1
EXHIBIT FF
AT&T TRADEMARK AND PATENT AGREEMENT
THIS AT&T TRADEMARK AND PATENT AGREEMENT ("Agreement") is being entered
into as of July 31, 1996 by and between AT&T CORP., a corporation of the State
of New York ("AT&T"), AT&T PARADYNE CORPORATION, a corporation of the State of
Delaware ("PARADYNE"), and CAP ACQUISITION CORP., a corporation of the State of
Delaware ("CAPCo"), and is Exhibit FF to the Purchase Agreement ("Purchase
Agreement") dated June 18, 1996 between PARADYNE, CAPCo, LUCENT TECHNOLOGIES,
INC., a corporation of the State of Delaware ("LUCENT"), PARADYNE PARTNERS,
L.P., a Delaware limited partnership, PARADYNE ACQUISITION CORP., a Delaware
limited partnership ("BUYER"), RENTAL ACQUISITION CORP., a corporation of the
State of Delaware, and LEASE ACQUISITION CORP., a corporation of the State of
Delaware.
WHEREAS, LUCENT, a majority-owned subsidiary of AT&T; has agreed to sell
and BUYER has agreed to buy PARADYNE pursuant to the Purchase Agreement; and
WHEREAS, the Purchase Agreement provides for an AT&T Trademark and
Patent Agreement between the parties hereto;
NOW, THEREFORE, it is hereby agreed by the parties:
ARTICLE 1
Definitions
Capitalized terms without definition in this Agreement shall have the
meanings assigned to them in the Purchase Agreement. As used herein, the
following terms have the following meanings:
1.1 "AT&T's Patents" shall mean every Patent as defined below in
Section 1.4, (including, without limitation, utility models, design patents and
design registrations) issued in any country of the world on patent applications
filed prior to the Closing Date with respect to which AT&T:
(a) prior to the Closing Date has ownership or control, and
(b) as of the Closing Date otherwise has the right to grant
any licenses of the type herein granted by AT&T.
Notwithstanding the foregoing, "AT&T's Patents" do not include (a) any
patents or patent applications first filed prior to February 1, 1996 which
patents or patent applications are (i) owned or controlled by AT&T Wireless
Services, Inc. ("AWS") or any of its Subsidiaries, and (ii) relate to the
business of wireless telecommunications services; or (b) any patents or patent
applications first filed on or after February 1, 1996 but before the Closing
Date and
2
covering inventions made by employees of AWS or by third parties other than AT&T
or any of its Subsidiaries, which patents and applications (i) are owned or
controlled by AWS or any of its Subsidiaries, and (ii) which relate to the
business of wireless telecommunications services.
1.2 "Inherent Use" shall mean a use that would be completely
performed by a product and/or service as furnished by PARADYNE and/or CAPCo,
without the need for any additional product, service, development, modification
or programming by a customer of PARADYNE and/or CAPCo, or by a third party.
1.3 "PARADYNE/CAPCo Products" shall mean the products and/or
services of PARADYNE and of CAPCo in development by PARADYNE and/or CAPCo as of
the Closing Date and sold prior to one (1) year from the Closing Date and
products and/or services listed in Appendix 4, which must be sold prior to three
(3) years from the Closing Date.
1.4 "Patent" shall mean all the patents listed in Appendix 5 hereto,
including all divisionals, continuations, re-examinations, renewals,
provisionals, continuations-in-part, re-issues, and foreign equivalents thereof
in existence as of the Closing Date and any other patents used by PARADYNE
and/or CAPCo as of the Closing Date, and identified in writing by PARADYNE
and/or CAPCo, and agreed to in writing by AT&T, within thirty (30) days after
the Closing Date. PARADYNE and CAPCo agree that they will make reasonably
diligent efforts to ascertain which patents of AT&T read on the PARADYNE/CAPCo
Products, and PARADYNE, CAPCo and AT&T will during the foregoing thirty (30) day
period, in mutual good faith, include only such patents in Appendix 5.
1.5 "Subsidiary" shall mean a corporation or other legal entity: (i)
the majority of whose shares or other securities entitled to vote for election
of directors (or other managing authority) is now or hereafter owned or
controlled by such company either directly or indirectly; or (ii) which does not
have outstanding publicly traded shares or securities but the majority of whose
ownership interest representing the right to manage such corporation or other
legal entity is now or hereafter owned or controlled by such company either
directly or indirectly; but any such corporation or the other legal entity shall
be deemed to be a Subsidiary of such company only as long as such ownership or
control exists.
1.6 "Telecommunication Services" means the operation of a
communications network to provide communication services to customers, including
the processing of information to the extent needed to transfer information
between locations. The term "Telecommunications Services" includes online and
Internet services, and wireless service, whether fixed or mobile. The provision
by PARADYNE and/or CAPCo of goods or services to entities which are themselves
providers of Telecommunication Services shall not be deemed to constitute the
provision of Telecommunication Services by PARADYNE and/or CAPCo.
