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Exhibit 2.6
INTELLECTUAL PROPERTY AGREEMENT
THIS INTELLECTUAL PROPERTY AGREEMENT having an Effective Date of April
2, 2001 is made by and between Quantum Corporation, a Delaware corporation, with
offices located at 000 XxXxxxxx Xxxx., Xxxxxxxx, Xxxxxxxxxx 95035("Quantum") and
Insula Corporation, a Delaware corporation, with offices located at 000 XxXxxxxx
Xxxx., Xxxxxxxx, Xxxxxxxxxx 00000 ("Insula").
RECITALS:
Whereas, Quantum, Insula and Maxtor Corporation ("Maxtor") are parties
to a certain AMENDED AND RESTATED AGREEMENT AND PLAN OF MERGER AND
REORGANIZATION dated October 3, 2000 ("Merger Agreement") pursuant to which the
hard disk drive business of Quantum will be transferred to Insula and Insula
will merge into and become a wholly owned subsidiary of Maxtor (the "Merger" as
defined in the Merger Agreement);
Whereas, in connection with such transaction, Insula wishes to acquire
the absolute ownership of certain proprietary and intellectual property rights
in and associated with the hard disk drive business of Quantum, and to acquire a
license to other proprietary and intellectual property rights in and associated
with the hard disk drive business of Quantum; and,
Whereas, in connection with such transaction, Quantum wishes to retain a
license to certain proprietary and intellectual property rights in and
associated with the hard disk drive business of Quantum that is being
transferred herein to Insula.
NOW, THEREFORE, in consideration of the Merger Agreement and the mutual
covenants, promises and representations set forth herein, and for other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows:
AGREEMENT
1. Definitions.
1.1 "Assigned Agreements" shall mean the agreements to which
Quantum is a party listed and shown in Exhibit E.
1.2 "Documentation" means written materials (and
machine-readable text subject to display and printout) which relates to and/or
describes a Program.
1.3 "Derivative Work" means a work (i) which is based upon one
or more pre-existing works, such as a revision, modification, translation,
abridgement, condensation, expansion or any other form in which such
pre-existing works may be recast, transformed or adapted; and (ii) which, if
prepared without authorization of the owner of the copyright in such
pre-existing work, would constitute a copyright infringement. Derivative Work
includes any compilation that incorporates such a pre-existing work.
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1.4 "HDD Business" shall have the meaning ascribed thereto in
the Merger Agreement. The parties acknowledge and agree that the "HDD Business"
does not include Quantum's solid state drive business.
1.5 "HDD Copyrights" shall mean the copyrights, registered and
unregistered, in or to artistic and literary works (including Materials,
Programs and Documentation) listed and shown in Exhibit B.
1.6 "HDD Intellectual Property Rights" shall mean HDD Patents,
HDD Copyrights, HDD Trade Secrets and HDD Trademarks.
1.7 "HDD Patents" shall mean the patents, patent applications,
registered designs, registered utility models, and applications therefor, and
inventions listed and shown in Exhibit A, including without limit any reissues,
divisionals, continuations, continuations in part, extensions, reexaminations or
foreign counterparts thereof, and any and all of the foregoing having primary
utility in the HDD Business that are conceived or reduced to practice after the
Effective Date and prior to the Separation Date by Quantum and are reflected in
an updated Exhibit A as of the Separation Date.
1.8 "HDD Products" shall mean rotating computer data storage
memory devices primarily designed to record and/or read digital information on
or from a rotating disk, including but not limited to, a magnetic or
magneto-optic disk, components or combinations thereof and processes and
apparatus for the manufacture or assembly thereof; provided that HDD Products
shall not include storage area networks and network attached storage apparatus,
and processes and apparatus for the manufacture or assembly thereof.
1.9 "HDD Trademarks" shall mean the trademarks, registered and
unregistered, servicemarks and tradenames listed and shown in Exhibit D,
provided however, that no rights to the trademark "Quantum" included in any
trademarks listed in Exhibit D are being assigned from Quantum to Insula and any
rights of Insula or Maxtor to use an HDD Trademark that includes "Quantum" shall
be subject to, and as limited by, the license granted pursuant to Section 3.7.
1.10 "HDD Trade Secrets" shall mean the materials and
documentation listed and shown in Exhibit C.
