Exhibit 99.5
PATENT LICENSE AGREEMENT
between
LUCENT TECHNOLOGIES GRL CORPORATION
and
ARTISOFT, INC.
Effective as of June 30, 2000
Relating to Interactive Messaging and Response Products
PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
Page
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ARTICLE I GRANTS OF LICENSES..................................................1
1.01 Grant................................................................1
1.02 Scope................................................................1
1.03 Ability to Provide Licenses..........................................2
1.04 Joint Inventions.....................................................2
1.05 Publicity............................................................2
ARTICLE II ROYALTY AND PAYMENTS................................................3
2.01 Initial Fee..........................................................3
2.02 Royalty Calculation..................................................3
2.03 Accrual..............................................................3
2.04 Records and Adjustments..............................................3
2.05 Reports and Payments.................................................4
ARTICLE III TERMINATION........................................................5
3.01 Breach...............................................................5
3.02 Voluntary Termination................................................5
3.03 Survival.............................................................5
ARTICLE IV MISCELLANEOUS PROVISIONS............................................5
4.01 Disclaimer...........................................................5
4.02 Nonassignability.....................................................5
4.03 Addresses............................................................7
4.04 Taxes................................................................7
4.05 Choice of Law........................................................7
4.06 Integration..........................................................8
4.07 Outside the United States............................................8
4.08 Dispute Resolution...................................................8
4.09 Releases.............................................................9
4.10 Covenant Not to Xxx.................................................10
APPENDIX A - DEFINITIONS
APPENDIX B - PARTIAL LIST OF GRL PATENTS
PATENT LICENSE AGREEMENT
This Patent License Agreement ("Agreement") is between the following
Parties: LUCENT TECHNOLOGIES GRL CORPORATION, a Delaware corporation ("GRL"),
having an office at Suite 105, 00000 00xx Xxxxxx, Xxxxx Xxxxx, Xxxxxxx 00000,
and ARTISOFT, INC. a Delaware corporation ("ARTISOFT"), having an office at 0
Xxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000. This Agreement is effective on
June 30, 2000 ("Effective Date"). The Parties agree as follows*:
ARTICLE I
GRANTS OF LICENSES
1.01 GRANT
(a) GRL grants to ARTISOFT under GRL's PATENTS nonexclusive and
nontransferable (except as provided herein) licenses to make, have made, use,
lease, sell, offer to sell or import:
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS.
Notwithstanding the foregoing, no licenses under GRL's PATENTS are granted
to ARTISOFT for INTERACTIVE MESSAGING AND RESPONSE PRODUCTS, SPECIALIZED.
(b) ARTISOFT grants to GRL under ARTISOFT's PATENTS nonexclusive,
royalty-free and non-transferable (except as provided herein) licenses to make,
have made, use, lease, sell, offer to sell or import products of any kind.
(c) All licenses granted under this Section 1.01 under any patent shall
continue for a five (5) year period commencing on the Effective Date unless
terminated in accordance with Article Ill.
(d) Subject to the terms of Section 1.03 hereof, (i) each Party warrants
to the other that it has the ability to grant the licenses and releases in this
Agreement and (ii) GRL warrants that GRL's PATENTS include the patents listed in
Appendix B. Each Party agrees to defend, indemnify and hold the other Party
harmless for any breach of this warranty.
Any term in capital letters which is defined in Appendix A - Definitions
shall have the meaning specified therein.
1.02 SCOPE
(a) Licenses granted herein to ARTISOFT are not to be construed either (i)
'as consent by the grantor to any act which may be performed by ARTISOFT, except
to the extent impacted by a patent licensed herein to ARTISOFT, or (ii) to
include licenses to contributorily infringe or induce infringement under U.S.
law or a foreign equivalent thereof.
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* Any term in capital letters which is defined in Appendix A - Definitions
shall have the meaning specified therein.
(b) The grant of each license hereunder to a Party includes the right to
grant sublicenses within the scope of such license to such Party's RELATED
COMPANIES for so long as they remain its RELATED COMPANIES. Any such sublicense
may be made effective retroactively, but not prior to the Effective Date hereof,
nor prior to the sublicensees becoming a RELATED COMPANY of such Party.
(c) The grant of each license hereunder conveys to any customer of the
grantee or end user a LICENSED PRODUCT manufactured or sold by grantee the right
to use and resell such LICENSED PRODUCT as sold or leased by such grantee
(whether or not as part of a larger combination); provided, however, that no
rights may be conveyed to customers or end users with respect to any invention
which is directed to (1) a method or process which is other than the method of
operation carried out by the LICENSED PRODUCT in the form furnished by the
grantee, or (2) a method or process involving the use of a LICENSED PRODUCT to
manufacture (including associated testing) any other product.
