EXHIBIT 10.2
LICENSE AGREEMENT
BETWEEN
YUNINETWORKS INC.
AND
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
FOR
CASE NO. SD 2000-052
TABLE OF CONTENTS
Article 1: Definitions
Article 2: Grant
Article 3: Considerations
Article 4: Reports, Records and Payments
Article 5: Patent Matters
Article 6: Governmental Matters
Article 7: Termination of Agreement
Article 8: Limited Warranty and Indemnification
Article 9: Use of Names and Trademarks
Article 10: Miscellaneous Provisions
**Confidential Treatment Requested
Under 17 C.F.R. xx.xx. 200.80(b)(4),
200.83 and 230.406
LICENSE AGREEMENT
This agreement ("Agreement") is made by and between YuniNetworks Inc., a
California corporation having an address at 00000 Xxxx Xxxxx Xxxxx, Xxxxx 000,
Xxx Xxxxx, Xxxxxxxxxx 00000 ("LICENSEE") and The Regents Of The University Of
California, a California corporation having its statewide administrative offices
at 0000 Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000-0000 ("UNIVERSITY"),
represented by its San Diego campus having an address at University of
California, San Diego, Technology Transfer & Intellectual Property Services,
Mail-code 0910, 0000 Xxxxxx Xxxxx, Xx Xxxxx, Xxxxxxxxxx 00000-0000 ("UCSD").
This Agreement is effective on March 14, 2000 ("Effective Date").
RECITALS
WHEREAS, the technical information and inventions disclosed in UCSD Case Docket
No. SD2000-052 and titled "A Scalable Terabit Switch Design with 40Gbps Link
Rate and Mechanisms to Support Earliest-deadline-first Scheduling in the Said
Switch" (collectively, the "Invention Disclosure"), were made in the course of
research at UCSD by Xx. Xxxxxxx Xxx and associates (hereinafter and
collectively, the "Inventors") and are covered by Patent Rights as defined
below;
WHEREAS, the research was sponsored in part by the Government of the United
States of America and as a consequence this license is subject to overriding
obligations to the Federal Government under 35 U.S.C. (S)(S)200-212
and applicable regulations;
WHEREAS, the Inventors are employees of UCSD, and they are obligated to assign
all of their right, title and interest in the Invention to UNIVERSITY;
WHEREAS, LICENSEE entered into a Letter of Intent (UC Control No. 2000-30-0138)
with UNIVERSITY, effective 16 October 1999, ("Letter of Intent"), for the
purpose of negotiating this Agreement;
WHEREAS, UNIVERSITY is desirous that the Invention be developed and utilized to
the fullest possible extent so that its benefits can be enjoyed by the general
public;
WHEREAS, LICENSEE is desirous of obtaining certain rights from UNIVERSITY for
commercial development, use, and sale of the Invention, and the UNIVERSITY is
willing to grant such rights; and
WHEREAS, LICENSEE understands that UNIVERSITY may publish or otherwise
disseminate information concerning the Invention (as defined below) at any time
and that LICENSEE is paying consideration thereunder for its early access to the
Invention, not continued secrecy therein.
1.
WHEREAS, the Invention was developed without Government support.
NOW, THEREFORE, the parties agree:
ARTICLE 1. DEFINITIONS
The terms, as defined herein, shall have the same meanings in both their
singular and plural forms.
1.1 "Affiliate" means any corporation or other business entity in which
LICENSEE owns or controls, directly or indirectly, at least twenty percent
(20%) of the outstanding stock or other voting rights entitled to elect
directors, or in which LICENSEE is owned or controlled directly or
indirectly by at least twenty percent (20%) of the outstanding stock or
other voting rights entitled to elect directors; but in any country where
the local law does not permit foreign equity participation of at least
twenty percent (20%), then an "Affiliate" includes any company in which
LICENSEE owns or controls or is owned or controlled by, directly or
indirectly, the maximum percentage of outstanding stock or voting rights
permitted by local law.
1.2 "Sublicensee" means a third party to whom LICENSEE grants a sublicense of
certain rights granted to LICENSEE under this Agreement.
1.3 "Field" means the field of packet-switched communications including,
without limitation, high-speed networked communications.
1.4 "Territory" means the entire world.
1.5 "Term" means the period of time beginning on the Effective Date and ending
on the the expiration date of the last-to-expire patent in the Patent
Rights.
1.6 "Patent Rights" means any of the following: the U.S. provisional patent
application, Serial Number yet to be assigned, entitled "AN
EARLIEST-DEADLINE-FIRST QUEUING PACKET SWITCHING ARCHITECTURE AND METHOD",
filed 07 October 1999 by Inventors and assigned to UNIVERSITY (and any
other patent applications based upon the Invention) and all applications
claiming the priority thereof (collectively, the "parent application"),
including continuing applications of the parent application and including
divisions, substitutions, and continuations-in-part (but only to extent the
claims thereof are enabled by disclosure of the parent application) of the
parent application; any patents issuing on any of the above applications
including reissues, reexaminations and extensions; and any corresponding
foreign applications or patents.
1.7 "Invention" means all technical information, inventions (whether or not
patentable) and know-how described within the Invention Disclosure,
provided however that the Invention does not include any technical
information, inventions or know-how
2.
developed or discovered by LICENSEE without involving a UNIVERSITY
employee, using UNIVERSITY facilities, or using funding received from the
UNIVERSITY.