2
3
ARTICLE 2
Grants of Licenses
2.1 Grant.
AT&T hereby grants to PARADYNE and CAPCo under AT&T's Patents
non-exclusive, non-transferable (except as otherwise provided in Section 5.2),
irrevocable, world-wide licenses for PARADYNE/CAPCo Products. No license is
granted for the provision of Telecommunication Services.
2.2 Duration.
(a) All licenses granted herein under any Patent shall
continue for the entire unexpired term of such Patent. Notwithstanding the
foregoing, and notwithstanding Section 5.2 hereof, in the event that PARADYNE
and/or CAPCo, and/or the part(s) of their respective businesses, including their
Subsidiaries to whom sublicenses of AT&T's Patents have been granted, are sold
to any of the companies listed in Section 2.2(b), the licenses and/or
sublicenses extended to them under AT&T's Patents pursuant to this Agreement
shall immediately terminate. PARADYNE and/or CAPCo, as the case may be, will
promptly notify AT&T in writing of any such sale.
(b) MCI, Sprint, Microsoft Corporation, Excel and/or any of
the Regional Xxxx Operating Companies ("RBOCs").
2.3 Scope.
(a) The licenses granted herein are licensed to (i) make,
have made, use, lease, sell, offer to sell and import PARADYNE/CAPCo Products;
(ii) make, have made, use and import machines, tools, materials and other
instrumentalities, insofar as such machines, tools, materials and other
instrumentalities are involved in or incidental to the development, manufacture,
testing or repair of PARADYNE/CAPCo Products which are or have been made, used,
leased, owned, sold, offered for sale or imported by PARADYNE and/or CAPCo; and
(iii) convey to any customer of PARADYNE and/or CAPCo with respect to any
PARADYNE/CAPCo Product which is sold or leased by PARADYNE and/or CAPCo to such
customer, rights to use and resell such PARADYNE/CAPCo Product as sold or leased
by PARADYNE and/or CAPCo (whether or not as part of a larger combination);
provided, however, that no rights may be conveyed to customers with respect to
any invention which is directed to (1) a combination of such PARADYNE/CAPCo
Product (as sold or leased) with any other product, (2) a method or process
which is other than the Inherent Use of such Product itself (as sold or leased),
or (3) a method or process involving the use of a PARADYNE/CAPCo Product to
manufacture (including associated testing) any other product.
(b) Licenses granted herein are not be construed either (i)
as consent by AT&T to any act which may be performed by PARADYNE and/or CAPCo
except to the extent covered by AT&T's Patents licensed herein to PARADYNE
and/or CAPCo, or (ii) to include licenses to conributorily infringe or induce
infringement under U.S. law or a foreign
3
4
equivalent thereof; provided, however, that any products licensed under this
Agreement may be used by the end user thereof for its intended purpose.
(c) The grant of each license hereunder includes the right
of PARADYNE and/or CAPCo to grant sublicenses within the scope of such license
to PARADYNE's and/or CAPCo's Subsidiaries for so long as they remain their
respective Subsidiaries, and thereafter as provided in Section 5.2
("Nonassignability"). Any such sublicense may be made effective retroactively,
but not prior to the effective date hereof, nor prior to the sublicensee
becoming a Subsidiary of PARADYNE and/or CAPCo.
ARTICLE 3
Trademarks
3.1 AT&T owns all right, title and interest in and to the trademarks
and common law marks set forth on Appendix 1 attached hereto ("Assigned Marks").
AT&T hereby assigns pursuant to the Trademark Assignment Agreement attached
hereto as Appendix 2 all of its worldwide rights, title and interest in and to
the Assigned Marks to PARADYNE, including the goodwill of the business
represented by the Assigned Marks, any AT&T registrations of Assigned Marks, any
AT&T applications of Assigned Marks, and any AT&T common law rights in the
Assigned Marks.
3.2 PARADYNE and CAPCo shall not use after the Closing Date (1) the
xxxx AT&T as a tradename or as part of a corporate name, (2) the trademark AT&T
and/or the AT&T Globe design, nor will PARADYNE or CAPCo use any derivations or
combination marks containing the elements AT&T and/or the AT&T Globe design.
However, PARADYNE and/or CAPCo is allowed to use up for a period not exceeding
one year after the Closing Date (1) all of PARADYNE's inventory of products
existing as of the Closing Date which bears the trademark AT&T and/or AT&T Globe
design, and (2) all printed matter other than letterheads, business cards, etc.
now used, bearing the trademark AT&T and/or AT&T Globe design.
3.3 AT&T shall not use after the Closing Date (1) the xxxx PARADYNE
as a tradename or as part of a corporate name; (2) the trademark PARADYNE and/or
the PARADYNE logo design, nor will AT&T use any derivations or combination marks
containing the elements PARADYNE and/or the PARADYNE logo design; or (3) any of
the Assigned Marks; provided, however, that AT&T acknowledge and agrees that
PARADYNE may use and register VOICESPAN for the PARADYNE VOICESPAN GOODS as
defined below and PARADYNE and CAPCo acknowledges and agree that AT&T may use
and register VOICESPAN for the AT&T VOICESPAN GOODS as defined below. In no
event will PARADYNE or CAPCo use VOICESPAN in connection with the AT&T VOICESPAN
GOODS and in no event will AT&T use VOICESPAN in connection with the PARADYNE
VOICESPAN GOODS. The parties agree to grant each other consents to use and
register VOICESPAN for their respective PARADYNE VOICESPAN GOODS and AT&T
VOICESPAN GOODS.
