1
Exhibit 10.10
CROSS COVENANT NOT TO XXX
THIS CROSS COVENANT NOT TO XXX (this "Agreement") is made and entered
into as of March 31, 1998, (the "Effective Date"), by and between Aironet
Wireless Communications, Inc., a Delaware corporation ("Aironet") and Telxon
Corporation, a Delaware corporation ("Telxon").
BACKGROUND
WHEREAS, Telxon has heretofore been the principal stockholder of
Aironet;
WHEREAS, simultaneously with the execution of this Agreement, Aironet
is selling shares of its common stock to investors in a private sale (the
"Offering"); and
WHEREAS, Telxon and Aironet desire to enter into this Agreement in
order to ensure that: (i) Aironet may continue to engage in its business as
conducted on the Effective Date without risk of suit for infringing any
intellectual property or trade secrets of Telxon; and (ii) Telxon may continue
to engage in its business as conducted on the Effective Date without risk of
suit for infringing any intellectual property or trade secrets or Aironet.
NOW, THEREFORE, in consideration of the foregoing and of the agreements
made herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
AGREEMENT
1. DEFINITIONS
Initially capitalized terms are defined in this Agreement where first
used, except that the following terms shall have the meanings specified in this
Section 1:
"AIRONET CONFIDENTIAL INFORMATION" means any and all of Aironet's
confidential information and trade secrets of any type or description, including
know how, existing at the Effective Date.
"AIRONET COPYRIGHTS" means any and all of Aironet's copyrights and mask
work rights throughout the world, whether or not registered, existing at the
Effective Date.
"AIRONET PATENTS" means any and all of Aironet's patents and patent
applications throughout the world existing at the Effective Date (together with
all continuations, continuations in part, divisions, reissues, additions or
extensions thereof).
"AIRONET PRODUCTS" means any and all of Aironet's products (and any
components and subassemblies of such products) which exist or which have been
publically announced by Aironet
2
as a product offering (as evidenced by documents kept in the ordinary course of
Aironet's business) at or prior to the Effective Date.
"AIRONET PROPRIETARY RIGHTS" means any and all Aironet Patents, Aironet
Copyrights and Aironet Confidential Information.
"CURRENT AIRONET PRACTICES AND PRODUCTS" means Aironet's practice of
Telxon Proprietary Rights (including its practice of any method claimed in any
Telxon Patents) substantially in the manner as practiced by Aironet at or prior
to the Effective Date, and Aironet Products substantially in their form and
configuration at the Effective Date.
"CURRENT TELXON PRACTICES AND PRODUCTS" means Telxon's practice of
Aironet Proprietary Rights (including its practice of any method claimed in any
Aironet Patents) substantially in the manner as practiced by Telxon at or prior
to the Effective Date, and Telxon Products substantially in their form and
configuration at the Effective Date.
"TELXON CONFIDENTIAL INFORMATION" means any and all of Telxon's
confidential information and trade secrets of any type or description, including
know how, existing at the Effective Date.
"TELXON COPYRIGHTS" means any and all of Telxon's copyrights and mask
work rights throughout the world, whether or not registered, existing at the
Effective Date.
"TELXON PATENTS" means any and all of Telxon's patents and patent
applications throughout the world existing at the Effective Date (together with
all continuations, continuations in part, divisions, reissues, additions or
extensions thereof).
"TELXON PRODUCTS" means any and all of Telxon's products (and any
components and subassemblies of such products) which exist or which have been
publically announced by Telxon as a product offering (as evidenced by documents
kept in the ordinary course of Telxon's business) at or prior to the Effective
Date.
"TELXON PROPRIETARY RIGHTS" means any and all Telxon Patents, Telxon
Copyrights and Telxon Confidential Information.
2. AIRONET PROPRIETARY RIGHTS
2.1 Aironet agrees that it will not bring any action or suit under any
legal theory against Telxon or any transferees of Telxon Products that Current
Telxon Practices and Products infringe or violate any Aironet Proprietary
Rights.
2.2 Notwithstanding Section 2.1 to the contrary, Telxon acknowledges
and agrees that Aironet makes no agreement regarding suit or action, and no
right or license is granted by this
2
3
Agreement, either expressly, by implication, estoppel or otherwise, to Telxon or
any other person or entity with respect to any Aironet Products.
2.3 Telxon shall have no right, either expressly or by implication, to
assign, license, re- license or sub-license, in whole or in part, any rights
granted to it hereunder without the written consent of Aironet.
3. TELXON PROPRIETARY RIGHTS
3.1 Telxon agrees that it will not bring any action or suit under any
legal theory against Aironet or any transferees of Aironet Products that Current
Aironet Practices and Products infringe or violate any Telxon Proprietary
Rights.
3.2 Notwithstanding Section 3.1 to the contrary, Aironet acknowledges
and agrees that Telxon makes no agreement regarding suit or action, and no right
or license is granted by this Agreement, either expressly, by implication,
estoppel or otherwise, to Aironet or any other person or entity with respect to
Telxon Products.
3.3 Aironet shall have no right, either expressly or by implication, to
assign, license, relicense or sub-license, in whole or in part, any rights
granted to it hereunder without the written consent of Telxon.
