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***CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED FOR PORTIONS OF THIS DOCUMENT
EXHIBIT 10.21
TECHNOLOGY CROSS-LICENSE AGREEMENT
(as amended)
This Technology Cross-License Agreement (the "Agreement") is made
effective as of November 25, 1998 (the "Effective Date"), by and between
Adaptec, Inc., having a place of business at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Adaptec"), and Chaparral Technologies, Inc., having
a place of business at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
("Chaparral").
RECITALS
A. Adaptec and Chaparral are entering into that certain Asset Transfer
Agreement of even date herewith (the "Asset Transfer Agreement").
B. In accordance with the Asset Transfer Agreement, Adaptec and Chaparral
desire that Adaptec license to Chaparral certain technology related to Adaptec's
ESS Business (as defined in the Asset Transfer Agreement).
NOW, THEREFORE, Adaptec and Chaparral agree as follows:
1. DEFINITIONS.
1.1 "Adaptec Bridge Products" means the Adaptec controller board
products identified in Exhibit A hereto.
1.2 "Adaptec Bridge Product Designs" means, for each Adaptec
Bridge Product identified in Exhibit A, the highest-level design that defines
the product's overall configuration, layout and interconnection of specified
components.
1.3 "[***] Adaptec Bridge Products" means: (i) the Adaptec Bridge
Products identified in Exhibit A hereto; (ii) [***] Adaptec Bridge Products;
(iii) any Adaptec Bridge Product or [***] Adaptec Bridge Product that includes
the Adaptec [***] Chip; (iv) any Adaptec Bridge Product or [***] Adaptec Bridge
Product that includes an Interface Replacement; or (v) any Adaptec Bridge
Product or [***] Adaptec Bridge Product that includes both the Adaptec [***]
Chip and an Interface Replacement.
1.4 "[***] Adaptec Bridge Products" means modified versions of the
Adaptec Bridge Products developed by Chaparral; provided that such modified
versions will be limited to versions that have [***] as compared with the
feature sets for such products listed in Adaptec's technical specifications
contained in corresponding marketing requirement documents delivered by Adaptec
to Chaparral as of the Effective Date.
1.5 "Adaptec [***] Chip" means Adaptec's [***] chip product
identified by the Adaptec product code [***] (Adaptec part number [***]),
specifically excluding any future versions, upgrades or releases of or to such
product.
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1.6 "Interface Replacement" means a back-end board-to-target
interface (specifically excluding a SCSI-to-Ethenet-based board-to-target
interface, unless approved in advance in writing by Adaptec) or a board-to-host
interface developed by Chaparral to replace an existing interface of an Adaptec
Bridge Product or a [***] Adaptec Bridge Product.
1.7 "Adaptec Exclusive Bridge Products Software" means the Adaptec
products identified in Exhibit B hereto.
1.8 "Adaptec Co-Exclusive Bridge Products Software" means the
Adaptec products identified in Exhibit C hereto.
1.9 "Adaptec Non-Exclusive Bridge Products Software" means the
Adaptec products identified in Exhibit D hereto.
1.10 "Adaptec Bridge Products Software" means the Adaptec Exclusive
Bridge Products Software, Adaptec Co-Exclusive Bridge Products Software and
Adaptec Non-Exclusive Bridge Products Software.
1.11 "Adaptec Bridge Products Documentation" means the Adaptec
documentation identified in Exhibit E hereto.
1.12 "Adaptec Hardware-Related Technology" means the Adaptec
technology identified in Exhibit F hereto.
1.13 "Adaptec RAID Code" means the Adaptec software identified in
Exhibit G hereto.
1.14 "Adaptec Technology" means the Adaptec Bridge Products,
Adaptec Bridge Product Designs, Adaptec Bridge Products Software, Adaptec Bridge
Products Documentation, Adaptec Hardware-Related Technology, and Adaptec RAID
Code.
1.15 "Intellectual Property Rights" means patent rights (including
patent applications and disclosures), rights of priority, mask work rights,
industrial design rights, copyrights, trade secrets, know-how and any other
intellectual property rights recognized in any country or jurisdiction in the
world.
1.16 "Binary Code Distributable" means the right, as set forth in
Section 2.2(a)(iii)(B), to distribute and sublicense the applicable software in
binary code form, as indicated with respect to the Adaptec Exclusive Bridge
Products Software, Adaptec Co-Exclusive Bridge Products Software and/or Adaptec
Non-Exclusive Bridge Products Software.
1.17 "Limited Source Code Distributable" means the right, as set
forth in Section 2.2(a)(iii)(C), to distribute and sublicense the applicable
software in source code form, as
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indicated with respect to the Adaptec Exclusive Bridge Products Software,
Adaptec Co-Exclusive Bridge Products Software and/or Adaptec Non-Exclusive
Bridge Products Software.
1.18 "Source Code Distributable" means the right, as set forth in
Section 2.2(a)(iii)(A), to distribute and sublicense the applicable software in
source code form, as indicated with respect to the Adaptec Exclusive Bridge
Products Software, Adaptec Co-Exclusive Bridge Products Software and/or Adaptec
Non-Exclusive Bridge Products Software.
1.19 "Chaparral Licensed Software" means the Chaparral product
identified in Exhibit H hereto.