1.03 ABILITY TO PROVIDE LICENSES
A Party's failure to meet any obligation hereunder, due to the assignment
of title to any invention or patent, or the granting of any licenses, to the
United States Government or any agency or designee thereof pursuant to a statute
or regulation of, or contract with, such Government or agency, shall not
constitute a breach of this Agreement.
1.04 JOINT INVENTIONS
(a) There are countries (not including the United States) which require
the express consent of all inventors or their assignees to the grant of licenses
or rights under patents issued in such countries for joint inventions.
(b) Each Party shall give such consent, or shall obtain such consent from
its RELATED COMPANIES, its employees or employees of any of its RELATED
COMPANIES, as required to make full and effective any such licenses and rights
respecting any joint invention granted to the grantee hereunder by such Party
and by another licensor of such grantee.
(c) Each Party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents are necessary
to make full and effective such licenses and rights respecting any joint
invention purported to be granted by it hereunder. If, in spite of such
reasonable efforts, such Party is unable to obtain the requisite consents from
such third parties, the resulting inability of such Party to make full and
effective its purported grant of such licenses and rights shall not be
considered to be a breach of this Agreement.
1.05 PUBLICITY
(a) Nothing in this Agreement shall be construed as conferring upon either
Party or its RELATED COMPANIES any right to include in advertising, packaging or
other commercial activities related to a LICENSED PRODUCT, any reference to the
other Party (or any of its RELATED COMPANIES), its trade names, trademarks or
service marks in a manner which would be likely to cause confusion or to
indicate that such LICENSED PRODUCT is in any way certified by the other Party
hereto or its RELATED COMPANIES.
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(b) The parties agree to keep the terms and conditions of this Agreement
in confidence, except as required by law.
ARTICLE II
ROYALTY AND PAYMENTS
2.01 INITIAL FEE
(a) Within ten (10) days of the date the last of the Parties executes this
Agreement, ARTISOFT shall pay to GRL at the address specified in Section 4.03 a
fee of two hundred fifty thousand United States dollars (U.S. $250,000.00).
(b) In no event shall any fees paid under this Section 2.01 or any portion
thereof be refunded to ARTISOFT.
2.02 ROYALTY CALCULATION
(a) During the reporting period in which the sum of REVENUE accrued during
the term of this Agreement exceeds twenty-five million United States dollars
(U.S. $25,000,000.00), ARTISOFT shall pay to GRL a royalty of one percent (1%)
of the portion of such sum in excess of twenty-five million United States
dollars (U.S. $25,000,000.00). Thereafter and until the reporting period in
which the sum of REVENUE accrued during the term of this Agreement exceeds fifty
million United States dollars (U.S. $50,000,000.00), ARTISOFT shall pay to GRL a
royalty of one percent (1%) on REVENUE.
(b) During the reporting period in which the sum of REVENUE accrued during
the term of this Agreement exceeds fifty million United States dollars (U.S.
$50,000,000.00), ARTISOFT shall pay to GRL a royalty of (i) one percent (1%) on
the portion of REVENUE accrued during such reporting period such that such sum
is less than fifty million United States dollars (U.S. $50,000,000.00), and (ii)
two percent (2%) on the remaining portion of REVENUE accrued during such
reporting period: Thereafter ARTISOFT shall pay to GRL a royalty of two percent
(2%) on REVENUE.
2.03 ACCRUAL
(a) Royalty shall accrue on REVENUE on the date on which ARTISOFT accounts
for such REVENUE for the purpose of publicly reporting in its 10K filing and
shall become payable in accordance with Section 2.05. Obligations to pay accrued
royalties shall survive termination of licenses and rights pursuant to Article
III and the expiration of any patent.
(b) When a company ceases to be a RELATED COMPANY of ARTISOFT, royalties
which have accrued with respect such company, but which have not been paid,
shall become payable, with ARTISOFT's next scheduled royalty payment.
2.04 RECORDS AND ADJUSTMENTS
(a) ARTISOFT shall keep full, clear and accurate records with respect to
REVENUE and shall furnish any information which GRL may reasonably prescribe
from time to time to enable GRL to ascertain the proper royalty due hereunder on
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account of REVENUE by ARTISOFT or any of its RELATED COMPANIES. ARTISOFT shall
retain such records with respect to REVENUE for at least four (4) years. GRL
shall have the right through its accredited auditors to make an examination,
during normal business hours, of all records and accounts bearing upon the
amount of royalty payable to it hereunder. Prompt adjustment shall be made to
compensate for any errors or omissions disclosed by such examination. GRL shall
be entitled to such an examination by its auditors no more than once in any
calendar year.