PARADYNE VOICESPAN GOODS shall mean electronic products, namely a
microchip which allows the simultaneous transmission of voice and data over
analog
4
5
communications lines, computer software to operate telecommunications
modems and to allow for simultaneous transmission of voice and data over a
telecommunications network, telecommunications modems and microprocessors, and
computer software for telecommunications purposes.
AT&T VOICESPAN GOODS shall mean satellite-related products and
software and satellite telecommunications services.
3.4 With respect to the registered marks described in Appendix 6
hereto, AT&T agrees that it will withdraw any and all of registrations of such
marks promptly upon prior written instruction by PARADYNE and/or CAPCo.
ARTICLE 4
Termination
4.1 Breach.
In the event of a material breach of this Agreement by any party hereto,
the other parties shall have all rights available to them under law, including
the right to terminate this Agreement upon the delivery of written notice to the
breaching party, such breach having remained uncured for a period of thirty (30)
days from the date of receipt of such notice; provided, however, that such
termination shall not affect in any way any rights or licenses granted by any
party hereto prior to such breach.
4.2 Voluntary Termination.
By written notice to AT&T, PARADYNE and/or CAPCo may voluntarily
terminate all or a specified portion of the licenses and rights granted to them
hereunder. Such notice shall specify the effective date (not more than six (6)
months prior to the giving of said notice) of such termination and shall clearly
specify any affected Patent, invention or product; provided, however, that such
termination shall not affect in any way any rights or licenses already granted
by any party hereto.
ARTICLE 5
Miscellaneous Provisions
5.1 Disclaimer.
OTHER THAN AS EXPRESSLY SET FORTH IN THIS AGREEMENT, WITH RESPECT TO THE
SUBJECT MATTER HEREOF, NEITHER AT&T NOR ANY OF ITS SUBSIDIARIES MAKE ANY
REPRESENTATIONS, EXTEND ANY WARRANTIES OF ANY KIND, ASSUME ANY RESPONSIBILITY OR
OBLIGATIONS WHATSOEVER, OR CONFER ANY RIGHT BY IMPLICATION, ESTOPPEL OR
OTHERWISE, OTHER THAN THE LICENSES AND RIGHTS HEREIN EXPRESSLY GRANTED.
5
6
5.2 Nonassignability.
(a) Except as otherwise expressly provided herein, no party
hereto may assign this Agreement or any part thereof, transfer licenses or
rights or grant any sublicenses hereunder, to anyone other than a Subsidiary of
such party without the prior, written consent of the other party. However, if
PARADYNE and/or CAPCo sells part or all of their respective businesses,
including without limitation Subsidiaries (the "Sold Entity"), and if PARADYNE
and/or CAPCo have granted sublicenses thereto prior to such sale, then such
sublicenses shall survive such sale.
(b) Any purported assignment or transfer of this Agreement
or licenses or rights hereunder by any party hereto without the prior, written
consent of all other parties shall be void (without affecting any other licenses
or rights hereunder).
5.3 Addresses.
Any notice or other communication hereunder shall be sufficiently given
to PARADYNE when sent by certified mail, return receipt requested, addressed to:
AT&T Paradyne Corporation, 0000 000xx Xxxxxx Xxxxx, Xxxxxxxxx: Xxxxxxx Xxxxxxx,
Xxxxx, XX 00000-0000, or to CAPCo when sent by certified mail, return receipt
requested, addressed to: CAP Acquisition Corp., 000 Xxxx Xxxxxx, Xxxxx 0000,
Xxxxxxxxx: Xxxxxxx X. Xxxxxxxxx, Esq., Xxxxx Xxxxx, XX 00000, or to AT&T when
sent by certified mail, return receipt requested, addressed to: AT&T Corp., 00
Xxxxxxxxxxxx Xxxx., Xxxxxx, XX 00000.
5.4 Validity.
Should any provision hereof be ineffective or infeasible the validity of
the Agreement shall not be affected in other respects. The parties shall
cooperate to replace the ineffective or infeasible provision by coming as close
as possible in the economic result of the ineffective or infeasible provision.
5.5 Taxes.
PARADYNE and/or CAPCo shall pay any tax, duty, levy, customs fee, or
similar charge ("taxes"), including interest and penalties thereon, however
designated, imposed as a result of the operation or existence of this Agreement,
including taxes which PARADYNE and/or CAPCo is required to withhold or deduct
from payments to AT&T, except (i) net income taxes imposed upon AT&T by any
governmental entity within the United States (the fifty (50) states and the
District of Columbia), and (ii) net income taxes imposed upon AT&T by
jurisdictions outside the United States.
5.6 Choice of Law.
The parties are familiar with the principles of New York commercial law,
and desire and agree that the law of New York shall apply in any dispute arising
with respect to this Agreement.