2. ADAPTEC BRIDGE PRODUCTS LICENSES.
2.1 Exclusive Design License. Subject to the terms and conditions
of this Agreement, Adaptec grants Chaparral an irrevocable and perpetual,
exclusive, worldwide, royalty-free license under all of Adaptec's Intellectual
Property Rights in the Adaptec Bridge Product Designs to use, modify and create
derivative works based upon, the Adaptec Bridge Product Designs, for the
purposes of manufacturing, distributing and selling Adaptec Bridge Products and
derivatives thereof. Chaparral expressly acknowledges and agrees that such
exclusivity does not extend to, and Adaptec expressly reserves and retains all
Intellectual Property Rights in and to, all components of the Adaptec Bridge
Product Designs, including without limitation in any and all software, firmware,
hardware, and integrated circuit components thereof. Notwithstanding the
preceding sentence, Adaptec agrees that it will not manufacture, license, sell
or distribute any product that is: (i) identical to an Adaptec Bridge Product;
or (ii) developed by Adaptec by making minor modifications, changes or
enhancements to an Adaptec Bridge Product Design used as a base design.
2.2 Adaptec Bridge Products Software Licenses.
(a) General. Subject to the terms and conditions of this
Agreement, Adaptec hereby grants to Chaparral an irrevocable and perpetual,
worldwide, royalty-free license under all of Adaptec's Intellectual Property
Rights in the Adaptec Bridge Products Software:
(i) to use, copy, modify, and create derivative works
based upon, the Adaptec Bridge Products Software, in source and binary code
forms;
(ii) to distribute the Adaptec Bridge Products Software in
binary code form in connection with the distribution and sale of products that
Chaparral manufactures (or has manufactured) that incorporate such software; and
(iii) (A) as to Adaptec Bridge Products Software that is
Source Code Distributable, to sublicense third parties the right to use, copy,
modify, and create derivative works based upon, such Adaptec Bridge Products
Software, in source code form; and
(B) as to Adaptec Bridge Products Software that is
Binary Code Distributable, to sublicense third parties the right to distribute
such Adaptec Bridge Products
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Software in binary code form in connection with the distribution and sale of
products that such third parties manufacture (or have manufactured) that
incorporate such software; and
(C) as to Adaptec Bridge Products Software that is Limited Source Code
Distributable, [***].
(b) Exclusive Rights. The rights granted to Chaparral under
subsection (a) above will be exclusive as to the Adaptec Exclusive Bridge
Products Software.
(c) Co-Exclusive Rights. The rights granted to Chaparral under
subsection (a) above will be exclusive as to the Adaptec Co-Exclusive Bridge
Products Software, except as to Adaptec, which retains the complete and
unrestricted rights:
(i) to use, copy, modify, and create derivative works
based upon, the Adaptec Co-Exclusive Bridge Products Software, in source code
and binary code forms;
(ii) to distribute (directly and indirectly) the Adaptec
Co-Exclusive Bridge Products Software (and modifications thereto and derivatives
works based upon), in binary code form, in connection with the distribution and
sale of products that Adaptec manufactures (or has manufactured); and
(iii) to sublicense the rights described in the foregoing
clauses (i) and (ii) to Adaptec customers in connection with such customers'
use, distribution and sale of products that Adaptec manufactures (or has
manufactured).
(d) Non-Exclusive Rights. The rights granted to Chaparral
under subsection (a) above will be non-exclusive as to the Adaptec Non-Exclusive
Bridge Products Software.
(e) No Support . Adaptec will have no obligation to provide
Chaparral with any error corrections, modifications, enhancements or support of
any kind for any of the Adaptec Bridge Products Software.
2.3 Adaptec Bridge Products Documentation License. Subject to the
terms and conditions of this Agreement, Adaptec hereby grants to Chaparral an
irrevocable and perpetual, exclusive, worldwide, royalty-free license under all
of Adaptec's Intellectual Property Rights in the Adaptec Bridge Products
Documentation to use, copy, modify (and have modified), create derivative works
based upon, and distribute such documentation solely in connection with the
design, development, manufacture, distribution and sale of Adaptec Bridge
Products and derivatives thereof. Adaptec will have no obligation to provide
Chaparral with any error corrections, modifications, enhancements or support of
any kind for any of the Adaptec Bridge Products Documentation.
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2.4 Adaptec Hardware-Related Technology License. Subject to the
terms and conditions of this Agreement, Adaptec hereby grants to Chaparral an
irrevocable and perpetual, non-exclusive, worldwide, royalty-free license under
all of Adaptec's Intellectual Property Rights in the Adaptec Hardware-Related
Technology to use such technology for Chaparral's internal use, solely in
connection with the design, development, manufacture, distribution and sale of
Adaptec Bridge Products and derivatives thereof. For purposes of clarification,
"internal use" will be deemed to include use by third parties on Chaparral's
behalf, provided that each such third party is bound by a written agreement that
expressly protects Adaptec's Confidential Information and Intellectual Property
Rights in the Adaptec Hardware-Related Technology to at least the same extent as
the terms and condition of this Agreement. Adaptec will have no obligation to
provide Chaparral with any error corrections, modifications, enhancements or
support of any kind for any of the Adaptec Hardware-Related Technology.