(b) Independent of any such examination, GRL will credit to ARTISOFT (and
refund to ARTISOFT if overpayments exceed royalty payments subsequently due) the
amount of any overpayment of royalties made in error which is identified and
fully explained in a written notice to GRL delivered within twelve (12) months
after the due date of the payment which included such explained overpayment
provided that GRL is able reasonably to verify the existence and extent of the
overpayment.
No refund, credit or other adjustment of royalty payments shall be made by
GRL except as provided in this Section 2.04. Rights conferred by this Section
2.04 shall not be affected by any statement appearing on any check or document,
except to the extent that any such right is expressly waived or surrendered by a
Party having such right and signing such statement.
2.05 REPORTS AND PAYMENTS
(a) Within sixty (60) days after the end of each semiannual period ending
on June 30th or December 31st, commencing with the semiannual period after which
this Agreement first becomes effective, ARTISOFT shall furnish to GRL at the
address specified in Section 4.03, a statement certified by a responsible
official of ARTISOFT showing in a manner acceptable to GRL:
(i) all REVENUE during such semiannual period; and
(ii) the amount of royalty payable thereon.
If no REVENUE has been received, the statement shall show that fact.
(b) Within such sixty (60) days ARTISOFT shall pay in United States
dollars to GRL at the address specified in Section 4.03 the royalties payable in
accordance with such statement. Any conversion to United States dollars shall be
at the prevailing rate for bank cable transfers as quoted for the last day of
such semiannual period by leading United States banks in New York: City dealing
in the foreign exchange market.
(c) Overdue payments hereunder shall be subject to a late payment charge
calculated at an annual rate of three percentage points (3%) over the prime rate
or successive prime rates (as posted in New York City) during delinquency. If
the amount of such charge exceeds the maximum permitted by law, such charge
shall be reduced to such maximum.
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ARTICLE III
TERMINATION
3.01 BREACH
In the event of a material breach of this Agreement by either Party, the
other Party may, in addition to any other remedies that it may have, at any time
terminate all licenses and rights granted by it hereunder not less than two (2)
months after providing written notice specifying such breach, unless within the
period following such notice all material breaches specified therein shall have
been remedied.
3.02 VOLUNTARY TERMINATION
By written notice to the other Party, either Party may voluntarily
terminate all or a specified portion of the licenses and rights granted to it
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.
3.03 SURVIVAL
(a) If a company ceases to be a RELATED COMPANY of a Party, licenses and
rights granted hereunder with respect to patents of such company shall not be
affected by such cessation.
(b) Any termination of licenses and rights of a Party under the provisions
of this Article Ill shall not affect such Party's licenses, rights and
obligations with respect to any LICENSED PRODUCT made prior to such termination,
shall not affect the rights of such Party's customers or end users of its
LICENSED PRODUCTS made prior to such termination, and shall not affect the other
Party's licenses and rights (and obligations related thereto) hereunder.
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.01 DISCLAIMER
NEITHER PARTY NOR ANY OF ITS RELATED COMPANIES MAKES ANY REPRESENTATIONS,
EXTENDS ANY WARRANTIES OF ANY KIND, ASSUMES ANY RESPONSIBILITY OR OBLIGATIONS
WHATEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR OTHERWISE, OTHER THAN
THE LICENSES, RIGHTS AND WARRANTIES HEREIN EXPRESSLY GRANTED.
4.02 NONASSIGNABILITY
(a) GRL has entered into this Agreement in contemplation of personal
performance by ARTISOFT and it is GRL's intention that a transfer of ARTISOFT's
licenses or rights not occur, other than pursuant to Section 4.02(d), without
GRL's express written consent.
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(b) Neither this Agreement nor any licenses or rights granted hereunder,
in whole or in part, shall be assignable or transferable by ARTISOFT, except
pursuant to Section 4.02(d), by ARTISOFT (by operation of law or otherwise)
without GRL's express written consent.
(c) Any purported assignment or transfer of this Agreement or licenses or
rights hereunder by ARTISOFT without GRL's consent, if required, shall be void
(without affecting any other licenses or rights hereunder).
(d) If during the term of this Agreement, a third party acquires the
computer telephony business of ARTISOFT or if the computer telephony business of
ARTISOFT is merged into the third party and such third party controls the
surviving entity, and if the acquired/merged ARTISOFT computer telephony
business exists as a separately identifiable business within the operations of
such third party, then the licenses granted herein shall continue only: (i) for
the duration of this Agreement or for so long as the acquired/merged ARTISOFT
business continues to exist as a separately identifiable business, whichever is
shorter, and (ii) only for the products of the kind sold or furnished by the
acquired/merged ARTISOFT business. Except as expressly provided herein, the
products of the third party, even if of the same kind or similar to those of the
acquired/merged ARTISOFT business, shall not be licensed by virtue of this
Agreement.
