Exclusive Patent and Non-Exclusive Copyright License Agreement - Massachusetts Institute of Technology and Akamai Technologies Inc.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
AND
AKAMAI TECHNOLOGIES, INC.
EXCLUSIVE PATENT AND NON - EXCLUSIVE COPYRIGHT LICENSE
AGREEMENT
THIS OFFER WILL EXPIRE ON NOVEMBER 30, 1998
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TABLE OF CONTENTS
<TABLE>
<CAPTION>
<S> <C>
RECITALS ......................................................................1
1. Definitions................................................................2
2. Grant of Rights............................................................4
3. Company Diligence Obligations..............................................6
4. Delivery of Materials......................................................8
5. Royalties and Payment Terms................................................9
6. Reports and Record Keeping................................................11
7. Patent Prosecution........................................................13
8. Infringement..............................................................14
9. Copyright.................................................................16
10. Indemnification and Insurance............................................16
11. No Representations or Warranties.........................................17
12. Assignment...............................................................18
13. General Compliance with Laws.............................................18
14. Termination..............................................................19
15. Dispute Resolution.......................................................20
16. Miscellaneous............................................................22
APPENDIX A....................................................................25
APPENDIX B....................................................................26
APPENDIX C....................................................................27
APPENDIX D....................................................................28
</TABLE>
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT AND NON-EXCLUSIVE COPYRIGHT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above the signatures
of the parties below (the "EFFECTIVE DATE"), is between the Massachusetts
Institute of Technology ("M.I.T."), a Massachusetts corporation, with a
principal place of business at 77 Massachusetts Avenue, Cambridge, MA 02139-4307
and Akamai Technologies, Inc. ("COMPANY"), a Delaware corporation, with a
principal place of business at __________.
RECITALS
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS and an owner of
certain COPYRIGHTS (as later defined herein) relating to M.I.T. Case No. [**],
[**], et al.; M.I.T. Case [**], et al.; and M.I.T. Case No. [**], et al and has
the right to grant licenses under said PATENT RIGHTS and COPYRIGHTS, subject
only to a royalty-free, nonexclusive non-transferable license to practice the
PATENT RIGHTS and COPYRIGHTS granted to the United States Government for
government purposes;
WHEREAS, the Conflict Avoidance Statement of [**] inventor/equity
participants in COMPANY is Appendix C hereto; the [**] inventor/equity
participants in COMPANY is Appendix D;
WHEREAS, M.I.T.'s Vice President for Research has approved that [**]
the inventors of the PATENT RIGHTS and [**] of the authors of the COPYRIGHTS,
now hold or shall shortly acquire an equity position in COMPANY and that M.I.T.
is accepting equity as partial consideration for the rights and licenses granted
under this Agreement;
WHEREAS, M.I.T. desires to have the PATENT RIGHTS and COPYRIGHTS
developed and commercialized to benefit the public and is willing to grant a
license thereunder;
WHEREAS, COMPANY has represented to M.I.T., to induce M.I.T. to enter
into this Agreement, that COMPANY shall commit itself to a thorough, vigorous
and diligent program of exploiting the PATENT RIGHTS and COPYRIGHTS so that
public utilization shall result therefrom; and
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WHEREAS, at least one of the "authors" has assigned his full and
undivided interest in the COPYRIGHT to M.I.T.; and
WHEREAS, COMPANY desires to obtain a license under the PATENT RIGHTS
and COPYRIGHTS upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, M.I.T. and COMPANY hereby agree as follows:
1. DEFINITIONS.
1.1 "AFFILIATE" shall mean any legal entity (such as a corporation,
partnership, or limited liability company) that controls, or is controlled by,
COMPANY. For the purposes of this definition, the term "control" means (i)
beneficial ownership of at least fifty percent (50%) of the voting securities of
a corporation or other business organization with voting securities or (ii) a
fifty percent (50%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
1.2 "COPYRIGHTS" shall mean M.I.T.'s copyrights in the PROGRAM.
1.3 "COPYRIGHT TERM" shall mean the period of time commencing on the
EFFECTIVE DATE and ending with the expiration of the term for which the
COPYRIGHT is granted, unless earlier terminated in accordance with the
provisions of this Agreement.
1.4 "DERIVATIVE(S)" shall mean COMPANY-created computer software which
shall include, in whole or in part, the PROGRAM, including, but not limited to,
translations of the PROGRAM to other foreign or computer languages, adaptations
of the PROGRAM to other hardware platforms, abridgments, condensations,
revisions, and software incorporating all or any part of the PROGRAM. COMPANY
shall be entitled to establish all proprietary rights for itself in the
intellectual property represented by DERIVATIVES, whether in the nature of trade
secrets, copyrights, patents or other rights, subject to COPYRIGHT and PATENT
RIGHTS. Any copyright registration by COMPANY for DERIVATIVES shall give full
attribution to M.I.T.'s COPYRIGHT.
1.5 "END-USER" shall mean a customer authorized to execute the PROGRAM
or its DERIVATIVE for internal purposes only and not for further distribution or
resale, and shall include customers granted site-wide rights to use and not for
resale.
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1.6 "EXCLUSIVE PERIOD" shall mean the period of time set forth in
Section 2.2.
1.7 "FIELD" shall mean all product, process and service categories.
1.8 "LICENSED PRODUCT" shall mean
(a) any product that cannot be
(1) manufactured, used, leased, sold or imported, in
whole or in part, without infringing on one or more claims under the PATENT
RIGHTS or
(2) executed, reproduced, or modified, in whole or in
part, without infringing the COPYRIGHT and
(b) DERIVATIVES.
1.9 "LICENSED PROCESS" shall mean any process or service that cannot be
performed, in whole or in part, without using at least one process that
infringes one or more claims under the PATENT RIGHTS.
1.10 "PATENT RIGHTS" shall mean:
(a) United States and international patent applications listed
on Appendix A and the resulting patents;
(b) any patent applications filed by M.I.T. claiming the
subject matter of the M.I.T. Cases listed in Appendix A;
(c) any divisionals, continuations, continuation-in-part
applications, and continued prosecution applications (and their relevant
international equivalents) of the patent applications described in (a) and (b)
above to the extent the claims are directed to subject matter specifically
described in such patent applications, and the resulting patents;
(d) any patents resulting from reissues, reexaminations, or
extensions (and their relevant international equivalents) of the patents
described in (a), (b), and (c); and
(e) international (non-United States) patent applications
filed after the EFFECTIVE DATE and the relevant international equivalents to
divisionals, continuations, continuation-in-part applications and continued
prosecution applications of such patent applications and any patents resulting
from reissues, reexaminations, or extensions of the patents
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
described in (d) to the extent the claims are directed to subject matter
specifically described in the patents or patent applications referred to in (a),
(b), (c) and (d), above, and the resulting patents.
1.11 "PROGRAM" shall mean the computer software including object code
and source code that is part of M.I.T. Case No. [**] et al and related
documentation, if any, existing as of the EFFECTIVE DATE and any M.I.T. owned
derivative works or improvements to the PROGRAM created within one year of the
EFFECTIVE DATE.
1.12 "REPORTING PERIOD" shall begin on the first day of each calendar
year and end on the last day of such calendar year.
1.13 "SUBLICENSEE" shall mean any non-AFFILIATE sublicensee of the
rights granted COMPANY under Sections 2.1 and 2.3, excluding END-USERS.
1.14 "PATENT TERM" shall mean the period of time commencing on the
EFFECTIVE DATE and ending with the expiration or abandonment of all issued
patents and filed patent applications within the PATENT RIGHTS, unless earlier
terminated in accordance with the provisions of this Agreement.
1.15 "TERRITORY" shall mean worldwide.
2. GRANT OF RIGHTS.
2.1 PATENT RIGHTS License Grant. Subject to Section 2.8 and the terms
of this Agreement, M.I.T. hereby grants to COMPANY a license for the PATENT TERM
under the PATENT RIGHTS to develop, make, have made, use, sell, offer to sell,
lease, distribute, and import LICENSED PRODUCTS and to practice LICENSED
PROCESSES in the TERRITORY and FIELD.
2.2 Exclusivity. In order to establish an EXCLUSIVE PERIOD as to PATENT
RIGHTS for COMPANY, M.I.T. agrees that it shall not grant any other license to
the rights granted in Section 2.1 during the period of time commencing on the
EFFECTIVE DATE and extending to the end of the PATENT TERM, unless sooner
terminated as provided in this Agreement.
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2.3 COPYRIGHT License Grant. Subject to Sections 2.4, 2.5, and 2.8 and
the terms of this Agreement, M.I.T. also hereby grants to COMPANY the following
non-exclusive rights and licenses to M.I.T. COPYRIGHTS in the TERRITORY and
FIELD for the COPYRIGHT TERM, unless this Agreement shall be sooner terminated
as provided herein:
(a) to execute, reproduce and modify the PROGRAM;
(b) to create DERIVATIVES; and
(c) to distribute the PROGRAM and DERIVATIVES.
2.4 Rights of Sponsors to Copyright. The rights granted in Section 2.3,
as they may apply to derivative works or improvements created by M.I.T. after
the EFFECTIVE DATE, shall be subject to the rights of any research sponsors of
the work leading to such derivatives or improvements.
2.5 Exclusivity as to M.I.T.'s Copyright Rights. M.I.T. agrees that it
shall not grant any other licenses to the rights granted in Section 2.3, except
as provided in Section 2.4, and will not retain any rights except those set out
in Section 2.8.
2.6 Sublicenses. COMPANY shall have the right to grant sublicenses of
its rights under Sections 2.1 and 2.3 to SUBLICENSEES and END-USERS. COMPANY
shall incorporate terms and conditions into its sublicense agreements sufficient
to enable COMPANY to comply with this Agreement. COMPANY shall promptly furnish
M.I.T. with a fully signed photocopy of any sublicense agreement used to
sublicense rights to SUBLICENSEE and one copy of the form of the END-USER
Agreement. Upon termination of this Agreement for COMPANY'S failure to fulfill
its obligations under one or all of Sections 3.1 (a), (b), (c), (d), (e), and
(f), any SUBLICENSEES not then in default shall have the right to seek a license
from M.I.T. M.I.T. agrees to negotiate such licenses in good faith under
reasonable terms and conditions. Termination of this Agreement for any other
reason shall not have any affect on licenses granted by COMPANY to SUBLICENSEES,
provided that such licenses comply with the terms and conditions of this
Agreement set forth in Sections 9, 10, 11 and 13.
2.7 U.S. Manufacturing. COMPANY agrees that any LICENSED
PRODUCTS used or sold in the United States will be manufactured substantially in
the United States.
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
2.8 Retained Rights.
(a) M.I.T. M.I.T. retains the right to practice under the
PATENT RIGHTS and COPYRIGHTS for non-commercial research, teaching, and
educational purposes.
(b) Federal Government. COMPANY acknowledges that the U.S.
federal government retains a royalty-free, non-exclusive, non-transferable
license to any government funded COPYRIGHTS and to practice any
government-funded inventions claimed in any PATENT RIGHTS and as set forth in 35
U.S.C. Sections 201-211, and the regulations promulgated thereunder, as
amended, or any successor statutes or regulations.
2.9 No Additional Rights. Nothing in this Agreement shall be construed
to confer any rights upon COMPANY by implication, estoppel, or otherwise as to
any technology, copyrights, or patent rights of M.I.T. or any other entity other
than the PATENT RIGHTS or COPYRIGHTS (including such rights in derivative works
or improvements to the PROGRAM created within one year of the EFFECTIVE DATE, as
set forth in Section 1.11), regardless of whether such technology or patent
rights shall be dominant or subordinate to any PATENT RIGHTS or COPYRIGHTS.
2.10 Assignment of Rights to M.I.T. M.I.T. shall make reasonable
efforts to seek to obtain assignment of rights of all M.I.T. professors and all
M.I.T. students who are known to be authors of the PROGRAM as it exists on the
EFFECTIVE DATE of this Agreement.
3. COMPANY DILIGENCE OBLIGATIONS.
3.1 Diligence Requirements. COMPANY shall use diligent efforts, or
shall cause its AFFILIATES and SUBLICENSEES to use diligent efforts, to develop
LICENSED PRODUCTS or LICENSED PROCESSES and to introduce LICENSED PRODUCTS or
LICENSED PROCESSES into the commercial market; thereafter, COMPANY or its
AFFILIATES or SUBLICENSEES shall make LICENSED PRODUCTS or LICENSED PROCESSES
reasonably available to the public. Specifically, COMPANY or AFFILIATE or
SUBLICENSEE, shall fulfill the following obligations:
(a) Within [**] after the EFFECTIVE DATE, COMPANY shall
furnish M.I.T. with a written research and development plan describing the major
tasks to be achieved in order to bring to market a LICENSED PRODUCT or a
LICENSED PROCESS,
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
specifying the number of staff and other resources to be devoted to such
commercialization effort.
(b) Within [**] after the end of each calendar year, COMPANY
shall furnish M.I.T. with a written annual report consistent with Article 6.
(c) COMPANY shall develop a working Beta test and models on or
before March 1, 1999, and permit an on-site inspection of a Beta test site and
models by M.I.T. on or before April 1, 1999, and permit one additional Beta site
inspection by M.I.T. at the conclusion of the Beta trial. Prior to any
inspection, M.I.T. agrees that each inspection will be subject to a
non-disclosure agreement.
(d) COMPANY shall raise at least Five Hundred Thousand Dollars
($500,000) by June 30, 1999 from the sale of Company's equity securities for its
own account.
(e) In the aggregate, COMPANY shall raise at least Two Million
Dollars ($2,000,000) by April 1, 2000 from the sale of Company's equity
securities for its own account.
(f) COMPANY shall make a first commercial sale of a LICENSED
PRODUCT and/or a first commercial performance of a LICENSED PROCESS on or before
June 1, 1999.