3. ADAPTEC RAID-CODE LICENSE.
3.1 Adaptec RAID Code License Grant. Subject to the terms and
conditions of this Agreement, Adaptec grants to Chaparral a nonexclusive,
nontransferable, perpetual, worldwide, royalty-bearing license: (i) to use, copy
and modify (subject to Section 3.2(a) below) the Adaptec RAID Code in source and
binary code forms solely for the purposes of designing, developing and
manufacturing [***] Adaptec Bridge Products; and (ii) to distribute (subject to
Section 3.2(c) below) the Adaptec RAID Code solely in binary code form in
connection with the distribution and sale of [***] Adaptec Bridge Products. At
such time as [***] currently known as "[***]" is more precisely defined by
Chaparral, Adaptec and Chaparral will negotiate in good faith an extension of
the license rights granted in this Section 3.1 to such product. Chaparral's
rights in the Adaptec RAID Code will be limited to those expressly granted in
this Section 3.1. Adaptec reserves all rights and licenses in and to the Adaptec
RAID Code not expressly granted to Chaparral under this Agreement.
3.2 Adaptec RAID Code License Limitations.
(a) [***] Modifications. Chaparral expressly acknowledges and agrees
that Chaparral's right to modify the Adaptec RAID Code, as set forth in Section
3.1, will be [***] the purposes of correcting coding errors and developing
"Performance Enhancements," which means enhancements that optimize the
performance or efficiency of the Adaptec RAID Code [***].
(b) [***]. Chaparral expressly acknowledges and agrees that the license
rights granted to Chaparral under Section 3.1 [***] any and all use of the
Adaptec RAID Code, in whole or in part, or any functionality or module contained
therein, [***].
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(c) [***]. RAID technology defines a number of distinct "RAID
Levels," each of which corresponds to a strategy for mapping data across a disk
array and which has its own set of performance and redundancy characteristics.
The Adaptec RAID Code embodies certain proprietary [***], which enables the
[***]. Such [***] may be used: (i) [***]; or (ii) [***] in order to [***] (the
functionality described in the foregoing clause (ii) is referred to as [***].)
Chaparral expressly acknowledges and agrees that the license rights granted to
Chaparral under section 3.1 [***].
3.3 No Support. Adaptec will have no obligation to provide
Chaparral with any error corrections, modifications or enhancements for the
Adaptec RAID Code. In addition, Adaptec will have no obligation to provide
Chaparral with support of any kind for the Adaptec RAID Code.
3.4 Grantback. Chaparral will promptly deliver to Adaptec any and
all error corrections and Performance Enhancements to the Adaptec RAID Code (as
identified in Exhibit G) developed by Chaparral (collectively "Chaparral RAID
Code Developments"). Chaparral will deliver all Chaparral RAID Code Developments
in source and binary code forms in a form and format mutually agreed by the
parties. Chaparral hereby grants to Adaptec an irrevocable, worldwide,
fully-paid and royalty-free, nonexclusive license, with rights to sublicense, to
use, copy, modify (and have modified), create (and have created) derivative
works based upon, distribute (directly and indirectly), and sublicense the
Chaparral RAID Code Developments and derivatives thereof. Chaparral will have no
obligation to provide Adaptec with support of any kind for the Chaparral RAID
Code Developments.
3.5 Adaptec Compliance Inspection. For a period of three (3) years
commencing on the Effective Date, Adaptec will have the right, upon reasonable
notice and during normal business hours, to appoint an independent third party
selected by Adaptec, reasonably acceptable to Chaparral, to inspect all source
code of the Adaptec RAID Code, as used by Chaparral in connection with the
distribution of Adaptec Bridge Products, solely for the purpose of verifying
that Chaparral is in strict compliance with the limitations specified in Section
3.2 (a "Compliance Inspection"). If, upon completing such a Compliance
Inspection, it is determined that Chaparral in not in strict compliance with
such limitations, then Chaparral will immediately take all actions necessary to
remedy such non-compliance and, upon completion of such actions, Chaparral will
famish Adaptec with a officer's written certification, certifying to Chaparral's
compliance. In such event, Chaparral will also reimburse Adaptec for all
reasonable expenses and costs incurred by Adaptec in connection with conducting
such Compliance Inspection.
3.6 Adaptec RAID Code Royalties.
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(a) Royalty Payment. For each unit of a RAID Code Limited
Adaptec Bridge Product distributed by Chaparral which incorporates or otherwise
uses the Adaptec RAID Code (a "Royalty-Bearing Adaptec Bridge Product"),
Chaparral will pay Adaptec the nonrefundable royalties specified below:
(i) For each unit of a Royalty-Bearing Adaptec Bridge
Product manufactured by Adaptec, the royalty payable by Chaparral will be
calculated as [***] of the Net Sales Price of such product to Chaparral, where
"Net Sales Price" means Adaptec's gross sales price, excluding any itemized
taxes, insurance, shipping and like charges included in such gross sales price.
(ii) For each unit of a Royalty-Bearing Adaptec Bridge
Product manufactured by a party other than Adaptec, the royalty payable by
Chaparral will be [***].