(e) The provisions of Section 4.02(d) shall apply only if:
(i) there is no lawsuit filed, with respect to any patent matter
(including any patent license) or any trade secret matter, as of
the announcement of the acquisition/merger either between GRL (or
any of its RELATED COMPANIES) and the acquiring/merging company
of ARTISOFT or between GRL (or any of its RELATED COMPANIES) and
ARTISOFT; and
(ii) the acquiring/merging party provides a letter to GRL within 30
days of the acquisition/merger, agreeing to the terms and
conditions of this Agreement.
In no event, however, shall such acquiring/merging party be required to
grant a cross-license to its patents as a condition of obtaining the license
assignment described in Section 4.02(d).
(f) This Agreement and/or the licenses and rights granted herein to GRL,
in whole or in part, may be assigned by GRL to any of its RELATED COMPANIES.
(g) If GRL or any of its RELATED COMPANIES divests a portion of its
business and such divested business continues operation as a separately
identifiable business, then the licenses granted hereunder to GIRL may be
sublicensed to such divested separate business without the consent of ARTISOFT,
but only (i) for the duration of this Agreement or to the extent and for the
time the divested business functions as a separately identifiable business, and
(ii) for products and services of the kind provided by the divested business
prior to its divestiture and not to any products or services of any entity which
acquires the divested business. This Section 4.02(g) shall apply regardless of
whether the business is divested by a distribution to existing shareholders, a
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sale of assets or as a sale of a legal entity (e.g., sale of a SUBSIDIARY). The
sublicensing rights specified herein shall include any business whose
acquisition is after the effective date of this Agreement, provided the
acquisition of such business was not a sham for the purpose of extending rights
to the acquired (and then divested) business. The covenant not to xxx contained
in Section 4.10 shall apply to any entity receiving a sublicense pursuant to
this Section 4.02(g).
4.03 ADDRESSES
(a) Any notice or other communication hereunder shall be sufficiently
given to the ARTISOFT when sent by certified mail addressed to ARTISOFT's office
above specified, or to GRL when sent by certified mail addressed to Contract
Administrator, Intellectual Property Organization, Lucent Technologies GRL
Corp., Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014, United
States of America. Changes in such addresses may be specified by written notice.
(b) Payments by ARTISOFT shall be made to GRL at Lucent Technologies - GRL
Corporation, General Post Office, X.X. Xxx 0000, Xxx Xxxx, Xxx Xxxx, 00000-0000,
Xxxxxx Xxxxxx of America. Alternatively, payments to GRL may be made by bank
wire transfers to GRL's account at Chase Manhattan Bank: Lucent Technologies GRL
Corporation, Account No. 323857752, Swift Code: XXXXXX00, ABA Code: 000000000.
Changes in such address or account may be specified by written notice.
4.04 TAXES
(a) ARTISOFT shall bear all taxes, duties, levies and similar charges (and
any related interest and penalties), however designated, imposed as a result of
the existence or operation of this Agreement, except (i) any tax imposed upon
GRL in a jurisdiction other than the United States if such tax is allowable as a
credit against the United States income taxes of GRL; and (ii) any net income
tax imposed upon GRL by the United States or any governmental entity within the
United States (the fifty (50) states and the District of Columbia). In order for
the exception contained in (i) to apply, ARTISOFT must furnish GRL with such
evidence as may be required by the United States taxing authorities to establish
that such tax has been paid within thirty (30) days of issuance of such evidence
by the local taxing authority so that GRL may claim the credit.
(b) If ARTISOFT is required to bear a tax, duty, levy or similar charge
pursuant to (a) above, ARTISOFT shall pay such tax, duty, levy or similar charge
and any additional amounts as are necessary to ensure that the net amounts
received by GRL hereunder after all such payments or withholdings equal the
amounts to which GRL is otherwise entitled under this Agreement as if such tax,
duty, levy or similar charge did not apply.
4.05 CHOICE OF LAW
The Parties agree that the law of New York, exclusive of its conflicts of
law provisions, shall apply in any dispute arising with respect to this
Agreement.
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4.06 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, modifications 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.
