Patent and Technology License Agreement - Lucent Technologies Inc. and Agere Systems Inc.
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EXECUTION COPY
PATENT AND TECHNOLOGY LICENSE AGREEMENT
by and among
LUCENT TECHNOLOGIES INC.
LUCENT TECHNOLOGIES GRL CORP.
LUCENT TECHNOLOGIES GUARDIAN I CORP.
LUCENT TECHNOLOGIES OPTICAL NETWORKING GUARDIAN CORP.
LUCENT TECHNOLOGIES WIRELESS GUARDIAN CORP.
LUCENT TECHNOLOGIES FIBER GUARDIAN CORP.
AGERE SYSTEMS INC.
AGERE SYSTEMS GUARDIAN CORP.
and
AGERE SYSTEMS OPTOELECTRONICS GUARDIAN CORP.
Dated as of February 1, 2001
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PATENT AND TECHNOLOGY LICENSE AGREEMENT
Table of Contents
ARTICLE I -- DEFINITIONS
ARTICLE II -- ACCESS AND USE OF LICENSED TECHNOLOGY
2.1 Access to Licensed Technology
2.2 Export Control
2.3 Lucent's Rights to Use Licensed Agere Technology
2.4 Agere's Rights to Use Licensed Lucent Technology and Licensed
Corporate Technology
2.5 Procurement
2.6 Additional Licenses for Messaging Technology
ARTICLE III -- PATENT LICENSES
3.1 Grants to Agere
3.2 Grants to Lucent and GRL
3.3 Duration and Extent of Licensees
3.4 Scopes of Licenses
3.5 Filings of Patent Applications
3.6 Joint Inventions
3.7 Outside the United States
3.8 Defensive Protection Arrangement
3.9 Licensing prior to Distribution Date
3.10 Exclusive Licenses granted to Agere Subsidiaries
3.11 Exclusive Licenses granted to Lucent Subsidiaries
3.12 Covenant Not to Sue under Certain Conditions
ARTICLE IV -- ASSIGNMENT OF RESTRICTED JOINT CORPORATE TECHNOLOGY
4.1 Assignment
4.2 Exception to Restriction
4.3 Access to Restricted Joint Corporate Technology
ARTICLE V - RIGHTS RELATED TO PRODUCTS SOURCED BY LUCENT FROM AGERE
5.1 Definitions
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5.2 Resolution Process
5.3 Manufacturing Rights
5.4 Trigger Events
ARTICLE VI -- MEMS PATENTS AND SPECIALTY PATENTS
6.1 Assignment of Joint MEMS Patents and Joint Specialty Patents.
6.2 License of Licensed MEMS Patents and Licensed Specialty Patents.
6.3 Patent prosecution and maintenance of Joint MEMS Patents, Joint
Specialty Patents, Licensed MEMS Patents and Licensed Specialty
Patents.
6.4 Licensing of Joint MEMS Patents and Joint Specialty Patents and
Sublicensing of Licensed MEMS Patents and Licensed Specialty Patents
to Third Parties.
6.5 Enforcement of MEMS Patents and Specialty Patents.
ARTICLE VII -- VALUE OF RIGHTS EXCHANGED
ARTICLE VIII -- TERMINATION
8.1 Voluntary Termination
8.2 Survival
8.3 Change of Control of, or Certain Acquisitions by Agere
8.4 Material Breach
ARTICLE IX -- MISCELLANEOUS PROVISIONS
9.1 Agreement Prevails
9.2 Nothing Construed
9.3 Disclaimer
9.4 Confidentiality
9.5 Counterparts; Entire Agreement; Corporate Power
9.6 Governing Law
9.7 Assignability; Successors.
9.8 Third Party Beneficiaries
9.9 Notices
9.10 Severability
9.11 Force Majeure
9.12 Publicity
9.13 Headings
9.14 Waivers of Default
9.15 Specific Performance
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9.16 Amendments
9.17 Interpretation
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EXHIBITS
Exhibit A -- Licensed Agere Technology
Exhibit B -- Agere Developments and Product Realization Technology
Exhibit C -- Licensed Corporate Technology
Exhibit D -- Licensed Lucent Technology
Exhibit E -- Lucent Developments and Product Realization Technology
Exhibit F -- Restricted Joint Corporate Technology
Exhibit G -- Agere Restricted Joint Corporate Technology
Exhibit H -- Lucent Restricted Joint Corporate Technology
Exhibit I -- Designated Defensive Patents
Exhibit J -- Joint MEMS Patents
Exhibit K -- Joint Specialty Patents
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SCHEDULES
Schedule 3.10-1 Patents licensed by Lucent Technologies Guardian I Corp. to
Agere Guardian Corp.
Schedule 3.10-2 Patents licensed by Lucent Technologies Optical Networking
Guardian Corp. to Agere Guardian Corp.
Schedule 3.10-3 Patents licensed by Lucent Technologies Wireless Guardian
Corp. to Agere Guardian Corp.
Schedule 3.10-4 Patents licensed by Lucent Technologies Guardian I Corp. to
Agere Optoelectronics Guardian Corp.
Schedule 3.10-5 Patents licensed by Lucent Technologies Fiber Guardian
Corp. to Agere Optoelectronics Guardian Corp.
Schedule 3.10-6 Patents licensed by Lucent Technologies Optical Networking
Guardian Corp. to Agere Optoelectronics Guardian Corp.
Schedule 3.11-1 Patents licensed by Agere Guardian Corp. to Lucent
Technologies Guardian I Corp.
Schedule 3.11-2 Patents licensed by Agere Guardian Corp. to Lucent
Technologies Optical Networking Guardian Corp.
Schedule 3.11-3 Patents licensed by Agere Guardian Corp. to Lucent
Technologies Wireless Guardian Corp.
Schedule 3.11-4 Patents licensed by Agere Optoelectronics Guardian Corp. to
Lucent Technologies Guardian I Corp.
Schedule 3.11-5 Patents licensed by Agere Optoelectronics Guardian Corp. to
Lucent Technologies Fiber Guardian Corp.
Schedule 3.11-6 Patents licensed by Agere Optoelectronics Guardian Corp. to
Lucent Technologies Optical Networking Guardian Corp.
Schedule 6.2-1 MEMS patents licensed by Lucent Technologies Optical
Networking Guardian Corp. to Agere Optoelectronics Guardian
Corp.
Schedule 6.2-2 MEMS patents licensed by Lucent Technologies Fiber Guardian
Corp. to Agere Optoelectronics Guardian Corp.
Schedule 6.2-3 MEMS patents licensed by Lucent Technologies Guardian I
Corp. to Agere Optoelectronics Guardian Corp.
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Schedule 6.2-4 MEMS patents licensed by Agere Guardian Corp. to Lucent
Technologies Guardian I Corp.
Schedule 6.2-5 Specialty patents licensed by Agere Guardian Corp. to
Lucent Technologies Guardian I Corp.
Schedule 6.2-6 Specialty patents licensed by Agere Optoelectronics
Guardian Corp. to Lucent Technologies Guardian I Corp.
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PATENT AND TECHNOLOGY LICENSE AGREEMENT
THIS PATENT AND TECHNOLOGY LICENSE AGREEMENT (this "Agreement"), effective
as of February 1, 2001 (the "Effective Date"), is by and among Lucent
Technologies Inc., a Delaware corporation, with offices at 600 Mountain Avenue,
Murray Hill, New Jersey 07974 ("Lucent"), Lucent Technologies GRL Corporation, a
Delaware corporation, having an office at Suite 105, 14645 N.W. 77th Avenue,
Miami Lakes, Florida 33014 ("GRL"), Lucent Technologies Guardian I Corp., a
Delaware corporation having an office at Suite 105, 14645 N.W. 77th Avenue,
Miami Lakes, Florida 33014 ("Lucent Guardian"), Lucent Technologies Optical
Networking Guardian Corp., a Delaware corporation having an office at Suite 105,
14645 N.W. 77th Avenue, Miami Lakes, Florida 33014 ("Lucent Optical Networking
Guardian"), Lucent Technologies Wireless Guardian Corp., a Delaware corporation
having an office at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida
33014 ("Lucent Wireless Guardian"), Lucent Technologies Fiber Guardian Corp., a
Delaware corporation having an office at Suite 105, 14645 N.W. 77th Avenue,
Miami Lakes, Florida 33014 ("Lucent Fiber Guardian"), Agere Systems Inc., a
Delaware corporation, with offices at 555 Union Boulevard, Allentown, PA 18109
("Agere"), Agere Systems Guardian Corp., a Delaware corporation, with offices at
Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014, United States of
America ("Agere Guardian"), and Agere Systems Optoelectronics Guardian Corp., a
Delaware corporation, with offices at Suite 105, 14645 N.W. 77th Avenue, Miami
Lakes, Florida 33014, United States of America ("Agere Optoelectronics
Guardian").