1.11 "Licensable" means, with respect to intellectual property,
that a party has the right to grant the other party a license to such
intellectual property of the scope set forth in Section 3 hereof without payment
of a fee or any other consideration to any third party (except for payments
among such party and its Subsidiaries, and payments to former employees of such
party or any of its Subsidiaries for intellectual property created by said
former employees while employed by such party or any of its Subsidiaries).
1.12 "Materials" shall mean literary works or other works of
authorship, including but not limited to, Programs and Documentation, fixed in
any tangible medium of expression.
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1.13 "Program" shall mean a plurality of instructions capable of
being executed by a machine, whether or not such instructions are in a
machine-readable form.
1.14 "Quantum Copyrights" shall mean any and all copyrights,
both registered and unregistered, in or to artistic and literary works
(including Materials, Programs and Documentation) owned or Licensable by Quantum
or any of its Subsidiaries as of the Separation Date, and which would be
infringed by anyone developing, using, manufacturing, selling, marketing,
licensing, creating Derivative Works of, reproducing, displaying, performing or
distributing HDD Products.
1.15 "Quantum Intellectual Property Rights" shall mean Quantum
Patents, Quantum Trademarks, Quantum Copyrights and Quantum Trade Secrets.
1.16 "Quantum Patents" shall mean all patents, registered
designs, registered utility models, and applications therefor, including without
limit any reissues, divisionals, continuations, continuations in part,
extensions, reexaminations or foreign counterparts thereof whether in whole or
in part, owned or Licensable by Quantum or any of its Subsidiaries as of the
Separation Date, that may be infringed (including by direct, contributory, or
inducing infringement) by anyone making, selling, using, importing, offering for
sale, leasing and/or otherwise transferring HDD Products; provided that Quantum
patents shall not include any patents, registered designs, registered utility
models, and applications therefor, including without limit any reissues,
divisionals, continuations, continuations in part, extensions, reexaminations or
foreign counterparts thereof whether in whole or in part, originating from the
business of Snap Appliances, Inc.
1.17 "Quantum Products" shall mean (i) tape drives, tape media,
cartridges and storage systems, tape libraries and solid state storage systems,
and devices, apparatus, systems and software for network attached storage and
storage area networks applications, (ii) any related product or services, (iii)
storage systems, products and devices that include merchant hard disk drives
(iv) components (other than rotating hard disk drives, per se ) or combinations
of any of the foregoing, and (v) processes and apparatus for the manufacture or
assembly of any of the foregoing. Quantum Products shall not include rotating
hard disk drives, per se, or the processes or apparatus for the manufacture or
assembly of hard disk drives.
1.18 "Quantum Trademarks" shall mean the trademark and tradename
`Quantum' in whatever form used by Quantum, now or in the past, including but
not limited to any stylized or design representation thereof. "Quantum
Trademarks" shall also include any trade dress used by Quantum, now or in the
past, in connection with the marketing and sale of HDD Products.
1.19 "Quantum Trade Secrets" shall mean all technology, ideas,
inventions, designs, proprietary information, manufacturing and operating
specifications, know-how, formulae, trade secrets, technical data, computer
programs, hardware, software and processes owned or Licensable by Quantum as of
the Separation Date and related to, or required for, the development, use,
manufacturing, sales and marketing, or licensing of HDD Products (other than
storage area networks and network attached storage apparatus, and processes and
apparatus for the manufacture or assembly thereof). Quantum Trade Secrets, may
be in tangible form, such as
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but not limited to, blue prints, manufacturing process instruction, product flow
charts, written specifications or product samples. Quantum Trade Secrets may
also be in intangible form, such as but not limited to, oral conversations or
the performance of technical training.
1.20 "Separation Date" shall have the meaning ascribed thereto
in the Merger Agreement.
1.21 "Subsidiary" or "Subsidiaries" shall mean any corporation,
limited liability company, general or limited partnership, joint venture,
business trust, unincorporated association or other business enterprise or
entity controlled by a party, directly or indirectly through one or more
intermediaries.
1.22 Any capitalized term not defined herein but defined in the
Merger Agreement shall have the meaning ascribed thereto in the Merger
Agreement.
