Exhibit 2.9
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License Agreement
This License Agreement is effective as of the 28/th/ day of August 2000
(the "Effective Date") by and between APRISMA MANAGEMENT TECHNOLOGIES, INC., a
Delaware corporation (the "Licensor"), and GLOBALNETWORK TECHNOLOGY SERVICES,
INC., a Delaware corporation (the "Licensee"). Licensor and Licensee may also be
referred to below as the "Parties," and, individually, as a "Party".
WHEREAS, the Parties are among the parties to the Transformation Agreement;
and
WHEREAS, in Section 4.1.3 of the Transformation Agreement, the Parties
agreed to enter into a License Agreement in which Licensor would grant Licensee
certain licenses provided Licensee complied with the terms and conditions of
those licenses;
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements, provisions and covenants contained herein and therein, and for other
good and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties agree as follows:
1. DEFINITIONS
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For the purposes of this Agreement, capitalized words or phrases will have
the meanings ascribed to them below.
1.1 "Affiliate" means any company, corporation, business, or other entity
that is both (i) a direct or indirect subsidiary of a Party and (ii)
controlled by that Party. For purposes of this definition, "control"
means direct or indirect beneficial ownership of at least fifty
percent (50%) of the voting stock (or the equivalent) of an entity.
1.2 "Ancillary Agreements" has the meaning given it in the Transformation
Agreement.
1.3 "Confidential Information" means any and all information of or about
Licensor, including all information relating to any technology,
product, process or intellectual property of Licensor (including, but
not limited to, owned or licensed intellectual property rights, data,
know-how, samples, technical and non-technical materials and
specifications) as well as any business plan, financial information or
other confidential commercial information of or about Licensor.
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1.4 "Field of Use" means the conduct of the Licensee Business as of the
Effective Date.
1.5 "Licensed Tools" means those software tools used in the Licensee
Business as of the Effective Date that are included within the term
"Contributed Assets" as defined in the Licensee Contribution
Agreement, and direct extensions to, modifications of, improvements
on, or successor tools that fulfill a similar or enhanced function to
those software tools.
1.6 "Licensee Business as of the Effective Date" means the "Company
Business" as that term is defined in the Licensee Contribution
Agreement and as that Company Business exists as of the Effective
Date.
1.7 "Licensee Contribution Agreement" means the Asset Contribution
Agreement effective June 3, 2000, by and between Cabletron Systems,
Inc. and GlobalNetwork Technology Services, Inc.
1.8 "Licensor Business as of the Effective Date" means the "Company
Business" as that term is defined in the Licensor Contribution
Agreement and as that Company Business exists as of the Effective
Date.
1.9 "Licensor Contribution Agreement" means the Asset Contribution
Agreement effective June 3, 2000, by and between Cabletron Systems,
Inc. and Aprisma Management Technologies, Inc.
1.10 "Licensed Know-How" means that technology, inventions, or technical
information, whether patentable or not, (a) that was discovered,
invented or developed before the Effective Date, (b) that is useful in
connection with the conduct of the Licensee Business as of the
Effective Date, and (c) which constitutes and will continue to
constitute Confidential Information of Licensor.
1.11 "Licensed Patents" means (i) those patents and patent applications
that are included within the term "Contributed Registered Intellectual
Property", as defined in the Licensor Contribution Agreement; (ii)
those patent applications filed within the two (2) years of the
Effective Date and any patents that issue as a result of any such
patent applications; (iii) any foreign or domestic counterparts to any
patent or patent application within (i) or (ii); and and any and all
reissues, divisions, renewals, extensions, provisionals,
continuations, and continuations-in-part of any patent or patent
application within (i) or (ii) or (iii).
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1.12 "Licensor Products" means the "Products" as that term is defined in
the Licensor Contribution Agreement.
1.13 "Territory" means all territories.
1.14 "Transformation Agreement" means the Transformation Agreement entered
into as of June 3, 2000, by and among Cabletron Systems, Inc.; Aprisma
Management Technologies, Inc.; Enterasys Networks, Inc.; GlobalNetwork
Technology Services, Inc.; and Riverstone Networks, Inc.