4.07 OUTSIDE THE UNITED STATES
(a) There are countries in which the owner of an invention is entitled to
compensation, damages or other monetary award for another's unlicensed
manufacture, sale, lease, use or importation involving such invention prior to
the date of issuance of a patent for such invention but on or after a certain
earlier date, hereinafter referred to as the invention's "protection
commencement date" (e.g., the date of publication of allowed claims or the date
of publication or "laying open" of the filed patent application). In some
instances, other conditions precedent must also be fulfilled (e.g., knowledge or
actual notification of the filed patent application). The Parties agree that (i)
an invention which has a protection commencement date in any such country may be
used in such country pursuant to the terms of this Agreement on and after any
such date, and (ii) all such conditions precedent are deemed satisfied by this
Agreement.
(b) ARTISOFT hereby agrees to register or cause to be registered, to the
extent required by applicable law, and without expense to GRL or any of its
RELATED COMPANIES, any agreements wherein sublicenses are granted by it under
GRL's PATENTS. ARTISOFT hereby waives any and all claims or defenses, arising by
virtue of the absence of such registration, that might otherwise limit or affect
its obligations to GRL.
4.08 DISPUTE RESOLUTION
(a) If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the Parties agree to submit the dispute
to a sole mediator selected by the Parties or, at any time at the option of a
Party, to mediation by the American Arbitration Association ("AAA"). If not thus
resolved, it shall be referred to a sole arbitrator selected by the Parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United Mates Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for or
against a Party and affording such remedy as is deemed equitable, just and
within the scope of the agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or infringement) or a
statement of the reasoning on which the award rests; (iii) may in appropriate
circumstances (other than patent disputes) include injunctive relief; (iv) shall
be made within four (4) months of the appointment of the arbitrator; and (v) may
be entered in any court.
(c) The requirement for mediation and arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the arbitrator is
not empowered to act or make any award other than based solely on the rights and
obligations of the Parties prior to any such termination.
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(d) The arbitrator shall be knowledgeable in the legal and technical
aspects of this Agreement and shall determine issues of arbitrability but may
not limit, expand or otherwise modify the terms of the agreement.
(e) The place of mediation and arbitration shall be New York City.
(f) Each Party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne equally.
(g) A request by a Party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall have authority to award only compensatory
damages. The arbitrator shall no authority to award punitive or other damages,
and each Party irrevocably waives any claim thereto.
(i) The Parties, their representatives, other participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
4.09 RELEASES
(a) Subject to Section 4.09(c) and to the receipt by GRL of the payment by
ARTISOFT specified in Section 2.01, GRL, for itself and for its present RELATED
COMPANIES (i.e., RELATED COMPANIES as of the Effective Date), hereby releases,
to the extent of its right to do so, ARTISOFT and its present RELATED COMPANIES,
and its customers and end users of LICENSED PRODUCTS, from any act of patent
infringement arising prior to the Effective Date for which the rights and
licenses expressly granted under this Agreement to ARTISOFT and its present
RELATED COMPANIES, or to its customers or end users, would be a complete defense
had this Agreement been in effect at the time such patent infringement arose.
(b) Subject to Section 4.09(c), ARTISOFT for itself and for its present
RELATED COMPANIES (i.e., RELATED COMPANIES as of the Effective Date), hereby
releases, to the extent of its right to do so, GRL and its present RELATED
COMPANIES, and its customers and end users of LICENSED PRODUCTS, from any act of
patent infringement arising prior to the Effective Date for which the rights and
licenses expressly granted under this Agreement to GRL and its present RELATED
COMPANIES, or to its customers or end users, would be a complete defense had
this Agreement been in effect at the time such patent infringement arose. For
the purposes of this Section 4.10(b), RELATED COMPANIES of GRL also includes
Lucent Technologies Inc. and its SUBSIDIARIES as they formerly existed as a part
of AT&T Corp.
(c) The releases in Sections 4.09(a) and (b) shall not operate to release
any customer of ARTISOFT or any of its RELATED COMPANIES who is a party to any
lawsuit involving allegations of patent infringement, patent invalidity or
patent unenforceability in which GRL or any of its RELATED COMPANIES is an
adverse party as of two weeks prior to the Effective Date.
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4.10 COVENANT NOT TO XXX
(a) For a period of five (5) years from the Effective Date and subject to
receipt of the fee specified in Section 2.01, GRL and its RELATED COMPANIES
agree that it will not file any suit, claim or initiate any other proceeding
against ARTISOFT or its SUBSIDIARIES alleging infringement of any patent issued
or acquired after the Effective Date.
(b) For a period of five (5) years from the Effective Date, ARTISOFT and
its SUBSIDIARIES agree that it will not file any suit, claim or initiate any
other proceeding against GRL or any of its RELATED COMPANIES alleging
infringement of any patent issued or acquired after the Effective Date.