2. Assignment and Rights. Effective as of the Separation Date:
2.1 Quantum hereby transfers, assigns and conveys to Insula any
and all of its right, title and interest in and to HDD Patents and the rights to
recover past damages for the infringement of such HDD Patents.
2.2 Reasonably promptly after the Separation Date, Quantum will
prepare and file all papers required in all patent offices worldwide to record
the transfer of assignment of HDD Patents from Quantum to Insula and Maxtor.
2.3 To the extent that any employee of Quantum following the
Merger is a named inventor on any patent application constituting an HDD Patent,
in accordance with Section 4.3 below, Quantum will use reasonable commercial
efforts to cause such employee to provide Insula or its designee with reasonable
assistance in the prosecution of such application.
2.4 Quantum hereby transfers, assigns and conveys to Insula any
and all of its right, title and interest in and to HDD Copyrights.
2.5 Quantum hereby transfers, assigns and conveys to Insula any
and all of its right, title and interest in and to HDD Trademarks and all
goodwill of the HDD Business appurtenant thereto.
2.6 Quantum hereby transfers, assigns and conveys to Insula any
and all of its right, title and interest in and to HDD Trade Secrets. With
respect to inventions embodied in such HDD Trade Secrets, Insula shall have, and
Quantum hereby grants to Insula, the exclusive right, to file or have filed on
its behalf or on behalf of its designees, and to own applications for patents
and the patents issuing thereon. In exercising its exclusive right, Insula will
consider input from Quantum relative to the protection of inventions originated
by Quantum.
2.7 Quantum hereby transfers, assigns and conveys to Insula any
and all of its right, title and interest in and to the Assigned Agreements to
the extent such transfer, assignment or conveyance will not constitute a breach
of, or be contrary to the terms of such agreement or require any payment by
Quantum to any third party.
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2.8 Quantum agrees that if, prior to the first anniversary of
the Separation Date, it decides to not maintain an issued patent or abandon the
prosecution of a patent application licensed to Insula hereunder, it shall
provide Insula timely notices thereof and, upon Insula's request, assign such
patent or patent application to Insula. Upon such assignment, such patent shall
be considered an HDD Patent and licensed to Quantum in accordance with Section
3.1.
2.9 Insula agrees that if, prior to the first anniversary of the
Separation Date, it decides to not maintain an issued patent or abandon the
prosecution of a patent application transferred to Insula hereunder, it shall
provide Quantum timely notices thereof and, upon Quantum's request, reassign
such patent or patent application to Quantum. Upon such assignment, such patent
shall be considered a Quantum Patent and licensed to Insula in accordance with
Section 3.4.
3. Licenses. Effective as of the Separation Date:
3.1 Insula hereby grants to Quantum, a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the HDD Patents to make,
use, import, offer for sale, lease, sell and otherwise transfer Quantum
Products.
3.2 Insula hereby grants to Quantum, a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the HDD Copyrights to
prepare Derivative Works of the Materials included in the HDD Copyrights, and to
reproduce, display, perform and distribute such Materials and Derivative Works
thereof as part of Quantum Products.
3.3 Insula hereby grants to Quantum, a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the HDD Trade Secrets to
develop, manufacture, use, import, sell and otherwise transfer, Quantum
Products.
3.4 Quantum hereby grants to Insula a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the Quantum Patents to make,
use, import, offer for sale, lease, sell and otherwise transfer, HDD Products
and related services.
3.5 Quantum hereby grants to Insula a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the Quantum Copyrights to
prepare Derivative Works of the Materials included in the Quantum Copyrights,
and to reproduce, display, perform and distribute such Materials and Derivative
Works thereof as part of HDD Products.
3.6 Quantum hereby grants to Insula a non-exclusive, worldwide,
irrevocable, paid-up and royalty free license under the Quantum Trade Secrets to
develop, manufacture, use, import, sell and otherwise transfer, HDD Products and
related services.