6
7
5.7 Integration.
This Agreement sets forth the entire agreement and understanding
between the parties as to the subject matter hereof and merges all prior
discussions between them. Neither of the parties shall be bound by any
warranties, understandings or representations with respect to such subject
matter other than as expressly provided herein or in a writing signed with or
subsequent to execution hereof by an authorized representative of the party to
be bound thereby.
5.8 Dispute Resolution.
(a) All contractual disputes, controversies and differences
between the parties relating to any breach of this Agreement, shall be settled
exclusively by binding arbitration pursuant to the Commercial Arbitration Rules
of the American Arbitration Association, upon thirty (30) days' written notice
of the demand therefor served by one party hereto upon the other party. Judgment
upon the award rendered may be entered in any court having proper jurisdiction.
The arbitrators shall be instructed, in connection with the issuance of their
award, to prepare a written finding of facts and law concerning the award. If
any arbitration or other proceeding is commenced pursuant to this Section 5.8,
the prevailing party shall be entitled to recover from the other party all
reasonable attorneys' fees, costs and other disbursements actually incurred by
it in connection with such arbitration or other proceeding and in enforcing any
award, order or judgment thereby obtained. If AT&T is the party serving such
notice, the arbitration shall be held in New York, New York, in which case this
Agreement shall be interpreted in accordance with the laws of the State of New
York, without reference to its principles of conflicts of laws. If either
PARADYNE or CAPCo is the party serving such notice, the arbitration shall be
held in Tampa, Florida, in which case this Agreement shall be interpreted in
accordance with the laws of the State of Florida, also without reference to its
principles of conflicts of laws.
(b) The requirement for arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the arbitrators
shall not be empowered to act or make any award other than based solely on the
rights and obligations of the parties prior to any such termination.
(c) The arbitrators shall not limit, expand or otherwise
modify the terms of this Agreement.
(d) This Agreement shall be interpreted in accordance with
the laws of the State of New York, without reference to its principles of
conflicts of law, unless otherwise dictated by invocation by one party of its
rights under Section 5.8(a), above.
(e) Discovery shall be held in accordance with the
provisions of the Federal Rules of Civil Procedure of the taking of depositions.
(f) This Article 5.8 shall survive any termination of this
Agreement or rights granted hereunder.
7
8
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives on the
respective dates entered below.
AT&T Corp. AT&T Paradyne Corporation
By: By:
--------------------------------- ---------------------------------
Print Name: Print Name:
------------------------- -------------------------
Title: Title:
----------------------------- -----------------------------
Date: 7/31/96 Date: 7/31/96
CAP Acquisition Corp.
By:
---------------------------------
Print Name:
-------------------------
Title:
-----------------------------
Date: 7/31/
9
LIST OF APPENDICES TO EXHIBIT FF
APPENDIX 1 - ASSIGNED MARKS
APPENDIX 2 - TRADEMARK ASSIGNMENT AGREEMENT (AT&T CORP. TO AT&T
PARADYNE CORPORATION)
APPENDIX 3 - SUMMARY OF SETTLEMENT AGREEMENT RELATING TO "KEEP IN
TOUCH" TRADEMARKS
APPENDIX 4 - PARADYNE/CAPCO PRODUCTS
APPENDIX 5 - AT&T'S PATENTS LICENSED TO AT&T PARADYNE CORPORATION
APPENDIX 6 - AT&T REGISTRATIONS DISCUSSED IN SECTION 3.4 OF EXHIBIT FF
A-1
10
APPENDIX 1 TO EXHIBIT FF
ASSIGNED MARKS
ACCULINK
ANALYSIS
CHANNELVIEW
CHANNELWATCH
COMSPHERE
DATAPHONE
DATAPORT
DCX
ETC
GLOBESPAN
INFO-LOCK
KEEP IN TOUCH CARD
KEEPINTOUCH CARD
KIT
PARADYNE
PARADYNE DCX
SHARED EXPECTATIONS
SOFTCALL
VOICESPAN
VOICESPAN AND DESIGN
A-2
11
APPENDIX 1
[Illegible copy]
A-3
12
APPENDIX 2 TO EXHIBIT FF
TRADEMARK ASSIGNMENT AGREEMENT
(AT&T CORP. TO AT&T PARADYNE CORPORATION)
This Trademark Assignment Agreement, effective as of the Closing Date,
is made between AT&T CORP., a New York corporation duly organized and existing
under the laws of the State of New York, whose registered office is at 32 Avenue
of the Americas, Xxx Xxxx, Xxx Xxxx 00000-0000, Xxxxxx Xxxxxx of America
(hereinafter referred to as the "Assignor") and AT&T PARADYNE CORPORATION, a
Delaware corporation, having an office at 0000 000xx Xxxxxx Xxxxx, X.X. Xxx
0000, Xxxxx, Xxxxxxx 00000-0000 (hereinafter referred to as the "Assignee").
