ASSIGNMENT AND
LICENSE-BACK AGREEMENT
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This AGREEMENT (this "Agreement") is made as of this 25th day of February,
1999 by and between UTMC MICROELECTRONIC SYSTEMS INC., a Delaware corporation
with its principal offices located at 0000 Xxxxxxxxxx Xxxxxxxxx, Xxxxxxxx
Xxxxxxx, Xxxxxxxx (hereinafter ("UTMC"), and UNITED TECHNOLOGIES CORPORATION, a
Delaware corporation doing business through its XXXXXXXX STANDARD DIVISION
having a place of business at Xxx Xxxxxxxx Xxxx, Xxxxxxx Locks, Connecticut
(hereinafter "UTC").
W I T N E S S E T H:
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WHEREAS, contemporaneously herewith, UTC is entering into a Common Stock
Purchase Agreement to sell all of the common stock of UTMC to Aeroflex
Incorporated on the terms and subject to the conditions set forth therein (the
"Stock Purchase Agreement"); and
WHEREAS, in connection with the sale and purchase of UTMC's stock, UTC
desires to transfer to UTMC, and UTMC desires to accept, all of UTC's rights,
title and interest in, to and under certain intellectual property used by UTMC
in connection with its business, subject to the grantback by UTMC to UTC of a
non-exclusive, royalty-free license to such intellectual property, on the terms
and subject to the conditions set forth herein.
NOW, THEREFORE, in consideration of the recitals and the mutual promises
and covenants contained in this Agreement, the parties agree as follows:
1. Transfer and Assignment. (a) Subject to the terms and conditions of this
Agreement, UTC hereby assigns, transfers, conveys, delivers and grants to UTMC,
and UTMC hereby accepts, all right, title and interest of UTC in, to and under
the patents, patent applications and active patent projects listed on Attachment
1 (the "Intellectual Property"), for UTMC's own use and enjoyment and for the
use and enjoyment of UTMC's successors, assigns or other legal representatives.
UTC hereby requests the Commissioner of Patents and Trademarks or other
appropriate governmental authority (whether foreign or domestic) to record UTMC
as the assignee and owner of the Intellectual Property.
2. Further Assurances. Consistent with the terms and conditions hereof, UTC
shall execute, acknowledge and deliver to UTMC such deeds, assignments,
endorsements, certificates and other further instruments of transfer and
conveyance and shall take such further action as may be reasonably necessary to
more effectively assign, transfer, convey and grant to UTMC the Intellectual
Property.
3. License to UTC. UTMC hereby grants to UTC a perpetual, non-exclusive,
royalty-free, worldwide license under the Intellectual Property for the sole
purpose of designing, developing and manufacturing integrated circuits and such
other products as may fall within the scope of the Intellectual Property (the
"Subproducts"), for UTC's internal manufacturing and assembly requirements in
connection with the sale by UTC of products into which such Subproducts are
incorporated, including the servicing and replacement by UTC of such Subproducts
(the "Purpose"). UTC shall have the right to grant sublicenses of its rights
hereunder for the Purpose to any individual, corporation, limited liability
company, partnership or other entity (each, a "Person") that controls, is
controlled by or is under common control with UTC. The term "control"
(including, with correlative meaning, the terms "controlled by" and "under
common control with") means the possession, directly or indirectly, of the power
to direct or cause the direction of the management and policies of such Person,
whether through the ownership of voting securities, by contract or otherwise;
provided, that the beneficial ownership of over 50 percent of the issued and
outstanding voting securities of a Person shall be conclusively deemed to
constitute "control" of such Person. UTC shall also have the right to sublicense
the Intellectual Property to any supplier or other third party solely for the
Purpose.
4. Transfers. UTMC may not transfer ownership of any Intellectual Property
unless such transfer is expressly subject to the license granted to UTC herein.
