existing or later issued Patent.
11
Section 3.7 Third Party Technology. The assignment of any applicable
license agreements with respect to Third Party Technology are set forth in a
separate General Assignment and Assumption Agreement between the parties.
ARTICLE IV
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement shall apply to
any Confidential Information (as defined therein) which is disclosed pursuant to
this Agreement.
ARTICLE V
TERMINATION
Section 5.1 Voluntary Termination. By written notice to the other party,
each party may voluntarily terminate all or a specified portion of the licenses
and rights granted to it hereunder by such other party. Such notice shall
specify the effective date of such termination and shall clearly specify any
affected Technology, product or service.
Section 5.2 Survival. Any voluntary termination of licenses and rights of
a party under Section 5.1 shall not affect such party's rights with respect to
any product made or service furnished prior to such termination, and shall not
affect the rights granted to the other party hereunder.
Section 5.3 No Other Termination. Each party acknowledges and agrees that
its remedy for breach by the other party of any provision hereof, shall be,
subject to the requirements of Article VI, to bring a claim to recover damages
subject to the limits set forth in this Agreement and to seek any other
appropriate equitable relief, other than termination of the licenses granted
under this Agreement.
ARTICLE VI
DISPUTE RESOLUTION
The terms of the provisions entitled "Dispute Resolution" in the Master
Separation and Sale Agreement shall apply to any claims or controversies or
disputes arising hereunder among the parties to this Agreement.
ARTICLE VII
LIMITATION OF LIABILITY
The terms of the provisions entitled "Limitation of Liability" in the
Master Separation and Sales Agreement shall apply to any liabilities or damages
incurred by the
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parties by reason of any breach of this Agreement or the activities of the
parties hereunder.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
Section 8.1 Disclaimer. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL
TECHNOLOGY AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER
OR IN CONNECTION WITH THE PRIOR TRANSFERS IS LICENSED OR PROVIDED ON AN "AS IS"
BASIS, AND THAT NEITHER PARTY (NOR ANY OTHER MEMBER OF THE SCHLUMBERGER GROUP
AND THE NPT GROUP) MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO, INCLUDING
WITHOUT LIMITATION ANY WARRANTIES CONCERNING THE QUALITY OR ENFORCEABILITY OF
ANY RIGHTS TO SUCH TECHNOLOGY AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR
PROVIDED HEREUNDER, AND ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. EACH PARTY
ACKNOWLEDGES THAT IT IS SOLELY RESPONSIBLE FOR ANY RESULTS OBTAINED FROM THE USE
OF THE TECHNOLOGY OR INFORMATION AND EACH PARTY HEREBY IRREVOCABLY WAIVES ANY
CLAIMS IT MAY HAVE OR LATER MAY HAVE AGAINST THE OTHER IN CONNECTION WITH SUCH
USE.
Without limiting the generality of the foregoing, neither party (nor any
other member of the Schlumberger Group and the NPT Group) makes any warranty or
representation that any manufacture, use, importation, offer for sale or sale of
any product or service will be free from infringement of any Patent or other
intellectual property right of any Third Party.
Section 8.2 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 the Licensed NPT Technology and the Licensed
Schlumberger Technology. Neither party is required hereunder to furnish or
disclose to the other any technical or other information (including copies of
the Licensed NPT Technology and the Licensed Schlumberger Technology), except as
specifically provided herein.
Section 8.3 Infringement Suits. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Copyrights, Database Rights or Mask Work Rights or misappropriation of
any trade secret rights in or to any Technology licensed to the other party
hereunder, or to defend any action or suit brought by a Third Party which
challenges or concerns the validity of any of such rights or which claims that
any Technology assigned or licensed to the other
13
party hereunder infringes any Patent, Copyright, Database Right, Mask Work Right
or other intellectual property right of any Third Party or constitutes a
misappropriated trade secret of any Third Party. Schlumberger shall not have any
right to institute any action or suit against Third Parties for infringement of
any of the Copyrights, Database Rights or Mask Work Rights in or to the Licensed
NPT Technology and NPT shall not have any right to institute any action or suit
against Third Parties for infringement of any of the Copyrights, Database Rights
or Mask Work Rights in or to the Licensed Schlumberger Technology.
Section 8.4 No Other Obligations. NEITHER PARTY ASSUMES ANY
RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND
OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN
AGREEMENT BETWEEN THE PARTIES. Without limiting the generality of the foregoing,
neither party nor any of its Subsidiaries, is obligated to provide any technical
assistance.