WHEREAS, the Assignor has adopted, used, registered or applied to
register in certain countries throughout the world certain trademarks and
service marks set forth in Appendix 1 annexed hereto, including without
limitation, the registrations and applications and common law marks set out in
Appendix 1 (hereinafter referred to as the "Assigned Marks"); and
WHEREAS, the Assignor wishes to transfer and assign to the Assignee, and
the Assignee wishes to acquire from the Assignor, all of the Assignor's rights,
title and interest in and to the Assigned Marks and all of the goodwill
associated therewith, as well as all registrations and applications and other
rights, including common law rights, the Assignor may have throughout the world
with respect to such Assigned Marks.
NOW, THEREFORE, the Assignor and the Assignee agree as follows:
Section 1
Effective the Closing Date, and for good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, the Assignor does hereby
assign to the Assignee all proprietary rights and applications for proprietary
rights, title and interest in and to the Assigned Marks, including without
limitation, the registrations and applications and common law marks set forth in
Appendix 1, any common law rights in the Assigned Marks, the goodwill of the
business relating to the Assigned Marks, and the right to xxx for past
infringement of the Assigned Marks.
The Assignee does hereby accept this assignment.
Section 2
This Assignor will promptly transfer to or provide to the Assignee
copies of all files relating to the use, registration of, and applications for
registration of, the Assigned Marks.
A-4
13
Section 3
(A) This agreement in the form of a notarial deed is intended in original
and in certified copy to be lodged with the competent domestic and foreign
institutions, more particularly administrative agencies and courts, together
with an application for assignment of the corresponding proprietary rights and
applications for proprietary rights.
(B) Should the lodging of this deed be insufficient for the assignment of
the proprietary rights and applications for proprietary rights, both parties
hereto shall immediately attend to the necessary formalities and will execute
all reasonable documents necessary to effect transfer of the Assigned Marks.
(C) The Assignee shall bear the costs arising out of or in connection with
the implementation of the assignment contained herein.
(D) Amendments hereto and amplifications hereof shall be in writing.
Assignor Assignee
Given at Basking Ridge Accepted at New York,
New Jersey, USA New York, USA
on July 31, 0000 Xx July 31, 1996
AT&T CORP. AT&T PARADYNE CORPORATION
By: By:
----------------------------- -----------------------------
Name: Xxxxxxx Xxxxxx, Esq. Name: Xxxxxxx X. Osl, Jr.
Trademark and Copyright Attorney Title: Authorized Agent
Authorized Signatory Authorized Signatory
A-5
14
NOTARIAL CERTIFICATIONS
I, a Notary Public, certify that on July 31, 1996, before me personally
appeared Xxxxxxx X. Xxxxxx, to me known to be an authorized signatory of AT&T
CORP. and that she executed the foregoing Trademark Assignment Agreement.
I attest:
Signed in: Basking Ridge, NJ USA
Dated: July 31, 1996
Notary Public "Official Seal"
Signature of Notary Public
I, a Notary Public, certify that on July 31, 1995, before me personally
appeared Xxxxxxx X. Osl, to me known to be an Authorized Signatory of AT&T
PARADYNE, and that he executed the foregoing Trademark Assignment Agreement.
I attest:
Signed in: New York, NYC
Dated: July 31, 1996
Notary Public "Official Seal"
Signature of Notary Public
A-6
15
APPENDIX 1
TO TRADEMARK ASSIGNMENT AGREEMENT
ASSIGNED MARKS
ACCULINK
ANALYSIS
CHANNELVIEW
CHANNELWATCH
COMSPHERE
DATAPHONE
DATAPORT
DCX
ETC
GLOBESPAN
INFO-LOCK
KEEP IN TOUCH CARD
KEEPINTOUCH CARD
KIT
PARADYNE
PARADYNE DCX
SHARED EXPECTATIONS
SOFTCALL
VOICESPAN
VOICESPAN AND DESIGN
A-7
16
APPENDIX 1
[Illegible copy]
A-8
17
APPENDIX 3 TO EXHIBIT FF
SUMMARY OF SETTLEMENT AGREEMENT
RELATING TO "KEEP IN TOUCH" TRADEMARKS
The following is a partial summary of a Settlement Agreement dated April
17, 1995 between AT&T Corp. and Gnossos Software, Inc., a Delaware corporation
having offices at 000 XX Xxxxxx, Xxxxx 000, Xxxxxxxxxx, X.X. 0000-0000,
effecting AT&T's (and its successor's) use of certain trademarks identified
below. Whenever the term "Paradyne" is used, it shall also be meant to include
Paradyne's successor or assignee:
1. Paradyne may use the xxxx "KIT" without restriction.
2. So long as Gnossos has not abandoned use of "KEEP IN TOUCH" for
computer software, Paradyne shall use "KeepInTouch" only as part of a compound
xxxx, such as "KeepInTouch Card", "KeepInTouch Express", "Paradyne KeepInTouch",
"KeepInTouch Cellular Modem" and "KeepInTouch 2000" (the "Agreed Marks"). For
the purposes of the Settlement Agreement, any such Agreed Xxxx used by Paradyne
shall be comprised of the "KeepInTouch" element plus at least one other
alphabetical and/or numeric element depicted in the same type face and size as
the "KeepInTouch" element, so as to create a unitary commercial impression. If
the other element in the compound xxxx is comprised of word(s) or letters of the
alphabet, that other element is to be depicted with at least initial
capitalization. Thus, "KeepInTouch Card" or "KeepInTouch Cellular Modem" would
be Agreed Marks, while "KeepInTouch card" or "KeepInTouch cellular modem" would
not. Moreover, while "KeepInTouch 2000" is acceptable, the use of a number that
merely connotes a version number (e.g., "KeepInTouch 5.1") would not be an
acceptable compound xxxx. Paradyne may register acceptable compound Agreed
Marks, as defined herein. However, Paradyne shall not use or register the marks
"KeepInTouch" by itself or "KEEP IN TOUCH" by itself, and shall not use or TM
symbols, or a trademark legend to indicate rights in "KeepInTouch" by itself.