5. Applications; Maintenance. UTMC shall have no obligation under this
Agreement to file any patent applications or to secure any patent or maintain
any patent in force. However, in the event UTMC decides to abandon the
prosecution of or not pay the maintenance fee for a Patent, UTMC shall give UTC
the opportunity to continue the prosecution, or to pay the maintenance fee, at
UTC's expense. If UTC should elect to continue such prosecution or to pay such
maintenance fee with respect to such Patent, UTMC shall promptly transfer to UTC
all of UTMC's right, title and interest in, to and under such Patent, at no cost
to UTMC.
6. Disclaimers.
(a) EXCEPT AS EXPRESSLY SET FORTH IN THE STOCK PURCHASE AGREEMENT, UTC
MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE INTELLECTUAL PROPERTY,
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OR SCOPE OF ANY OF THE INTELLECTUAL
PROPERTY OR THAT ANY OF THE INTELLECTUAL PROPERTY DOES NOT INFRINGE THE RIGHTS
OF OTHERS, AND UTC SHALL HAVE NO LIABILITY ARISING OUT OF ANY PRODUCT MADE BY
UTMC OR ITS SUBLICENSEES UNDER THE INTELLECTUAL PROPERTY.
(b) UTMC MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE
INTELLECTUAL PROPERTY, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OR
SCOPE OF ANY OF THE INTELLECTUAL PROPERTY OR THAT ANY OF THE INTELLECTUAL
PROPERTY DOES NOT INFRINGE THE RIGHTS OF OTHERS, AND UTMC SHALL HAVE NO
LIABILITY ARISING OUT OF ANY PRODUCT MADE BY UTC OR ITS SUBLICENSEES UNDER THE
INTELLECTUAL PROPERTY.
7. Governing Law. This Agreement shall be governed by the laws of the State
of New York (regardless of the laws that might be applicable under the
principles of conflicts of law), as to all matters, including but not limited to
matters of validity, construction, effect and performance.
8. Notices. Unless otherwise specifically provided herein, all notices,
consents, demands, directions, approvals, instructions, requests and other
communications required or permitted by the terms hereof to be given to any
party hereto shall be in writing and shall become effective when telecopied
(provided a copy thereof is placed in the U.S. mail, postage prepaid, within 24
hours after telecopied), delivered by hand or overnight courier or three (3)
business days after being mailed by registered first-class mail, postage
prepaid, return receipt requested, and addressed to such party as provided below
or at such other address as shall have been designated by such party for
purposes of notice hereunder by notice to the other party hereto:
If to UTMC:
UTMC Microelectronic Systems Inc.
0000 Xxxxxxxxxx Xxxxxxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxx, 00000
Telecopier: 000-000-0000
Attention: President
With required copy to:
Aeroflex, Incorporated
00 Xxxxx Xxxxxxx Xxxx
Xxxxxxxxx, Xxx Xxxx 00000
Telecopier: 000-000-0000
Attention: President
If to UTC:
United Technologies Corporation
Xxxxxxxx Standard Division
One Xxxxxxxx Road, M/S 0-0-XX00
Xxxxxxx Xxxxx, XX 00000-0000
Fax: 000-000-0000
Attention: President's Office
With required copy to:
United Technologies Corporation
Xxxxxxxx Standard Division
One Xxxxxxxx Road, M/S 0-0-XX00
Xxxxxxx Xxxxx, XX 00000-0000
Fax: 000-000-0000
Attention: Vice President, Contracts and Counsel
9. No Third-Party Beneficiaries. This Agreement is intended solely for the
benefit of the parties hereto and is not intended to confer benefits upon, or
create any rights in favor of, any third person or entity and no such third
party or entity may bring a claim based on rights or obligations set forth
herein.
10. Waiver. Waiver by any party of strict performance of any provision of
this Agreement shall not be a waiver of or prejudice the party's right to
require strict performance of the same provision in the future. Any waiver, to
be effective, must be in writing and signed by the party waiving compliance.