1.8 "Sponsor Rights" means all the applicable provisions of any license to the
United States Government executed by UNIVERSITY and the overriding
obligations to the Federal Government under 35 U.S.C. (S)(S)200-212 and
applicable governmental implementing regulations.
1.9 "Licensed Method" means: (i) any method that uses the Invention, or (ii)
any method, the use of which would constitute, but for the license granted
to LICENSEE under this Agreement, an infringement of any pending or issued
and unexpired claim within Patent Rights.
1.10 "Licensed Product" means any services, composition or product that: (i)
uses the Invention or is produced by the Licensed Method, (ii) is covered
by the claims of Patent Rights, and (iii) upon manufacture, use, sale,
offer for sale, or importation would constitute, but for the license
granted to LICENSEE by UNIVERSITY herein, an infringement of any pending or
issued, unexpired and valid claim within the Patent Rights in the
applicable country.
1.11 "Net Sublicensee Revenues" means the total of the gross revenues actually
received by a Sublicensee from the sale of Licensed Products by such
Sublicensee, less the sum of the following actual and customary deductions
where applicable and separately listed: cash, trade, or quantity discounts;
sales, use, tariff, custom, import/export duties or other excise taxes
imposed on particular sales (except for value-added and income taxes
imposed on the sales of Licensed Products in foreign countries); costs of
insurance, packing, and transportation charges; or credits to customers
because of rejections or returns. For purposes of calculating Net
Sublicensee Revenues, transfers to an affiliate of Sublicensee of Licensed
Product under this Agreement for (i) end use (but not resale) by such
affiliate shall be treated as sales by such Sublicensee at list price of
such Sublicensee, or (ii) resale by such affiliate shall be treated as
sales at the list price of such affiliate.
1.12 "Patent Costs" means all out-of-pocket expenses for the preparation,
filing, prosecution, and maintenance of all United States and foreign
patents included in Patent Rights. Patent Costs shall also include
reasonable out-of-pocket expenses for patentability opinions, inventorship
determination, preparation and prosecution of patent application,
re-examination, re-issue, interference, and opposition activities related
to patents or applications in Patent Rights.
1.13 "Combination Product" means any product which is a Licensed Product and
contains one or more other products or product components that (i) do not
use Invention or Patent Rights; (ii) the sale, use or import by themselves
do not contribute to the
3.
infringement of Patent Rights; (iii) and enhance the market price of the
final product(s) sold, used or imported by LICENSEE, its Sublicensee, or an
Affiliate.
1.14 "Sublicensing Revenues" means the gross revenues actually received by
LICENSEE (whether in the form of upfront payments, license fees, license
maintenance fees, milestone payments, royalties, minimum royalties or
advance royalties) from its sublicensees of the Patent Rights under this
Agreement and allocable to the sublicensing of such Patent Rights.
Sublicensing Revenues excludes specifically any amounts received by
LICENSEE from a sublicensee (to the extent such amounts are unrelated to
any sublicense of the Patent Rights or Invention) (i) as research and
development funding or support payments, (ii) for the purchase of an equity
interest in LICENSEE, (iii) as a loan to LICENSEE, or (iv) any advanced
royalty payments, options or other payments to LICENSEE that are refundable
to such sublicensee (collectively, "Refundable Payments"), but only until
such time as such Refundable Payments become non-refundable. For the
avoidance of doubt, Sublicensing Revenues shall not be deemed to include
any royalty or other amounts payable LICENSEE in connection with any
sublicensee's manufacture of Licensed Products or Combination Products for
LICENSEE.
ARTICLE 2. GRANTS
2.1 License. Subject to the limitations set forth in this Agreement, UNIVERSITY
hereby grants to LICENSEE, and LICENSEE hereby accepts, a license under
UNIVERSITY's intellectual property rights in the Invention, including, without
limitation, the Patent Rights, to make, have made, use, sell, offer for sale,
distribute and import Licensed Products and to practice Licensed Methods and to
use the Invention, in the Field within the Territory and during the Term. The
license granted herein is exclusive and UNIVERSITY shall not grant to third
parties a further license under Patent Rights or to use the Invention in the
Field, within the Territory and during the Term.
2.2 Sublicense.
(a) The license granted in Paragraph 2.1 includes the right of LICENSEE to
grant sublicense to third parties during the Term but only for as long the
license is exclusive.
(b) With respect to sublicense granted pursuant to Paragraph 2.2(a), LICENSEE
shall:
(1) not receive, or agree to receive, anything of value in lieu of cash as
considerations from a third party under a sublicense granted pursuant
to Paragraph 2.2(a) without the express written consent of UNIVERSITY,
which shall not be withheld provided that LICENSEE can reasonably
demonstrate the equivalent cash value of such considerations.
4.
(2) to the extent applicable, include all of the rights of and obligations
due to UNIVERSITY (and, if applicable, the Sponsor's Rights) and
contained in this Agreement;
(3) promptly provide UNIVERSITY with a copy of a summary of the
non-confidential material terms of each sublicense issued; and
(4) collect and forward payment of all payments due, directly or
indirectly, to UNIVERSITY from Sublicensees and summarize and deliver
all reports due, directly or indirectly, to UNIVERSITY from
Sublicensees.
(c) Upon termination of this Agreement for any reason, UNIVERSITY, at its sole
discretion, shall determine whether LICENSEE shall cancel or assign to
UNIVERSITY any and all Sublicenses. In the event UNIVERSITY elects to
cancel the sublicense of any Sublicensee, such Sublicensee may make a
written request to University to enter into negotiations for a license
agreement with UNIVERSITY. UNIVERSITY agrees to negotiate in good faith a
license agreement, with a grant of rights similar in scope to that granted
by LICENSEE to such Sublicensee, with terms and conditions substantially
equivalent to those in this Agreement.