(c) The foregoing Sections 4.10(a) and 4.10(b), however, shall not be
construed to be a release by either Party for claims of damages for such
infringement.
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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.
LUCENT TECHNOLOGIES GRL CORPORATION
By: /s/ XXXXXX X. XXXXXXX
----------------------------------------
Xxxxxx X. XxXxxxx
Chairman
Date: 6/28/00
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ARTISOFT, INC.
By: /s/ XXXXXXX X. XXXXXX
----------------------------------------
Title: Chairman of the Board and Interim CEO
Date: 6/27/00
--------------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF BOTH PARTIES.
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APPENDIX A
DEFINITIONS
ARTISOFT'S PATENTS means every patent (including utility models but
excluding design patents and design registrations) issued in any country of the
world as of the Effective Date.
GRL'S PATENTS means all patents (including utility models but excluding
design patents and design registrations) issued prior to the Effective Date in
any or all countries of the world
(i) which patents are owned or controlled as of the Effective Date by
GRL or any of its RELATED COMPANIES; and
(ii) with respect to which patents GRL or any of its RELATED COMPANIES
has, as of the Effective Date, the right to grant the licenses
specified herein.
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS means an instrumentality or
aggregate of instrumentalities comprised of hardware, with or without embedded
software, or software, and of a design primarily adapted for enabling access,
input, manipulation, playback, recording, identification, transmittal, receipt,
routing, transfer and/or retrieval of one or more different types of
information. Such types of information include without limitation data,
electronic mail, facsimile, image, web pages, audio, audio prompts; video or
voice, individually or in aggregate, and such information being communicated
unidirectionally or multidirectionally through public or private communications
networks, including without limitation the Internet, intranets, telephone or
computer networks, or through one or more internal communication paths.
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS does not include (i) any
semiconductor device or integrated circuit or (ii) any instrumentality or
aggregate of instrumentalities, including hardware, with or without embedded
software, which provide primary circuit or packet switching function, and thus,
for example, but without limitation, does not include central office switches
and/or routers. However, INTERACTIVE MESSAGING AND RESPONSE PRODUCTS does
include automated call distributor switch hardware and software and products
having secondary circuit or packet switching capabilities and includes private
branch exchange hardware and software. Such secondary circuit or packet
switching capabilities are those that expand the availability of INTERACTIVE
MESSAGING AND RESPONSE PRODUCTS without replacing the primary central office
switching functions.
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS, SPECIALIZED means an
INTERACTIVE MESSAGING AND RESPONSE PRODUCT which is designed and manufactured to
be a substitute for, plug compatible with, or include significant portions of
unique physical, functional or interface characteristics embodied in any Lucent
or OcteINMX/Opcom legacy INTERACTIVE MESSAGING AND RESPONSE PRODUCT system.
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS that merely implement public domain,
open system or industry-standard physical, functional or interface
characteristics shall not be considered INTERACTIVE MESSAGING AND RESPONSE
PRODUCTS, SPECIALIZED.
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LICENSED PRODUCT means: with respect to ARTISOFT, INTERACTIVE MESSAGING AND
RESPONSE PRODUCTS; and with respect to GRL, products of any kind.
NET GROSS SALES means all revenues, excluding investment income (i.e.,
interest, dividends and other returns on financial investments), from the sale
or lease of all LICENSED PRODUCTS, but excluding revenues for the provision of
services relating to such products, less revenues refunded to customers due to
returns and/or warranty claims.
RELATED COMPANY means: with respect to ARTISOFT, any SUBSIDIARY of
ARTISOFT; and with respect to GRL the term means: (i) any SUBSIDIARY of GRL,
(ii) GRL's parent company, Lucent Technologies Inc., and/or (iii) any SUBSIDIARY
of Lucent Technologies Inc.
REVENUE means NET GROSS SALES of ARTISOFT and any of its RELATED COMPANIES
sublicensed pursuant to Section 1.02. For so long as:
(i) GRL and ARTISOFT agree,
(ii) the Computer Telephony Products Group sells only LICENSED
PRODUCTS, and
(iii) TeleVantage products are a part of the Computer Telephony
Products Group, then
REVENUE shall be deemed to be that amount reported by ARTISOFT as Computer
Telephony Products Group "Product Revenue" in its periodic Security and Exchange
Commission (SEC) filings if ARTISOFT separately reports Product Revenue and
"Service Revenue" for that group. If ARTISOFT combines "Product Revenue and
Service Revenue for that group in its SEC filings, then REVENUE shall be deemed
to be ARTISOFT's publicly reported "Computer Telephony Total Revenue", less
Computer Telephony Service Revenue, with Product and Service Revenue being
calculated according to generally accepted accounting principles. If ARTISOFT
does not segregate Computer Telephony Product and Service Revenue in its SEC
filings, then ARTISOFT shall certify to GRL, in its semi-annual reports due
pursuant to Section 2.05, the amounts of Computer Telephony Product and Service
Revenue for such appropriate periods for such reports calculated according to
generally accepted accounting principles.