11. Legally Binding. This Agreement shall be binding upon and inure to the
benefit of the parties and their respective heirs, representatives, successors
and permitted assigns. Subject to the provisions of Section 4, UTMC may assign
its rights and obligations under this Agreement. UTC may not assign or otherwise
transfer any of its rights or obligations hereunder; provided, that UTC may
assign this Agreement to any Person resulting from the merger or consolidation
of UTC with such Person or to any Person that acquires all or substantially all
of UTC's assets as a going concern, as long as such Person assumes the
obligations of UTC. In the event of any such assignment of this Agreement by
UTC, UTC (to the extent it shall continue in existence) shall guarantee the
performance of the assignee's obligations hereunder.
12. Remedies.
(a) The parties acknowledges that a breach of this Agreement by a party may
cause irreparable and continuing damage to the other party and agree that such
other party shall therefore be entitled to injunctive or other equitable relief,
without the necessity of posting a bond, from any court of competent
jurisdiction restraining any further violation of this Agreement and that such
injunctive relief shall be cumulative and in addition to any other rights or
remedies to which the non-breaching party may be entitled.
(b) UTMC shall have the right to terminate this Agreement if UTC is in
material breach of this Agreement and such breach remains uncured for a period
of sixty (60) days following written notice thereof to UTC by UTMC.
13. Entire Agreement. This Agreement, together with Attachment 1, embody
the entire agreement of the parties with regard to the subject matter of this
Agreement. This Agreement supersedes all prior communications, representations,
or agreements, verbal or written, between the parties to it and may not be
amended except in a writing signed by the party affected by the change.
14. Severability. If any provision of this Agreement is found by a court of
competent jurisdiction to be illegal, invalid or unenforceable, the remainder of
this Agreement will not be affected and shall continue in effect and be
enforceable to the fullest extent permitted by law.
15. Consent to Jurisdiction. UTC and UTMC each irrevocably consent that any
legal action or proceeding against either of them under, arising out of or in
any manner relating to, this Agreement may be brought in any court of the State
of New York located within Nassau County or New York County or in the United
States District Court for the Eastern or Southern District of New York. UTC and
UTMC by the execution and delivery of this Agreement expressly and irrevocably
consent and submit to the personal jurisdiction of any of such courts in any
such action or proceeding. UTC and UTMC further irrevocably consent to the
service of any complaint, summons, notice or other process relating to any such
action or proceeding by delivery thereof to it by hand or by any other manner
provided for in Section 8. UTC and UTMC hereby expressly and irrevocably waive
any claim or defense in any such action or proceeding based on any alleged lack
of personal jurisdiction, improper venue or inconvenient forum or any similar
basis. Nothing in this Section shall affect or impair in any manner or to any
extent the right of either party to commence legal proceedings or otherwise
proceed against the other in any jurisdiction or to serve process in any manner
permitted by law.
16. Indemnification.
(a) UTMC shall indemnify, defend and hold harmless UTC and its officers,
directors, employees and affiliates, on an after-tax benefit basis, from and
against any claims, liabilities, losses, damages or expenses that are caused by
or arise out of any breach or default in the performance by UTMC of any covenant
or agreement of UTMC contained herein.
(b) UTC shall indemnify, defend and hold harmless UTMC and its officers,
directors, employees and affiliates, on an after-tax benefit basis, from and
against any claims, liabilities, losses, damages or expenses that are caused by
or arise out of any breach or default in the performance by UTC of any covenant
or agreement of UTC contained herein.
17. No Consequential Damages. Notwithstanding anything to the contrary
contained in this Agreement, in no event shall a party hereto be liable to
another for any special, punitive, incidental or consequential damages.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their officers thereunto duly authorized, as of the day and year first above
written.
UNITED TECHNOLOGIES CORPORATION
Xxxxxxxx Standard Division
By: /s/ Xxxxxxx Xxxx Xxxxx, Jr.
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Name: Xxxxxxx Xxxx Xxxxx, Jr.
Title: Vice President, Contracts and Counsel
UTMC MICROELECTRONIC SYSTEMS INC.
By:/s/ Xxxxxxx Xxxxx
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Name:
Title:
