1
Exhibit 4.(a)(i)
LICENSE REFERENCE NO: L993678
080499
LICENSE AGREEMENT ("Agreement") dated as of July 1, 1999 ("Effective
Date") between INTERNATIONAL BUSINESS MACHINES CORPORATION, a New York
corporation ("IBM"), and XXXXX NETWORKS N.V., a corporation of the Netherlands
("XXXXX").
Each of the parties (as "Grantee") desires to acquire a nonexclusive
license under patents of the other party (as "Grantor"). In consideration of the
premises and mutual covenants herein contained, IBM and XXXXX agree as follows:
SECTION 1. DEFINITIONS
1.1 "Information Handling System" shall mean any instrumentality or
aggregate of instrumentalities primarily designed to compute, classify, process,
transmit, receive, retrieve, originate, switch, store, display, manifest,
measure, detect, record, reproduce, handle or utilize any form of information,
intelligence or data for business, scientific, control or other purposes.
1.2 "IHS Product" shall mean an Information Handling System or any
instrumentality or aggregate of instrumentalities (including, without
limitation, any component, subassembly, computer program or supply) designed for
incorporation in an Information Handling System. Any instrumentality or
aggregate of instrumentalties primarily designed for use in the fabrication
(including testing) of an IHS Product licensed herein shall not be considered to
be an IHS Product.
1.3 "Data Communications Products" shall mean IHS Products designed
primarily for the purpose of transmitting, receiving, securing, establishing,
supporting, controlling or otherwise facilitating the exchange of data among or
between IHS Products and/or Information Handling Systems through intervening
network facilities.
1.4 "Licensed Patents" shall mean all patents, including utility models and
typeface design patents and registrations (but not including any other design
patents or registrations) of Grantor:
(a) issued or issuing on patent applications entitled to an effective
filing date prior to July 1, 2002; and
(b) under which patents or the applications therefor a party hereto or any
of its Subsidiaries has as of the Effective Date, or thereafter
obtains, the right to grant licenses to Grantee of or within the scope
granted herein without such grant or the exercise of rights thereunder
resulting in the payment of royalties or other consideration by Grantor
or its Subsidiaries to third parties (except for payments among Grantor
and its Subsidiaries, and payments to third parties for inventions made
by said third parties while employed by Grantor or any of its
Subsidiaries).
Licensed Patents shall include said patent applications, continuations-in-part
of said patent applications, and any patents reissuing on any of the aforesaid
patents.
1.5 "Licensed Products" shall mean either IBM Licensed Products or XXXXX
Licensed Products as the context indicates.
1.6 "IBM Licensed Products" shall mean IHS Products.
1.7 "XXXXX Licensed Products" shall mean Data Communications Products.
99
2
1.8 "Subsidiary" of a party hereto or of a third party shall mean a
corporation, company or other entity:
(a) more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) are, now or hereafter, owned or controlled,
directly or indirectly, by a party hereto or such third party, but such
corporation, company or other entity shall be deemed to be a Subsidiary
only so long as such ownership or control exists; or
(b) which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association, but
more than fifty percent (50%) of whose ownership interest representing
the right to make the decisions for such corporation, company or other
entity is now or hereafter, owned or controlled, directly or
indirectly, by a party hereto or such third party, but such
corporation, company or other entity shall be deemed to be a Subsidiary
only so long as such ownership or control exists.
1.9 "Authorized Assembler" shall mean a third party that, pursuant to a
written contract with a Grantee, assembles Grantee's Licensed Products, in
accordance with written specifications provided by said Grantee.