RECITALS
A. WHEREAS, the Board of Directors of Lucent has determined that
it is in the best interests of Lucent and its stockholders to separate
Lucent's existing businesses into two independent businesses;
B. WHEREAS, Agere and certain Agere Subsidiaries desire to receive and
Lucent and certain Lucent Subsidiaries are willing to grant to Agere and such
Agere Subsidiaries certain rights to use patents and technology retained and
owned by Lucent and such Lucent Subsidiaries on or after the Effective Date; and
C. WHEREAS, Lucent and certain Lucent Subsidiaries desire to receive and
Agere and certain Agere Subsidiaries are willing to grant to Lucent and such
Lucent Subsidiaries certain rights to use patents and technology which are owned
by Agere and such Agere Subsidiaries on or after the Effective Date.
NOW, THEREFORE, in consideration of the promises herein and for
other good and valid consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties, intending to be legally bound, agree as
follows:
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ARTICLE I
DEFINITIONS
For the purposes of this Agreement, in addition to the words and phrases
that are defined throughout the body of this Agreement, the following words and
phrases shall have the following meanings:
AGERE BUSINESS shall have the meaning set forth in the Separation and
Distribution Agreement.
AGERE DEVELOPMENTS AND PRODUCT REALIZATION TECHNOLOGY means any and all
portions of Agere Technology listed in the attached Exhibit B.
AGERE GUARDIAN'S PATENTS means every patent including any reissues or
reexaminations thereof (an including utility models but excluding design patents
and design registrations) issued in any country of the world, which is owned or
controlled by Agere Guardian or any of its Related Companies and issued on, or
claiming priority from, an application filed in any country of the world prior
to February 1, 2003, with respect to which and to the extent that Agere Guardian
or any of its Related Companies has a right, as of the Effective Date or
thereafter, to grant the licenses granted herein. It is understood and agreed
that Agere Guardian's Patents are intended to include all patents assigned to
Agere Guardian or Agere Optoelectronics Guardian by assignment from Lucent
Technologies Inc. dated January 30, 2001.
AGERE RESTRICTED JOINT CORPORATE TECHNOLOGY means the technology listed on
Exhibit G.
AGERE TECHNOLOGY means any and all portions of Corporation Technology
existing as of the Effective Date which were developed by or for, or purchased
by the Agere Business. The term includes Licensed Agere Technology, and Agere
Developments and Product Realization Technology, but shall not include Lucent
Technology, Common Support Function Software or Corporate Technology.
CHANGE OF CONTROL of any Person means any of the following: (a) the
consummation of a merger, consolidation, or similar business combination
involving such Person and the securities of such Person that are outstanding
immediately prior to such transaction and which represent 100% of the combined
voting power of the then outstanding voting securities of such Person entitled
to vote generally in the election of directors ("Voting Securities") are changed
into or exchanged for cash, securities or property, unless pursuant to such
transaction such securities are changed into or exchanged for, in addition to
any other consideration, securities of the surviving Person or transferee that
represent immediately after such transaction, at least a majority of the
combined voting power of the Voting Securities of the surviving Person or
transferee; (b) a sale or other disposition of all or substantially all of the
assets of such Person; (c)
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the acquisition by any individual, entity or group (within the meaning of
Section 13(d)(3) or 14(d)(2) of the Securities Exchange Act of 1934, as amended)
of beneficial ownership (within the meaning of Rule 13d-3 promulgated under such
Act) of 40% or more of the combined voting power of the then outstanding Voting
Securities; or (d) individuals who, as of the Distribution Date, constitute the
Board of Directors of such Person (the "Incumbent Board") cease for any reason
to constitute at least a majority of such Board; provided, however, that any
individual becoming a director subsequent to the Distribution Date (other than
any such individual whose initial assumption of office occurs as a result of an
actual or threatened election contest with respect to the election or removal of
directors or other actual or threatened solicitation of proxies or consents by
or on behalf of any Person other than the Board) whose election or nomination
for election by the stockholders of such Person was approved by a vote of at
least a majority of the directors then comprising the Incumbent Board shall be
considered as though such individual were a member of the Incumbent Board.
COMMON SUPPORT FUNCTION SOFTWARE means those computer programs in source
and object code forms, including their respective associated documentation,
listed on Schedule B of the Technology Assignment and Joint Ownership Agreement.
COPYRIGHTS mean any rights in original works of authorship fixed in
any tangible medium of expression as set forth in 17 U.S.C.Section 101 et. seq.
CORPORATE TECHNOLOGY means any and all portions of Corporation Technology
other than Lucent Technology, Agere Technology, and Common Support Function
Software. The term includes, but is not limited to, basic research.
CORPORATION TECHNOLOGY means any and all Technology existing as of the
Distribution Date which is owned by, and was developed by or for, or purchased
by Lucent or its Subsidiaries, including any of its business units and
divisions. The term includes any and all Technology owned or controlled by any
of Lucent's Subsidiaries under which Lucent has the right to grant any of the
right-to-use licenses of the type and on the terms herein granted.
DISTRIBUTION DATE shall have the meaning defined in the Separation and
Distribution Agreement.
GOVERNMENTAL AUTHORITY means any federal, state, local, foreign or
international court, government, department, commission, board, bureau, agency,
official or other regulatory, administrative or governmental authority.
GRL'S PATENTS means every patent including any reissues or reexaminations
thereof (an including utility models but excluding design patents and design
registrations) issued in any country of the world, which is owned or controlled
by GRL or any of its Related Companies and issued on, or claiming priority from,
an application filed in any country of the world prior to February 1, 2003, with
respect to which and to the extent that GRL or any of its Related Companies has
a right, as of the Effective Date or
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thereafter, to grant the licenses granted herein. Notwithstanding the foregoing,
the term GRL's Patents does not include Agere Guardian's Patents.
JOINT CORPORATE TECHNOLOGY means those portions of Corporate Technology
listed on Schedule C of the Technology Assignment and Joint Ownership Agreement.
LICENSED AGERE TECHNOLOGY means those items of Agere Technology listed in
the attached Exhibit A.
LICENSED CORPORATE TECHNOLOGY means those portions of Corporate Technology
listed in the attached Exhibit C.
LICENSED LUCENT TECHNOLOGY means those items of Lucent Technology listed
in the attached Exhibit D.
LICENSED TECHNOLOGY, as to Lucent, means Licensed Agere Technology, and as
to Agere, means Licensed Lucent Technology or Licensed Corporate Technology.
LUCENT BUSINESS shall have the meaning set forth in the Separation and
Distribution Agreement.
LUCENT DEVELOPMENTS AND PRODUCT REALIZATION TECHNOLOGY means those items
of Lucent Technology listed in the attached Exhibit E.
LUCENT RESTRICTED JOINT CORPORATE TECHNOLOGY means the technology listed
on Exhibit H.
LUCENT TECHNOLOGY means any and all portions of Corporation Technology
existing as of the Effective Date, which were developed by or for, or purchased
by the Lucent Business. The term includes Licensed Lucent Technology, and Lucent
Developments and Product Realization Technology, but shall not include Agere
Technology, Common Support Function Software or Corporate Technology.
MASK WORKS means any mask work, registered or unregistered, as
defined in 17 U.S.C.Section 901.
PERSON shall have the meaning set forth in the Separation and Distribution
Agreement.
RELATED COMPANIES means (i) with respect to GRL, the following: Lucent,
Subsidiaries of either GRL or Lucent (only for so long as they remain
Subsidiaries), (ii) with respect to Lucent, the following: Subsidiaries of
Lucent, only for so long as they remain Subsidiaries, (iii) with respect to
Agere Guardian, the following: Agere, and Subsidiaries of either Agere Guardian
or Agere (only for so long as they remain Subsidiaries), and (iv) with respect
to Agere, the following: Subsidiaries of Agere, only for so long as they remain
Subsidiaries, and any other company so designated and agreed to in a writing
signed by the relevant parties. Solely for purposes of this definition, Agere
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and its Subsidiaries shall be deemed not to be Related Companies or Subsidiaries
of Lucent.
RESTRICTED JOINT CORPORATE TECHNOLOGY means the trade secrets, know how,
and computer programs (in source and object code forms), listed in the attached
Exhibit F.
SEPARATION AND DISTRIBUTION AGREEMENT shall mean the Separation and
Distribution Agreement dated as of February 1, 2001, by and between Lucent and
Agere.
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.
TECHNOLOGY means any and all technical information, computer or other
apparatus programs, specifications, drawings, records, documentation, works of
authorship or other creative works, ideas, knowledge or data. The term
Technology includes Copyrights, Mask Works and any other intellectual property
right, but does not include any trademark, trade name, trade dress or service
mark, or any patent applications on inventions, discoveries or improvements, or
any patents that may be granted or have been granted thereon.
TECHNOLOGY ASSIGNMENT AND JOINT OWNERSHIP AGREEMENT shall mean the
Technology Assignment and Joint Ownership Agreement dated as of January 31,
2001, by and between Lucent and Agere.