(b) Payment Terms. Within fifteen (15) days after the close of
each calendar quarter, Chaparral will deliver to Adaptec a written report
showing all information reasonably necessary for Adaptec to compute the amount
of royalties payable by Chaparral for the applicable calendar quarter. Chaparral
will pay any royalties due at the time such report is provided to Adaptec. All
payments made under this Agreement after their due date will incur interest at a
rate equal to one and one-half percent (1.5%) per month or the highest rate
permitted by applicable law, whichever is lower. Chaparral will pay to Adaptec
all amounts payable under this Agreement by check or, at Adaptec's option, by
bank-to-bank wire transfer to an account designated by Adaptec.
(c) Taxes. All amounts payable by Chaparral under this Section
are exclusive of all sales, use, and other taxes and duties. Chaparral will be
responsible for all such taxes and duties and will indemnify and hold Adaptec
harmless from and against any obligation liability or claim imposed on Adaptec
by any taxing authority to pay any such taxes and duties.
(d) Chaparral's Records and Audit. Chaparral will maintain
complete and accurate records regarding the distribution of Royalty-Bearing
Adaptec Bridge Products for a period of two (2) years after the distribution of
any such products. Adaptec will have the right, upon reasonable notice and
during normal business hours, to appoint an Adaptec representative, mutually
agreed to by both parties, to audit such records. If, upon performing such
audit, it is determined that Chaparral has underpaid Adaptec by an amount
greater than five percent (5%) of the payments due Adaptec under subsection (a)
in the period being audited, Chaparral will immediately reimburse Adaptec for
all reasonable expenses and costs incurred by Adaptec in connection with such
audit in addition to its obligation to make full payment under subsection (a).
4. CHAPARRAL LICENSED SOFTWARE LICENSE. Promptly following the
Effective Date, Chaparral will deliver to Adaptec the then-current version of
the Chaparral Licensed Software, in source and binary code forms. Chaparral
hereby grants to Adaptec an irrevocable, worldwide, fully-paid and royalty-free,
nonexclusive license, with rights to sublicense, to use, copy, modify (and have
modified), create (and have created) derivative works based upon, distribute
(directly and indirectly), and sublicense the Chaparral Licensed Software and
derivatives thereof.
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5. OWNERSHIP.
5.1 Adaptec Ownership Rights. Adaptec presently owns and will
continue to own all worldwide right, title and interest in and to the Adaptec
Technology and all worldwide Intellectual Property Rights therein, whether the
Adaptec Technology is separate or combined with any hardware, software,
firmware, integrated circuits or devices of any kind.
5.2 Protection of Adaptec Ownership. Chaparral will use its
reasonable efforts to protect Adaptec's Intellectual Property Rights in the
Adaptec Technology and will promptly report to Adaptec any infringement or
misappropriation of such rights of which Chaparral becomes aware. Adaptec
reserves the sole and exclusive right at its discretion to assert claims against
third parties for infringement or misappropriation of its Intellectual Property
Rights in the Adaptec Technology. Chaparral expressly acknowledges and affirms
Adaptec's ownership as set forth in Section 5.1 above. Accordingly, Chaparral
will not at any time, directly or indirectly, dispute the validity of, or
cooperate in any suit or proceeding which challenges, Adaptec's Intellectual
Property Rights in the Adaptec Technology.
5.3 Trademarks. Nothing in this Agreement will be deemed to grant
Chaparral any rights in, or permit Chaparral to use, Adaptec's name, logo or
trademarks.
5.4 Chaparral Ownership Rights. Chaparral presently owns and will
continue to own all worldwide right, title and interest in and to the Chaparral
Licensed Software and all worldwide Intellectual Property Rights therein,
whether the Chaparral Licensed Software is separate or combined with any
hardware, software, firmware, integrated circuits or devices of any kind.
5.5 Protection of Chaparral Ownership. Adaptec will use its
reasonable efforts to protect Chaparral's Intellectual Property Rights in the
Chaparral Licensed Software and will promptly report to Chaparral any
infringement or misappropriation of such rights of which Adaptec becomes aware.
Chaparral reserves the sole and exclusive right at its discretion to assert
claims against third parties for infringement or misappropriation of its
Intellectual Property Rights in the Chaparral Licensed Software. Adaptec
expressly acknowledges and affirms Chaparral's ownership as set forth in Section
5.4 above. Accordingly, Adaptec will not at any time, directly or indirectly,
dispute the validity of, or cooperate in any suit or proceeding which
challenges, Chaparral's Intellectual Property Rights in the Chaparral Licensed
Software.
6. WARRANTIES.
6.1 General Warranties. Each party warrants that: (i) it has the
corporate power and authority to execute and deliver this Agreement and to
perform its obligations hereunder; (ii) the execution, delivery and performance
of this Agreement has been duly and validly authorized by such party; and (iii)
upon execution and delivery, this Agreement will constitute a valid and binding
agreement of such party, enforceable against it in accordance with these terms.
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6.2 Adaptec Technology Warranties. Adaptec warrants that, except
as expressly set forth in Adaptec's Disclosure Letter (as defined in the Asset
Transfer Agreement), to Adaptec's knowledge, the Adaptec Technology has not
infringed or violated and currently does not infringe or violate upon, or
misappropriate any copyright, mask work or trade secret, or any patent or other
intellectual property rights (other than trademarks) of any third party, and no
third party has asserted or threatened to assert against Adaptec any claim of
infringement or misappropriation of any such rights.