These restrictions apply to use on the products, packaging, advertising and
promotional material.
3. So long as Gnossos has not abandoned use of "KEEP IN TOUCH" for
computer software, Paradyne shall use the Agreed Marks in proximity to any
Paradyne xxxx, or any successor thereof then functioning as Paradyne's house
xxxx, or the house xxxx of any assignee or successor to Paradyne.
4. So long as Gnossos has not abandoned use of "KEEP IN TOUCH" for
computer software, Paradyne shall limit its use of the Agreed Marks to modems
and software used for operating such modems, including software sold for the
purpose of upgrading the functionality of modems ("Related Software").
Specifically excluded from the definition of Related Software is communications
applications software, such as faxing software and e-mail software. Such
exclusion, however, shall not apply to any software that is used to allow a
modem to operate to send and receive facsimile, data, information, voice, video
and electronic mail transmissions when such software is sold as a unit with or
as an upgrade to modems sold under the Agreed Marks. A "modem" shall mean any
machine, device, or computer software, now known or later developed, which
converts digital signals to analog signals and analog
A-9
18
signals to digital signals for transmission of facsimile, data, information,
voice, video or electronic mail over a telecommunications network. For purposes
of this definition analog signals include any signal which becomes analog at any
point in the transmission.
A-10
19
APPENDIX 4 TO EXHIBIT FF
PARADYNE PRODUCTS
o All products offered commercially at any time prior to Closing Date
o GENESIS AND GENEVA FAMILY (3800/3900)
o Triple Modem nest for the 3000 Carrier
o Synchronous data compression
o Integrated Diagnostics
o Mocha
x XXXXX FAMILY - SUBRATE DIGITAL LEASED LINE (3600/3500)
o ISDN DBM
o V.34 DBM
o Extended Range
o Autorate
o Cross Pair Detection
o Integrated Diagnostics
o Multiplexor Options
o Paddle Cards
o 64k/128k NTU's
o SPINNAKER FAMILY - T1/E1/HDSL CSU & DSU (31XX,33XX)
o ASCII Interface Redesign
o TCP & Telnet
o Device Specific SNMP MIBs
o Voice Compression
o International Power
o Integrated Diagnostics
o Optical Interface
o CARRIBEAN SUBRATE FAMILY - DDS FRAME RELAY
o Aruba - DDS Frame Relay
o Frame Relay Aware/Frame Relay Aggregation
o Synchronous Data Compression
o BRI DBM
o FTP Down Line Loan
o 14 Slot Nest
o FRAD
o PCMCIA Management Interfaces
o Cost Reduction (Antigua)
o Curacao - DDS Frame Relay Edge Router
o Single Card Router with 1-port Native Ethernet DTE
A-11
20
o Supports above Aruba Functionality
o CARRIBEAN NxDSO FAMILY - T1/E1
o Barbados - T1/FT1 Low End Multiplexor & DSU
o SNMP, Telnet, TCP
o PRI
o 5 Slot Carrier
o 2 Slot Stand Alone Package
o 14 Slot Nest
o Single T1 Leased Line NAM with DSX, with 2 ports
o Dual T1 Leased Line NAM without DSX, no ports
o Dual DSX APM without ports
o PCMCIA Management (via Ethernet or Token Ring LAN, V.34)
o 8-port FXS, FSO, or E&M Voice APM
o Voice Compression APM
o 4-port Synchronous Data APM
o Synchronous Data Compression APM
o 6-port OCU APM
o 5-port SRU APM
o 6-port Management Interface APM
o 6-port BRI APM
o 8-port V.34 Modem Pool APM
o Martinique - E1/FE1 Low End Multiplexor & DSU
o Dual E1 Leased Line NAM with ports
o Dual E1 Leased Line NAM without ports
o Support for above Barbados configurations and options
o Trinidad - T1/FT1 Frame Relay DSU
o SNMP, Telnet, TCP
o 2 Slot Stand Alone Package
o 14 Slot Nest
o T1 Frame Relay NAM with DSX, with 2 ports
o BRI DBM
o Frame Relay Aware, Frame Relay Aggregation with Compression APM
o FRAD APM
o HEARTLAN FAMILY - LOW END/LOW COST SUBRATE AND T1
o Beagle- Subrate Leased Line DSU
o DDS NI with 1 port
o SNMP, Telnet, TCP
o Ethernet Management Interface
o Greyhound - T1/F1 Leased Line DSU
o T1/FT1 NI without DSX, with 1 port
A-12
21
o T1/FT1 NI with DSX, with 1 port
o T1/FT1 NI with DSX, with 2 ports
o T1/FT1 NI with DSX, without ports (CSU)
o SNMP, Telnet, TCP
o With or without Ethernet Management Interface
o Poodle - V.11 NTU
o 64k V.11 NI with 1 port DTE
o 64k V.11 NI with 5 port DTE, with X.50
o SYSTEM PRODUCTS
o ADSL/SDSL/HDSL/VDSL/RADSL PC Cards, Workstation Interface Cards, and
Stand Alone "Modems"
o Open Access Gateway (Multiplexor)
o Central Site Concentrators for ADSL/SDSL/VDSL/RADSL Lines
o xDSL with packet or cell protocols
o TDM extensions
o Modem Pool extensions for analog, mu-law, ISDN
o Service Translation for broadband, video transmission
o Acculink Access Controller (AAC) Cards
o (DACS)
o Modem Pool
o TDM Access Multiplexor
o HAWK - REMOTE ACCESS AND TELECOMMUTING SERVER