(g) In any year, COMPANY shall obtain revenue from commercial
activities as follows:
December 31, 2003 One Million Dollars ($1,000,000);
December 31, 2004 Two Million Dollars ($2,000,000);
December 31, 2005 Three Million Dollars ($3,000,000);
December 31, 2006 Four Million Dollars ($4,000,000);
December 31, 2007 Five Million Dollars ($5,000,000);
December 31, 2008 Six Million Dollars ($6,000,000);
and each year thereafter at least Six Million Dollars
($6,000,000);
or shall
obtain cumulative revenue from commercial activities measured
from January 1, 1999 as follows:
December 31, 2003 One Million Dollars ($1,000,000);
December 31, 2004 Three Million Dollars ($3,000,000);
December 31, 2005 Six Million Dollars ($6,000,000);
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December 31, 2006 Ten Million Dollars ($10,000,000);
December 31, 2007 Fifteen Million Dollars ($15,000,000);
December 31, 2008 Twenty Million Dollars ($20,000,000).
Each year thereafter cumulative revenue from commercial
activities shall increase by at least Six Million Dollars
($6,000,000).
COMPANY satisfies the diligence requirement of this Section
3.1(g) in any given year if it satisfies either the revenue
from commercial activities requirement or the cumulative
revenue from commercial activities requirement as set above
for that year.
In the event that COMPANY fails to fulfill any or all of its
obligations under Sections 3.1(a), (b), (c), (d), (e), and (f), then M.I.T. may
treat such failure as a material breach in accordance with Section 14.3(b).
In the event that COMPANY fails to fulfill its obligations under
Section 3.1(g), and after COMPANY receives written notice from M.I.T. of such
failure, M.I.T.'s obligations under Sections 2.2 and 2.5 shall terminate and
M.I.T. shall be free to grant other licenses to the PATENT RIGHTS and
COPYRIGHTS. Upon termination of the restrictions in Sections 2.2 and 2.5,
COMPANY may elect not to continue paying patent fees and costs as outlined in
Section 7.3, and M.I.T. may at its own discretion continue or abandon any or all
of the PATENT RIGHTS. M.I.T. will notify COMPANY in writing at least 30 days
prior to aforementioned discontinuance or abandonment, and COMPANY may elect to
resume coverage of patent fees and costs and direct M.I.T. not to discontinue or
abandon any or all of the PATENT RIGHTS.
4. DELIVERY OF MATERIALS.
4.1 Upon execution of this Agreement M.I.T. shall deliver to COMPANY
one (1) copy of the PROGRAM and related documentation, if any.
4.2 COMPANY accepts the PROGRAM on an "AS IS" basis. Accordingly,
M.I.T. shall not be required to load the PROGRAM onto COMPANY's machines; test
for proper operation, perform any debugging; make any corrections; provide
maintenance; provide any updates, enhanced capabilities, or new features; or
assist in the understanding or use of the PROGRAM at any time. The PROGRAM is a
research program, and M.I.T. does not represent that it is free of errors or
bugs or suitable for any particular tasks.
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5. ROYALTIES AND PAYMENT TERMS.
5.1 Consideration for Grant of Rights
(a) Equity and Patent Costs. In consideration of the rights
and licenses granted herein, COMPANY agrees to issue equity to M.I.T. as set
forth in Section 5.1(b) and to pay patent filing, prosecution, and maintenance
costs as set forth in Section 7.3. The parties agree that no other monetary
payments are due to M.I.T. hereunder
(b) Issuance of Common Stock to M.I.T.
(i) Equity Financings.
(A) If (x) the COMPANY sells Common Stock or
securities convertible into or exchangeable for Common Stock ("Convertible
Securities") resulting in gross proceeds to the COMPANY of at least $500,000
(an "Equity Financing"), and (y) the Value (as defined below) of the COMPANY
immediately after such Equity Financing is equal to or greater than $6,000,000,
then the COMPANY shall issue to M.I.T. promptly after such Equity Financing such
number of whole shares of the COMPANY's Common Stock that is determined by
subtracting that number of shares of Common Stock, if any, issued pursuant to
clause (B) below from the quotient obtained by dividing $288,000 by the Equity
Financing Price (as defined below). Except as provided in subsection (b)(ii)
below, the COMPANY shall have no further obligation to issue shares of capital
stock to M.I.T. under this subsection (b) upon the satisfaction of its
obligation to issue shares to M.I.T. after the first Equity Financing where the
Value of the COMPANY immediately thereafter is equal to or greater than
$6,000,000. For purposes hereof the Value of the COMPANY shall be determined by
multiplying the Equity Financing Price by the total number of shares of Common
Stock outstanding on a fully-diluted common stock-equivalent basis. "Equity
Financing Price" shall mean, with respect to any Equity Financing, the quotient
obtained by dividing (a) the gross proceeds paid to the COMPANY in the Equity
Financing by (b) the aggregate number of shares of Common Stock (i) sold in the
Equity Financing or (ii) into or for which Convertible Securities sold in the
Equity Financing may be converted or exchanged, as the case may be. For purposes
hereof, an Equity Financing shall not include money borrowed by the COMPANY
pursuant to a bridge loan or loans in an aggregate amount not to exceed
$1,500,000 where such bridge loan or loans is in anticipation of Equity
Financing.
(B) If (x) there is an Equity Financing, and
(y) the Value of the COMPANY (as defined below) immediately after such Equity
Financing is less than $6,000,000.
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then the COMPANY shall issue to M.I.T. promptly after such Equity Financing such
number of whole shares of the COMPANY's Common Stock such that M.I.T. holds 4.8%
of the total number of shares of Common Stock outstanding on a fully-diluted
common stock-equivalent basis. Except as provided in subsection (b)(ii) below,
the COMPANY shall have no further obligation to issue shares of capital stock to
M.I.T. under this subsection (b) upon the satisfaction of its obligations to
issue shares to M.I.T. after the first Equity Financing where the Value of the
COMPANY immediately thereafter is equal to or greater than $6,000,000.
(ii) Certain Dilutive Financings. If, after M.I.T.
receives its shares of COMPANY Common Stock pursuant to subsection (b)(i) above,
COMPANY sells Common Stock or Convertible Securities in an Equity Financing (a
"Dilutive Equity Financing") at a per share purchase price (subject to
appropriate adjustment in the event of stock splits, recapitalizations and
similar events) less than 75% of the most recent Equity Financing Price (the
"Dilutive Financing Price"), and if M.I.T. was issued shares of capital stock of
the COMPANY pursuant to such recent Equity Financing, then the COMPANY shall
offer to M.I.T., at the Dilutive Financing Price, such additional number of
shares of Common Stock as is necessary to maintain M.I.T.'s pro rata ownership
in the COMPANY (calculated based on shares acquired pursuant to this subsection
(b) as calculated immediately prior to such Dilutive Equity Financing; provided,
however, that this subsection (b)(ii) shall not apply to issuances by the
COMPANY of (a) shares of capital stock pursuant to a stock option or stock
incentive plan approved by the Board of Directors of the COMPANY, (b) shares of
capital stock upon conversion or exchange of Convertible Securities, (c) shares
of capital stock in consideration for the acquisition by merger or otherwise by
the COMPANY or any of its subsidiaries of any other entity, (d) shares of
capital stock as a stock dividend to holders of capital stock or upon any
subdivision or combination of shares of capital stock, or (e) shares of capital
stock to the public in an initial public offering ("IPO") pursuant to a
registration statement filed with the Securities and Exchange Commission. The
rights of M.I.T. under this subsection (b)(ii) shall terminate upon an IPO.