2.3 Reservation of Rights. UNIVERSITY reserves the right to:
(a) use the Invention and Patent Rights exclusively for educational and
research purposes, but except as otherwise provided herein shall not in any
way use, sublicense, or allow use of, the Invention and Patent Rights for
any commercial purpose; and
(b) publish or otherwise disseminate any information about the Invention at any
time; provided however that UNIVERSITY shall provide Licensee thirty (30)
days prior notice of any contemplated publication or dissemination of such
information together with an advance copy thereof.
(c) allow other nonprofit institutions to use Invention and Patent Rights for
educational and non-commercial research purposes in their facilities.
2.4 Improvements. All improvements or developments to the Invention made solely
by employees or agents of LICENSEE shall be the sole property of LICENSEE.
ARTICLE 3. CONSIDERATIONS
3.1 Fees and Royalties. The parties hereto understand that the fees and
royalties payable by LICENSEE to UNIVERSITY under this Agreement are
partial considerations for the license granted herein to LICENSEE under the
Invention, and Patent Rights. LICENSEE shall pay UNIVERSITY, during the
Term:
5.
(a) a license fee of [...***...] payable within [...***...] of the
Effective Date;
(b) license user fees of [...***...] per year accruing during the
[...***...] following the Effective Date and payable on [...***...] of
the Effective Date; and annual technology usage fees of [...***...]
accruing beginning as of the [...***...] of the Effective Date and
payable on the [...***...] of the Effective Date and on [...***...] of
the Effective Date thereafter during the Term; and
(c) [...***...] of [...***...] sublicense fees received by Licensee from
its sublicensees that are not [...***...], and [...***...] sublicense
royalty payment received by licensee from its sublicensees on
[...***...] of [...***...], the [...***...] of the [...***...]; or
[...***...] of the [...***...].
All fees and royalty payments specified in Paragraphs 3.1(a) through 3.1(c)
above shall be paid by LICENSEE pursuant to Paragraph 4.3 and shall be
delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.
3.2 Patent costs. Licensee shall reimburse University [...***...] Patent Costs
[...***...] within thirty (30) days following receipt by LICENSEE of an itemized
invoice from UNIVERSITY.
3.3 Due Diligence.
(a) LICENSEE shall:
(1) use reasonable efforts to effect introduction of the Licensed Products
into the commercial market as soon as practical consistent with sound
and reasonable business practices and judgment;
(2) annually spend not less than [...***...] U.S. Dollars (US$[...***...])
for the development of Licensed Products during the first [...***...]
years of this Agreement. LICENSEE may, at its sole option, fund the
research of any one of the Inventors and credit the amount of such
funding actually paid to UCSD against its obligation under this
paragraph;
(3) submit to UNIVERSITY a development, marketing, distribution, and
sublicensing plan covering Licensed Products worldwide within
[...***...] from the Effective Date of this Agreement;
6.
* Confidential Treatment Requested
(4) use reasonable commercial efforts to have the first sale and shipment
of a Licensed Product in the United States occur within thirty-six
months of the Effective Date of this Agreement;
(5) use reasonable commercial efforts to fill the market demand for
Licensed Products following commencement of marketing at any time
during the term of this Agreement; and
(6) use reasonable commercial efforts to obtain all necessary governmental
approvals world-wide for the manufacture, use and sale of Licensed
Products if and as required.
(b) If LICENSEE fails to perform any of its obligations specified in
Paragraphs 3.3(a)(1)-(6), then UNIVERSITY shall so notify LICENSEE of failure to
perform. LICENSEE shall have the right and option to extend the target date of
any such diligent obligation for a period of [...***...] upon the payment of
$[...***...] within thirty (30) days of the extension date for each [...***...]
extension option exercised by LICENSEE. Should LICENSEE opt not to extend the
obligation or fail to meet it by the extended target date, then UNIVERSITY shall
have the right and option to either terminate this Agreement or change
LICENSEE'S exclusive license to a nonexclusive license. This right, if exercised
by UNIVERSITY, supersedes the rights granted in Article 2. The right to
terminate this Agreement or reduce LICENSEE's exclusive license granted
hereunder to a non-exclusive license shall be UNIVERSITY'S sole remedy for
breach of Paragraph 3.3. However, if LICENSEE is unable to perform any of the
due diligence obligations set forth in Paragraph 3.3 due to hardships beyond
LICENSEE's control while LICENSEE has demonstrated diligent commercial efforts
to perform these obligations, then UNIVERSITY may extend the dates as
appropriate (after conferring with LICENSEE in good faith and, in any event, as
appropriate and as needed) in writing to LICENSEE, and UNIVERSITY shall not
terminate this Agreement or reduce LICENSEE's exclusive license to a
non-exclusive license.
(c) At the request of either party, any controversy or claim arising out of
or relating to the diligence provisions of Paragraph 3.3 shall be settled by
arbitration conducted in San Diego, CA in accordance with the then current
Licensing Agreement Arbitration Rules of the American Arbitration Association.