SECTION 2. GRANTS OF RIGHTS
2.1 Each party, as Grantor, on behalf of itself and its Subsidiaries grants
to the other, as Grantee, a nonexclusive and worldwide license under Grantor's
Licensed Patents:
(a) to make (including the right to use any apparatus and practice any
method in making), use, import, offer for sale, lease, sell and/or
otherwise transfer Grantee's Licensed Products; and
(b) to have Grantee's Licensed Products made by another manufacturer for
the use, importation, offer for sale, lease, sale and/or other transfer
by Grantee only when the conditions set forth in Section 2.2 are met. A
particular Licensed Product shall be licensed under only those of
Grantor's Licensed Patents which, but for the license granted herein,
would be infringed (including contributory infringement) by Grantee's
making, using, importing, offering for sale, leasing, selling and/or
otherwise transferring such product.
The license granted by XXXXX to IBM is fully paid up.
2.2 The license granted in Section 2.1(b) to Grantee to have products made
by another manufacturer:
(a) shall only apply to products sold to Grantee after the Effective Date;
(b) shall only apply when the specifications for such Grantee's Licensed
Products were created by Grantee (either solely or jointly with one or
more third parties);
(c) shall only be under claims of Grantor's Licensed Patents, the
infringement of which would be necessitated by compliance with such
specifications; and
(d) for the avoidance of doubt, shall not apply to (i) any methods used, or
(ii) any products in the form manufactured or marketed, by said other
manufacturer prior to Grantee's furnishing of said specifications, but,
subject to Sections 2.2(a), 2.2(b) and 2.2(c), shall apply to any such
methods used and products manufactured for Grantee after the furnishing
of said specifications.
Unless Grantee informs Grantor to the contrary, Grantee shall be deemed to have
authorized said other manufacturer to make Grantee's Licensed Products under the
license granted to Grantee in this section when the conditions specified in this
Section 2.2 are fulfilled. In response to a written request identifying a
product and a manufacturer, Grantee shall in a timely manner inform Grantor of
the quantity of such product, if any, manufactured by such manufacturer pursuant
to the license granted in Section 2.1(b) and such information shall be used by
Grantor solely for the purpose of investigation of infringement by or licensing
negotiations with such other manufacturer.
Notwithstanding the limitations of this Section 2.2 on the have made rights of
Section 2.1(b), but subject to Section 2.3, Grantee shall have the right to
purchase commodity parts, components,
100
3
subassemblies and software from third parties and to incorporate the same into
or sell with Grantee's Licensed Products within the scope of the License granted
in Section 2.1.
2.3 Except as expressly provided herein, no license or immunity is granted
under this Agreement by either party, either directly or by implication,
estoppel or otherwise to any third parties acquiring items from either party for
the combination of such acquired items with other items (including items
acquired from either party hereto) or for the use of such combination.
2.4 Subject to Section 2.5, the licenses granted herein shall include the
right of each party to grant sublicenses to its Subsidiaries existing on or
after the Effective Date, which sublicenses may include the right of sublicensed
Subsidiaries to sublicense other Subsidiaries of said party. No sublicense shall
be broader in any respect at any time during the life of this Agreement than the
license held at that time by the party that granted the sublicense.
2.5 A sublicense granted to a Subsidiary shall terminate on the earlier of:
(a) the date such Subsidiary ceases to be a Subsidiary; and
(b) the date of termination or expiration of the license of the party or
Subsidiary that granted the sublicense.
If a Subsidiary ceases to be a Subsidiary and holds any patents under which a
party hereto is licensed, such license shall continue for the term defined
herein.
2.6 In the event that neither a party nor any of its Subsidiaries has the
right to grant a license under any particular Licensed Patent of the scope set
forth in Section 2, then the license granted herein under said Licensed Patent
shall be of the broadest scope which said party or any of its Subsidiaries has
the right to grant within the scope set forth above.