ARTICLE II
ACCESS AND USE OF LICENSED TECHNOLOGY
2.1 ACCESS TO LICENSED TECHNOLOGY. During a period beginning on the
Effective Date and ending on December 31, 2001, each party shall have the right
to access and to copy any and all portions of the Licensed Technology in
possession of the other party. Such access and copying shall be in accordance
with a reasonable request and schedule to be mutually agreed upon between the
party in possession of the Licensed Technology that is requested and the
requesting party. All costs associated with the assembling, copying and
delivering of such Licensed Technology shall be borne by the requesting party.
2.2 EXPORT CONTROL. The parties acknowledge that any software and
technical information provided under this Agreement are subject to U.S. export
laws and regulations and any use or transfer of such software and technical
information must be authorized under those laws and regulations. The parties
agree that they will not use,
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distribute, transfer, or transmit the software or technical information (even if
incorporated into other products) except in compliance with U.S. export
regulations. If requested by another party, each party also agrees to sign
written assurances and other export-related documents as may be required for the
other party to comply with U.S. export regulations.
2.3 LUCENT'S RIGHTS TO USE LICENSED AGERE TECHNOLOGY. (a) Subject to the
restrictions specified in this Section 2.3 and any additional restrictions set
forth in the Exhibits hereto, Lucent and its Related Companies shall each have a
personal, worldwide, nonexclusive, royalty-free, and non-transferable right to
use the Licensed Agere Technology for the businesses in which Lucent or any of
its Related Companies are now or hereafter engaged.
(b) Lucent's right to use includes the right of Lucent and its Related
Companies to copy, modify and improve any portion of the Licensed Agere
Technology. No right is granted hereunder to Lucent or its Related Companies to
sublicense any of the Licensed Agere Technology to any third party, other than
the sublicensing of software in object code form in connection with the sale of
Lucent products or services.
(c) In addition to the rights granted to Lucent and its Related Companies
under Section 2.3(a), Lucent and its Related Companies shall have a personal,
worldwide, nonexclusive, royalty-free and non-transferable limited right to
continue to use any Agere Technology and any related or derivative technology
generated by use of such technology, that was used prior to July 20, 2000 in the
design or manufacture of any products (hereinafter "Existing Products") that
Lucent offered for sale to customers other than Agere. Such continued use shall
be limited, however, to use by Lucent in connection with the manufacture by
Lucent of products that are the same as, or are substantially derived from,
Existing Products. For the purposes of this Section 2.3(c), Agere Technology and
any related or derivative technology generated by use of such technology, shall
not be deemed to have been used solely as a result of the incorporation, prior
to July 20, 2000, of components or other products obtained from Agere, into
Existing Products, and shall in no circumstances include Agere CMBH processing
technology listed on Exhibit A.
(d) Except as provided in Section 2.3(c), neither Lucent nor any of its
Related Companies shall have the right to access, copy or use, in whole or in
part, for any purpose, any Agere Developments and Product Realization Technology
without the prior written consent of Agere.
2.4 AGERE'S RIGHTS TO USE LICENSED LUCENT TECHNOLOGY AND LICENSED
CORPORATE TECHNOLOGY. (a) Subject to the restrictions specified in this Section
2.4 and any additional restrictions set forth in the Exhibits hereto, Agere and
its Related Companies shall each have a personal, worldwide, nonexclusive,
royalty-free and non-transferable right to use the Licensed Lucent Technology
and the Licensed Corporate Technology for the businesses in which Agere or any
of its Related Companies are now or hereafter engaged.
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(b) Agere's right to use includes the right of Agere and its Related
Companies to copy, modify and improve any portion of Licensed Lucent Technology
and the Licensed Corporate Technology. No right is granted hereunder to Agere or
its Related Companies to sublicense any of Licensed Lucent Technology or
Licensed Corporate Technology to any third party, other than the sublicensing of
software in object code form in connection with the sale of Agere products or
services.
(c) Agere and its Related Companies shall have a personal, worldwide,
nonexclusive, royalty-free and non-transferable limited right to use Lucent
Technology and any mask works, mask sets, macro cells, and the like generated by
use of such technology, for the purpose of designing, manufacturing and selling
products to Lucent or to a party designated in writing by Lucent.
(d) In addition to the rights granted to Agere and its Related Companies
under Section 2.4(a), Agere and its Related Companies shall have a personal,
worldwide, nonexclusive, royalty-free and non-transferable limited right to
continue to use any Lucent Technology and any mask works, mask sets, macro
cells, and the like generated by use of such technology, that was used prior to
July 20, 2000 in the design or manufacture of any products (hereinafter
"Existing Products") that Agere offered for sale to customers other than Lucent.
Such continued use shall be limited, however, to use by Agere in connection with
the manufacture by Agere of products that are the same as, or are substantially
derived from, Existing Products. For the purposes of this Section 2.4(d), Lucent
Technology and any mask works, mask sets, macro cells, and the like generated by
use of such technology, shall not be deemed to have been used solely as a result
of the incorporation, prior to July 20, 2000, of components or other products
obtained from Lucent, into Existing Products.
(e) Except as provided in Sections 2.4(c) and 2.4(d), neither Agere nor
any of its Related Companies shall have the right to access, copy or use, in
whole or in part, for any purpose, without the prior written consent of Lucent,
any Lucent Developments and Product Realization Technology.
2.5 PROCUREMENT. (a) As an attribute to each party's rights to use
Licensed Technology, and subject to the restrictions specified in Sections 2.3
and 2.4, each party may disclose to any of its suppliers, prospective suppliers
or third party joint developers (under appropriate joint development agreements)
only those portions of Licensed Technology that are reasonably necessary for the
procurement by such party of components, subsystems, subassemblies, products
and/or services of the businesses of such party.
(b) Each party agrees that it will not make any portion of Licensed
Technology available to any such supplier, prospective supplier, or joint
developer except under terms and conditions (including confidentiality, use and
disclosure restrictions) normally used by such party to protect its own
proprietary information of a similar nature.
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(c) The procurement rights granted hereunder to each one of the parties
under this Section 2.5 shall not be exercised by one party in a manner such that
the exercise of such one party's procurement rights is a sham to effect the
licensing of another party's Licensed Technology or any portion thereof, to a
third party and not for bona fide business purposes of such one party.
(d) Each party agrees that prior to the disclosure of any portion of
Licensed Technology under this Section 2.5, all extraneous proprietary
information of the other parties shall be expunged.
ARTICLE III
PATENT LICENSES
3.1 GRANTS TO AGERE. (a) GRL grants to Agere and Agere Guardian, under
GRL's Patents, worldwide, personal, nonexclusive, and non-transferable licenses
to make, have made (subject to 3.1(b)), use, lease, sell, offer for sale and
import any and all products and services of the businesses in which Agere or
Agere Guardian, or any of their Related Companies is now or hereafter engaged.
(b) The right of Agere and Agere Guardian to have product made pursuant to
this Agreement is not limited to products custom designed by or for Agere and
Agere Guardian. Such "have made" rights shall include the right to have "off the
shelf" products made for or procured by Agere and Agere Guardian. The "have
made" rights shall not be exercised by Agere and Agere Guardian in a manner such
that the exercise of those rights is a sham to sublicense GRL's Patents to a
third party.
(c) GRL hereby further grants to Agere a sublicense under any and all
patent license rights, with respect to which GRL has received from any third
party pursuant to any license agreement a right to sublicense (but only to the
extent that GRL has a right to grant such a sublicense without payment of
royalties, loss of rights or imposition of a penalty), to make, have made, use,
lease, offer to sell, sell, and import any and all products and services. To the
extent that GRL's right to grant sublicenses to divested entities under any
license agreement is limited to a grant made within a specified time period with
respect to a divestiture, then the sublicenses granted to Agere under this
Section 3.1(c) shall be deemed to have occurred at the earliest date permitted
in such license agreement.
3.2 GRANTS TO LUCENT. (a) Agere Guardian grants to Lucent and GRL, under
Agere Guardian's Patents, worldwide, personal, nonexclusive, and
non-transferable licenses to make, have made (subject to 3.2(b)), use, lease,
sell, offer for sale and import any and all products and services of the
businesses in which Lucent and GRL or any of their Related Companies is now or
hereafter engaged.
(b) The right of Lucent and GRL to have product made pursuant to this
Agreement is not limited to products custom designed by or for Lucent and GRL.
Such
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"have made" rights shall include the right to have "off the shelf" products made
for or procured by Lucent and GRL. The "have made" rights shall not be exercised
by Lucent and GRL in a manner such that the exercise of those rights is a sham
to sublicense Agere Guardian's Patents to a third party.
3.3 DURATION AND EXTENT OF LICENSES. Subject to Article VIII, all licenses
granted herein as to any party's patents shall continue for the entire unexpired
term of such patents.
3.4 SCOPE OF LICENSES. (a) The licenses granted herein include licenses to
convey to any customer of the grantee, with respect to any licensed product
which is sold or leased by such grantee to such customer, rights 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 with respect to any invention which is directed to (1) a
combination of such licensed products(s) (as sold or leased) with any other
product that is not a licensed product, (2) a method or process other than a
method or process the inventive steps of which are implemented primarily by the
licensed product(s) in the operation of such licensed products(s) or (3) a
method or process involving the use of a licensed product to manufacture any
other product and to test any such manufactured product.