o V.34, V.34Q and ISDN BRI Remote Access Port Concentrators
o T1 PRI Network Interface
o Windows NT
o Novell
o Temporary Office Extensions
o Remote Office Extensions
o High Card Density (16 ports OCD)
o Very High Card Density (30 ports OCD)
o Mocha
o E1 Interface
o WIRELESS SYSTEMS
o ETC2 for Wireless Data Gateway, Hawk and Open Access Gateway
o CDPD and PCS protocols (TDMA, CDMA, GSM)
o SOFTWARE PRODUCTS
o Network Management System Applications for all Present Paradyne Products
and Other Products Listed Herein
o Element Management Applications for all Present Paradyne Products and
Other Products Listed Herein.
A-13
22
o Extended Leased Line Network Management Applications on HP Openview and
IBM SystemView
o Performance Management Applications for all Present Paradyne Products
and Other Products Listed Herein, on HP Openview and IBM SystemView
o Service Management Applications for all Present Paradyne Products and
Other Products Listed Herein, on HP Openview and IBM SystemView
o TL-1 Interface for HP Openview and IBM SystemView o CMIP/NMP Wrappers
for HP Openview and IBM SystemView
o The following products are to be assessed in January, 1997. The commercial
development status of each product will be determined and such product will
be added to this Appendix C if the product is either
o (I) at the time of assessment under development for a scheduled
commercial release, or
o (II) firmly committed for development to begin no later than March 31,
1997 for a scheduled commercial release; in this case, the product is
added to this Appendix C only to the extent that such development does
begin before March 31
o The products to be assessed are
o The following modules for CARIBBEAN NxDSO
o ATM NAM
o Encryption APM
o Security APM
o Cayman - FT3 ATM DSU
o ATM Access Multiplexor
o The following modules for Open Access Gateway
o PDTS Splitting
o Encryption
o Security
A-14
23
APPENDIX 5
AT&T CORPORATION PATENTS LICENSED TO AT&T PARADYNE CORPORATION
PATENT DATE
NO. ISSUED TITLE AREA OF APPLICATION
------- -------- -------------------------------------------------------------- ----------------------------
4348554 9/7/92 Method of providing virtual private network telephone service Modem, DSU, Mux
4383332 5/10/83 High capacity digital mobile radio system Wireless Data Gateway
4472832 9/18/84 Digital speech coder Modem, Access Server
4578531 3/25/86 Encryption system key distribution method and apparatus Modem, DSU, Mux,
Access Server
4586186 4/29/86 Maintenance response signaling arrangement for digital Mux, Access, Server
transmission system
4611094 9/9/86 Method for customer definable telephony capability Modem, Access Server
4616359 10/07/86 Adaptive preferential flow control for packet switching system Mux, DSU, Access Server
4633464 12/30/86 Control signaling management for digital transmission system DSU, Mux, Access Server
4700339 10/13/87 Wavelength division multiplexed silicon optical fiber DSU, Mux
telecommunication system
4756020 7/6/88 Method and apparatus for disallowing the extension of a call Access Server
through a network
4827600 6/2/89 Automatic speech recognition to select among call destinations Access Server
4899373 2/6/90 Method and apparatus for providing personalized telephone Access Server
subscriber features at remote locations
4814655 4/3/90 Multiplexing arrangement for digital transmission system DSU, Mux
4922348 4/10/90 Facsimile service Modem, Access Server
4932042 6/6/90 Spontaneous voice and data managing Mux, Access Server
4959849 7/31/89 End-to-end network surveillance Mux, DSU, Access Server
5033079 7/16/91 Establishment of facsimile calls Modem, Access Server
5063659 11/5/91 Optimized Wavelength Division Multiplexed Lightwave DSU, Mux
Communication System
5086460 2/4/92 Communications system ingress and egress arrangement Mux, Access Server
15
24
PATENT DATE
NO. ISSUED TITLE AREA OF APPLICATION
------- -------- -------------------------------------------------------------- ----------------------------
5164983 11/17/92 Telemarketing complex performance management system Access Server
5181238 1/19/93 Authenticated communications access service Access Server
5182744 1/26/93 Telecommunications Network Restoration Architecture Mux, DSU, Modem
5195132 3/16/93 Telephone network speech signal enhancement Modem, Access Server
5222125 5/22/93 A system for providing personalized telephone calling Access Server
features
5243645 9/7/93 Automatic System for Forwarding of call Access Server
5270919 12/14/93 Network planning tool Mux, Access Server
5276444 1/4/94 Centralized security control system Mux, Access Server
5278889 1/11/94 Video Telephony dialing Modem, Access Server