3.7 Quantum hereby grants to Insula a non-exclusive, worldwide,
paid-up and royalty free license to use the Quantum Trademarks (i) for a period
of one (1) year after the Separation Date in connection with the marketing,
sale, maintenance or support of HDD Products that have been designed or
developed by Quantum prior to the Separation Date, (ii) in connection with the
transition of the materials associated with the `Xxxxxxx.xxx' website to the
`Xxxxxx.xxx' website for a period of one hundred twenty (120) days after the
Separation Date,
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(iii) on stationery and other written materials in existence on the Separation
Date until depletion thereof, (iv) on written materials in whatever medium
containing historical or factual information about Quantum and the HDD Business,
and (v) for a period of sixty (60) days after the Separation Date in connection
with miscellaneous trade usages in jurisdictions where Quantum Subsidiary name
changes cannot be made as of the Separation Date.
3.7.1 Insula shall use the Quantum Trademarks only in a manner
in which they were used by Quantum prior to the Separation Date in
accordance with the following guidelines: (i) the Quantum logo style
should be maintained as it was in usage by Quantum as of the Separation
Date, (ii) the Quantum brand should not be changed in style or
appearance on any existing Quantum hard disk drives. Additionally,
Insula shall only use the Quantum Trademarks on goods that are of the
same type and at least of the same quality as the goods with which
Quantum used the Quantum Trademarks. All goodwill arising from the use
by Insula of the Quantum Trademarks shall inure to the sole benefit of
Quantum.
3.8 The licenses granted to Quantum and Insula in this Section 3
shall be transferable and sublicensable, in whole or in part, to any entity
including without limitation, to Maxtor and Subsidiaries of Maxtor or to any
successor to any part of the business of Maxtor or any of its Subsidiaries, and
Subsidiaries of Quantum or to any successor to any part of the business of
Quantum or any of its Subsidiaries.
4. Nonassertion.
4.1 For a period of ten (10) years from the Separation Date,
Insula agrees that with respect to any patents owned or Licensable by Insula or
its affiliates (including Maxtor or the successor entity to Insula), neither
Insula nor its affiliates will assert against Quantum or any of its Subsidiaries
or any successor to a business of Quantum or its Subsidiaries, any claims of
infringement based on the manufacture, importation, use or sale of any Quantum
Products by Quantum, its Subsidiaries, or any successor to a business of Quantum
or its Subsidiaries, or any of their respective distributors, customers or end
users; provided however, except with respect to HDD Patents, such non-assertion
covenant shall not apply to any claims of infringement based on the manufacture,
importation, use or sale of any network attached storage products or storage
area network products by Quantum, its Subsidiaries, or any successor to a
business of Quantum or its Subsidiaries or any of their respective distributors,
customers or end users.
4.2 For a period of ten (10) years from the Separation Date,
Quantum agrees that with respect to any patents owned or Licensable by Quantum
or its affiliates, neither Quantum nor its affiliates will assert against Maxtor
or any of its Subsidiaries or any successor to a business of Maxtor or its
Subsidiaries, any claims of infringement based on the manufacture, importation,
use or sale of any Insula (including Maxtor or the successor entity to Insula)
HDD Products by Maxtor, its Subsidiaries or any successor to a business of
Maxtor or its Subsidiaries, or any of their respective distributors, customers
or end users.
5. Assignment. Except as provided in Section 3.8, neither party may
assign its rights under this Agreement without the prior written approval of the
other party, except that either party may assign this Agreement, in whole or in
part, without consent in connection with a
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merger or acquisition of or by such party, or in connection with the transfer of
a business, whether such transfer is structured as a transfer of assets or of
stock. Subject to the preceding sentence, this Agreement shall be binding upon
and shall inure to the benefit of the parties hereto and their respective
successors and permitted assigns.
6. Confidentiality Obligation. The parties acknowledge that in
connection with the transactions contemplated herein, each party will have
access to certain trade secrets and confidential information of the other party.
As used herein, "Insula Confidential Information" shall mean confidential
information embodied in the HDD Trade Secrets including confidential software
code, algorithms, structure, sequence and organization of any materials
contained therein. "Quantum Confidential Information" shall mean confidential
information embodied in the Quantum Trade Secrets including confidential
software code, algorithms, structure, sequence and organization of any materials
contained therein. Each party will use reasonable efforts to maintain in
confidence and to not disclose or use the other party's Confidential
Information, whether or not it is in written form, except pursuant to rights and
licenses granted in this Agreement or except as may be authorized by the other
party. Each party will immediately give notice to the other party of any
unauthorized use or disclosure of the other party's Confidential Information
that such party becomes aware of. Each party agrees to provide reasonable
assistance to the other party in remedying any such unauthorized use or
disclosure. This obligation shall not apply to information to the extent a party
can demonstrate that such information:
(a) at the time of disclosure is part of the public
domain, without breach of this Agreement;
(b) became part of the public domain, by publication or
otherwise, except by breach of the provisions of this Agreement;
(c) was independently developed by such party without
reference to the other party's Confidential Information; or
(d) is received from a third party without similar
restrictions and without breach of this Agreement.