(b) For a period of three (3) years after the Effective Date, the scope of
the licenses granted to Agere and Agere Guardian as defined in Section 3.4(a)
shall further include, in addition to the rights granted hereinabove with
respect to a licensed product sold to a customer of Agere, the rights to convey
to that customer, a license under only (i) U.S. Patent 4,582,956 issued to
Doughty, and (ii) those of GRL's Patents with respect to which at least one
inventor named on the patent was an employee of the Microelectronics or
Optoelectronics business unit of Lucent at the time the invention was made, with
respect to an invention which is directed to a combination of such licensed
product(s) (as sold or leased) with any other product that is not a licensed
product, provided that the licensed product(s) embodies a substantial and
significant portion of the invention, and further provided that the customer is
not already licensed by Lucent or GRL with respect to such invention. After
three (3) years from the Effective Date, Agere and Agere Guardian shall have no
further right to convey to customers rights and licenses permitted to be
conveyed pursuant to this Section 3.4(b).
(c) Licenses granted herein are not to be construed: (i) as consent by the
grantor to any act which may be performed by the grantee, except to the extent
impacted by a patent licensed herein to the grantee, (ii) except as otherwise
specifically provided under Section 3.4(a) or 3.4(b), a waiver of a party's (or
any of its Related Companies') rights against any third party with respect to
any infringement or (iii) to include licenses to contributorily infringe or
induce infringement under U.S. law or a foreign equivalent thereof (collectively
"Indirect Infringement"). Notwithstanding the foregoing sentence, each party
agrees for itself and its Related Companies licensed hereunder that they will
not bring suit or otherwise exercise any of their remedies under their
respective licensed patents (i.e., GRL's Patents and Agere Guardian's Patents,
as the case may be) against
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the other party or its Related Companies licensed hereunder, for Indirect
Infringement. However, the parties agree that all remedies available under such
patents against a third party direct infringer are not waived, and will still be
in full force and effect, and that such third party direct infringers will not
be relieved of any liability for such direct infringement. In the event that any
court of competent jurisdiction determines that the agreement by the parties
hereto not to bring suit for indirect infringement eliminates the liability of,
or reduces the damages against, a third party direct infringer, then the
agreement of the parties not to bring suit against each other for Indirect
Infringement shall be automatically terminated. Concurrent with such
termination, this agreement shall be deemed to have been amended to include the
following language in lieu of the sentence beginning "Notwithstanding the
foregoing sentence, each party ...": "Notwithstanding the foregoing sentence,
each party agrees for itself and its Related Companies licensed hereunder that
they will not bring suit or otherwise exercise any of their remedies under their
respective licensed patents (i.e., GRL's Patents and Agere Guardian's Patents,
as the case may be) against the other party or its Related Companies licensed
hereunder, for Indirect Infringement until fully exhausting all remedies
available under such patents against the third party direct infringer(s) for the
direct infringement which gives rise to such Indirect Infringements."
(d) The grant of each license hereunder to each party includes the right
to grant sublicenses within the scope of such license to a party's Related
Companies for so long as they remain Related Companies of such party. Any such
sublicense may be made effective retroactively, but not prior to the Effective
Date, nor prior to the sublicensee's becoming a Related Company of such party.
3.5 FILINGS OF PATENT APPLICATIONS. Each party agrees to file patent
applications within the period prior to February 1, 2003 in a timely manner as
determined by generally accepted good patent filing practices and as though this
Agreement were not in existence between the parties. The dispute resolution
provisions of Article IX of the Separation and Distribution Agreement shall
apply to any allegation by one party that another party hereto has purposely
delayed its patent filings primarily to avoid providing the licenses and rights
granted hereunder.
3.6 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 use its reasonable best
efforts to 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
a 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
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hereunder. If, in spite of such reasonable steps, 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.
3.7 OUTSIDE THE UNITED STATES. (a) There are countries in which the owner
of an invention is entitled to damages, compensation 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) There may be countries in which a party hereto may have, as a
consequence of this Agreement, rights against third party infringers of another
party's patents licensed hereunder. Each party hereto hereby waives any such
right it may have by reason of such third party's infringement or alleged
infringement of another party's patents.
(c) Each party hereto hereby agrees to register or cause to be registered,
to the extent that such party reasonably determines that registration or
recordation is necessary under applicable law, and without expense to the other
party or any of its Related Companies, any agreements wherein sublicenses are
granted by it under the other party's patents licensed hereunder. Each party
hereto 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 the other party.
3.8 DEFENSIVE PROTECTION ARRANGEMENT. If, during the period ending five
(5) years after the Effective Date, any third party sues Agere for patent
infringement with respect to any Agere product(s), then Agere shall have, during
the pendency of the action, (i) the right to assert against such third party,
counterclaims of infringement of not more than six (6) of the Designated
Defensive Patents listed in Exhibit I selected by Agere, and (ii) the exclusive
right to license said third party under such six (6) Designated Defensive
Patents solely for the purposes of settling such litigation. Agere shall control
the litigation (both the defense of the initial claim by the third party, and
the assertion of a counterclaim under the Designated Defensive Patents), and
Agere shall bear all costs and expenses associated therewith. Any royalty
revenues and judgment obtained from or against a third party on account of such
selected Designated Defensive Patents shall be first applied to Agere's costs
and expenses of the litigation, and any amount received in excess of such costs
and expenses shall be equally divided between Agere and Lucent.
Before exercising such right, Agere shall give notice to Lucent, and shall
afford Lucent, at Lucent's option, the opportunity to transfer to Agere for the
duration of the
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litigation, either a partial interest in the patent(s) sufficient to enable
Agere to bring suit, or a full interest in the patent(s). Agere agrees to accept
such transfer, and to return such interest to Lucent at the conclusion of the
litigation.
If any rights are exercised pursuant to this Section, Agere agrees to
reasonably consult with Lucent during such litigation, to comply with reasonable
requests made by Lucent regarding the status of the litigation, and to indemnify
and hold Lucent harmless from and against any claim, loss or damage (including
reasonable attorneys fees) arising out of or resulting from Agere's exercise of
the rights granted by Lucent to Agere under this provision, excluding, however,
claims against Lucent for patent infringement.
3.9 LICENSING PRIOR TO DISTRIBUTION DATE. Between the Effective Date and
Distribution Date, unless expressly permitted in this Agreement or in any
Ancillary Agreement as defined in the Separation and Distribution Agreement, (i)
Agere and its Related Companies shall not, without the express written
permission of Lucent, enter into any agreement to license any patent or other
intellectual property solely owned by Lucent or its Related Companies to a third
party, and (ii) Lucent and its Related Companies shall not, without the express
written permission of Agere, enter into any agreement to license any patent or
other intellectual property owned solely by Agere or its Related Companies to a
third party.
3.10 EXCLUSIVE LICENSES GRANTED TO AGERE SUBSIDIARIES. (a) In the
following Sections 3.10(b) through 3.10(d):
With respect to the patents listed on Schedule 3.10-1, Transferor shall
mean Lucent Guardian, Transferee shall mean Agere Guardian, and Transferred
Patents shall mean the patents listed on Schedule 3.10-1.
With respect to the patents listed on Schedule 3.10-2, Transferor shall
mean Lucent Optical Networking Guardian, Transferee shall mean Agere Guardian
and Transferred Patents shall mean the patents listed on Schedule 3.10-2.
With respect to the patents listed on Schedule 3.10-3, Transferor shall
mean Lucent Wireless Guardian, Transferee shall mean Agere Guardian and
Transferred Patents shall mean the patents listed on Schedule 3.10-3.
With respect to the patents listed on Schedule 3.10-4, Transferor shall
mean Lucent Guardian, Transferee shall mean Agere Optoelectronics Guardian, and
Transferred Patents shall mean the patents listed on Schedule 3.10-4.
With respect to the patents listed on Schedule 3.10-5, Transferor shall
mean Lucent Fiber Guardian, Transferee shall mean Agere Optoelectronics
Guardian, and Transferred Patents shall mean the patents listed on Schedule
3.10-5.
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With respect to the patents listed on Schedule 3.10-6, Transferor shall
mean Lucent Optical Networking Guardian, Transferee shall mean Agere
Optoelectronics Guardian and Transferred Patents shall mean the patents listed
on Schedule 3.10-6.
(b) Subject to rights retained for itself and its future Subsidiaries and
Related Companies to make, have made, use, lease, offer to sell, sell, and
import, any or all products and services of any type or kind, Transferor hereby
grants to Transferee under all of the Transferred Patents, an exclusive,
irrevocable, and fully transferable license to make, have made, use, lease,
offer to sell, sell, and import, any or all products and services of any type or
kind, including the unrestricted right to grant sublicenses under the
Transferred Patents. All licenses granted to Transferee hereunder shall be fully
paid up. Transferor hereby assigns to Transferee all rights under the
Transferred Patents to sue for infringement, including for damages for past
infringement, and to grant releases for past infringement and to further
authorize third parties to grant such releases. Transferor grants to Transferee,
the exclusive right to prepare, file and prosecute, in any Patent Office in the
world, any action involving or relating to any Transferred Patent, including but
not limited to, any re-examination or re-issue relating to the Transferred
Patents. Transferor agrees to execute and deliver to Transferee, all such
instruments as are reasonably necessary to effectuate the grant of licenses and
rights contemplated by this provision.