Judgment upon the award rendered by the arbitrator(s) shall be binding on the
parties and may be entered by either party in the court or forum, state or
federal, having jurisdiction. In determination of due diligence, the arbitrator
may determine solely the issues of fact or law with respect to termination of
LICENSEE's or UNIVERSITY's respective rights under this Agreement but shall not
have the authority to award monetary damages or grant equitable relief
(d) To exercise either the right to terminate this Agreement or to reduce
the license to a non-exclusive license for lack of diligence required in
Paragraph 3.3, UNIVERSITY must give LICENSEE written notice of the deficiency.
The LICENSEE thereafter has sixty (60) days to cure the deficiency or to request
arbitration. If
7.
* Confidential Treatment Requested
UNIVERSITY has not received a written request for arbitration or satisfactory
tangible evidence that the deficiency has been cured by the end of the sixty
(60) day period, then UNIVERSITY may, at its option, either terminate the
Agreement or reduce LICENSEE's exclusive license to a non-exclusive license by
giving written notice to LICENSEE. These notices shall be subject to Paragraph
10.1 (Correspondence).
ARTICLE 4. REPORTS, RECORDS AND PAYMENTS
4.1 Reports.
(a) Progress Reports.
(1) Beginning one (1) year after the Effective Date and ending on the date
of first commercial sale of a Licensed Product in the United States,
LICENSEE shall submit to UNIVERSITY semi-annual progress reports
covering LICENSEE'S (and Affiliate's and Sublicensee's) activities to
develop and test all Licensed Products and obtain any and all
governmental approvals necessary for marketing the same. Such reports
shall include a summary of work completed; summary of work in
progress; current schedule of anticipated events or milestones; market
plans for introduction of Licensed Products; and summary of resources
(dollar value) spent in the reporting period.
(2) LICENSEE shall also report to UNIVERSITY, in its immediately
subsequent progress report, the date of first commercial sale of a
Licensed Product in each country.
(b) Royalty Reports. After the first commercial sale of a Licensed Product
anywhere in the world, LICENSEE shall submit to UNIVERSITY quarterly
royalty reports on or before each February 28, May 31, August 31 and
November 30 of each year. Each royalty report shall cover LICENSEE'S (and
each Affiliate's and Sublicensee's) most recently completed calendar
quarter and shall show:
(1) Sublicensing Revenues received during the most recently completed
calendar quarter in US dollars, payable with respect thereto;
(2) the method used to calculate the royalties on such Sublicensing
Revenues; and
(3) the exchange rates used.
8.
If no Sublicensing Revenues have been received by LICENSEE during any
reporting period, LICENSEE shall so report.
4.2 Records & Audits.
(a) LICENSEE shall keep, and shall require its Affiliates and Sublicensees to
keep, accurate and correct records of all Licensed Products manufactured,
used, and sold, and sublicense fees received under this Agreement. Such
records shall be retained by LICENSEE for at least five (5) years following
a given reporting period.
(b) All records shall be available during normal business hours for inspection
at the expense of UNIVERSITY by a Certified Public Accountant selected by
UNIVERSITY, and reasonably acceptable to LICENSEE, and in compliance with
the other terms of this Agreement for the sole purpose of verifying reports
and payments. Such inspector shall be bound to hold all information in
confidence and shall not disclose to UNIVERSITY any information other than
information relating to the accuracy of reports and payments made under
this Agreement or other compliance issues. In the event that any such
inspection shows an under reporting and underpayment in excess of five
percent (5%) for any twelve (12) month period, then LICENSEE shall pay the
cost of the audit as well as any additional sum that would have been
payable to UNIVERSITY had the LICENSEE reported correctly, plus an interest
charge at a rate of ten percent (10%) per year. Such interest shall be
calculated from the date the correct payment was due to UNIVERSITY up to
the date when such payment is actually made by LICENSEE. For underpayment
not in excess of five percent (5%) for any twelve (12) month period,
LICENSEE shall pay the difference within thirty (30) days without interest
charge or inspection cost. In the event of any overpayment, UNIVERSITY
shall credit, against future amounts payable by LICENSEE, any amounts paid
by LICENSEE in excess of the amount of the correct payment due LICENSEE.
4.3 Payments.
(a) All fees and royalties due UNIVERSITY shall be paid in United States
dollars and all checks shall be made payable to "The Regents of the
University of California", referencing UNIVERSITY'S taxpayer identification
number, 00-0000000. When Licensed Products are sold in currencies other
than United States dollars, LICENSEE shall first determine the earned
royalty in the currency of the country in which Licensed Products were sold
and then convert the amount into equivalent United States funds, using the
exchange rate quoted in the Wall Street Journal on the last business day of
the applicable reporting period.
(b) Royalty Payments.
9.
(1) Royalties shall accrue when the Sublicensing Revenues upon which such
royalties are based actually arise.
(2) LICENSEE shall pay earned royalties due to Sublicensing Revenues
quarterly on or before February 28, May 31, August 31 and November 30
of each calendar year. Each such payment shall be for such earned
royalties accrued within LICENSEE'S most recently completed calendar
quarter.
(3) Royalties earned on sales occurring or under sublicense granted
pursuant to this Agreement in any country outside the United States
shall not be reduced by LICENSEE for any taxes, fees, or other charges
imposed by the government of such country on the payment of royalty
income, except that all payments made by LICENSEE in fulfillment of
UNIVERSITY'S tax liability in any particular country may be credited
against earned royalties or fees due UNIVERSITY for that country.
LICENSEE shall pay all bank charges resulting from the transfer of
such royalty payments.
(4) If at any time legal restrictions prevent the prompt remittance of
part or all royalties by LICENSEE with respect to any country where a
Licensed Product is sold or a sublicense is granted pursuant to this
Agreement, LICENSEE shall convert the amount owed to UNIVERSITY into
US currency and shall pay UNIVERSITY fifty percent (50%) of such
amount directly from its US sources of fund for as long as the legal
restrictions apply, and the remainder of such amount within thirty
(30) days of the removal of any such restrictions; provided however
that LICENSEE shall be obligated to pay UNIVERSITY prior to the
removal of such restrictions only to the extent the making of any such
payment will not have a material adverse effect on LICENSEE's capacity
to do business in the normal course.
(5) LICENSEE shall not collect royalties from, or cause to be paid on
Licensed Products sold to the account of the US Government or any
agency thereof as provided for in the license to the US Government.
(6) In the event that any patent or patent claim within Patent Rights is
held invalid in a final decision by a patent office from which no
appeal or additional patent prosecution has been or can be taken, or
by a court of competent jurisdiction and last resort and from which no
appeal has or can be taken, all obligation to pay royalties based
solely on that patent or claim or any claim patentably indistinct
therefrom shall cease as of the date of such final decision. LICENSEE
shall not, however, be relieved from paying any royalties that accrued
before the date of such final decision, that are based on another
patent or claim not involved in such final
10.
decision, or that are based solely on LICENSEE's internal use of the
Invention.
(b) Late Payments. In the event royalty, reimbursement and/or fee payments are
not received by UNIVERSITY when due, LICENSEE shall pay to UNIVERSITY
interest charges at a rate of one percent (1%) per month. Such interest
shall be calculated from the date payment was due until actually received
by UNIVERSITY. The payment of such interest shall not foreclose UNIVERSITY
from exercising any other rights it may have as a consequence of the
lateness of any payment. In no event shall this paragraph be construed as a
grant of permission for any payment delays.
ARTICLE 5. PATENT MATTERS
5.1 Patent Prosecution and Maintenance.
(a) Provided that LICENSEE has reimbursed UNIVERSITY for Patent Costs pursuant
to Paragraph 3.2, UNIVERSITY shall diligently prosecute and maintain the
United States and, if available, foreign patents, and applications in
Patent Rights using counsel of its choice. UNIVERSITY shall provide
LICENSEE with copies of all relevant documentation relating to such
prosecution and LICENSEE shall keep this documentation confidential. The
counsel shall take instructions only from UNIVERSITY, and all patents and
patent applications in Patent Rights shall be assigned solely to
UNIVERSITY.
(b) Subsequent to the Initial Filing the UNIVERSITY shall provide LICENSEE with
the opportunity to review any documentation pertinent to such prosecution
prior to filing with the United States Patent and Trademark Office or
applicable foreign governmental agency. UNIVERSITY shall reasonably
consider amending any patent application in Patent Rights to include
additional claims and technical description requested by LICENSEE to
protect the products contemplated to be sold by LICENSEE under this
Agreement; provided however that (i) UNIVERSITY shall not be obligated to
make such amendment to the extent it can reasonably demonstrate to LICENSEE
that such amendment would have a material adverse effect on the validity of
any patent potentially issuing from such application, and (ii) any such
additional claims need be enabled by the original or amended technical
description in a patent application in Patent Rights.
(c) LICENSEE may elect to terminate its reimbursement obligations with respect
to any patent application or patent in Patent Rights upon three (3) months
written notice to UNIVERSITY. UNIVERSITY shall use reasonable efforts to
curtail further Patent Costs for such application or patent when such
notice of termination is received from LICENSEE. UNIVERSITY, in its sole
discretion
11.
and at its sole expense, may continue prosecution and maintenance of said
application or patent, and LICENSEE shall then have no further license with
respect thereto. Non-payment of any portion of Patent Costs with respect to
any application or patent may be deemed by UNIVERSITY as an election by
LICENSEE to terminate its reimbursement obligations with respect to such
application or patent; provided however that UNIVERSITY shall advise
LICENSEE in writing of any such non-payment and shall provide LICENSEE a
reasonable opportunity to make such payment prior to deeming such payment
as such an election.
5.2 Patent Infringement.
(a) If LICENSEE learns of any substantial infringement of Patent Rights,
LICENSEE shall so inform UNIVERSITY and provide UNIVERSITY with reasonable
evidence of the infringement. Neither party shall notify a third party of
the infringement of Patent Rights without the consent of the other party.
Both parties shall use reasonable efforts and cooperation to terminate
infringement without litigation.
(b) LICENSEE may request UNIVERSITY to take legal action against such third
party for the infringement of Patent Rights. Such request shall be made in
writing and shall include reasonable evidence of such infringement and
damages to LICENSEE. If the infringing activity has not abated ninety (90)
days following LICENSEE'S request, UNIVERSITY shall elect to or not to
commence suit on its own account. UNIVERSITY shall give notice of its
election in writing to LICENSEE by the end of the one-hundredth (100th) day
after receiving notice of such request from LICENSEE, provided that
LICENSEE may request UNIVERSITY to provide such notice prior to expiration
of such 100 day period in consideration of LICENSEE's payment of a mutually
agreed upon sum. LICENSEE may thereafter bring suit for patent infringement
at its own expense, if and only if UNIVERSITY elects not to commence suit
and the infringement occurred in a jurisdiction where LICENSEE has an
exclusive license under this Agreement. If LICENSEE elects to bring suit,
UNIVERSITY may join that suit at its own expense.
(c) Recoveries from actions brought pursuant to Paragraph 5.2(b) shall belong
to the party bringing suit. Legal actions brought jointly by UNIVERSITY and
LICENSEE and fully participated in by both shall be at the joint expense of
the parties and all recoveries shall be shared jointly by them in
proportion to the share of expense paid by each party.
(d) Each party shall cooperate with the other in litigation proceedings at the
expense of the party bringing suit. Litigation shall be controlled by the
party bringing the suit, except that UNIVERSITY may be represented by
counsel of its choice, at its sole expense, in any suit brought by LICENSEE
and LICENSEE may be
12.
represented by counsel of its choice, at its sole expense, in any action
brought by UNIVERSITY.
5.3 Patent Marking. LICENSEE shall xxxx all Licensed Products made, used or
sold under the terms of this Agreement, or their containers, in accordance with
the applicable patent marking laws.
ARTICLE 6. GOVERNMENTAL MATTERS
6.1 Governmental Approval or Registration. If this Agreement or any associated
transaction is required by the law of any nation to be either approved or
registered with any governmental agency, LICENSEE shall assume all legal
obligations to do so. LICENSEE shall notify UNIVERSITY if it becomes aware that
this Agreement is subject to a United States or foreign government reporting or
approval requirement. LICENSEE shall make all necessary filings and pay all
costs including fees, penalties, and all other out-of-pocket costs associated
with such reporting or approval process.
6.2 Export Control Laws. LICENSEE shall observe all applicable United States
and foreign laws with respect to the transfer of Licensed Products and related
technical data to foreign countries, including, without limitation, the
International Traffic in Arms Regulations and the Export Administration
Regulations.
6.3 Preference for United States Industry. If LICENSEE sells a Licensed Product
or Combination Product in the US, LICENSEE shall manufacture said product
substantially in the US.
ARTICLE 7. TERMINATION OF THE AGREEMENT
7.1 Termination by The Regents. If LICENSEE fails to perform or violates any
term of this Agreement, then except as is otherwise provided by Paragraph 3.3
UNIVERSITY may give written notice of default ("Notice of Default") to LICENSEE.
If LICENSEE fails to cure the default within sixty (60) days of the Notice of
Default, UNIVERSITY may terminate this Agreement and the license granted herein
by a second written notice ("Notice of Termination") to LICENSEE. If a Notice of
Termination is sent to LICENSEE, this Agreement shall automatically terminate on
the effective date of that notice. Termination shall not relieve LICENSEE of its
obligation to pay any fees or royalties owed at the time of termination and
shall not impair any accrued right of UNIVERSITY.
7.2 Termination by Licensee.
(a) LICENSEE shall have the right at any time and for any reason to terminate
this Agreement upon a ninety (90) day written notice to UNIVERSITY. Said
notice shall state LICENSEE'S reason for terminating this Agreement.
13.
(b) Any termination under Paragraph 7.2(a) shall not relieve LICENSEE of any
obligation or liability accrued under this Agreement prior to termination
or rescind any payment made to UNIVERSITY or action by LICENSEE prior to
the time termination becomes effective. Termination shall not affect in any
manner any rights of UNIVERSITY arising under this Agreement prior to
termination.
7.3 Survival on Termination. The following Paragraphs and Articles shall
survive the termination of this Agreement:
(a) Article 4 (REPORTS, RECORDS AND PAYMENTS);
(b) Paragraph 7.4 (Disposition of Licensed Products on Hand);
(c) Paragraph 8.2 (Indemnification);
(d) Article 9 (USE OF NAMES AND TRADEMARKS);
(e) Paragraph 10.2 (Secrecy);
(e) Paragraph 10.5 (Failure to Perform); and
(f) Paragraph 7.3 (Survival on Termination).
7.4 Disposition of Licensed Products on Hand. Upon termination of this
Agreement, LICENSEE may dispose of all previously made or partially made
Licensed Product within a period of one hundred and twenty (120) days of the
effective date of such termination provided that the sale of such Licensed
Product by LICENSEE, its Sublicensees, or Affiliates shall be subject to the
terms of this Agreement, including but not limited to the rendering of reports
and payment of royalties required under this Agreement.
ARTICLE 8. LIMITED WARRANTY AND INDEMNIFICATION
8.1 Limited Warranty.
(a) UNIVERSITY warrants that it has the lawful right to grant this license, and
that it has not granted, and will not grant, any licenses to any other
entity that would restrict rights granted hereunder.
(b) THE LICENSE GRANTED HEREIN AND THE INVENTION ARE PROVIDED "AS IS" AND
WITHOUT WARRANTY OF MERCHANTABILITY OR WARRANTY OF FITNESS FOR A PARTICULAR
PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. UNIVERSITY MAKES NO
REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCT, LICENSED METHOD OR
THE USE OF PATENT RIGHTS WILL NOT
14.
INFRINGE ANY OTHER PATENT OR OTHER PROPRIETARY RIGHTS; PROVIDED HOWEVER
THAT UNIVERSITY IS NOT AWARE OF ANY SUCH INFRINGEMENT AS OF THE EFFECTIVE
DATE.
(c) IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION, LOST PROFITS)
RESULTING FROM PERFORMANCE OR FAILURE TO PERFORM UNDER THIS AGREEMENT,
EXERCISE OF THE LICENSE GRANTED HEREIN OR THE USE OF THE INVENTION,
LICENSED PRODUCT, OR LICENSED METHOD.
(d) Nothing in this Agreement shall be construed as:
(1) a warranty or representation by UNIVERSITY as to the validity or scope
of any Patent Rights;
(2) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is
or shall be free from infringement of patents of third parties;
(3) an obligation to bring or prosecute actions or suits against third
parties for patent infringement except as provided in Paragraph 5.2
hereof;
(4) conferring by implication, estoppel or otherwise any license or rights
under any patents of UNIVERSITY other than Patent Rights as defined in
this Agreement, regardless of whether those patents are dominant or
subordinate to Patent Rights; provided however that should any such
patent of UNIVERSITY cover a Licensed Product ("Relevant Patent"),
then UNIVERSITY shall proceed as provided in subsection (e) below in
connection with licensing of such Relevant Patent;
(5) an obligation to furnish any know-how not provided in Patent Rights
and the Invention; or
(6) an obligation to update the Invention.
(e) UNIVERSITY shall provide LICENSEE prior written notice of its intent to
license rights to any Relevant Patent and the proposed terms of such
license (the "Offer"); provided however that (i) UNIVERSITY shall otherwise
not be obligated to inform LICENSEE of the existence of any such Relevant
Patent, and (ii) UNIVERSITY shall only be obligated to make such Offer to
LICENSEE to the extent UNIVERSITY has the right to license such Relevant
Patent to LICENSEE. During the 30-day period following such notice from
UNIVERSITY, LICENSEE may accept the Offer or negotiate with UNIVERSITY
15.
mutually acceptable modifications to such Offer (the "Amended Offer"). If,
during such 30-day period, LICENSEE accepts the Offer or LICENSEE and
UNIVERSITY agree in writing to an Amended Offer, then the parties will
enter into a license agreement on the terms set forth in such Offer or
Amended Offer within 60 days thereafter. If LICENSEE does not accept the
Offer or LICENSEE and UNIVERSITY do not agree in writing to an Amended
Offer during such 30-day period, or if the parties fail to enter into a
license agreement on the terms set forth in the Offer or Amended Offer
within such 60-day period, then, for 180 days thereafter, UNIVERSITY shall
be free to license rights to such Relevant Patent to a third party on terms
no more favorable to the third party than those last offered by UNIVERSITY
to LICENSEE.
8.2 Indemnification.
(a) LICENSEE shall indemnify, hold harmless, and defend UNIVERSITY, its
officers, employees, and agents; the sponsors of the research that led to
the Invention; and the Inventors of the patents and patent applications in
Patent Rights and their employers against any and all claims, suits,
losses, damage, costs, fees, and expenses resulting from or arising out of
exercise of this license or any sublicense. This indemnification shall
include, but not be limited to, any product liability.
(b) In the event of any infringement or likely infringement by the Invention of
any third party's intellectual property (collectively, "Infringing
Rights"), the UNIVERSITY and LICENSEE shall cooperate in good faith and on
a mutual and reasonable basis, with each party responsible for its
respective expenses:
(1) To negotiate and settle and dispute with any such third party
concerning the Infringing Rights, and otherwise resolve any such
infringement and secure Licensee's continued rights to the Infringing
Rights; and
(2) To make reasonable and equitable adjustment, if any, to the royalties
paid or otherwise due under this Agreement in respect of licenses or
other rights obtained by LICENSEE from third parties under such
Infringing Rights in order for LICENSEE to continue exercise rights
granted under this Agreement.
(c) LICENSEE, at its sole cost and expense, shall insure its activities in
connection with the work under this Agreement and, prior to selling any
Licensed Products, obtain, keep in force and maintain insurance or an
equivalent program of self insurance as follows:
(1) comprehensive or commercial general liability insurance (contractual
liability included) with limits of at least: (i) each occurrence,
$1,000,000; (ii) products/completed operations aggregate, $5,000,000;
(iii) personal
16.
and advertising injury, $1,000,000; and (iv) general aggregate
(commercial form only), $5,000,000; and
(2) the coverage and limits referred to above shall not in any way limit
the liability of LICENSEE.
(d) LICENSEE shall furnish UNIVERSITY with certificates of insurance showing
compliance with all requirements prior to selling any Licensed Products.
Such certificates shall: (i) provide for thirty (30) day advance written
notice to UNIVERSITY of any modification; (ii) indicate that UNIVERSITY has
been endorsed as an additional insured under the coverage referred to
above; and (iii) include a provision that the coverage shall be primary and
shall not participate with nor shall be excess over any valid and
collectable insurance or program of self-insurance carried or maintained by
UNIVERSITY.
(e) UNIVERSITY shall notify LICENSEE in writing of any claim or suit brought
against UNIVERSITY in respect of which UNIVERSITY intends to invoke the
provisions of this Article. LICENSEE shall keep UNIVERSITY informed on a
current basis of its defense of any claims under this Article.
ARTICLE 9. USE OF NAMES AND TRADEMARKS
9.1 Nothing contained in this Agreement confers any right to use in
advertising, publicity, or other promotional activities any name, trade name,
trademark, or other designation of either party hereto (including contraction,
abbreviation or simulation of any of the foregoing). Unless required by law, the
use by LICENSEE of the name, "The Regents Of The University Of California" or
"The University of California" or the name of any campus of the University Of
California is prohibited, without the express written consent of UNIVERSITY.
Notwithstanding the foregoing, LICENSEE may use the name "The Regents Of The
University Of California" or "The University of California", "The University of
California, San Diego" or "UCSD" to indicate, as a factual matter, that LICENSEE
is utilizing technology developed or owned by the UNIVERSITY.