6.3 Chaparral Licensed Software Warranties. Chaparral warrants
that it has no knowledge of any facts which might lead to a claim that the
Chaparral Licensed Software infringes the Intellectual Property Rights of any
third party. The Chaparral Licensed Software is provided "AS IS," without
warranty of any kind.
6.4 Warranty Disclaimers. EXCEPT AS EXPRESSLY SET FORTH IN
SECTIONS 6.2 AND 6.3, EACH PARTY HEREBY DISCLAIMS ALL WARRANTIES OF ANY KIND,
EXPRESS AND IMPLIED, WITH RESPECT TO THE ADAPTEC TECHNOLOGY AND CHAPARRAL
LICENSED SOFTWARE, AS APPLICABLE, INCLUDING WITHOUT LIMITATION THE IMPLIED
WARRANTIES OF FITNESS FOR A PARTICULAR PURPOSE, MERCHANTABILITY AND
NONINFRINGEMENT.
7. INDEMNITIES. Each party (an "Indemnifying Party") agrees to indemnify,
defend and hold the other party (the "Indemnified Party") harmless from and
against all damages, liabilities, costs, charges and expenses, including
reasonable attorneys' fees, incurred by or paid in settlement by the Indemnified
Party, resulting from any third party claim based on a breach by the
Indemnifying Party of any of its warranties set forth in Section 6; provided
that: (i) the Indemnified Party furnishes the Indemnifying Party with prompt
written notice of any such claim; (ii) the Indemnified Party provides the
Indemnifying Party with sole control of the defense and settlement of any such
claim; and (iii) the Indemnified Party provides the Indemnifying Party, at the
Indemnifying Party's expense, with all information and assistance reasonably
necessary for the defense and settlement of any such claim. The Indemnifying
Party will not settle any such claim without first obtaining the Indemnified
Party's prior written consent, which consent will not be unreasonably withheld,
if the terms of such settlement would adversely affect the Indemnified Party's
rights under this Agreement.
8. CONFIDENTIALITY.
8.1 Definition of Confidential Information. "Confidential
Information" means: (i) the Adaptec Technology, including without limitation any
software, firmware, designs, inventions, processes, know-how or other
information related thereto; (ii) the Chaparral Licensed Software; (iii) any
other non-public technical or business information disclosed by a party to the
other party under this Agreement; and (iv) the terms and conditions of this
Agreement.
8.2 Exclusions. Confidential Information does not include any
information that: (i) is in or becomes part of the public domain through no
fault or breach of this Agreement by the receiving party; (ii) was rightfully in
the possession of the receiving party without an obligation of
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confidentiality prior to its disclosure hereunder; (iii) is independently
developed by the receiving party without use of or reference to any of the
disclosing party's Confidential Information; or (iv) the receiving party
rightfully obtains from a third party without restriction on use or disclosure.
8.3 Obligations. The receiving party will not use any of the
disclosing party's Confidential Information except as expressly permitted under
this Agreement. The receiving party will maintain all of the disclosing party's
Confidential Information in strict confidence and not disclose any such
Confidential Information to any third parties except to employees and
consultants with a bona fide need to know for the receiving party's performance
of this Agreement, provided that each such employee and consultant is subject to
written nondisclosure and limited use restrictions at least as protective as
those set forth herein. The receiving party will use its best efforts to prevent
inadvertent disclosure, publication or dissemination of any of the disclosing
party's Confidential Information and will promptly notify the disclosing party
in writing of any actual or suspected unauthorized use or disclosure of any such
Confidential Information. Nothing in this Section will prevent Chaparral from
disclosing the terms of this Agreement or the transactions contemplated hereby
to any potential investor in Chaparral, provided each such potential investor
executes a customary non-disclosure agreement.
9. LIMITATION OF LIABILITY. IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE
OTHER PARTY OR TO ANY THIRD PARTY FOR ANY INDIRECT, INCIDENTAL, EXEMPLARY,
SPECIAL OR CONSEQUENTIAL DAMAGES, INCLUDING WITHOUT LIMITATION, LOSS OF USE,
LOSS OF PROFITS, OR LOSS OF DATA, ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT OR THE USE OR PERFORMANCE OF THE ADAPTEC TECHNOLOGY OR THE CHAPARRAL
LICENSED SOFTWARE, WHETHER SUCH LIABILITY ARISES FROM ANY CLAIM BASED UPON
CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE), PRODUCT LIABILITY OR OTHERWISE,
EVEN IF A PARTY HAS BEEN ADVISED IN ADVANCE OF THE POSSIBILITY OF SUCH DAMAGES.
IN NO EVENT WILL ADAPTEC'S TOTAL LIABILITY TO CHAPARRAL OR ANY THIRD PARTY, FROM
ALL CAUSES OF ACTION AND THEORIES OF LIABILITY, EXCEED THE ACTUAL AMOUNTS PAID
BY CHAPARRAL TO ADAPTEC UNDER THIS AGREEMENT.
10. TERM. This Agreement will commence as of the Effective Date and will
remain force and effect thereafter.
11. GENERAL PROVISIONS.
11.1 Governing Law. This Agreement will be governed by and
construed in accordance with the laws of the State of California, excluding its
conflict of laws rules and principles.