(iii) Representation and Warranty. COMPANY represents
and warrants to M.I.T. that all shares of Common Stock issued by COMPANY to
M.I.T. pursuant to this subsection (b) shall be fully paid and nonassessable
5.2 Payments.
(a) Method of Payment. All payments under this Agreement
should be made payable to "Massachusetts Institute of Technology" and sent to
the address identified in
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Section 16.1. Each payment should reference this Agreement and identify the
obligation under this Agreement that the payment satisfies.
(b) Payments in U.S. Dollars. All payments due under this
Agreement shall be payable in United States dollars. Conversion of foreign
currency to U.S. dollars shall be made at the conversion rate existing in the
United States (as reported in the Wall Street Journal) on the first working day
of the month in which any invoice from M.I.T. is dated. Such payments shall be
without deduction of exchange, collection, or other charges, and, specifically,
without deduction of withholding or similar taxes or other government imposed
fees or taxes.
(c) Late Payments. Any payments by COMPANY that are not paid
on or before the date such payments are due under this Agreement shall bear
interest, to the extent permitted by law, at two percentage points above the
Prime Rate of interest as reported in the Wall Street Journal on the date
payment is due.
6. REPORTS AND RECORD KEEPING.
6.1 Frequency of Reports.
(a) Upon First Commercial Sale of a LICENSED PRODUCT or
Commercial Performance of a LICENSED PROCESS. COMPANY shall report to M.I.T. the
date of first commercial sale of a LICENSED PRODUCT and the date of first
commercial performance of a LICENSED PROCESS within sixty (60) days of
occurrence in each country for which PATENT RIGHTS exist.
(b) Before and After First Commercial Sale. COMPANY shall
deliver reports to M.I.T. within sixty (60) days of the end of each REPORTING
PERIOD, containing information concerning the immediately preceding REPORTING
PERIOD, as further described in Section 6.2.
(c) Financing. COMPANY shall deliver written reports to M.I.T.
within 20 days of meeting the financing diligence requirements set forth in
Sections 3.1 (d) and (e). Reports shall provide a description of the financing
event and the amount of funds received.
6.2 Content of Reports. Each report delivered by COMPANY to M.I.T.
pursuant to Section 6.1(a) or 6.1(b) shall contain at least the following
information for the immediately preceding REPORTING PERIOD:
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(i) the number Beta test sites operated by COMPANY and the
status of the test sites;
(ii) the total capitalization of the COMPANY and the new
financing received during the REPORTING PERIOD;
(iii) the COMPANY'S annual revenues from commercial activities
and the cumulative revenues from commercial activities measured from January 1,
1999 for LICENSED PRODUCTS and LICENSED PROCESSES.
After COMPANY fulfills the requirement of Section 3.1(c) and the
reporting requirement of Section 6.2(i) with respect to such complying with Beta
test sites, the reporting requirement of Section 6.2(i) is deleted from this
Section 6.2. After COMPANY fulfills the requirements of Sections 3.1(d) and (e)
and the reporting requirement of this Section 6.2(ii)with respect to such
complying financing activities, the reporting requirement of Section 6.2(ii) is
deleted from this Section 6.2.
6.3 Financial Statements. On or before the ninetieth (90th) day
following the close of COMPANY's fiscal year, COMPANY shall provide M.I.T. with
COMPANY's financial statements for the preceding fiscal year including, at a
minimum, a balance sheet and an income statement, certified by COMPANY's
treasurer or chief financial officer or by an independent auditor.
6.4 Record keeping. COMPANY shall maintain, and shall cause its
AFFILIATES to maintain, complete and accurate records relating to the rights and
obligations under this Agreement, which records shall contain sufficient
information to permit M.I.T. to confirm the accuracy of any reports delivered to
M.I.T. and compliance in other respects with this Agreement. The relevant party
shall retain such records for at least five (5) years following the end of the
calendar year to which they pertain, during which time M.I.T., or M.I.T.'s
appointed agents, shall have the right, at M.I.T.'s expense, to inspect such
records during normal business hours to verify any reports made or compliance in
other respects under this Agreement. Such inspections shall be conducted at the
COMPANY'S place of business, with reasonable notice, and no more than once every
12 months.
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
7. PATENT PROSECUTION.
7.1 Responsibility for PATENT RIGHTS. M.I.T. shall prepare, file,
prosecute, and maintain all of the PATENT RIGHTS, except as noted below for
M.I.T. Case No. [**]. COMPANY shall have reasonable opportunities to advise
M.I.T. and shall cooperate with M.I.T. in such filing, prosecution and
maintenance.
COMPANY shall prepare, file, prosecute, and maintain any patents, patent
applications, continuations, continuations-in-part and divisionals having claims
covering the subject matter of M.I.T. Case No. [**]. The attorney handling the
filing, prosecution, and maintenance of this M.I.T. Case shall be notified that
M.I.T. is the owner of all patents, patent applications, continuations,
continuations-in-part and divisionals, that all prosecution shall be conducted
in the best interests of M.I.T., and that M.I.T shall be copied on all
correspondence.
7.2 International (non-United States) Filings. Appendix B is a list of
countries in which patent applications corresponding to the United States patent
applications listed in Appendix A shall be filed, prosecuted, and maintained.
Appendix B may be amended by COMPANY. COMPANY agrees to notify M.I.T.
within 30 days of such an amendment.
7.3 Payment of Expenses. Payment of all fees and costs, including
attorney's fees, relating to the filing, prosecution and maintenance of the
PATENT RIGHTS shall be the responsibility of COMPANY, whether such amounts were
incurred before or after the EFFECTIVE DATE. For information purposes, as of the
EFFECTIVE DATE, M.I.T. has incurred approximately $18,000 for such
patent-related fees and costs. Upon the date when the total COMPANY financing is
at least Five Hundred Thousand Dollars ($500,000), but no later than on June 30,
1999, COMPANY shall pay to M.I.T. all fees and costs incurred by M.I.T. through
such date relating to the filing, prosecution and maintenance of the PATENT
RIGHTS. Thereafter, COMPANY shall reimburse all amounts due pursuant to this
Section within thirty (30) days of invoicing, except as indicated below for
M.I.T. Case No. [**], late payments shall accrue interest pursuant to Section
5.2(c). In all instances, M.I.T. shall pay the fees prescribed for large
entities to the United States Patent and Trademark Office.
COMPANY shall be invoiced directly by the attorney for all fees and costs
relating to M.I.T. Case No. [**] shall be responsible paying these invoices
directly to the attorney.
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<PAGE> 16
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
7.4 Termination of Rights. Anytime after June 30, 1999, COMPANY may
elect, on thirty (30) days prior written notice, not to continue paying patent
fees and costs incurred by M.I.T. through such date of written notice, as
outlined in Section 7.3, and M.I.T. may at its own discretion continue or
abandon any or all of the PATENT RIGHTS for which such payments have been
discontinued. COMPANY may also elect, on thirty (30) days prior written notice,
to discontinue the filing, prosecution and maintenance and payment of all
related fees and costs of any patents or patent applications having claims
covering the subject matter of M.I.T. Case No. [**], and M.I.T. may at its own
discretion and expense, continue or abandon any or all of such PATENT RIGHTS for
which the filing, prosecution or maintenance was discontinued. In the event that
COMPANY elects not to continue to pay the patent fees and costs for any or all
PATENT RIGHTS as outlined in Section 7.3 or elects not to continue to file,
prosecute or maintain patents and patent applications arising out of M.I.T. Case
No. [**], all as provided above, the licenses granted with respect to the
applicable patents to which such election applied shall terminate at the
expiration of the thirty (30) day notice period specified in this Section 7.4.