2. GRANT OF LICENSE
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2.1 License Grant. Subject to the terms and conditions of this Agreement,
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Licensor grants Licensee and its Affiliates, as they may exist from
time to time, a limited, royalty-free, fully-paid, non-exclusive, non-
transferable, perpetual license under the Licensed Patents and
Licensed Know-How in the Territory only:
2.1.1 to use the Licensed Patents and Licensed Know-How in the Field
of Use; and
2.1.2 to design, develop, make, maintain, and use Licensed Tools in
the Field of Use,
provided, however, that no license is given for any use that is
competitive with the Licensor Business as of the Effective Date or
that would allow the design, development or use of Licensed Tools that
are directly or indirectly competitive with any Licensor Products.
2.2 Affiliates. For any entity that becomes an Affiliate of Licensee after
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the Effective Date, the licenses to that Affiliate will only become
effective as of the date that entity becomes an Affiliate of Licensee.
Any licenses granted to an entity that is an Affiliate of Licensee
under this Agreement shall terminate, without any action on Licensor's
part, upon that entity's ceasing to be an Affiliate of Licensee.
2.3 Sublicenses. Licensee may not grant any sublicenses or licenses under
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the licenses granted to it under this Agreement.
2.4 Reservation of Rights. All rights, title and interest in and to the
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Licensed Patents and Licensed Know-How not specifically granted by
this Agreement are reserved to Licensor for Licensor's own use and
benefit.
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3 MARKING
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3.1 Marking Requirement. Licensee shall xxxx all Licensed Tools, or their
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respective containers or labels, and any applicable documentation used
and made available to third parties in connection with Licensee's
conduct of the Licensee Business as of the Effective Date, with the
numbers of each of the Licensed Patents that has one or more claims
that cover the use of such Licensed Tools or the conduct of the
Licensee Business as of the Effective Date.
4 REPRESENTATIONS AND WARRANTIES
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4.1 Licensor's Representations. Licensor hereby represents and warrants to
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the Licensee that (a) Licensor is a corporation duly organized,
validly existing and in good standing under the laws of the
jurisdiction of the State of Delaware, and (b) Licensor has full
corporate power and authority to execute, deliver and perform this
Agreement.
4.2 Licensee's Representations. Licensee hereby represents and warrants to
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the Licensor that (a) Licensee is a corporation duly organized,
validly existing and in good standing under the laws of the
jurisdiction of the State of Delaware, and (b) Licensee has full
corporate power and authority to execute, deliver and perform this
Agreement.
4.3 Disclaimer of All Other Warranties. EXCEPT AS EXPRESSLY STATED IN
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SECTION 4.1, LICENSOR IS PROVIDING THE LICENSES AND RIGHTS GRANTED IN
THIS AGREEMENT AS IS AND AS AVAILABLE. LICENSOR MAKES NO, AND EXPESSLY
DISCLAIMS, ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO THE IMPLIED WARRANTIES OF TITLE, NON-INFRINGEMENT,
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
5 EXCLUSION OF DAMAGES AND INDEMNIFICATION
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5.1 Exclusion of Damages. EXCEPT FOR A BREACH OF ANY PROVISION OF SECTIONS
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2, 3, 8.4 AND 8.5 OF THIS AGREEMENT BY LICENSEE, IN NO EVENT SHALL
EITHER PARTY BE LIABLE FOR ANY INDIRECT OR CONSEQUENTIAL DAMAGES,
INCLUDING ANY LOSS OF TIME, MONEY, PROFITS, DATA, OR GOODWILL,
RESULTING FROM OR THROUGH THE EXERCISE OR ATTEMPTED EXERCISE OF ANY
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RIGHTS GRANTED IN THIS AGREEMENT, EVEN IF SUCH PARTY HAS BEEN APPRISED
OF THE POSSIBILITY OF SUCH DAMAGES.
5.2 Indemnification. The provisions of Section 6 of the Transformation
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Agreement shall apply to any claim for or obligation of indemnity
between the Parties under this Agreement.
6 INFRINGEMENT BY OTHERS; PROTECTION OF PATENTS
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6.1 Notice of Infringement. Licensee shall promptly inform Licensor of any
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suspected infringement of any Licensed Patents or Licensed Know-How by
a third party.