(c) All licenses and rights granted herein under any patent shall continue
for the entire term of such patent. All licenses and rights granted to
Transferee hereunder are subject to all prior agreements and commitments of
Transferor, Lucent or Lucent GRL to third parties entered into or made by
Transferor, Lucent or Lucent GRL prior to the Effective Date.
(d) Notwithstanding any other provision relating to the Transferred
Patents, Transferor shall have the sole and exclusive option, if any one or more
Transferred Patents is or becomes likely to be involved in litigation, to convey
to Transferee, its legal title to such one or more Transferred Patents (while
retaining rights to such patents described in Section 3.10(b) above), and
Transferee hereby agrees to accept such conveyance and to pay to Transferor a
conveyance fee of $1,000.00.
(e) Agere agrees to indemnify and hold Lucent harmless from any and all
damages, expense, fees, claims, judgments, demands, and reasonable legal fees as
a result of retention of title (by a respective transferor) to the Transferred
Patents listed on Schedules 3.10-1 through 3.10-6. Lucent agrees to forward any
notices, demands, claims, correspondence, etc. relating to the Transferred
Patents listed on Schedules 3.10-1 through 3.10-6 to Agere. Agere agrees that
neither Lucent, Lucent GRL nor the respective transferor shall have any
liability or other obligation as a result of any delay or failure to act with
respect to such Transferred Patents listed on Schedules 3.10-1 through 3.10-6.
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3.11 EXCLUSIVE LICENSES GRANTED TO LUCENT SUBSIDIARIES. (a) In the
following Sections 3.11(b) through 3.11(d):
With respect to the patents listed on Schedule 3.11-1, Transferor shall
mean Agere Guardian, Transferee shall mean Lucent Guardian, and Transferred
Patents shall mean the patents listed on Schedule 3.11-1.
With respect to the patents listed on Schedule 3.11-2, Transferor shall
mean Agere Guardian, Transferee shall mean Lucent Optical Networking Guardian
and Transferred Patents shall mean the patents listed on Schedule 3.11-2.
With respect to the patents listed on Schedule 3.11-3, Transferor shall
mean Agere Guardian, Transferee shall mean Lucent Wireless Guardian and
Transferred Patents shall mean the patents listed on Schedule 3.11-3
With respect to the patents listed on Schedule 3.11-4, Transferor shall
mean Agere Optoelectronics Guardian, Transferee shall mean Lucent Guardian, and
Transferred Patents shall mean the patents listed on Schedule 3.11-4.
With respect to the patents listed on Schedule 3.11-5, Transferor shall
mean Agere Optoelectronics Guardian, Transferee shall mean Lucent Fiber
Guardian, and Transferred Patents shall mean the patents listed on Schedule
3.11-5.
With respect to the patents listed on Schedule 3.11-6, Transferor shall
mean Agere Optoelectronics Guardian, Transferee shall mean Lucent Optical
Networking Guardian and Transferred Patents shall mean the patents listed on
Schedule 3.11-6.
(b) Subject to rights retained for itself and its future Subsidiaries and
Related Companies to make, have made, use, lease, offer to sell, sell, and
import, any or all products and services of any type or kind, Transferor hereby
grants to Transferee under all of the Transferred Patents, an exclusive,
irrevocable, and fully transferable license to make, have made, use, lease,
offer to sell, sell, and import, any or all products and services of any type or
kind, including the unrestricted right to grant sublicenses under the
Transferred Patents. All licenses granted to Transferee hereunder shall be fully
paid up. Transferor hereby assigns to Transferee all rights under the
Transferred Patents to sue for infringement, including for damages for past
infringement, and to grant releases for past infringement and to further
authorize third parties to grant such releases. Transferor grants to Transferee,
the exclusive right to prepare, file and prosecute, in any Patent Office in the
world, any action involving or relating to any Transferred Patent, including but
not limited to, any re-examination or re-issue relating to the Transferred
Patents. Transferor agrees to execute and deliver to Transferee, all such
instruments as are reasonably necessary to effectuate the grant of licenses and
rights contemplated by this provision.
(c) All licenses and rights granted herein under any patent shall continue
for the entire term of such patent. All licenses and rights granted to
Transferee hereunder are
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subject to all prior agreements and commitments of Transferor or Agere to third
parties entered into or made by Transferor or Agere prior to the Effective Date.
(d) Notwithstanding any other provision relating to the Transferred
Patents, Transferor shall have the sole and exclusive option, if any one or more
Transferred Patents is or becomes likely to be involved in litigation, to convey
to Transferee, its legal title to such one or more Transferred Patents (while
retaining rights to such patents described in Section 3.11(b) above), and
Transferee hereby agrees to accept such conveyance and to pay to Transferor a
conveyance fee of $1,000.00.
(e) Lucent agrees to indemnify and hold Agere harmless from any and all
damages, expense, fees, claims, judgments, demands, and reasonable legal fees as
a result of Transferor's retention of title (by a respective transferor) to the
Transferred Patents listed on Schedules 3.11-1 through 3.11-6. Agere agrees to
forward any notices, demands, claims, correspondence, etc. relating to the
Transferred Patents listed on Schedules 3.11-1 through 3.11-6 to Lucent. Lucent
agrees that neither Agere nor the respective transferor shall have any liability
or other obligation as a result of any delay or failure to act with respect to
such Transferred Patents listed on Schedules 3.11-1 through 3.11-6.
3.12 COVENANT NOT TO SUE UNDER CERTAIN CONDITIONS. (a) Lucent and Agere each
covenant not to sue Persons with whom Lucent or Agere, as the case may be, has a
Supply Relationship or a Joint Development Relationship (as defined in sections
(c) and (d), respectively) with respect to infringement of Necessary Patents (as
defined in Section (e)) that may occur by virtue of the manufacture, use or sale
of Impacted Products, as defined in Section (b).
(b) Impacted Product means any product made by a Person with whom Lucent
or Agere, as the case may be, has a Supply Relationship or a Joint Development
Relationship, that makes substantial and significant use of technology (i) that
exists as of the Effective Date (ii) is furnished by Lucent or Agere to the
Person, and (iii) for which Lucent or Agere, as the case may be, has
unrestricted rights under this Agreement (hereinafter "Furnished Technology").
(c) A Supply Relationship shall be deemed to exist between Lucent or Agere
and a Person when Lucent or Agere, as the case may be, has entered into a
written, good faith, arm's length transaction obligating Lucent or Agere, as the
case may be, to purchase a commercially significant fraction of its requirements
for Impacted Products from the Person.
(d) A Joint Development Relationship shall be deemed to exist between
Lucent or Agere and a Person when Lucent or Agere, as the case may be, has
entered into a written, good faith, arm's length agreement obligating employees
of Lucent or Agere, as the case may be, to work cooperatively with employees of
the Person solely for the purpose of designing and/or manufacturing Impacted
Products, wherein each Party provides substantial contributions to the joint
development activities.
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(e) Necessary Patents shall include, in the case of Lucent (Agere)
any claim of any patent
(i) which is based upon an application first filed as of the
Effective Date;
(ii) which Lucent (Agere) or any of their respective Related
Companies, owns or has the right to license as of the
Effective Date;
(iii) which reads on the Furnished Technology; and
(iv) which would be unavoidably and necessarily infringed by
implementation and use of the Furnished Technology in the
manufacture, use and/or sale of Impacted Products.
(f) Any covenant not to sue made pursuant to this section with respect to
a Joint Development Relationship shall continue notwithstanding the expiration,
cancellation or other termination of the Joint Development Relationship.
(g) Any covenant not to sue made pursuant to this section with respect to
a Supply Relationship shall terminate upon the expiration, cancellation or other
termination of the Supply Relationship. However, in the event that a Supply
Relationship between a Person and Lucent (Agere) is about to or has expire(d),
or is about to be, or has been terminated or canceled, then, upon the request of
Lucent (Agere), Agere (Lucent) agrees to extend to the Person, a license to
make, use and sell Impacted Products on commercially reasonable terms and
conditions. For the purposes of this section 3.12(g), commercially reasonable
terms and conditions shall be deemed to include a royalty payment to the
licensing Party not to exceed the lesser of (i) One Half of One Percent (0.5%)
of the fair market value of the Impacted Products for each Necessary Patent, or
(ii) Two Percent (2%) of the fair market value of the Impacted Products.
(h) In this section 3.12, references to Lucent or Agere shall be deemed to
include Lucent or Agere, as the case may be, and their respective Related
Companies.