5283624 2/1/94 Calling Line identification Access Server
5287199 2/16/94 Facsimile message processing and routing system Access Server
5291551 2/1/94 Home agent telecommunication technique Access Server
6311572 5/10/94 Cooperative databases call processing system Access Server
5325421 6/28/94 Voice directed communications system platform Modem, Access Server
5329308 7/12/94 Bidirectional video telephony between cable television and Mux, Access Server
switched telephone systems
5329581 7/12/94 Target area calling system Access Server
5333195 7/26/94 Telephone network speech signal enhancement Modem, Access Server
5333308 7/26/94 Method and apparatus for operating a communication network Modem, DSU, Mux, Access
monitor arrangement Server
5335224 8/2/94 Service guarantee/congestion control at high-speed networks Mux, Access Server
5353396 10/4/94 Voice directed communication system architecture Modem, Access Server
5353339 10/4/94 Simplified Uniform Network Provisioning and Restoration Modem, DSU, Mux, Access
Server
5369695 11/29/94 Method of redirecting a telephone call to an alternate Access Server
destination (ADCR)
5375124 12/20/94 Method and apparatus for providing ISDN access Mux, Access Server
5384831 1/24/95 A system for providing personalized telephone call features Access Server
5386467 1/31/95 Intelligent Network Communication System Mux, Access Server
5392345 2/21/95 Work at home ACD agent network Access Server
5409526 4/18/95 Conference Calling System Mux, Access Server
5410538 4/25/95 Method and apparatus for transmitting signals in a multi-tone Modem, DSL
code
A-16
25
PATENT DATE
NO. ISSUED TITLE AREA OF APPLICATION
------- -------- -------------------------------------------------------------- ----------------------------
5420851 5/30/96 Method of Multiple Access Modem, Access Server
5420917 5/30/95 Automated Recovery of telecommunication network elements DSU, Modem, Mux, Access
Server
5428608 6/27/95 Call connection technique Modem, Access Server
5434920 7/18/95 Secure telecommunications DSU, Modem, Mux, Access
Server
5442625 8/15/95 Code division multiple access system providing variable data Modem, Wireless Data Gateway
rate access to a user
5448632 9/5/95 Call monitoring system for intelligent call processing Access Server
5450123 9/12/95 A method to enhance voice communications using encoded one-way Modem, Access Server
video signals under bi-directional user or network control for
transmitting stored or real-time video or image information
5450479 9/12/95 Method and apparatus for facilitating the making of card calls Modem, Access Server
5463677 10/31/95 Method and apparatus for facilitating the making of collect Modem, Access Server
calls
5463683 10/31/95 Blocked call notification system Modem, Access Server
5463685 10/31/95 Network based outbound call management Mux, Access Server
5473468 12/5/95 Soliton data transmission using non-soliton transmitter DSU, Mux
5473671 12/5/95 Selective Screening of Incoming Calls for Cellular Wireless Data Gateway
5473677 12/5/95 Telecommunications network architecture and system Modem, DSU, Mux, Access
Server
5473679 12/5/95 A signaling system for broadbased communications networks Mux, DSL
5473681 12/5/95 Method for Use in completing telephone calls Mux, Access Server
5475746 12/12/95 Method for permitting subscriber to change call features in Access Server
real-time
5481603 1/2/96 Intelligent call processing based upon complete identification Modem, Access Server
of calling station
5485515 1/16/96 Background noise compensation in a telephone network Modem, Access Server
5487171 1/23/96 Telecommunications system sequences calling Modem, Access Server
5488569 1/30/96 Application-oriented telecommunication system interface Access Server
5491576 2/13/96 Dual-wavelength data transmitter for reducing fading in an DSU, Mux
optical transmission system
5509055 4/16/96 Inbound telecommunications services resources management system Mux, Access Server
A-17
26
PATENT DATE
NO. ISSUED TITLE AREA OF APPLICATION
------- -------- -------------------------------------------------------------- ----------------------------
5509060 4/16/96 Network accessible intelligent telephone services Modem, Access Server
5513254 4/30/96 Method and apparatus for processing facsimile transmissions Modem, Access Server
5515425 5/7/96 Telecommunications system with active databases Access Server
5521966 5/26/96 Method & system for mediating transactions that use portable Modem, Access Server
smart cards
5521969 5/28/96 Telephone caller identity delivery system and method with Modem, Access Server
enhanced caller privacy
A-18
27
APPENDIX 6 TO EXHIBIT FF
(Illegible)
A-19