2.7 If, after the Effective Date, a party or any of its Subsidiaries
("Acquiring Party") either acquires an entity or acquires substantially all of
the assets from an entity, and said entity is, as of the date of acquisition,
licensed by the other party ("Licensor") under one or more Licensed Patents
through an existing agreement pursuant to which royalties or other payments are
made by said entity to Licensor, then the license and other rights granted
herein to the Acquiring Party with respect to said Licensed Patents shall apply
to products manufactured by said entity or through the use of said assets,
provided that such royalties or other payments shall continue to be made by the
Acquiring Party or said entity to the Licensor with respect to such products
notwithstanding that the Acquiring Party may have been licensed for the same
Licensed Products before the acquisition.
2.8 If one party (the "Transferring Party") transfers a product line after
the Effective Date, either as part of or separate from a disposition of a
Subsidiary to any third party, and if such transfer includes at least one
marketable product and tangible assets having a net value of at least
twenty-five million US dollars ($25,000,000.00), then after written request to
the other party hereto jointly by the Transferring Party and such third party
within sixty (60) days following the transfer, the other party hereto agrees to
grant a royalty-free license (under the same terms as the license granted to the
Transferring Party herein) under its Licensed Patents for the field (as defined
between the Transferring Party and the other party) of such product line to the
ex-Subsidiary in the case of a disposition of a Subsidiary, or to such third
party if not such a disposition, (each referred to as the "Recipient") provided
that:
(a) such field shall not be defined more broadly than appropriate to cover
the particular product line being transferred, including extensions
thereto based on the same technology, and such field and license shall
grant rights no broader than those granted for the Transferring Party's
Licensed Products under this Agreement;
(b) the license granted shall be limited in the twelve (12) months
immediately following such transfer to a volume of licensed products
having an aggregate selling price equal to no more than the aggregate
selling prices of such products by said one party in the twelve (12)
months preceding such transfer plus ten percent (10%); and shall be
limited, in each of the successive twelve-month periods following such
transfer, to a volume of licensed products having an
101
4
aggregate selling price equal to no more than the limit for the
immediately preceding twelve-month period plus ten percent (10%);
(c) the Recipient shall grant to such other party a royalty-free license
(under the same terms as the license granted to such other party
herein) under all Recipient Patents for all products licensed herein to
such other party on the date of the product line transfer. "Recipient
Patents" shall mean all patents throughout the world under which, at
any time commencing with the date of the product line transfer, the
Recipient or any of its Subsidiaries has the right to grant such
licenses; and
(d) this Section 2.8, Section 3, and Section 4 shall be omitted from the
license granted to the Recipient.
2.9 A product which, if assembled by Grantee, would be licensed to Grantee
hereunder shall also be licensed hereunder if assembled by an Authorized
Assembler, provided:
(a) the purchase price paid to Grantee for items included in the product
exceeds sixty percent (60%) of the total cost of manufacturing and/or
purchasing all of the items included in the product; and
(b) the product is sold under Grantee's brand name.
2.10 If, pursuant to a license granted by Grantee to a third party, copies
are made of all or part of a computer program provided by Grantee, such
copies will be treated for purposes of this Agreement as if they had
been transferred directly by Grantee, provided:
(a) such copies are transferred by such third party together with or for
use with Grantee's products or as products of Grantee; and
102
5
(b) there is an accounting back to Grantee for all copies so made, except
for driver software which is customarily furnished without charge by
Grantee with Grantee's products.
SECTION 3. RELEASES
3.1 Each party (as "Releasor") on behalf of itself and its Subsidiaries
which are Subsidiaries on the Effective Date, irrevocably releases the other
party, its Subsidiaries which are Subsidiaries on the Effective Date and its and
their respective customers from any and all claims of infringement of Releasor's
Licensed Patents which claims are based on acts prior to the Effective Date,
which, had they been performed after the Effective Date would have been licensed
under this Agreement.
3.2 Except as provided in Section 3.3, the release contained herein shall
not apply to any person other than the persons named in this Section 3 and shall
not apply to the manufacture of any items by any person other than the parties
and their Subsidiaries.