11.2 Assignment. Chaparral may not assign this Agreement, in whole
or in part, and any attempt to assign this Agreement without such consent will
be null and void. The foregoing will not be deemed to prohibit Chaparral from
assigning this Agreement in the event of a merger or acquisition of
substantially all of Chaparral's related assets, [***]
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Subject to the foregoing, this Agreement will bind and inure to the benefit of
each party's permitted successors and assigns.
11.3 Waiver. The failure by either party to enforce any provision
of this Agreement will not constitute a waiver of future enforcement of that or
any other provision. Neither party will be deemed to have waived any rights or
remedies hereunder unless such waiver is in writing and signed by a duly
authorized representative of the party against which such waiver is asserted.
11.4 Force Majeure. Neither party will be responsible for any
failure or delay in its performance due to causes beyond its reasonable control,
including, but not limited to, acts of God, war, riot, embargoes, acts of civil
or military authorities, fire, floods, earthquakes, accidents, strikes, or fuel
crises, provided that such party gives prompt written notice thereof to the
other party and uses its diligent efforts to resume performance.
11.5 Severability. If a court of competent jurisdiction finds any
provision of this Agreement invalid or unenforceable, that provision of the
Agreement will be amended to achieve as nearly as possible the intent of the
parties, and the remainder of this Agreement will remain in full force and
effect.
11.6 Entire Agreement. This Agreement, including all Exhibits
hereto, constitute the entire agreement between the parties relating to its
subject matter and supersedes all prior or contemporaneous representations,
discussions, negotiations, and agreements, whether written or oral, relating to
its subject matter.
11.7 Amendment; Modification. This Agreement may be amended or
modified only by a writing that is signed by duly authorized representatives of
both parties.
11.8 Notices. All notices, approvals, consents and other
communications required or permitted under this Agreement will be in writing and
delivered by confirmed facsimile transmission, by courier or overnight delivery
service with written verification of receipt, or by registered or certified
mail, return receipt requested, postage prepaid, and in each instance will be
deemed given upon receipt. All such notices, approvals, consents and other
communications will be sent to the addresses set forth above or to such other
address as may be specified by either party to the other in accordance with this
Section.
11.9 Relationship of Parties. The parties to this Agreement are
independent contractors. There is no relationship of agency, partnership, joint
venture, employment or franchise between the parties. Neither party nor its
employees has the authority to bind or commit the other party in any way or to
incur any obligation on its behalf.
11.10 Compliance with Law. Each party will comply with all laws and
regulations applicable to the performance of its obligations under this
Agreement. Each party acknowledges that the other party's technology licensed
hereunder, including any technical data related thereto, is subject to export
controls imposed by the U.S. Export Administration Act of 1979, as amended (the
"Act"), and the regulations promulgated thereunder. Each party will not export
or re-export (directly
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or indirectly) any of the other party's technology licensed hereunder, or other
technical data related thereto, without complying with the Act and the
regulations thereunder.
11.11 Counterparts. This Agreement may be executed in counterparts,
each of which will be deemed an original, but all of which together will
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed this Agreement by their duly
authorized officers or representatives and delivered as of the Effective Date.
AGREED:
ADAPTEC, INC.
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
---------------------------------------------
Printed Name: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
-----------------------------------
Title: Chairman of the Board
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CHAPARRAL TECHNOLOGIES, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇
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Printed Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
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Title: President and Chief Operating Officer
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-12-
13
EXHIBIT A
Adaptec Bridge Products
1. AEC-5312 (Skyway) SCSI-SCSI controller board
2. AEC-7313 (Golden Gate) FC-SCSI controller board