ARTICLE IV
ASSIGNMENT OF RESTRICTED JOINT CORPORATE TECHNOLOGY
4.1 ASSIGNMENT OF RESTRICTED JOINT CORPORATE TECHNOLOGY. Lucent hereby
irrevocably transfers and assigns to Agere an undivided one-half (l/2), interest
in the Restricted Joint Corporate Technology. Lucent and Agere shall each
jointly own an equal, undivided, one-half (l/2) interest in the Restricted Joint
Corporate Technology, with full rights to use such technology for its own
internal business purposes, including, but not limited to, "have-made" rights,
and with no duty to account to the other for any exploitation of such
jointly-owned Restricted Joint Corporate Technology. Agere and Lucent each agree
that each party shall not have any right to, and will not (1) sublicense
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the Restricted Joint Corporate Technology to any third party, or (2) disclose or
otherwise make any portion of the Restricted Joint Corporate Technology
available to any third party except in connection with its exercise of
"have-made" rights, and then under confidentiality terms and conditions normally
used by such party to protect its own proprietary information of a similar
nature, provided, however, that neither Lucent nor Agere shall be precluded from
selling products or licensing software (in object code form), which include
Restricted Joint Corporate Technology.
4.2 ASSIGNMENT OF LUCENT RESTRICTED JOINT CORPORATE TECHNOLOGY. Lucent
hereby irrevocably transfers and assigns to Agere an undivided one-half (l/2),
interest in the Lucent Restricted Joint Corporate Technology. Lucent and Agere
shall each jointly own an equal, undivided, one-half (l/2) interest in the
Lucent Restricted Joint Corporate Technology, with full rights to use such
technology for its own internal business purposes, including, but not limited
to, "have-made" rights, and with no duty to account to the other or any
exploitation of such jointly-owned Lucent Restricted Joint Corporate Technology.
Agere agrees that it shall not have any right to, and will not (1) sublicense
the Lucent Restricted Joint Corporate Technology to any third party, or (2)
disclose or otherwise make any portion of the Lucent Restricted Joint Corporate
Technology available to any third party except in connection with its exercise
of "have-made" rights, and then under confidentiality terms and conditions
normally used by it to protect its own proprietary information of a similar
nature, provided, however, that Agere shall not be precluded from selling
products or licensing software (in object code form), which include Lucent
Restricted Joint Corporate Technology. Lucent shall not be subject to any
restrictions on sublicensing or disclosing Lucent Restricted Joint Corporate
Technology.
4.3 ASSIGNMENT OF AGERE RESTRICTED JOINT CORPORATE TECHNOLOGY Lucent
hereby irrevocably transfers and assigns to Agere an undivided one-half (l/2),
interest in the Agere Restricted Joint Corporate Technology. Lucent and Agere
shall each jointly own an equal, undivided, one-half (l/2) interest in the Agere
Restricted Joint Corporate Technology, with full rights to use such technology
for its own business purposes, including, but not limited to, "have-made"
rights, and with no duty to account to the other for any exploitation of such
jointly-owned Agere Restricted Joint Corporate Technology. Lucent agrees that it
shall not have any right to, and will not (1) sublicense the Agere Restricted
Joint Corporate Technology to any third party, or (2) disclose or otherwise make
any portion of the Agere Restricted Joint Corporate Technology available to any
third party except in connection with its exercise of "have-made" rights, and
then under confidentiality terms and conditions normally used by it to protect
its own proprietary information of a similar nature, provided, however, that
Lucent shall not be precluded from selling products or licensing software (in
object code form), which include Agere Restricted Joint Corporate Technology.
Agere shall not be subject to any restrictions on sublicensing or disclosing
Agere Restricted Joint Corporate Technology.
4.4 ACCESS TO RESTRICTED JOINT CORPORATE TECHNOLOGY, LUCENT RESTRICTED
JOINT CORPORATE TECHNOLOGY, AND AGERE RESTRICTED JOINT CORPORATE TECHNOLOGY.
During a period beginning on the Effective Date and ending on December 31, 2001,
Agere and Lucent each shall have the right to access and to copy any and all
portions of
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the Restricted Joint Corporate Technology, Lucent Restricted Joint Corporate
Technology and Agere Restricted Joint Corporate Technology in possession of the
other party. Such access and copying shall be in accordance with a reasonable
request and schedule to be mutually agreed upon between Agere and Lucent. All
costs associated with the assembling, copying and delivering of such Restricted
Joint Corporate Technology shall be borne by the party requesting same.
4.5 EXCEPTION TO RESTRICTION. Lucent and Agere agree that the restrictions
in Section 4.1 on Lucent's rights under the Restricted Joint Corporate
Technology shall not apply to any Restricted Joint Corporate Technology that
Lucent has a right to use pursuant to Article V below.
ARTICLE V
RIGHTS RELATED TO PRODUCTS SOURCED BY LUCENT FROM AGERE
5.1 DEFINITIONS. For the purposes of this Article V:
5.1.1 " Joint Technical Information" shall mean those specifications,
drawings, schematics, software, test programs, mask works, parts lists,
engineering notes, process instructions and any other information in Lucent's
possession and limited to Restricted Joint Corporate Technology specifically
listed in Exhibit F and Agere Restricted Joint Corporate Technology listed in
Exhibit G. Joint Technical Information shall not include any information that is
solely owned by Agere.
5.1.2 "Agere's Required Patents" shall mean any claim of any patent owned
by Agere or Agere's wholly-owned Subsidiaries, or for which Agere or Agere's
wholly-owned Subsidiaries has an exclusive license pursuant to Section 3.10,
which reads on and which is necessarily infringed by the manufacture or sale of
a Sourced Product (as defined below in Section 5.2) that uses or is based upon
Joint Technical Information.
5.1.3 "Supply Agreement" shall mean the Microelectronics Product Purchase
Agreement between Lucent and Agere effective as of February 1, 2001, and any
other agreement pursuant to which Lucent purchases products or services from
Agere, and reference in this Article V to specific provisions within the
Microelectronics Product Purchase Agreement between Lucent and Agere effective
as of February 1, 2001 shall be deemed to include similar provisions contained
in such other agreements.
5.2 RESOLUTION PROCESS. In the event of the occurrence of certain events
identified below in Section 5.4 ("Trigger Events") with respect to one or more
Products for which Agere is Lucent's sole source of supply and for which there
is no commercially available substitute (hereinafter "Sourced Product"), Lucent
may notify Agere in writing that (i) a Trigger Event (as defined in Section 5.4
below) has occurred, describing with specificity the facts giving rise to the
Trigger Event, and (ii) Lucent wishes to invoke its rights under this Article V.
After receipt of such notice, Agere shall respond to Lucent within seven (7)
business days with a Plan of Action to address the issues raised in the
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notice from Lucent. In the event Agere fails to deliver a Plan of Action
reasonably acceptable to Lucent within the seven (7) business day period, or in
the case of an Epidemic Failure Trigger, as defined in Section 5.4.3 below,
Agere fails to cure the defect in the manner and within the cure period set
forth in the Plan of Action, Lucent may exercise its rights under Section 5.3
below, and in addition, invoke all of its rights under the Supply Agreement.
5.3 MANUFACTURING RIGHTS.
5.3.1 If pursuant to the Section 5.2 of this Article V, Lucent invokes
this Section 5.3, Lucent may, with respect to a Sourced Product, notify Agere of
Lucent's intention to either manufacture the Sourced Product or have the Sourced
Product manufactured by a third party ("Second Source"). In the event of a
notice of second source manufacture to Agere, Agere may notify Lucent, within
fifteen (15) business days, that it wishes to submit the matter for resolution
by Lucent's senior purchasing executive and Agere's appropriate senior
executive. If the matter is not thus resolved within twenty (20) days, then the
matter may be submitted by either party to an expedited binding arbitration to
take place in New Jersey, with costs to be shared equally, for a determination
of whether the foregoing default has occurred, which is to be completed within
twenty (20) business days. The parties agree that by March 1, 2001, the parties
shall select an arbitrator to adjudicate disputes on a continuing basis under
this clause. Upon failure of the parties to agree on the selection of an
arbitrator by March 1, 2001, the American Arbitration Association shall be
requested to make the selection.
5.3.2 Upon failure of Agere to submit the matter for resolution by senior
executives or upon the conclusion of an arbitration finding an unresolved
Trigger Event exists with respect to a Sourced Product, then Lucent shall have,
in addition to any rights provided elsewhere in this Agreement, the following
rights with respect to such specific Sourced Product:
5.3.2.1 a perpetual, personal, nonexclusive, non-transferable,
irrevocable, worldwide, royalty-free right to distribute the Joint Technical
Information and Lucent's derivative works thereof to a Second Source and to
sublicense such Second Source to make and sell such Sourced Product for third
parties, for so long as the Second Source supplies the Sourced Product to Lucent
and for three (3) years thereafter. Lucent shall distribute and sublicense the
Joint Technical Information under confidentiality terms consistent with those
ordinarily used by Lucent in connection with its disclosure of its own
proprietary information, and shall require return or destruction of the Joint
Technical Information when the Second Source ceases to have the right to supply
the Sourced Product; and
5.3.2.2 a personal, nonexclusive, non-transferable, irrevocable,
worldwide, royalty-free right to sublicense a Second Source under Agere's
Required Patents to make, use and sell the Sourced Product to third parties to
the extent the Second Source uses the Joint Technical Information to manufacture
the Sourced Product, for so long as the Second Source supplies the Sourced
Product to Lucent and for three (3) years thereafter.