SUBSIDIARY of a company means 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 controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
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 and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a SUBSIDIARY of such
company only as long as such control or ownership and control exists.
00
XXXXXXXX X - PARTIAL LIST OF GRL PATENTS
VOICE PROCESSING PATENTS
PATENT NO. CATEGORY INVENTOR DATE OF ISSUE
---------- -------- -------- -------------
4,371,752 Store & Forward Xxxxxxxx et al. 02/01/1983
4,375,083 Editing Xxxxxxxxx 02/22/1983
4,436,963 Auto Attendant Xxxxxxxx et al. 03/13/1984
4,437,087 Coding 4,437,087 / Petr / Issued
3/13/84 03/13/1984
4,446,336 VM Feature Bethel et al. 05/01/1984
4,449,190 Editing Xxxxxxxx et al. 05/15/1984
4,476,349 LWC/CLID Xxxxxxxx et al. 10/09/1984
4,535,198 VM Feature Xxxxxxxxxxxx 08/13/1985
4,580,012 Store & Forward Xxxxxxxx et al. 04/01/1986
4,581,486 Store & Forward Xxxxxxxx et al. 04/08/1986
4,582,959 VM Feature Xxxxxxxxx et al. 04/15/1986
4,585,906 Store & Forward Xxxxxxxx et al. 04/29/1986
4,587,670 ASR Xxxxxxxx et al. 05/06/1986
4,602,129 Store & Forward Xxxxxxxx et al. 07/22/1986
4,612,416 Unified Messaging Xxxxxxx et al. 09/16/1986
4,640,991 Store & Forward Xxxxxxxx et al. 02/03/1987
4,646,346 Unified Messaging Xxxxxxx et al. 02/24/1987
4,652,700 Store & Forward Xxxxxxxx et al. 03/24/1987
4,653,085 VP Network Chan 03/24/1987
4,701,954 Coding Xxxx 10/20/1987
14
VOICE PROCESSING PATENTS
PATENT NO. CATEGORY INVENTOR DATE OF ISSUE
---------- -------- -------- -------------
4,747,124 Auto Attendant Xxxx 05/24/1988
4,757,525 Store & Forward Xxxxxxxx et al. 07/12/1988
4,761,807 Store & Forward Xxxxxxxx et al. 08/02/1988
4,764,963 Coding Xxxx 08/16/1988
4,783,796 Auto Attendant Xxxx 11/08/1988
4,785,408 Voice Response Xxxxxxx et al. 11/15/1988
4,788,715 ACD/Queue Xxx 11/29/1988
4,788,715 ACD/Queue Xxx 11/29/1988
4,790,003 Unified Messaging Xxxxxx et al. 12/0611988
4,792,967 Auto Attendant Xxxx 12/20/1988
4,837,798 Unified Messaging Xxxxx et al. 06/06/1989
4,837,807 LWC/CLID Xxxxx et al. 06/06/1989
4,852,180 ASR Xxxxxxxx 07/25/1989
4,860,358 ASR Rabiner 08/22/1989
4,873,718 VP Integration Xxxxxxx et al. 10/10/1989
4,879,743 VP Integration Xxxxx et al. 11/07/1989
4,899,358 LWC/CLID Xxxxxxx 02/06/1990
4,899,385 Coding Xxxxxxx et al. 02/06/1990
4,910,781 Coding Xxxxxxx et al. 03/20/1990
4,914,692 ASR Xxxxxxxx et al. 04/03/1990
4,926,462 VP Integration Xxxx 05/15/1990
4,933,967 VM Feature Lo et al. 06/12/1990
15
VOICE PROCESSING PATENTS
PATENT NO. CATEGORY INVENTOR DATE OF ISSUE
---------- -------- -------- -------------
4,935,954 VM Feature Xxxxxxxx et al. 06/19/1990
4,943,995 Voice Response Xxxxxxxx et al. 07/24/1990
4,980,906 VP Integration Xxxxxx et al. 12/25/1990
4,996,704 LWC/CLID Xxxxxxx 02/26/1991
5,003,574 Voice Response Denq et al. 03/26/1991
5,007,076 LWC/CLID Xxxxxxx 04/09/1991
5,017,917 VM Feature Xxxxxx et al. 05/21/1991