4. WARRANTY DISCLAIMER
AIRONET DISCLAIMS ALL WARRANTIES, EXPRESSED OR IMPLIED, WITH RESPECT TO
THE AIRONET PROPRIETARY RIGHTS, AND TELXON DISCLAIMS ALL WARRANTIES, EXPRESSED
OR IMPLIED, WITH RESPECT TO THE TELXON PROPRIETARY RIGHTS, AND WITHOUT LIMITING
THE GENERALITY OF THE FOREGOING, NEITHER REPRESENTS OR WARRANTS: (A) THAT ANY
PATENTS WILL ISSUE UNDER ANY PATENT APPLICATIONS INCLUDED IN ITS PROPRIETARY
RIGHTS; (B) THE SCOPE, COVERAGE, VALIDITY OR ENFORCEABILITY OF ANY PROPRIETARY
RIGHTS; (C) THAT PRACTICE OF THE METHODS OR THE MAKING, SELLING OR USING OF
PRODUCTS COVERED BY ANY OF THE PROPRIETARY RIGHTS WILL NOT INFRINGE ANY OTHER
PARTY'S PROPRIETARY RIGHTS; OR (D) ANY OTHER MATTER WITH RESPECT TO THE
PROPRIETARY RIGHTS, WHETHER EXPRESS OR IMPLIED OR ARISING UNDER ANY STATUTE OR
FROM ANY COURSE OF DEALING, USAGE OF TRADE OR OTHERWISE, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE.
3
4
5. TERM AND TERMINATION
5.1 The "Term" of this Agreement is the period commencing on the
Effective Date and ending upon the expiration of all legally enforceable rights
included in the Aironet Proprietary Rights and the Telxon Proprietary Rights.
5.2 In case of a breach of this Agreement, the non-breaching party
shall have shall have the right at law to seek damages and/or at equity to
enjoin the specific activity giving rise to the breach.
5.3 This Agreement may not be terminated prior to the expiration of the
Term except by the mutual agreement of the parties.
6. NOTICES
Except as otherwise set forth herein, all notices given in connection
with this Agreement shall be in writing and shall be delivered either by
personal delivery, by telegram, telex, telecopy or similar facsimile means, by
certified or registered mail, return receipt requested, or by express courier or
delivery service, addressed to the president of the addressee at its principal
place of business, or at such other address as such party shall have previously
designated by written notice given to the other party in the manner set forth in
this Section 6. Notices shall be deemed given when received if sent by
telegrams, telex, telecopy or similar facsimile means (confirmation of such
receipt by confirmed facsimile transmission being deemed receipt of
communications sent by telex, telecopy or other facsimile means); and when
delivered and receipted for (or upon the date of attempted deliver where
delivery is refused), if hand delivered, sent by express courier or delivery
service, or sent by certified or registered mail, return receipt requested.
7. MISCELLANEOUS
7.1 This Agreement constitutes the entire Agreement and understanding
between the parties as to their right to conduct their businesses without suit
by the other party, and supersedes and replaces all prior or contemporaneous
agreements, written or oral, as to the subject matter. This Agreement may be
altered only in a writing stating that it is an amendment or modification to
this Agreement, and signed by an authorized representative of each of the
parties.
7.2 Any term or provision of this Agreement which is invalid or
unenforceable or in conflict with the law of any jurisdiction, shall, as to such
jurisdiction, be ineffective to the extent of such invalidity or un-enforce
ability without affecting the validity of the remaining terms and provisions of
this Agreement or affecting the validity or enforce ability of any of the terms
and provisions of this Agreement in any other jurisdiction.
7.3 Neither this Agreement nor any provision hereof may be released,
discharged, waived, abandoned, or modified in any manner, except by an
instrument in writing. Any waiver
4
5
of a default or condition hereof by either party shall not be deemed a
continuing waiver of such default or condition. Any delay or omission by either
party to exercise any right or remedy under this Agreement shall not be
construed to be a waiver of any such right or remedy or any right hereunder. All
of the rights and remedies of both parties hereto shall be cumulative and may be
exercised separately or concurrently.
7.4 This Agreement does not constitute a partnership, joint venture or
agency between the parties hereto, nor shall either of the parties hold itself
out as such, and neither party shall become bound or become liable because of
any representation, action or omission of the other.
7.5 This Agreement is binding upon and shall inure to the benefit of
the parties and their respective successors and assigns.
7.6 The heading of sections and other subdivisions hereof are inserted
only for the purpose of convenient reference and it is recognized that they may
not adequately or accurately describe the contents of the provisions which they
head. Such headings shall not be deemed to govern, limit, modify or in any other
manner affect the scope, meaning or intent of the provisions of this Agreement
or any part or portion thereof, nor shall they otherwise be given any legal
effect.
7.7 Where the context of this Agreement requires, singular terms shall
be considered plural, and plural terms shall be considered singular, and
feminine, masculine and neuter pronouns shall have equivalent meanings. All
exhibits attached hereto are incorporated herein by this reference.
7.8 This Agreement shall be governed by, performed under and construed
in accordance with the laws of the State of Ohio without giving effect to
conflict of laws principles.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed on the day and year first above written.
Aironet Wireless Communications, Inc. Telxon Corporation
By: /s/ Xxxxx X. Xxxxxx By: /s/ Xxxxxxx X. Xxxxx
------------------------ ------------------------
Name: Xxxxx X. Xxxxxx Name: Xxxxxxx X. Xxxxx
------------------------ ------------------------
Its: President & CEO Its: Senior Vice President
------------------------ ------------------------
Chief Financial Officer
5
