EXHIBIT 99.8
AMENDMENT NO. 1 TO THE
INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT
This Amendment (this "Amendment") to that certain Intellectual Property
Transfer and License Agreement, dated May 12, 1999, (the "Agreement") between
Nortel Networks Corporation, a corporation organized and existing under the laws
of Canada ("Nortel Networks") and Elastic Networks, Inc., a corporation
organized and existing under the laws of Delaware ( "Elastic"), is entered into
as of December 27, 2001 (the "Amendment Effective Date"). Capitalized terms
used herein and not otherwise defined herein shall have the meanings ascribed to
such terms in the Agreement.
Recitals
Nortel Networks and Elastic desire to amend the Agreement to modify the
terms of the Agreement as a condition precedent to an acquisition of Elastic by
Paradyne Networks, Inc.
In consideration of the above recitals and the mutual covenants set
forth herein, the parties hereby amend the Agreement as follows:
I. AMENDMENT TO DEFINITIONS.
A. In Section 1.1, the definition of "Patent"
is modified by adding "and any foreign
counterpart thereto" at the end of such
definition.
B. In Section 1.1, the following definition is
added:
""xDSL Field of Use" shall mean xDSL
technologies utilizing twisted copper pair telephone
lines."
C. In Section 1.1, the definition of "Licensed
Products" is replaced with the following:
""Licensed Products" shall mean the products
manufactured and sold, and services
provided, by the Elastic Business as of the
Effective Date, and the products which the
business records establish are being
designed or funded by the Elastic Business
as of the Effective Date to be manufactured
and sold by or on behalf of the Elastic
Business, and natural evolutions thereof in
the field of the Elastic Business and in the
xDSL Field of Use, including without
limitation the Etherloop Products;"
II. DELETION OF GRANTBACK LICENSE TO IMPROVEMENTS TO THE
LICENSED INTELLECTUAL PROPERTY. The text of Article VIII is deleted in
its entirety.
III. AMENDMENT OF GRANTBACK LICENSE. The text of Article
VII is deleted in its entirety and replaced with the following:
"ARTICLE VII GRANTBACK LICENSE TO TRANSFERRED SOFTWARE
Subject to the terms of Section 10.04 of the Contribution
Agreement, Elastic hereby grants to Nortel Networks, its
Subsidiaries and Affiliates as unrestricted, irrevocable,
non-exclusive, worldwide, perpetual (or full-term, as the case
may be), fully paid-up license under the Transferred Software
and under any Improvements actually delivered to Nortel
Networks pursuant to Article VIII to make, have made, use,
lease, offer to sell and import all products and to copy,
modify and sublicense and distribute relevant material for
such purposes. Such license shall include the right to
sublicense such rights to purchasers and users of such
products but not to otherwise sublicense such rights."
IV. AMENDMENT TO ASSIGNMENT OF RIGHTS. The text of
Section 18.1 is deleted in its entirety and replaced with the
following:
"18.1 Elastic shall not assign or transfer this Agreement or
any of the rights or obligations granted hereunder whether by
merger, operation of law or otherwise, except that Elastic may
assign this Agreement to (i) a party that acquires all or
substantially all of the Elastic Business, (ii) an Affiliate,
(iii) a successor in interest or successor corporation in
connection with a merger, reorganization or consolidation ((i)
- (iii) hereinafter referred to as ("Successor")) at any time
upon prior written notice to Nortel Networks; provided that,
such Successor agrees in writing to be bound by all the terms
and conditions of this Agreement."
V. INCORPORATION AND RATIFICATION. Except as
specifically amended and modified by this Amendment, the Agreement
shall remain in full force and effect and is hereby ratified and
affirmed by Nortel Networks and Elastic.
NORTEL NETWORKS LTD.
(F/K/A NORTEL NETWORKS CORPORATION) ELASTIC NETWORKS INC.
/s/ Xxxxx X. Xxxxxxx /s/ Xxx X. Xxxx
------------------------------------ -----------------------------------------
Authorized Signature Authorized Signature
Xxx X. Xxxx, President and CEO
------------------------------------ -----------------------------------------
Printed Name and Title Printed Name and Title