6.2 Right to Request Permission to Assert Patent Rights. During the term
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of this Agreement, if Licensee is named as a defendant in any action
claiming that any of the Licensed Tools or the operation of the
Licensee Business infringes a patent owned by a third party, Licensee
may request permission from Licensor to assert against that third
party a claim of infringement of one or more of the Licensed Patents.
Any such request shall identify the third party and also include that
information necessary for Licensor to consider whether a basis for
such a claim exists; the likelihood of success of such a claim; and
the risks associated with asserting such a claim.
6.3 Assertion of Patent Rights. Licensor in its sole discretion may grant
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or not grant permission to Licensee to assert a claim of infringement
of one or more of the Licensed Patents against a third party. If such
permission is granted, the Parties may proceed as follows:
6.3.1 Licensor may institute suit jointly with Licensee, the suit
being brought in both their names, the out-of-pocket costs
thereof being borne equally, and any recovery or settlement
being shared equally. Licensor and Licensee shall agree to the
manner in which they shall exercise control over such action,
with Licensor having ultimate decision authority as to all
matters as to which the Parties cannot agree. Licensee may, if
it so desires, also be represented by separate counsel of its
own selection, the fees for which counsel shall be paid by
Licensee;
6.3.2 Licensor may institute suit on its own. Licensor shall bear the
entire cost of such litigation and shall be entitled to retain
the entire amount of any recovery or settlement. Licensee shall
have no right or interest in such action or any recovery or
settlement achieved through it; or
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6.3.3 Licensor may allow Licensee to institute the suit, naming
Licensor as a party. Licensee shall bear the entire cost of
such litigation, including expenses incurred by Licensor.
Licensee may not settle or otherwise compromise such claims
absent the express written permission of Licensor. Any recovery
in excess of litigation costs will be shared equally by
Licensee with Licensor. Licensee and Licensor agree to
negotiate in good faith an appropriate compensation to Licensor
for any non-cash settlement or non-cash cross-license.
6.4 Abandonment of Actions. Should either Licensor or Licensee commence a
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suit the provisions of Section 6.3 and thereafter elect to abandon the
same, it shall give timely notice to the other party who may, if it so
desires, continue prosecution of such suit, provided, however, that
the sharing of expenses and any recovery in such suit shall be as
agreed upon between Licensor and Licensee.
7 TERMINATION
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7.1 Term. Unless otherwise terminated in accordance with the terms of this
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Agreement or by mutual consent, the term of this Agreement is
perpetual.
7.2 Termination By Mutual Consent. The Parties may terminate this
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Agreement by mutual consent, in writing.
7.3 Effect of Termination. Upon a termination of this Agreement, any
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Confidential Information in the possession of Licensee and its
Affiliates shall be returned to Licensor and all licenses granted
hereunder shall terminate.
7.4 Survival. Sections 4, 5, and 8 shall survive any termination of this
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Agreement.
8 MISCELLANEOUS
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8.1 Entire Agreement. This Agreement, the Transformation Agreement and the
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other Ancillary Agreements, including the Schedules and Exhibits
hereto and thereto, and the other documents delivered hereunder and
thereunder constitute the entire agreement among the Parties hereto
pertaining to the subject matter hereof and supersede all prior or
contemporaneous agreements, understandings, negotiations and
discussions, whether oral or written, of the Parties with respect to
such subject matter.
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8.2 Amendment or Modification. Except as otherwise provided in th
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Transformation Agreement, the Parties hereto may not amend or modify
this Agreement except by a written instrument executed by the Parties.
8.3 Severability. In the event that any provision hereof would, under
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applicable law, be invalid or unenforceable in any respect, such
provision shall (to the extent permitted under applicable law) be
construed by modifying or limiting it so as to be valid and
enforceable to the maximum extent compatible with, and possible under,
applicable law. The provisions hereof are severable, and in the event
any provision hereof should be held invalid or unenforceable in any
respect, it shall not invalidate, render unenforceable or otherwise
affect any other provision hereof.