3.3 The release granted by IBM to XXXXX also applies to products which
would be XXXXX Licensed Products hereunder supplied directly to XXXXX and/or its
Subsidiaries by the suppliers and manufacturers listed in Exhibit 2 prior to the
Effective Date of this Agreement. The release granted by XXXXX to IBM also
applies to products which would be IBM Licensed Products hereunder supplied
directly to IBM and/or its Subsidiaries by third parties prior to the Effective
Date of this Agreement.
3.4 The release granted by XXXXX to IBM is effective as of the Effective
Date. The release granted by IBM to XXXXX shall become effective upon receipt of
the payment for the initial accounting period specified in Section 4.1.
SECTION 4. (1)PAYMENT
4.1 As additional consideration for the license, release and other rights
granted by IBM herein, XXXXX shall pay to IBM the total sum of XXX no portion of
which shall be refundable, but which shall be payable in installments as
follows:
ACCOUNTING PERIOD AMOUNT($ U.S.) DATE DUE
--------------------------------------------------------------------------------
INITIAL/1999 XXX UPON SIGNING BY XXXXX
2000-1 XXX April 15, 2000
2000-2 XXX October 15, 2000
2001-1 XXX April 15, 2001
2001-2 XXX October 15, 2001
2002-1 XXX April 15, 2002
4.2 Of the amounts specified in Section 4.1, XXX shall be allocable as
consideration for the release set forth in Section 3.
4.3 XXXXX shall be liable for interest on any overdue payment required to
be made pursuant to Section 4, commencing on the date such payment becomes due,
at an annual rate which is the greater of ten percent (10%) or one percentage
point higher than the prime interest rate as quoted by the head office of
Citibank N.A., New York, at the close of banking on such date, or on the first
business day thereafter if such date falls on a non-business day. If such
interest rate exceeds the maximum legal rate in the jurisdiction where a claim
therefore is being asserted, the interest rate shall be reduced to such maximum
legal rate.
4.4 If an installment payment set forth in Section 4.1 is not made by its
due date, and if such payment, plus interest pursuant to Section 4.3, is not
made prior to thirty (30) days after XXXXX receives
----------
(1) Confidential treatment requested by Xxxxx Networks N.V.
103
6
written notice from IBM that the payment due on the due date has not been made,
then, at IBM's sole option, either:
(a) all of the above installment payments that have not been paid shall
automatically become due and payable in full on the fifteenth day after
XXXXX receives a second written notice, given after expiration of said
thirty (30) day notice, of IBM's election to accelerate the remaining
payments; or
(b) all license and other rights granted herein to XXXXX shall
automatically terminate on the fifteenth day after XXXXX receives a
second written notice, given after expiration of said thirty (30) day
notice, of IBM's election to terminate MADGE's rights. In such event,
XXXXX shall remain obligated to pay all installments which had become
due prior to such notice (plus interest thereon as provided in Section
4.3).
In the event that the first three payments set forth in Section 4.1 are not made
in full, then the release to XXXXX granted in Section 3 shall be null and void.
4.5 Except as provided in Section 4.6, each party shall pay all taxes
(including, without limitation, sales and value added taxes) imposed by the
national government, including any political subdivision thereof, of any country
in which said party is doing business, as a result of said party's furnishing
consideration hereunder. In the event such a tax becomes payable as a result of
a party's furnishing consideration in respect of a sublicense granted to any of
its Subsidiaries pursuant to Section 2, said party shall be responsible for
determining the amount of and paying, or causing said sublicensed Subsidiary to
pay, said tax. 4.6 XXXXX shall not bear any income tax withholding (i.e.:
withholding tax) imposed by the national government of XXXXX upon the payments
made pursuant to Section 4 to the extent such taxes are creditable against taxes
payable by IBM to the United States of America, provided that:
(a) XXXXX shall furnish IBM with a tax certificate evidencing payment of
such taxes to the national government of XXXXX; and,
(b) to the extent that the government of XXXXX, or any treaty between the
government of XXXXX and the United States of America, provides a
process for seeking a waiver or reduction of such taxes, XXXXX shall
fully cooperate with IBM in seeking such waiver or reduction and
promptly complete and/or file any and all pertinent documents.