Section 8.5 Entire Agreement. This Agreement, the Ancillary Agreements and
the Exhibits and Schedules referenced or attached hereto and thereto, and the
agreements and documents executed and delivered in connection with the Prior
Transfers, constitute the entire agreement between the parties with respect to
the subject matter hereof and thereof and shall supersede all prior written and
oral and all contemporaneous oral agreements and understandings with respect to
the subject matter hereof and thereof.
Section 8.6 Governing Law. This Agreement shall be construed in accordance
with and all Disputes hereunder shall be governed by the laws of the State of
Delaware, excluding its conflict of law rules and the United Nations Convention
on Contracts for the International Sale of Goods.
Section 8.7 Descriptive Headings. The headings contained in this
Agreement, in any Exhibit or Schedule hereto and in the table of contents to
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement. Any capitalized term used in
any Exhibit or Schedule but not otherwise defined therein, shall have the
meaning assigned to such term in this Agreement. When a reference is made in
this Agreement to an Article or a Section, Exhibit or Schedule, such reference
shall be to an Article or Section of, or an Exhibit or Schedule to, this
Agreement unless otherwise indicated.
Section 8.8 Notices. Notices, offers, requests or other communications
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be given in writing to the respective parties to the following
addresses:
if to STI:
Schlumberger Technologies, Inc.
[To Come]
Attention: [__________]
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Telephone: [__________]
Facsimile: [__________]
if to SBV:
Schlumberger BV
[To Come]
Attention: [__________]
Telephone: [__________]
Facsimile: [__________]
if to STC:
Schlumberger Technology Corp.
[To Come]
Attention: [__________]
Telephone: [__________]
Facsimile: [__________]
if to NPT:
NPTest, Inc.
000 Xxxxxxx Xxxxx
Xxx Xxxx, XX 00000
Attention: General Counsel
Telephone: [408__________]
Facsimile: [408__________]
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three days from the
date of postmark.
Section 8.9 Binding Effect; Assignment. No party may, directly or
indirectly, in whole or in part, whether by operation of law or otherwise,
assign or transfer this
15
Agreement, without the other parties' 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 parties. Notwithstanding the
foregoing, each party (or its permitted successive assignees or transferees
hereunder) may assign or transfer this Agreement as a whole without consent to
an entity that succeeds to all or substantially all of the business or assets of
such party. 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 8.10 Severability. If any term or other provision of this
Agreement or the Exhibits or Schedules attached hereto is determined by a court,
administrative agency or arbitrator 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 transactions
contemplated hereby are fulfilled to the fullest extent possible.
Section 8.11 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 or the Exhibits or Schedules attached hereto are cumulative
to, and not exclusive of, any rights or remedies otherwise available.
Section 8.12 Amendment. No change or amendment will be made to this
Agreement or the Exhibits or Schedules attached hereto except by an instrument
in writing signed on behalf of each of the parties to such agreement.
Section 8.13 Counterparts. This Agreement, including the Ancillary
Agreement and the Exhibits and Schedules hereto and thereto and the other
documents referred to herein or therein, may be executed in counterparts, each
of which shall be deemed to be an original but all of which shall constitute one
and the same agreement.
Section 8.14 Authority. Each of the parties hereto represents to the other
that (a) it has the corporate or other requisite power and authority to execute,
deliver and perform this Agreement, (b) the execution, delivery and performance
of this Agreement by it have been duly authorized by all necessary corporate or
other actions, (c) it has duly and validly executed and delivered this
Agreement, and (d) this Agreement is a legal, valid and binding obligation,
enforceable against it in accordance with its terms subject to
16
applicable bankruptcy, insolvency, reorganization, moratorium or other similar
laws affecting creditors' rights generally and general equity principles.
17
IN WITNESS WHEREOF, each of the parties has caused this Master Technology
Ownership and License Agreement to be executed on its behalf by its officers
thereunto duly authorized on the day and year first above written.
Schlumberger Technologies, Inc. NPTest, Inc.
By: _____________________________________ By: _______________________________
Name: Name:
Title: Title:
Schlumberger BV
By: _____________________________________
Name:
Title:
Schlumberger Technology Corporation
By: _____________________________________
Name:
Title:
_____________________________________
_____________________________________
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