Nothing in this Section 7.4 shall release COMPANY from its obligations under
Article 14.
8. INFRINGEMENT.
8.1 Notification of Infringement. Each party agrees to provide written
notice to the other party promptly after becoming aware of any infringement of
the PATENT RIGHTS or COPYRIGHTS.
8.2 Right to Prosecute Infringements of the PATENT RIGHTS.
(a) COMPANY Right to Prosecute. So long as COMPANY remains the
exclusive licensee of the PATENT RIGHTS in the FIELD in the TERRITORY, COMPANY,
to the extent permitted by law, shall have the right, under its own control and
at its own expense, to prosecute any third party infringement of the PATENT
RIGHTS in the FIELD in the TERRITORY, subject to Section 8.4. If required by
law, M.I.T. shall permit any action under this Section to be brought in its
name, including being joined as a party-plaintiff, provided that COMPANY shall
hold M.I.T. harmless from, and indemnify M.I.T. against, any costs, expenses, or
liability that M.I.T. incurs in connection with such action.
Prior to commencing any such action, COMPANY shall
consult with M.I.T. and shall consider the views of M.I.T. regarding the
advisability of the proposed action and its effect on the public interest.
COMPANY shall not enter into any settlement, consent judgment, or other
voluntary final disposition of any infringement action under this Section
without the prior written consent of M.I.T., which will not be materially
withheld or delayed.
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<PAGE> 17
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
(b) M.I.T. Right to Prosecute. In the event that COMPANY is
unsuccessful in persuading the alleged infringer to desist or fails to have
initiated an infringement action within a reasonable time after COMPANY first
becomes aware of the basis for such action, M.I.T. shall have the right, at its
sole discretion, to prosecute such infringement under its sole control and at
its sole expense, and any recovery obtained shall belong to M.I.T. M.I.T. will
indemnify COMPANY for any order for costs that may be made against COMPANY in
such proceedings.
8.3 Declaratory Judgment Actions. In the event that a declaratory
judgment action is brought against M.I.T. or COMPANY by a third party alleging
invalidity or unenforceability of the PATENT RIGHTS, M.I.T., at its option,
shall have the right within twenty (20) days after commencement of such action
to take over the sole defense of the action at its own expense. If M.I.T. does
not exercise this right, COMPANY may take over the sole defense of the action at
COMPANY's sole expense, subject to Section 8.4.
8.4 Recovery. Any recovery obtained in an action brought by COMPANY
under Sections 8.2 or 8.3 shall be distributed as follows: (i) each party shall
be reimbursed for any expenses incurred in the action, (ii) as to ordinary
damages, COMPANY shall receive 100% of any award, and (iii) as to special or
punitive damages (including any damages in excess of "single damages"), M.I.T.
shall receive thirty percent (30%) and the COMPANY seventy percent (70%) of any
award.
8.5 Cooperation. Each party agrees to cooperate in any action under
this Article which is controlled by the other party, provided that the
controlling party reimburses the cooperating party promptly for any costs and
expenses incurred by the cooperating party in connection with providing such
assistance.
8.6 Right to Sublicense. So long as COMPANY remains the exclusive
licensee of the PATENT RIGHTS in the FIELD in the TERRITORY, COMPANY shall have
the sole right to sublicense any alleged infringer in the FIELD in the TERRITORY
for future use of the PATENT RIGHTS in accordance with the terms and conditions
of this Agreement relating to sublicenses.
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<PAGE> 18
9. COPYRIGHT.
COMPANY, SUBLICENSEES and END-USERS acknowledge that title to the
COPYRIGHTS shall remain with M.I.T. and that any copies of the PROGRAM and
related documentation, or portions thereof, made by COMPANY, SUBLICENSEES and
END-USERS hereunder, shall include an M.I.T. copyright notice thereon in either
of the following forms: "Copyright 1998, Massachusetts Institute of Technology.
All Rights Reserved." or "(C) 1998 M.I.T. All Rights Reserved." The notice shall
be affixed to all copies or portions thereof in such manner and location as to
give reasonable notice of M.I.T.'s claim of copyright.
10. INDEMNIFICATION AND INSURANCE.
10.1 Indemnification.
(a) Indemnity. COMPANY shall indemnify, defend, and hold
harmless M.I.T. and its trustees, officers, faculty, students, employees, and
agents and their respective successors, heirs and assigns (the "Indemnitees"),
against any liability, damage, loss, or expense (including reasonable attorneys
fees and expenses) incurred by or imposed upon any of the Indemnitees in
connection with any claims, suits, actions, demands or judgments arising out of
any theory of liability (including without limitation actions in the form of
tort, warranty, or strict liability and regardless of whether such action has
any factual basis) concerning any product, process, or service that is made,
used, sold, imported, or performed pursuant to any right or license granted
under this Agreement.
(b) Procedures. The Indemnitees agree to provide COMPANY with
prompt written notice of any claim, suit, action, demand, or judgment for which
indemnification is sought under this Agreement. COMPANY agrees, at its own
expense, to provide attorneys reasonably acceptable to M.I.T. to defend against
any such claim. The Indemnitees shall cooperate fully with COMPANY in such
defense and will permit COMPANY to conduct and control such defense and the
disposition of such claim, suit, or action (including all decisions relative to
litigation, appeal, and settlement); provided, however, that any Indemnitee
shall have the right to retain its own counsel, at the expense of COMPANY, if
representation of such Indemnitee by the counsel retained by COMPANY would be
inappropriate because of actual or potential differences in the interests of
such Indemnitee and any other party represented by such counsel. Notwithstanding
the above, the COMPANY shall not be obligated to pay the expenses of more than
one additional counsel. COMPANY agrees to keep M.I.T. informed of the
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<PAGE> 19
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
progress in the defense and disposition of such claim and to consult with M.I.T.
with regard to any proposed settlement.