The rights and obligations of this Section 6 shall prevail over
any other agreement with respect to the disclosure and use of HDD Trade Secrets
and Quantum Trade Secrets.
7. Further Assurances and Delivery. Each party hereto agrees to
cooperate fully with the other party and to execute and deliver such further
instruments, documents and agreements, and to give such further written
assurances, as may be reasonably requested by the other party or any other party
to better evidence and reflect the transactions described herein and
contemplated hereby and to carry into effect the intent and purposes of this
Agreement. Reasonably promptly after the Separation Date, Quantum shall use
reasonable efforts to deliver, to the extent practical, documents and other
tangible embodiments of the HDD Intellectual Property Rights and Assigned
Agreements, and copies of tangible embodiments of the Quantum Intellectual
Property Rights in the form which such embodiments are currently held by Quantum
in the ordinary course of its business as of the Separation Date. Quantum shall
provide such
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other information concerning the Assigned Agreements, HDD Intellectual Property
Rights and Quantum Intellectual Property Rights as may be in Quantum's
possession that Insula shall reasonably request.
8. General Provisions.
8.1 Counterparts. This Agreement may be executed simultaneously
in two or more counterparts, each of which will be considered an original, but
all of which together will constitute one and the same instrument.
8.2 Amendments. This Agreement may be amended or supplemented
only by a writing that is signed by duly authorized representatives of both
parties.
8.3 Notices. All notices permitted or required under this
Agreement shall be in writing and shall be delivered as follows with notice
deemed given as indicated: (i) by personal delivery when delivered personally,
(ii) by overnight courier upon written verification of receipt, (iii) by
telecopy or facsimile transmission when confirmed by telecopier or facsimile
transmission, or (iv) by certified or registered mail, return receipt requested,
five (5) days after deposit in the mail. All notices must be sent to the
addresses first described above or to such other address that the receiving
party may have provided for the purpose of notice in accordance with this
Paragraph 8.3.
8.4 Choice of Law. This Agreement will be governed by and
construed in accordance with the laws of the United States and the State of
California as applied to agreements entered into and to be performed entirely
within California between California residents.
8.5 Choice of Forum. The parties hereby submit to the
nonexclusive jurisdiction of, and waive any venue objections against, the United
States District Court for the Northern District of California, San Xxxx Xxxxxx
and the Superior and Municipal Courts of the State of California, Santa Xxxxx
County, in any litigation arising out of the Agreement.
8.6 Waiver. No term or provision hereof will be considered
waived by either party, and no breach excused by either party, unless such
waiver or consent is in writing signed on behalf of the party against whom the
waiver is asserted. No consent by either party to, or waiver of, a breach by
either party, whether express or implied, will constitute a consent to, waiver
of, or excuse of any other different or subsequent breach by either party.
8.7 Severability. In the event that any provision of this
Agreement shall be unenforceable or invalid under any applicable law or be so
held by applicable court decision, such unenforceability or invalidity shall not
render this Agreement unenforceable or invalid as a whole.
8.8 Entire Agreement. This Agreement is entered into in
connection with the Merger Agreement; provided, however, that this Agreement
shall prevail over the Merger Agreement with respect to the subject matter
hereof. Subject to the foregoing, this Agreement, including all Exhibits to this
Agreement, collectively constitute the entire agreement between the
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parties relating to this subject matter and supersedes all prior or simultaneous
representations, discussions and agreements, whether written or oral.
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IN WITNESS WHEREOF, the parties have affixed their signatures to this
Agreement.
INSULA: QUANTUM:
By: /s/ XXXXX XXXX By: /s/ XXXXXXX X. XXXXXXX
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Title: Secretary Title: CFO
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Date: 4/2/01 Date: 4/2/01
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