5,022,070 VP Integration Xxxxxx et al. 06/04/1991
5,027,358 VP Integration O'Dell et al. 06/25/1991
5,034,975 VM Feature Xxxxxx 07/23/1991
5,072,309 Facsimile Xxxxx 12/10/1991
5,083,308 VP Integration Xxxxxx et al. 01/21/1992
5,117,451 VP Integration Xxxx 05/26/1992
5,125,024 ASR Gokcen et al. 06/23/1992
5,127,047 Facsimile Xxxx et al. 06/30/1992
5,136,690 Visual OA&M Xxxxxx et al. 08/04/1992
5,155,760 ASR Xxxxxxx et al. 10/13/1992
5,177,780 VM Feature Xxxxxx et al. 01/05/1993
5,179,585 Voice Response MacMillan, Jr. et al. 01/12/1993
5,233,660 Coding Chen 08/03/1993
5,235,669 Coding Ordentlich et al. 08/10/1993
5,247,497 VM Feature Xxxx 09/21/1993
16
VOICE PROCESSING PATENTS
PATENT NO. CATEGORY INVENTOR DATE OF ISSUE
---------- -------- -------- -------------
5,255,314 VP Integration Applegate et al. 10/19/1993
5,278,894 LWC/CLID Xxxx 01/11/1994
5,283,833 ASR Church et al. 02/01/1994
5,301,226 VP Network Xxxxx 04/05/1994
5,309,512 ACD/Queue Xxxxxxxx et al. 05/03/1994
5,313,554 Coding Xxxxxxx et al. 05/17/1994
5,319,703 VP Network Drory 06/07/1994
5,325,422 Auto Attendant Xxxx 06/28/1994
5,327,487 Facsimile Xxxxx 07/05/1994
5,327,520 Coding Chen 07/05/1994
5,329,583 ACD/Queue Xxxxxxxxx et al. 07/12/1994
5,329,608 ASR Xxxxxxxxx et al. 07/12/1994
5,339,384 Coding Chen 08/16/1994
5,355,406 Voice Response Chencinski et al. 10/11/1994
5,392,335 VM Feature Xxxxxx 02/21/1995
5,394,460 VP Network Xxxxx 02/28/1995
5,414,757 Unified Messaging Xxxxxxxx 05/09/1995
5,416,830 Voice Response MacMillan, Jr. et al. 05/16/1995
5,416,836 VM Feature Xxxxxxxxx et al. 05/16/1995
5,418,845 VM Feature Xxxxxx 05/23/1995
5,434,908 Unified Messaging Xxxxx 07/18/1995
5,444,774 ACD/Queue Friedes 08/22/1995
17
VOICE PROCESSING PATENTS
PATENT NO. CATEGORY INVENTOR DATE OF ISSUE
---------- -------- -------- -------------
5,475,738 Unified Messaging Xxxxxxx 12/12/1995
5,479,411 Unified Messaging Xxxxx 12/26/1995
5,479,498 Voice Response Xxxxxxxx et al. 12/26/1995
5,481,597 VM Feature Given 01/02/1996
5,506,872 Coding Xxxxxx 04/09/1996
5,506,901 VP Integration Xxxxxx 04/09/1996
5,509,104 ASR Xxx et al. 04/16/1996
5,517,556 Facsimile Pounds et al. 05/14/1996
5,519,507 Facsimile Subramaniam et al: 05/21/1996
5,524,137 Unified Messaging Xxxx 06/04/1996
5,541,836 ASR Church et al. 07/30/1996
5,557,659 Unified Messaging Xxxx-Xxxxxxx 09/17/1996
5,564,048 Visual OA&M Xxxx et al. 10/08/1996
5,572,578 VM Feature Lin et al. 11/05/1996
5,572,650 Visual OA&M Antis et al. 11/05/1996
5,579,436 ASR Chou et al. 11/26/1996
5,581,797 Visual OA&M Xxxxx et al. 12/03/1996
5,596,703 Visual OA&M Xxxx et al. 01/21/1997
5,606,644 ASR Chou et al. 02/25/1997
5,621,727 VM Feature Vaudreuil 04/15/1997
5,623,590 Visual OA&M Xxxxxx et al. 04/22/1997
6,636,350 Visual OA&M Xxxx et al. 06/03/1997
18
VOICE PROCESSING PATENTS
PATENT NO. CATEGORY INVENTOR DATE OF ISSUE
---------- -------- -------- -------------
5,644,692 Visual OA&M Xxxx et al. 07/01/1997
5,717,742 Unified Messaging Xxxx-Xxxxxxx 02/10/1998
19