10.2 Insurance. Prior to first Beta test of a LICENSED PRODUCT or
LICENSED PROCESS, COMPANY shall obtain and carry in full force and effect
commercial general liability insurance, including product liability and errors
and omissions insurance which shall protect COMPANY and Indemnitees with respect
to events covered by Section 10.1(a) above. Such insurance (i) shall be issued
by an insurer licensed to practice in the Commonwealth of Massachusetts or an
insurer pre-approved by M.I.T., such approval not to be unreasonably withheld,
(ii) shall list M.I.T. as an additional named insured thereunder, (iii) shall be
endorsed to include product liability coverage, and (iv) shall require thirty
(30) days written notice to be given to M.I.T. prior to any cancellation or
material change thereof. The limits of such insurance shall not be less than One
Million Dollars ($1,000,000) per occurrence with an aggregate of Three Million
Dollars ($3,000,000) for bodily injury including death; One Million Dollars
($1,000,000) per occurrence with an aggregate of Three Million Dollars
($3,000,000) for property damage; and One Million Dollars ($1,000,000) per
occurrence with an aggregate of Three Million Dollars ($3,000,000) for errors
and omissions. In the alternative, COMPANY may self-insure subject to prior
approval of M.I.T. COMPANY shall provide M.I.T. with Certificates of Insurance
evidencing compliance with this Section. COMPANY shall continue to maintain such
insurance or self-insurance after the expiration or termination of this
Agreement during any period in which COMPANY or any AFFILIATE or SUBLICENSEE,
continues (i) to make, use, or sell a product that was a LICENSED PRODUCT under
this Agreement or (ii) to perform a service that was a LICENSED PROCESS under
this Agreement, and thereafter for a period of five (5) years.
11. NO REPRESENTATIONS OR WARRANTIES.
EXCEPT AS MAY OTHERWISE BE EXPRESSLY SET FORTH IN THIS AGREEMENT,
M.I.T. MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE PATENT
RIGHTS AND COPYRIGHTS, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NONINFRINGEMENT, VALIDITY OF PATENT RIGHTS CLAIMS, WHETHER ISSUED OR PENDING,
AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE.
Specifically, and not to limit the foregoing, M.I.T. makes no warranty or
representation (i) regarding the validity or scope of the PATENT RIGHTS, (ii)
that the exploitation of the PATENT RIGHTS or COPYRIGHTS or any LICENSED PRODUCT
or LICENSED PROCESS
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<PAGE> 20
will not infringe any patents. copyrights or other intellectual property rights
of M.I.T. or of a third party, and (iii) that a third party is not currently
infringing or will not infringe the PATENT RIGHTS or COPYRIGHTS.
Except as provided in Section 10.1 (a), IN NO EVENT SHALL EITHER PARTY,
ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE TO THE
OTHER PARTY FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING
ECONOMIC DAMAGES OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER
SUCH PARTY SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL
KNOW OF THE POSSIBILITY OF THE FOREGOING.
12. ASSIGNMENT.
This Agreement is personal to the COMPANY and no rights or obligations
may be assigned by COMPANY without the prior written consent of M.I.T. which
will not be unreasonably withheld, except no such consent will be required to
assign this Agreement to a successor of the COMPANY's business to which this
Agreement pertains or to a purchaser of substantially all of the COMPANY's
assets related to this Agreement, so long as such successor or purchaser shall
agree in writing to be bound by the terms and conditions hereof prior to such
assignment. Failure of such assignee to so agree shall be grounds for
termination of this agreement under Section 14.3.
13. GENERAL COMPLIANCE WITH LAWS
13.1 Export Control. With regard to all technology licensed from M.I.T.
hereunder, COMPANY and its AFFILIATES and SUBLICENSEES shall comply with all
United States laws and regulations controlling the export of certain commodities
and technical data, including without limitation all Export Administration
Regulations of the United States Department of Commerce. Among other things,
these laws and regulations prohibit or require a license for the export of
certain types of commodities and technical data to specified countries. COMPANY
hereby gives written assurance that it will comply with, and will require that
its AFFILIATES and SUBLICENSEES comply with, all United States export control
laws and regulations with regard to PROGRAMS, DERIVATIVES and any other
technology obtained from M.I.T., that it bears sole responsibility for any
violation of such laws and regulations by itself or its AFFILIATES or
SUBLICENSEES, and that it will indemnify, defend, and hold M.I.T. harmless (in
accordance with Section 10.1) for the consequences of any such violation.
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<PAGE> 21
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
13.2 Non-Use of M.I.T. Name. COMPANY and its AFFILIATES and
SUBLICENSEES shall not use the name of Massachusetts Institute of Technology,
"Lira Laboratory" or any variation, adaptation, or abbreviation thereof, or of
any of its trustees, officers, faculty, students, employees, or agents (other
than COMPANY employees), or any trademark owned by M.I.T., or any terms of this
Agreement in any promotional material or other public announcement or disclosure
without the prior written consent of M.I.T. The foregoing, notwithstanding,
without the consent of M.I.T., COMPANY may state that it is licensed by M.I.T.
under one or more of the patents and/or patent applications comprising the
PATENT RIGHTS and under the COPYRIGHTS.
13.3 Marking of LICENSED PRODUCTS. To the extent commercially feasible
as consistent with prevailing business practices, COMPANY shall mark, and shall
cause its AFFILIATES and SUBLICENSEES to mark, all LICENSED PRODUCTS that are
manufactured or sold under this Agreement with the number of each issued patent
under the PATENT RIGHTS that applies to such LICENSED PRODUCT.
14. TERMINATION.
14.1 Voluntary Termination by COMPANY. COMPANY shall have the right to
terminate this Agreement, for any reason, (i) upon at least six (6) months prior
written notice to M.I.T., such notice to state the date at least six (6) months
in the future upon which termination is to be effective, and (ii) upon payment
of all amounts due to M.I.T. through such termination effective date.
14.2 Cessation of Business. If COMPANY ceases to carry on its business
related to this Agreement due to insolvency, M.I.T. shall have the right to
terminate this Agreement immediately upon written notice to COMPANY.
14.3 Termination for Default.
(a) Nonpayment. In the event COMPANY fails to pay any amounts
due and payable to M.I.T. hereunder, and fails to make such payments within
thirty (30) days after receiving written notice of such failure, M.I.T. may
terminate this Agreement immediately upon written notice to COMPANY.
(b) Material Breach. In the event COMPANY commits a material
breach of its obligations under this Agreement, except for breach as described
in Section 14.3(a), and
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<PAGE> 22
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
to cure that breach within [**] after receiving written notice thereof, M.I.T.
may terminate this Agreement immediately upon written notice to COMPANY.
14.4 Effect of Termination.
(a) Survival.
(i) The following provisions shall survive the
expiration or termination of this Agreement:
Articles 1, 10, 11, 15 and 16, and Sections
5.1(b), 6.2 (obligation to provide final
report), 6.4, 13.1, and 14.4.
(ii) If, upon termination COMPANY has fulfilled
all of its obligations under Sections
3.1(a), (b), (c), (d), (e), and (f), then
COMPANY shall retain the following license:
COMPANY shall have the non-exclusive right
and license under the COPYRIGHTS to use,
reproduce, modify, and distribute the
PROGRAM solely for the purpose of using,
reproducing, modifying, and distributing the
PROGRAM and DERIVATIVES.
(b) Pre-termination Obligations. In no event shall termination
of this Agreement release COMPANY from the obligation to pay any amounts that
became due on or before the effective date of termination.
14.5 Effect of Termination on Software: Upon termination of this
Agreement in accordance with Section 14.3, COMPANY shall provide M.I.T.
with written assurance that the original and all copies of the PROGRAM
have been destroyed, except that, upon prior written authorization from
M.I.T., COMPANY may retain a copy of the PROGRAM for archival and
maintenance purposes.
Upon termination of this Agreement for any reason, the rights of
END-USERS to the execution and enjoyment of the PROGRAM and its DERIVATIVES
shall not be abridged or diminished in any way.