3. AEC-5412 (Rainrock) SCSI-SCSI controller canister
4. AEC-7413 (Cororock) FC-SCSI controller canister
5. AEC-5314 (Queens) SCSI-SCSI controller board
6. AEC-7315 (Bay) FC-SCSI controller board
7. AEC-7325 (Bay) FC-SCSI controller board
14
EXHIBIT B
Adaptec Exclusive Bridge Products Software
Software Directory Distribution Rights
-------- --------- -------------------
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***]
15
EXHIBIT C
Adaptec Co-Exclusive Bridge Products Software
Software Directory Distribution Rights
-------- --------- -------------------
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
[***] [***] Source, Binary
16
EXHIBIT D
Adaptec Non-Exclusive Bridge Products Software
Software Directory Distribution Rights*
-------- --------- --------------------
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
[***] [***] Lim. Source, Binary
17
EXHIBIT E
Adapted Bridge Products Documentation
1. Specifications
AEC SCSI RAID Controller SCSI Implementation Manual
Brooklyn Backplane Breakout Board Hardware Specification
Brooklyn Bring-Up Diagnostics Test H/W Specification
Brooklyn Hardware Programming Interface Specification
Brooklyn Hardware Specification Brooklyn HardwareSpecification
Brooklyn LCD Software Design Specification
Brooklyn Product Test Report
Brooklyn SW Design Specification
Brookwood Programming Interface Specification
Brookwood Product Test Report
Brookwood ▇▇▇▇▇▇/Vib Test Report
CAPI Serial Protocol
CAPI Flash File Format
CAPI over SCSI
Fault Localization Diagnostics S/W Specification
12C Driver
12C Driver System for Adaptec RAID controllers
Link Manager Exchange Design Specification
Queens Failover Hardware Specification
Queens Hardware Programming Interface
Queens Hardware Technical Notes
SAF-TE with Bridges
Skyway Software Design
Skyway Hardware Programming Interface Specification
Skyway Test Plan
Skyway PTL Test Report
2. User's and Programmer's Guides
AEC-4412B/7412B User's Guide
AEC-4412B/7412B Evaluation Kit Guide
AEC-4412B/7412B Design-in Handbook
Brooklyn/Coronado Hard Drive Compatibility List
Brooklyn/Coronado SIMM Compatibility List
Brookwood Breakout Board User's Guide Rainrock/Cororock Evaluation Kit
Guide
External RAID Configuration Application Programming Interface
Normandy OEM Manual
Queens OEM Manual
18
AEC-5312/7313 User's Guide
AEC-5312/7313/5514/7515/7525 Design-In Handbook
3. Marketing and Engineering Requirements Documents
Brooklyn Marketing Requirement Documents
Brooklyn Product Concept Document
Brooklyn Hardware Engineering Requirements Document
Brooklyn Hardware Specification
Brooklyn Backplane Breakout Board Hardware Specification
Brooklyn ECAD Layout and Routing Design Notes
Brooklyn Backplane Breakout Board ECAD Layout and Routing Design Notes
Brooklyn Test Daughterboard ECAD Layout and Routing Design Notes
Brooklyn Host SCSI Daughterboard ECAD Layout and Routing Design Notes
Brooklyn/Coronado Product Functional Test Plans
Brooklyn/Coronado Product Functional Regression Test Plans
Brooklyn Software Design Specification
Brooklyn Hardware Development Plan
Brooklyn Software Development Plan
Brooklyn Bringup Plan
Brooklyn Bringup and Diagnostics Test Hardware Specification
Brooklyn Hardware Programming Interface Specification
Brooklyn Fault Injection Test Plan
Bridge I Hardware Active-Active Failover Engineering Requirements
Document
Brooklyn/Coronado/Broadway Thermal Testing Reports
Brooklyn/Coronado/Broadway IMPACT BOMs
Brooklyn/Coronado/Broadway Customer Presentations
Brooklyn/Coronado/Broadway Project Schedules
Brooklyn/Coronado/Broadway Test Plans/Cases/Reports from CTL, PTL, FTL
Brookwood/Corowood Canister Product Concept Document
Brookwood/Corowood Engineering Requirements Document
Brookwood/Corowood Marketing Requirements Document
Brookwood/Corowood Functional Test Plans
Brookwood/Corowood Regression Test Plans
Brookwood/Corowood Functional Test Report
Brookwood Main Board ECAD Layout and Routing Design Notes
Brookwood Backplane Breakout Board ECAD Layout and Routing Design Notes
Brookwood Fibre Channel Daughterboard ECAD Layout and Routing Design
Notes
Brookwood Backend LVDS Connector Proposal
Brookwood/Corowood Battery Pack Specification
Fault Localization Diagnostics Proof of Concept Proposal
Brookwood Fault Localization Diagnostics Software Specification
Brookwood/Corowood Test Plans/Cases/Reports from CTL, PTL, FTL
Brookwood/Corowood Thermal Test Reports
Brookwood/Corowood Project Schedules
Brookwood/Corowood IMPACT BOMS
19
Normandy Engineering Requirements Document
Queens and Bay Marketing Requirements Document
Queens Engineering Requirements Document
Queens Product Concept Document
Queens/Bay Functional Test Plans
Queens/Bay Regression Test Plans
Queens/Bay Functional Test Report
Queens/Bay Main Board ECAD Layout and Routing Design Notes
Queens/Bay Thermal Test Reports
Queens/Bay Project Schedules
Queens/Bay IMPACT BOMS