8.4 Confidential Information. Licensee shall maintain the Confidential
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Information in confidence to the same extent that Licensee maintains
and protects its own confidential information, and shall not disclose,
divulge or otherwise communicate such Confidential Information to
others, or use it for any purpose, except pursuant to, and in order to
carry out, the terms and objectives of this Agreement or with the
express written consent of Licensor. Licensee also hereby agrees to
take reasonable steps to prevent and restrain the unauthorized
disclosure of such Confidential Information by any of its directors,
officers, employees, consultants, sub-contractors, sub-licensees or
agents. The provisions of this paragraph shall not apply to any
Confidential Information which is required to be disclosed to comply
with any applicable laws or regulations, but only to the extent
required by such law or regulation and further provided that before
making any disclosure pursuant to the provisions of this sentence
Licensee shall provide prior written notice of such disclosure to the
Licensor sufficiently in advance of such disclosure to allow Licensor
to respond and to take reasonable and lawful action to avoid or
minimize the degree of such disclosure.
8.5 Successors and Assigns. Licensee may not transfer or assign this
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Agreement without the express written consent of Licensor, provided,
however, that Licensee may transfer or assign this Agreement in
connection with the sale of all or substantially all its business to a
successor to that business. Any attempt to assign this Agreement in
violation of this Section shall be null and void. All the terms and
provisions of this Agreement shall be binding upon and shall inure to
the benefit of the Parties hereto and their respective permitted
transferees and assigns (each of which transferees and assigns shall
be deemed to be a Party hereto for all purposes hereof).
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8.6 Notices. Any notices or other communications required or permitted
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hereunder shall be sufficiently given if in writing and delivered
personally or sent by telecopier, Federal Express, or registered or
certified mail, postage prepaid, addressed as follows:
If to Licensor,
to it at: Aprisma Management Technologies, Inc.
000 Xxxxxxxxxx Xxxxx
Xxxxxx, XX 00000 Attention:
President Telecopier No.: (000) 000-0000
with a copy to: Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Fine
Telecopier No.: (000) 000-0000
If to Licensee,
to it at: GlobalNetwork Technology Services, Inc.
00 Xxxxxxxxxx Xxx
Xxxxxxxxx, XX 00000
Attention: President
Telecopier No.: (000) 000-0000
with a copy to: Ropes & Xxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Fine
Telecopier No.: (000) 000-0000
Unless otherwise specified herein, such notices or other
communications shall be deemed received (a) on the date delivered, if
delivered personally, (b) two Business Days after being sent by
Federal Express, if sent by Federal Express, (c) one Business Day
after being delivered, if delivered by telecopier and (d) three
Business Days after being sent, if sent by registered or certified
mail. Each of the Parties hereto shall be entitled to specify a
different address by giving notice as aforesaid to each of the other
Parties hereto.
8.7 Interpretation. Section and subsection headings are not to be
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considered part of this Agreement, are included solely for
convenience, are not intended to be full or accurate descriptions of
the content thereof and shall not affect the
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construction hereof. No rule of strict construction shall apply to or
be used against any Party hereto.
8.8 Third Party Beneficiaries. Nothing in this Agreement is intended or
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shall be construed to entitle any person or entity other than the
Parties and their respective transferees and assigns permitted hereby
to any claim, cause of action, remedy or right of any kind.
8.9 Counterparts. This Agreement may be executed in any number of
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counterparts, each of which shall be deemed an original, but all of
which together shall constitute but one and the same instrument.
8.10 Governing Law. This Agreement shall be governed by and construed in
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accordance with the domestic substantive laws of the State of
Delaware, without giving effect to any choice or conflict of law
provision or rule that would cause the application of the laws of any
other jurisdiction.
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IN WITNESS WHEREOF, the parties hereto, intending to be legally bound
hereby, have caused this Agreement to be executed, as of the date first above
written by their respective officers thereunto duly authorized.
APRISMA MANAGEMENT
TECHNOLOGIES, INC.
By: /s/ Xxxxxxx Xxxxxxx
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Title: President
GLOBALNETWORK TECHNOLOGY
SERVICES, INC.
By: /s/ Xxxxx Xxxxxxxxx
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Title: President
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