15. DISPUTE RESOLUTION.
15.1 Mandatory Procedures. The parties agree that any dispute arising
out of or relating to this Agreement shall be resolved solely by means of the
procedures set forth in this Article, and that such procedures constitute
legally binding obligations that are an essential provision of
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<PAGE> 23
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
this Agreement. If either party fails to observe the procedures of this Article,
as may be modified by their written agreement, the other party may bring an
action for specific performance of these procedures in any court of competent
jurisdiction.
15.2 Equitable Remedies. Although the procedures specified in this
Article are the sole and exclusive procedures for the resolution of disputes
arising out of or relating to this Agreement, either party may seek a
preliminary injunction or other provisional equitable relief if, in its
reasonable judgment, such action is necessary to avoid irreparable harm to
itself or to preserve its rights under this Agreement.
15.3 Dispute Resolution Procedures.
(a) Mediation. In the event any dispute arising out of or
relating to this Agreement remains unresolved within sixty (60) days from the
date the affected party notified the other party of such dispute, either party
may initiate mediation upon written notice to the other party ("Notice Date"),
whereupon both parties shall be obligated to engage in a mediation proceeding
under the then current Center for Public Resources ("CPR") Model Procedure for
Mediation of Business Disputes (http://www.cpradr.org/medmodel.htm), except that
specific provisions of this Article shall override inconsistent provisions of
the CPR Model Procedure. The mediator will be selected from the CPR Panels of
Neutrals. If the parties cannot agree upon the selection of a mediator within
fifteen (15) business days after the Notice Date, then upon the request of
either party, the CPR shall appoint the mediator. The parties shall attempt to
resolve the dispute through mediation until the first of the following occurs:
(i) the parties reach a written settlement; (ii) the mediator notifies the
parties in writing that they have reached an impasse; (iii) the parties agree in
writing that they have reached an impasse; or (iv) the parties have not reached
a settlement within sixty (60) days after the Notice Date.
(b) Trial Without Jury. If the parties fail to resolve the
dispute through mediation, or if neither party elects to initiate mediation,
each party shall have the right to pursue any other remedies legally available
to resolve the dispute, provided, however, that the parties expressly waive any
right to a jury trial in any legal proceeding under this Article.
15.4 Performance to Continue. Each party shall continue to perform its
undisputed obligations under this Agreement pending final resolution of any
dispute arising out of or relating to this Agreement; provided, however, that a
party may suspend performance of its undisputed obligations during any period in
which the other party fails or refuses to perform its
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<PAGE> 24
undisputed obligations. Nothing in this Article is intended to relieve COMPANY
from its obligation to make undisputed payments pursuant to Articles 5 and 7 of
this Agreement.
15.5 Statute of Limitations. The parties agree that all applicable
statutes of limitation and time-based defenses (such as estoppel and laches)
shall be tolled while the procedures set forth in Sections 15.3(a) are pending.
The parties shall cooperate in taking any actions necessary to achieve this
result.
16. MISCELLANEOUS.
16.1 Notice. Any notices required or permitted under this Agreement
shall be in writing, shall specifically refer to this Agreement, and shall be
sent by hand, recognized national overnight courier, confirmed facsimile
transmission, confirmed electronic mail, or registered or certified mail,
postage prepaid, return receipt requested, to the following addresses or
facsimile numbers of the parties:
If to M.I.T.: Technology Licensing Office, Room NE25-230
Massachusetts Institute of Technology
77 Massachusetts Avenue
Cambridge, MA 02139-4307
Attention: Director
Tel: 617-253-6966
Fax: 617-258-6790
If to COMPANY: Akamai Technologies, Inc.
205 Hampshire Street
Cambridge, MA 02139
Attention: President
Tel: 617-253-5876
Fax: 617-258-5429
With a copy to: Hale and Dorr LLP.
60 State Street
Boston, MA 02109
Attention: Michael J. Bevilacqua
Tel: 617-905-6329
Fax: 617-244-9625
All notices under this Agreement shall be deemed effective upon
receipt. A party may change its contact information immediately upon written
notice to the other party in the manner provided in this Section.
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<PAGE> 25
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
16.2 Governing Law. This Agreement and all disputes arising out of or
related to this Agreement, or the performance, enforcement, breach or
termination hereof, and any remedies relating thereto, shall be construed,
governed, interpreted and applied in accordance with the laws of the
Commonwealth of Massachusetts, U.S.A., without regard to conflict of laws
principles, except that questions affecting the construction and effect of any
patent shall be determined by the law of the country in which the patent shall
have been granted.
16.3 Force Majeure. Neither party will be responsible for delays
resulting from causes beyond the reasonable control of such party, including
without limitation fire, explosion, flood, war, strike, or riot, provided that
the nonperforming party uses commercially reasonable efforts to avoid or remove
such causes of nonperformance and continues performance under this Agreement
with reasonable dispatch whenever such causes are removed.
16.4 Amendment and Waiver. This Agreement may be amended, supplemented,
or otherwise modified only by means of a written instrument signed by both
parties. Any waiver of any rights or failure to act in a specific instance shall
relate only to such instance and shall not be, construed as an agreement to
waive any rights or fail to act in any other instance, whether or not similar.
16.5 Severability. In the event that any provision of this Agreement
shall be held invalid or unenforceable for any reason, such invalidity or
unenforceability shall not affect any other provision of this Agreement, and the
parties shall negotiate in good faith to modify the Agreement to preserve (to
the extent possible) their original intent. If the parties fail to reach a
modified agreement within thirty (30) days after the relevant provision is held
invalid or unenforceable, then the dispute shall be resolved in accordance with
the procedures set forth in Article 15. While the dispute is pending resolution,
this Agreement shall be construed as if such provision were deleted by agreement
of the parties.
16.6 Binding Effect. This Agreement shall be binding upon and inure to
the benefit of the parties and their respective permitted successors and
assigns.
16.7 Headings. All headings are for convenience only and shall not
affect the meaning of any provision of this Agreement.
16.8 Entire Agreement. This Agreement constitutes the entire agreement
between the parties with respect to its subject matter and supersedes all prior
agreements or understandings between the parties relating to its subject matter.
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<PAGE> 26
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
THE EFFECTIVE DATE OF THIS AGREEMENT IS Oct. 26, 1998.
MASSACHUSETTS INSTITUTE OF AKAMAI TECHNOLOGIES, INC.
TECHNOLOGY
Technology Licensing Office
By: /s/ Lita Nelsen By: /s/ Daniel Lewin
Name: Lita L. Nelsen, Director Name: Daniel Lewin
Title: Technology Licensing Office Title: President
MASSACHUSETTS INSTITUTE OF
TECHNOLOGY
Vice President for Research
By: /s/ J.D. Litster
Name: J.D. Litster
Title: Vice President for Research
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<PAGE> 27
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
APPENDIX A
I. List of United States Patent Applications and Patents and Other M.I.T.
Intellectual Property
1. M.I.T. Case No. [**] Patent application [**] and Continuation-in-Part
application [**]
2. M.I.T. Case No. [**] and any patent application having claims covering
the subject matter of such M.I.T. Case No.