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5.4 TRIGGER EVENTS. The following events are deemed "Trigger
Events" for a Sourced Product:
5.4.1 If Agere should at any time during the term of any Supply Agreement
determine that a Sourced Product is a candidate to be discontinued by Agere, as,
for example, per the terms of the Section 16 of the Supply Agreement, and (1)
Lucent is unable to obtain sufficient quantities of such Sourced Product due
solely to Agere being unable or unwilling to deliver the Sourced Product
requested by Lucent under the Lucent's last time purchase, or (2) following a
last time buy under, for example, the aforementioned Section 16, of Sourced
Product in quantities covering a twelve months' supply of Sourced Product, based
on Lucent's previous year's purchases, Lucent requires additional quantities of
such Sourced Product.
5.4.2 If (1) Agere should at any time "no bid" a Request for Quotation
(RFQ) from Lucent in connection with a new product , and (2) Lucent receives no
third party responses to such RFQ, and Lucent can demonstrate to Agere that any
third party response to such RFQ will be solely dependent upon Lucent invoking
its rights under Section 5.3. This Trigger Event shall not apply with respect to
Epoxy Formulations listed on Schedule F.
5.4.3 If an Epidemic Failure (as defined, for example, in Attachment D to
the Supply Agreement) occurs with respect to a Sourced Product and Agere fails
to perform its obligations in accordance with applicable contractual provision,
including, for example, said Attachment D, after written notice from Lucent of
such failure and opportunity to cure within thirty (30) days (an "Epidemic
Failure Trigger").
5.5 OTHER ACCESS AND COPY RIGHTS WITH RESPECT TO SOLE SOURCED PRODUCTS. In
order to facilitate Lucent use of design information, such as netlists, timing
specifications and test vectors relating to certain products for which Agere is
Lucent's sole source of supply, and with respect to which Lucent has retained
ownership rights under other provisions of this Agreement (hereinafter "Sourced
Product Design Information"), Agere agrees to cooperate with Lucent to (a)
identify products for which Sourced Product Design Information in the possession
of Lucent is incomplete, or for which up to date files containing Lucent Sourced
Product Design Information are in the possession of Agere, (b) define a mutually
agreeable procedure and schedule for access, copy and transfer of such Sourced
Product Design Information to Lucent, and (c) provide Sourced Product Design
Information to Lucent in accordance with said procedure and schedule.
5.6 ACCESS, COPY AND TRANSFER PROCEDURE AND SCHEDULE. The parties agree to
cooperate with each other to implement a specific and detailed process for
access, copying and transfer of Sourced Product Design Information, in order to
insure that (a) all access and copying will be substantially completed prior to
December 31, 2001, and (b) adequate provision will be made for accommodating any
special cases or eventualities that may arise. The process shall specify target
time periods in which a response to a request for access and copying shall be
transmitted to Lucent, which period shall, unless otherwise agreed, not exceed
ten (10) working days. Lucent shall use good faith efforts
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to minimize the number and frequency of requests made hereunder, and Agere shall
use good faith efforts to accommodate the business needs of Lucent.
5.7 CONTENT AND HANDLING OF REQUESTS FOR ACCESS AND COPYING. All requests
from Lucent for access and copying shall clearly identify: (a) the item(s)
requested, (b) the Lucent subject matter expert or accountable associate, (c)
whether a copy or access is requested, (d) if a copy is requested, the desired
delivery interval for the copy, which interval shall be no shorter than the
targeted interval set forth above, (e) if known, the location of the material
being requested (f) if access is requested, the specifics of how the access was
made in the past, and (g) any special handling that is requested (e.g.,
overnight delivery, maximum approved cost). Agere shall promptly acknowledge
receipt of each such request, and expeditiously process such request, so as to
provide the requested Sourced Product Design Information to Lucent in accordance
with the agreed upon schedule. In the event that Agere determines that requested
Sourced Product Design Information is not available, cannot be located, or
cannot be provided as specifically requested, Agere will notify Lucent promptly.
Copies of Sourced Product Design Information will be provided to Lucent in the
original size, content, form and clarity. The latest version of Sourced Product
Design Information will be provided unless otherwise requested.
5.8 RETENTION. Agere agrees that it will retain both current and previous
versions of all Sourced Product Design Information subject to access and
copying, and that it will not destroy or otherwise dispose of any Sourced
Product Design Information without first notifying Lucent and obtaining written
agreement either to destroy the copy, or to provide the copy to Lucent.
ARTICLE VI
MEMS PATENTS AND SPECIALTY PATENTS
6.1 ASSIGNMENT OF JOINT MEMS PATENTS AND JOINT SPECIALTY PATENTS. (a)
Lucent, subject to existing rights and licenses of third parties, does hereby
assign, convey, transfer and deliver, and agrees to assign, convey, transfer and
deliver to Agere Optoelectronics Guardian and its Related Companies, an
undivided one-half (1/2) interest in all Joint MEMS Patents listed on Exhibit J,
an undivided one-half (1/2) interest in all Joint Specialty Patents listed on
Exhibit K, and corresponding counterpart foreign patents and patent applications
in all countries, jurisdictions and political entities of the world, along with
the right to sue for past infringement, with respect to which, and to the extent
to which, Lucent now has or hereafter acquires the right to so assign, convey,
transfer and deliver. Accordingly, Lucent and Agere Optoelectronics Guardian
shall each have an equal title interest in each Joint MEMS Patent and in each
Joint Specialty Patent, with Lucent holding an undivided one-half (1/2) interest
and Agere Optoelectronics Guardian holding an undivided one-half (1/2) interest.
(b) Notwithstanding each Party's ownership interest in Joint MEMS Patents
and Joint Specialty Patents under Section 2.1(a), neither Lucent nor Agere
(other than
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their respective Related Companies) shall assign its entire interest, or any
portion thereof, in any Joint MEMS Patent or Joint Specialty Patent to any third
party (other than any of its Related Companies) without the express written
consent of the other party. If any attempt is made by one party to assign its
interest in any Joint MEMS Patent or Joint Specialty Patent without the other
party's consent, all of the one party's ownership interests in that Joint MEMS
Patent or Joint Specialty Patent which such one party attempts to assign shall
automatically be extinguished, ownership shall vest in the other party, and the
Joint MEMS Patent or Joint Specialty Patent shall thereafter be treated as a
Licensed MEMS Patent licensed or Licensed Specialty Patent to the one party (as
Licensee) by the other party (as Licensor), in accordance with the provisions of
Sections 6.2 through 6.5.
6.2 LICENSE OF LICENSED MEMS PATENTS AND LICENSED SPECIALTY PATENTS. (a)
In the following Sections 6.2(b) and 6.2(c):
With respect to the patents listed on Schedule 6.2-1, Licensor shall mean
Lucent Optical Networking Guardian, Licensee shall mean Agere Optoelectronics
Guardian, and Licensed MEMS Patents shall mean the patents listed on Schedule
6.2-1.
With respect to the patents listed on Schedule 6.2-2, Licensor shall mean
Lucent Fiber Guardian, Licensee shall mean Agere Optoelectronics Guardian, and
Licensed MEMS Patents shall mean the patents listed on Schedule 6.2-2.
With respect to the patents listed on Schedule 6.2-3, Licensor shall mean
Lucent Guardian, Licensee shall mean Agere Optoelectronics Guardian, and
Licensed MEMS Patents shall mean the patents listed on Schedule 6.2-3.
With respect to the patents listed on Schedule 6.2-4, Licensor shall mean
Agere Guardian, Licensee shall mean Lucent Guardian, and Licensed MEMS Patents
shall mean the patents listed on Schedule 6.2-4.
With respect to the patents listed on Schedule 6.2-5, Licensor shall mean
Agere Guardian, Licensee shall mean Lucent Guardian, and Licensed Specialty
Patents shall mean the patents listed on Schedule 6.2-5.
With respect to the patents listed on Schedule 6.2-6, Licensor shall mean
Agere Optoelectronics Guardian, Licensee shall mean Lucent Guardian, and
Licensed Specialty Patents shall mean the patents listed on Schedule 6.2-6.
(b) Licensor hereby grants to Licensee under the Licensed MEMS Patents and
the Licensed Specialty Patents, a non-exclusive, irrevocable, and fully
transferable license to make, have made, use, lease, offer to sell, sell, and
import, any or all products and services of any type or kind, including the
unrestricted right to grant sublicenses under the Licensed MEMS Patents and
Licensed Specialty Patents (except for the restrictions set forth in Section
6.4). All licenses granted to Licensee hereunder shall be fully paid up, and
shall extend to Licensor's Related Companies. Licensor agrees to execute and
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deliver to Licensee, all such instruments as are reasonably necessary to
effectuate the grant of licenses contemplated by this Section.