Rainrock/Cororock Marketing Requirements Document
Rainrock/Cororock Functional Test Plans
Rainrock/Cororock Regression Test. Plans
Rainrock/Cororock Functional Test Report
Rainrock/Cororock Main Board ECAD Layout and Routing Design Notes
Rainrock/Cororock Thermal Test Reports
Rainrock/Cororock Project Schedules
Rainrock/Cororock IMPACT BOMS
Skyway/Golden Gate Product Concept Document
Skyway/Golden Gate Engineering Requirements Document
Skyway/Golden Gate Marketing Requirements Document
Skyway/Golden Gate Functional Test Plans
Skyway/Golden Gate Regression Test Plans
Skyway/Golden Gate Functional Test Report
Skyway/Golden Gate Main Board ECAD Layout and Routing Design Notes
Skyway/Golden Gate Test Plans/Cases/Reports from CTL, PTL, FTL
Skyway/Golden Gate Thermal Test Reports
Skyway/Golden Gate Project Schedules
Skyway/Golden Gate IMPACT BOMs
4. White Papers
Failure Tolerance in Adaptec's External RAID Controllers
[***] VLSI and PCI-PCI Bridges White Paper
Skyway Performance Whitepaper
20
EXHIBIT F
Adaptec Hardware-Related Technology
1. Hardware and Product Specifications
2. ▇▇▇▇ of Materials
3. Approved Vendor Lists
4. Programmable Logic Design Files
5. ECAD Database (Gerber files, PCB Design files, Library shapes,
ECAD automation tools)
6. Test data documents
7. Engineering Notebooks
8. Plastics Tooling and design database
9. Sheet Metal Tooling and design database
10. Source Control Drawings, including cables
11. Test Boards
a) Brooklyn Breakout Board
b) Brookwood Breakout Board
c) Skyway Breakout Board
d) ▇▇▇▇ ▇▇▇ ▇▇
▇) ▇▇▇▇ ▇▇▇ Test DB
f) Pentium CPU Test DB
g) SCA Adapter Board
h) LVDS/Ultra SCA Test Board
12. All Design-in Documentation for the [**]
13. Testing - Related Software (see attached)
21
Testing-Related Software
(Product Designations Provided for Software Identification Purposes Only)
PRODUCT PN# FUNCTIONAL TESTER ICT TESTER
AEC-5312 1740400 TE499289-00 1700611-00 AEC-5312 CKT File
1700612-00 AEC-5312 NAR File
1700613-00 AEC-5312 Fixture
1700615-00 AEC-5312 Program Disk
AEC-7312A 1709500 TE499141-00
-AEC-7302 994906-01 Same 994911-00 AEC-0302A CKT File
994912-00 AEC-0302A NAR File
994913-00 AEC-0302A Fixture
994915-00 AEC-0302A Program Disk
-AEC-7010 1656706-00 Same 1656711-00 AEC-7010 CKT File
1656712-00 AEC-7010 NAR File
1656713-00 AEC-7010 Fixture
1656715-00 AEC-7010 Program Disk
AEC-7212B 17171400-00 TE498713-00
TE498714-00
-AEC-7010 1656706-00 Same 1656711-00 AEC-7010 CKT File
1656712-00 AEC-7010 NAR File
1656713-00 AEC-7010 Fixture
1656715-00 AEC-7010 Program Disk
-AEC-7402B 1649706-01 Same 1649711-00 AEC4402B CKT File
1649712-00 AEC4402B NAR File
1649713-00 AEC4402B Fixture
1649715-00 AEC4402B Program Disk
-AEC-44/74XX 1653406-00 Same 1653411-00 AEC-44/74AA CKT File
1653412-00 AEC-44/74AA NAR File
1653413-00 AEC-44/74AA Fixture
1653415-00 AEC-44/74AA Program Disk
AEC-7313 1767000 TE499579-00
-AEC-7303 1700606-01 Same 1700611-01 AEC-7303 CRT File
1700612-01 AEC-7303 NAR File
1700613-01 AEC-7303 Fixture
1700615-01 AEC-7303 Program Disk
22
-AEC-7010M 1656706-01 Same 1656711-00 AEC-7010 CKT File
1656712-00 AEC-7010 NAR File
1656713-00 AEC-7010 Fixture
1656715-00 AEC-7010 Program Disk
AEC-4412BS8 1710100-00 TE498129-00
TE498130-00
-AEC-4402B 1649706-00 Same 1649711-00 AEC4402B CKT File
1649712-00 AEC4402B NAR File
1649713-00 AEC4402B Fixture
1649715-00 AEC4402B Program Disk
-AEC-4010S 1625406-00 Same 1625411-00 AEC-4010S/D CKT File
1625411-00 AEC-4010S/D NAR File
1625411-00 AEC-4010S/D Fixture
1625411-00 AEC-4010S/D Program Disk
-AEC-44/74XX 1653406-00 Same 1653411-00 AEC-44/74AA CKT File
1653412-00 AEC-44/74AA NAR File
1653413-00 AEC-44/74AA Fixture
1653415-00 AEC-44/74AA Program Disk
AEC-4412BD8 1710200-00 TE498129-00
TE498130-00
-AEC-4402B 1649706-00 Same 1649711-00 AEC4402B CKT File
1649712-00 AEC4402B NAR File
1649713-00 AEC4402B Fixture
1649715-00 AEC4402B Program Disk
-AEC-4010D 1625406-01 Same 1625411-00 AEC-4010S/D CKT File
1625412-00 AEC-4010S/D NAR File
1625413-00 AEC-4010S/D Fixture
1625415-00 AEC-4010S/D Program Disk
-AEC-44/74XX 1653406-00 Same 1653411-00 AEC-44/74AA CKT File
1653412-00 AEC-44/74AA NAR File
1653413-00 AEC-44/74AA Fixture
1653415-00 AEC-44/74AA Program Disk
AEC-4412BS 1678000-00 TE498129-00
TE498130-00
23
-AEC-4402B 1649706-00 Same 1649711-00 AEC4402B CKT File
1649712-00 AEC4402B NAR File
1649713-00 AEC4402B Fixture
1649715-00 AEC4402B Program Disk
-AEC-4010S 1625406-00 Same 1625411-00 AEC-4010S/D CKT File
1625411-00 AEC-4010S/D NAR File
1625411-00 AEC-4010S/D Fixture
1625411-00 AEC-4010S/D Program Disk
-AEC-44/74XX 1653406-00 Same 1653411-00 AEC-44/74AA CKT File
1653412-00 AEC-44/74AA NAR File
1653413-00 AEC-44/74AA Fixture
1653415-00 AEC-44/74AA Program Disk
24
EXHIBIT G
Adaptec RAID Code
Consisting of the following modules:
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25
EXHIBIT H
Chaparral Licensed Software
[***]