SECTION 5. TERM OF AGREEMENT; ACQUISITION OF A PARTY
5.1 The term of the licenses granted under this Agreement shall be for
three (3) years from the Effective Date unless earlier terminated under the
provisions of this Agreement.
5.2 If one party (the "Acquired Party") is acquired by a third party,
becoming a Subsidiary of such third party:
(a) the Acquired Party shall promptly give notice of such acquisition to
the other party; and
(b) the license granted to the Acquired Party and all sublicenses (if any)
granted to the Acquired Party's remaining Subsidiaries shall
automatically become limited to only products identical ("identical"
products do not include improvements, enhancements, substitutions,
extensions, new releases, new versions, or follow-ons) with those
manufactured and marketed by said Acquired Party (or, in the case of a
Subsidiary, by such Subsidiary) within the licenses granted in this
Agreement (or in such sublicense) prior to such acquisition.
5.3 If one party (the "Acquired Party") is acquired by a third party such
that it is no longer a separate legal entity, the license granted to the
Acquired Party shall terminate as of the date of acquisition. The Acquired Party
shall require, as a condition precedent to the acquisition, that the third party
pay to the other party the next payment which would become due under this
Agreement after said date, if any.
SECTION 6. MEANS OF PAYMENT AND COMMUNICATION
6.1 Payment shall be made by electronic funds transfer. Payments shall be
deemed to be made on the date credited to the following account:
104
7
IBM, Director of Licensing
The Bank of New York
0 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Xxxxxx Xxxxxx of America
Credit Account No. 000-0000-000
ABA No. 0000-0000-0
6.2 Notices and other communications shall be sent by facsimile or by
registered or certified mail to the following addresses and shall be effective
upon receipt:
For IBM: For XXXXX:
Director of Licensing Licensing Manager
IBM Corporation Xxxxx Networks
North Castle Drive Wexham Springs
Armonk, New York 00000 Xxxxxxxxx Xxxx
Xxxxxx Xxxxxx of America Xxxxxx
Xxxxxx XX0 0XX
Xxxxxxx
With copy to Legal Department
at same address
Facsimile: (0) 000 000-0000 Facsimile: 44-1753-661-448
6.3 All payments and correspondence shall reference the License Reference
No. set forth on the first page of this Agreement.
SECTION 7. MISCELLANEOUS
7.1 Neither party shall assign or grant any right under any of its Licensed
Patents unless such assignment or grant is made subject to the terms of this
Agreement.
7.2 Neither party shall assign any of its rights (other than the right to
receive payments) or delegate any of its obligations under this Agreement. Any
attempt to do so shall be void. However, a party which undergoes reorganization
may assign such rights and delegate such obligations to its legal successor,
provided that after the reorganization, the successor and its Subsidiaries will
have essentially the same assets as such party and its Subsidiaries had prior to
the reorganization.
7.3 Neither party shall use or refer to this Agreement or any of its
provisions in any promotional activity.
7.4 Each party represents and warrants that it has the full right and power
to grant the license and release set forth in Sections 2 and 3. Each party (as a
Grantor) further represents and warrants that prior to the Effective Date, it
has informed the other party of any patent originating from inventions made by
employees of Grantor or its Subsidiaries, which patent is or was owned by
Grantor or its Subsidiaries as of the Effective Date, and which patent, owing to
prior arrangements with third parties, does not qualify as a Licensed Patent of
Grantor under which licenses are granted in Section 2. A listing of such patents
owned by IBM is attached as Exhibit 1. Neither party makes any other
representation or warranty, express or implied, nor shall either party have any
liability in respect of any infringement of patents or other rights of third
parties due to the other party's operation under the license herein granted.