9.2 UNIVERSITY may disclose to the Inventors the terms and conditions of this
Agreement upon their request. If such disclosure is made, UNIVERSITY shall
request the Inventors not disclose such terms and conditions to others.
9.3 UNIVERSITY may acknowledge the existence of this Agreement and the extent
of the grant in Article 2 to third parties, but UNIVERSITY shall not disclose
the financial terms of this Agreement to third parties, except where UNIVERSITY
is required by law to do so, such as under the California Public Records Act.
ARTICLE 10. MISCELLANEOUS PROVISIONS
17.
10.1 Correspondence. Any notice or payment required to be given to either party
under this Agreement shall be deemed to have been properly given and effective:
(a) on the date of delivery if delivered in person, or
(b) five (5) days after mailing if mailed by first-class or certified
mail, postage paid, to the respective addresses given below, or to
such other address as is designated by written notice given to the
other party.
If sent to LICENSEE:
-------------------
YuniNetworks Inc.
Attention: President
00000 Xxxx Xxxxx Xxxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxxxxxx 00000
If sent to UNIVERSITY:
---------------------
Technology Transfer & Intellectual Property Services
Attention: Director
University of California, San Diego
0000 Xxxxxx Xxxxx, Xxxx Code 0000
Xx Xxxxx, XX 00000-0000
Phone: 000.000.0000
Fax: 000.000.0000
10.2 Secrecy.
(a) "Confidential Information" shall mean information, including know-how and
technical information, relating to the Invention and disclosed by one party
("Disclosing Party") to the other party ("Receiving Party") during the term
of this Agreement, which if disclosed in writing shall be marked
"Confidential", or if first disclosed otherwise, shall within thirty (30)
days of such disclosure be reduced to writing by the Disclosing Party and
sent to the Receiving Party:
(b) The Receiving Party shall:
(1) use the Confidential Information for the sole purpose of performing
under the terms of this Agreement;
(2) safeguard Confidential Information against disclosure to others with
the same degree of care as it exercises with its own data of a similar
nature;
(3) not disclose Confidential Information to others (except to its
employees, agents or consultants who are bound to the Receiving Party
by a like obligation of confidentiality) without the express written
permission of the
18.
Disclosing Party, except that the Receiving Party shall not be
prevented from using or disclosing any of the Confidential Information
that:
(i) the Receiving Party can demonstrate by written records was
previously known to it;
(ii) is now, or becomes in the future, public knowledge other than
through acts or omissions of the Receiving Party; or
(iii) is lawfully obtained by the Receiving Party from sources
independent of the Disclosing Party.
(b) The secrecy obligations of the Disclosing Party with respect to
Confidential Information shall continue for a period ending five (5) years
from the termination date of this Agreement.
10.3 Assignability. This Agreement may be assigned by UNIVERSITY, but is
personal to LICENSEE and assignable by LICENSEE only with the written consent of
UNIVERSITY, which shall not be unreasonably withheld; provided however that
LICENSEE may assign this Agreement (i) in connection with the sale of
substantially all of LICENSEE's business to which this Agreement pertains, or
(ii) incident to a merger, acquisition or other corporate reorganization
involving LICENSEE.
10.4 No Waiver. No waiver by either party of any breach or default of any
covenant or agreement set forth in this Agreement shall be deemed a waiver as to
any subsequent and/or similar breach or default.
10.5 Failure to Perform. In the event of a failure of performance due under this
Agreement and if it becomes necessary for either party to undertake legal action
against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
10.6 Governing Laws. THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN
ACCORDANCE WITH THE LAWS OF THE STATE OF CALIFORNIA, but the scope and validity
of any patent or patent application shall be governed by the applicable laws of
the country of the patent or patent application.
10.7 Force Majeure. A party to this Agreement may be excused from any
performance required herein if such performance is rendered impossible or
unfeasible due to any catastrophe or other major event beyond its reasonable
control, including, without limitation, war, riot, and insurrection; laws,
proclamations, edicts, ordinances, or regulations; strikes, lockouts, or other
serious labor disputes; and floods, fires, explosions, or other natural
disasters. When such events have abated, the non-performing party's obligations
herein shall resume.
19.
10.8 Headings. The headings of the several 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.
10.9 Entire Agreement. This Agreement embodies the entire understanding of the
parties and supersedes all previous communications, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof. All terms and conditions of any documents, purchase
orders, etc., issued by Company to facilitate payment hereunder are null and
void, even though they may be issued after the signing of this agreement.
10.10 Amendments. No amendment, alteration, or modification of this Agreement
shall be valid or binding on the parties unless made in writing and signed on
behalf of each party.
10.11 Severability. In the event that any of the provisions contained in this
Agreement is held to be invalid, illegal, or unenforceable in any respect, such
invalidity, illegality or unenforceability shall not affect any other provisions
of this Agreement, and this Agreement shall be construed as if the invalid,
illegal, or unenforceable provisions had never been contained in it.
IN WITNESS WHEREOF, both UNIVERSITY and LICENSEE have executed this Agreement,
in duplicate originals, by their respective and duly authorized officers on the
day and year written.
YUNINETWORKS: THE UNIVERSITY OF THE
UNIVERSITY OF CALIFORNIA:
By: /s/ Xxx X. Xxx By: /s/ Xxxx X. Xxxx
--------------- ----------------
Xxx X. Xxx Xxxx X. Xxxx
President & CEO Director, Technology Transfer &
Intellectual Property Services
Date: 3/13/2000 Date: 3/14/2000
--------- ---------
20.