3. M.I.T. Case No. [**] and any patent application having claims covering
the subject matter of such M.I.T. Case No.
4. M.I.T. Case No. [**] and any patent application having claims covering
the subject matter of such M.I.T. Case No.
II. International (non-U.S.) Patents and Applications
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<PAGE> 28
APPENDIX B
List of Countries (excluding United States) for which
PATENT RIGHTS Applications Will Be Filed, Prosecuted and Maintained
[To be determined between COMPANY and M.I.T.]
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<PAGE> 29
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
APPENDIX D
WAIVER
For good and valuable consideration, including the grant of a license
to Akamai Technologies ("COMPANY"), the undersigned, [**] hereby releases all
rights, title and interest he, his heirs, and assigns may have as an
inventor/author under M.I.T.'s Guide to the Ownership, Distribution and
Commercial Development of M.I.T. Technology, as that policy may be amended from
time to time, to receive his inventor's share of M.I.T.'s institutional equity
received in partial consideration for a License to:
M.I.T. Case No. [**]
M.I.T. Case No. [**]
M.I.T. Case No. [**]
to Akamai Technologies.
Witness: /s/ Susan Wellsy Signed: /s/ [**]
Name: [**]
Date: 9/21/98
<PAGE> 30
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
CONFLICT AVOIDANCE STATEMENT
Name: [**]
Dept. or Lab: Math Dept. & LCS
Company: Akamai Technologies
Address: [**]
[**]
Licensed Technology: MIT Case Nos:
[**]
Because of the M.I.T. license granted to the above company and my equity*
position and continuing relationship with this firm, I acknowledge the potential
for a possible conflict of interest between the performance of research at
M.I.T. and my contractual or other obligations to this firm. Therefore, I will
not:
1) use students at M.I.T. for research and development
projects for the company;
2) restrict or delay access to information from my
M.I.T. research; or
3) take direct or indirect research support from the
company in order to support my activities at M.I.T.
In addition, in order to avoid the appearance of a conflict, I will attempt to
differentiate clearly between the intellectual directions of my M.I.T. research
and my contributions to the firm. To that end, I will expressly inform my
department head annually of the general nature of my activities on behalf of the
firm.
Signed: /s/ [**]
Date: 9/2/98
*"Equity" includes stock, options, warrants or other financial instruments
convertible into Equity, which are directly or indirectly controlled by the
inventor.
<PAGE> 31
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
APPENDIX D
WAIVER
For good and valuable consideration, including the grant of a license
to Akamai Technologies ("COMPANY"), the undersigned, [**] hereby releases all
rights, title and interest he, his heirs, and assigns may have as an
inventor/author under MIT.'s Guide to the Ownership, Distribution and Commercial
Development of M.I.T. Technology, as that policy may be amended from time to
time, to receive his inventor's share of M.I.T.'s institutional equity received
in partial consideration for a License to:
MIT. Case No. [**]
MIT. Case No. [**]
to Akamai Technologies
Witness: /s/ [Illegible] Signed: /s/ [**]
Name: [**]
Date: 10/21/98
<PAGE> 32
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
CONFLICT AVOIDANCE STATEMENT
Name: [**]
Dept. or Lab: EECS
Company: Akamai Technologies
Address:__________________________________
__________________________________________
Licensed Technology: M.I.T. Case Nos.
[**]
__________________________________________
Because of the M.I.T. license granted to the above company and my equity*
position and continuing relationship with this firm, I acknowledge the potential
for a possible conflict of interest between the performance of research at
M.I.T. and my contractual or other obligations to this firm. Therefore, I will
not:
1) use students at M.I.T. for research and development
projects for the company;
2) restrict or delay access to information from my
M.I.T. research; or
3) take direct or indirect research support from the
company in order to support my activities at M.I.T.
In addition, in order to avoid the appearance of a conflict, I will attempt to
differentiate clearly between the intellectual directions of my M.I.T. research
and my contributions to the firm. To that end, I will expressly inform my
department head annually of the general nature of my activities on behalf of the
firm.
Signed: /s/ [**]
Date: 10/19/98
*"Equity" includes stock, options, warrants or other financial instruments
convertible into Equity, which are directly or indirectly controlled by the
inventor.
<PAGE> 33
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
ASSIGNMENT
This Assignment, effective as of the date set forth above the
signatures of the parties below (the "EFFECTIVE DATE"), is between AKAMAI
TECHNOLOGIES ("ASSIGNOR"), a Delaware corporation, with a principal place of
business at 205 Hampshire Street, Cambridge, MA 02139, and the Massachusetts
Institute of Technology ("ASSIGNEE"), a Massachusetts corporation, with a
principal place of business at 77 Massachusetts Avenue, Cambridge, MA
02139-4307.
WHEREAS, M.I.T.'s "Waiver of M.I.T. Ownership Rights" of September 8,
1998 waived to F.T. Leighton any rights it may have to the invention described
in United State Provisional Patent Application No. [**] and entitled [**], ("the
Invention") because the Invention was developed without sponsored research funds
and without significant use of M.I.T. facilities or funds;
WHEREAS, [**] and certain other inventors have assigned their entire
right, title and interest relating to the Invention to AKAMAI TECHNOLOGIES;
WHEREAS, ASSIGNOR is an owner by assignment of the Invention, and has
the right to assign all of its rights to ASSIGNEE;
WHEREAS, ASSIGNOR hereby desires to assign its entire right, title and
interest in the Invention to ASSIGNEE;
NOW, THEREFORE, in consideration of the foregoing said agreements, and
of other good and valuable consideration, the receipt of which is hereby
acknowledged, ASSIGNOR intending to be legally bound, does hereby sell, assign
and transfer to the ASSIGNEE, its successors and assigns, its entire right,
title and interest in the Invention [**], for the United States of America, its
territories and possessions, and for all foreign countries, in said Invention,
including all patent applications, all divisions and continuations thereof, all
rights to claim priority based thereon, all rights to file foreign applications
of said Invention, and all Letters Patents and reissues thereof, issuing for
said Invention, in the United States of America and in any and all foreign
countries.
<PAGE> 34
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisk denote omission.
It is agreed that ASSIGNOR shall be legally bound, upon reasonable
request of the ASSIGNEE or its successors or assigns or a legal representative
thereof, to execute all instruments proper to patent and maintain the Invention
in the United States of America and all foreign countries in the name of the
ASSIGNEE and to execute all instruments proper to carry out the intent of this
instrument.
ASSIGNOR hereby covenants that no assignment, sale, agreement or
encumbrance has been or will be made or entered into which would conflict with
this Assignment.
ASSIGNOR hereby authorizes and requests the Commissioner of Patents and
Trademarks to issue any and all such United States Letters Patent to ASSIGNEE,
its successors and assigns, as the owner of all right, title and interest
therein.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
THE EFFECTIVE DATE OF THIS AGREEMENT IS OCTOBER 26, 1998
MASSACHUSETTS INSTITUTE OF AKAMAI TECHNOLOGIES
TECHNOLOGY
By: /s/ Lita Nelsen By: /s/ Daniel Lewin
Name: Lita L. Nelsen, Director Name: Daniel Lewin
Title: Technology Licensing Office Title: President
Acknowledged by: /s/ [**]
[**]