7.5 Nothing contained in this Agreement shall be construed as conferring
any rights by implication, estoppel or otherwise, under any non-patent
intellectual property right, or any patents or patent applications, other than
the Licensed Patents. Neither party is required hereunder to furnish or disclose
to the other any technical or other information (including copies of Licensed
Patents) except as specifically provided herein.
105
8
7.6 Neither party shall have any obligation hereunder to institute any
action or suit against third parties for infringement of any of its Licensed
Patents or to defend any action or suit brought by a third party which
challenges or concerns the validity of any of its Licensed Patents. Neither
party shall have any right to institute any action or suit against third parties
for infringement of any of the other party's Licensed Patents. Neither party,
nor any of its Subsidiaries, is required to file any patent application, or to
secure any patent or patent rights, or to maintain any patent in force.
7.7 Each party shall, upon a request from the other party sufficiently
identifying any patent or patent application, inform the other party as to the
extent to which said patent or patent application is subject to the licenses and
other rights granted hereunder. If such licenses or other rights under said
patent or patent application are restricted in scope, copies of all pertinent
provisions of any contract or other arrangement creating such restrictions
shall, upon request, be furnished to the party making such request, unless such
disclosure is prevented by such contract, and in such event, a statement of the
nature of such restriction shall be provided.
7.8 If a third party has the right to grant licenses under a patent to a
party hereto (as a "Licensee") with the consent of the other party hereto, said
other party shall provide said third party with any consent required to enable
said third party to license said Licensee on whatever terms such third party may
deem appropriate. Each party hereby waives any right it may have to receive
royalties or other consideration from said third party as a result of said third
party's so licensing said Licensee within the scope of the licenses granted
under Section 2 of this Agreement.
7.9 This Agreement shall not be binding upon the parties until it has been
signed hereinbelow by or on behalf of each party. No amendment or modification
hereof shall be valid or binding upon the parties unless made in writing and
signed as aforesaid, except that IBM may amend Section 6.1 and either party may
amend its address in Section 6.2 by written notice to the other party.
7.10 If any section of this Agreement is found by competent authority to be
invalid, illegal or unenforceable in any respect for any reason, the validity,
legality and enforceability of such section in every other respect and the
remainder of this Agreement shall continue in effect so long as the Agreement
still expresses the intent of the parties. However, if the intent of the parties
cannot be preserved, this Agreement shall be either renegotiated or terminated.
7.11 This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the law of the State of
New York, USA, as such law applies to contracts signed and fully performed in
New York.
7.12 The headings of sections are inserted for convenience of reference only
and are not intended to be a part of or to affect the meaning or interpretation
of this Agreement.
106
9
This Agreement and its Exhibits embody the entire understanding of the parties
with respect to the Licensed Patents, and replaces any prior oral or written
communications between them.
Agreed to: Agreed to:
XXXXX NETWORKS N.V. INTERNATIONAL BUSINESS
MACHINES CORPORATION
By: /s/ Xxxxxxx Xxxxxx By: /s/ Xxxxxx Xxxxxxxxx
------------------------ --------------------------
Xxxxxx Xxxxxxxxx
Vice President
Date: 24th August 1999 Date: 31st August 1999
---------------------- -----------------------
107
10
EXHIBIT 1
This is an Exhibit to the Agreement between INTERNATIONAL BUSINESS MACHINES
CORPORATION and XXXXX NETWORKS N.V. having an Effective Date of July 1, 1999.
Non-Licensed Patents
PATENTS OWNED BY IBM WHICH ARE NOT LICENSED PATENTS
108
11
EXHIBIT 2
This is an Exhibit to the Agreement between INTERNATIONAL BUSINESS MACHINES
CORPORATION and XXXXX NETWORKS N.V. having an Effective Date of July 1, 1999.
LIST OF SUPPLIERS TO XXXXX NETWORKS
EXHIBITS AVAILABLE UPON REQUEST.
109