(c) All licenses granted under any Licensed MEMS Patent or Licensed
Specialty Patents shall continue for the entire term of such patent. All
licenses and rights granted to Licensee hereunder are subject to all prior
agreements and commitments of Licensor to third parties entered into or made by
Licensor prior to the Effective Date.
6.3 PATENT PROSECUTION AND MAINTENANCE OF JOINT MEMS PATENTS, JOINT
SPECIALTY PATENTS, LICENSED SPECIALTY PATENTS AND LICENSED MEMS PATENTS. (a) For
the purposes of Sections 6.3 through 6.5, (i) Licensed MEMS Patents shall
include all of the patents listed on Schedules 6.2-1 through 6.2-4, inclusive,
(ii) Licensed Specialty Patents shall include all of the patents listed on
Schedules 6.2-5 and 6.2-6, (iii) Joint MEMS Patents and Licensed MEMS Patents
shall collectively be referred to as "MEMS Patents", and Joint Specialty Patents
and Licensed Specialty Patents shall collectively be referred to as "Specialty
Patents".
(b) Lucent and Agere Optoelectronics Guardian agree that all patent
prosecution and maintenance decisions, both in the United States and in foreign
countries, relating to the MEMS Patents and Specialty Patents, shall be made
jointly by the parties, after consultation. All expenses for prosecuting each
MEMS Patent and Specialty Patent and for issue of each MEMS Patent and Specialty
Patent shall be equally borne by Lucent and Agere Optoelectronics Guardian.
Primary responsibility for prosecuting each patent application which is a MEMS
Patent or Specialty Patent hereunder shall remain with the party (Lucent or
Agere) that employs the patent attorney who was, as of the Effective Date,
primarily responsible for such prosecution. At the request of the party
prosecuting an application (hereinafter "Prosecuting Party"), the other party
shall furnish any assistance that may be reasonably necessary.
(c) In the case of a MEMS Patent and Specialty Patent which is filed in a
country which requires the payment of taxes or annuities on a pending patent
application or on an issued patent, Lucent and Agere Optoelectronics Guardian
shall equally share in the payment of such taxes and annuities for all MEMS
Patents and Specialty Patents.
(d) The Prosecuting Party will pay all prosecution expenses, taxes and
annuities associated with any MEMS Patent or Specialty Patent, and within sixty
(60) days from receiving evidence of such payment, The other party will
reimburse the Prosecuting Party for fifty percent (50%) of such expenses, taxes
and annuities.
(e) In the event that Lucent or Agere Optoelectronics Guardian elects not
to continue prosecution of any pending patent application which is a MEMS Patent
or Specialty Patent, or not to pay any tax or annuity due on a MEMS Patent or
Specialty Patent, such party will offer to the other party (and will effect an
assignment if such offer is accepted) a fee-free assignment of the one party's
one-half (1/2) interest in such application or MEMS Patent or Specialty Patent,
subject to the transferring party retaining, under the transferred application
or MEMS Patent or Specialty Patent, a non-
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exclusive, irrevocable, and fully transferable license to make, have made, use,
lease, offer to sell, sell, and import, any or all products and services of any
type or kind.
(f) Neither Lucent nor Agere Optoelectronics Guardian may, without the
express written consent of the other party, disclaim or dedicate any MEMS Patent
or Specialty Patent, or file for reissue or reexamination, or undertake any
other procedure or perform any act which may affect the scope or validity of any
of the MEMS Patents or Specialty Patents, other than as required during the
course of normal prosecution pursuant to Section 6.3(b). The foregoing
limitation on filing for reissue or reexamination shall not, however, apply in
the event that one party has instituted litigation with respect to one or more
MEMS Patents or Specialty Patents, and the other party has no litigation pending
with respect to such one or more MEMS Patents or Specialty Patents.
6.4 LICENSING OF JOINT MEMS PATENTS AND JOINT SPECIALTY PATENTS AND
SUBLICENSING OF LICENSED MEMS PATENTS AND LICENSED SPECIALTY PATENTS TO THIRD
PARTIES. Lucent and Agere Optoelectronics Guardian and their respective Related
Companies shall each have the right to (i) grant nonexclusive, personal,
non-assignable licenses under Joint MEMS Patents and Joint Specialty Patents,
and (ii) grant nonexclusive, personal, non-assignable sublicenses under Licensed
MEMS Patents and Licensed Specialty Patents, to any Person anywhere in the
world. Lucent and Agere Optoelectronics Guardian each hereby consents to the
grant of such licenses or sublicenses by the other party, and gives such consent
to the extent that such consent is necessary to effectuate the licenses or
sublicenses granted, and consents to the retaining by the licensing party of all
revenues, royalties and benefits received for such licenses or sublicenses
without accounting therefor to the non-licensing party. Lucent shall have the
right to license/sublicense the Specialty Patents for any purpose, except when
the license/sublicense is solely for the purpose of granting patent licenses or
sublicenses.
6.5 ENFORCEMENT OF MEMS PATENTS AND SPECIALTY PATENTS. (a) Lucent and
Agere Optoelectronics Guardian shall each have the right to bring any litigation
against any third party under any MEMS Patent or Specialty Patent, without the
consent of the other party. The other party hereby consents to be joined as a
party to the litigation, if required.
(b) Lucent and Agere Optoelectronics Guardian shall each notify the other,
in writing, at least thirty (30) days prior to institution of any litigation
involving one or more MEMS Patents or Specialty Patent. Lucent and Agere
Optoelectronics Guardian agree to negotiate with each other, in good faith, in
the event that either party determines that the institution of litigation is not
in its best interests, and that there is a preferable alternative available that
would satisfy the interests of both parties. Following the giving of such
notice, the party receiving the notice shall not (i) for an initial period of
three (3) months following such notification, and (ii) during the course of the
litigation and until its conclusion by settlement or execution of judgment,
license or attempt to license any such MEMS Patent or Specialty Patent to the
Person identified in the notice or the Person that is the subject of the
litigation.
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(c) Unless otherwise agreed by Lucent and Agere Optoelectronics Guardian,
the party initiating any litigation involving any MEMS Patent or Specialty
Patent (i) shall promptly notify the other party of the initiation of such
litigation, (ii) shall have sole control of the litigation, (iii) shall incur
all expenses and costs (including reasonable expenses associated with requested
participation of the joined other party as co-owner), and (iv) shall retain any
and all amounts recovered as the result of such litigation without accounting
therefor to the other party.
(d) Lucent and Agere Optoelectronics Guardian shall each promptly notify
the other party in the event that any third party asserts by lawsuit, license
discussions or otherwise any invalidity claims as to any MEMS Patent or
Specialty Patent.
ARTICLE VII
VALUE OF RIGHTS EXCHANGED
The parties hereto acknowledge and agree that the licenses and rights
exchanged hereunder by the parties are of substantially equal value, and
accordingly, no payments or royalties shall be due from or to any party under
this Agreement.
ARTICLE VIII
TERMINATION
8.1 VOLUNTARY TERMINATION. By written notice to a party, another party may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by such granting party. Such notice shall specify the
effective date of such termination and shall clearly specify any affected
patent, invention, product or service.
8.2 SURVIVAL. (a) If a company ceases to be a Related Company of a party,
licenses and rights granted to the other parties hereunder with respect to
patents of such company on applications filed prior to the date of such
cessation shall not be affected by such cessation.
(b) Any voluntary termination of licenses and rights of a party under
Section 8.1 shall not affect such party's licenses and rights with respect to
any licensed product made or service furnished prior to such termination, and
shall not affect the licenses and rights granted to the other parties hereunder.
8.3 CHANGE OF CONTROL OF AGERE, OR CERTAIN ACQUISITIONS BY EITHER PARTY.
(a) In the event a party does not remain as a separate identifiable business
after a Change of Control, the patent licenses and patent-related rights granted
to that party hereunder shall automatically terminate. In no event will the
patent licenses and patent-related rights granted to a party hereunder be
extended to any Person involved in such Change of Control, without the prior
written consent of the party whose patents are being licensed.
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(b) In the event that either party (the "Acquiring Party") hereto acquires
any Person, then all patent licenses and patent-related rights granted to the
Acquiring Party hereunder (i) may be sublicensed to the Person, if the Person is
not merged into the Acquiring Party, or (ii) may be extended to all products and
services manufactured by the portion of the business previously operated by the
Person, if the Person is merged into the Acquiring Party, provided that, if the
non-Acquiring Party is Lucent, that Lucent is licensed under all patents owned
or controlled by the Person at the time of the acquisition for which
applications were filed prior to February 1, 2003, under the same terms and
conditions as apply to Agere Guardian's Patents, and provided that, if the
non-Acquiring Party is Agere, that Agere is licensed under all patents owned or
controlled by the Person at the time of the acquisition for which applications
were filed prior to February 1, 2003, under the same terms and conditions as
apply to Lucent GRL's Patents.
8.4 MATERIAL BREACH. No party may unilaterally terminate this Agreement,
or any licenses granted hereunder, for a material breach of this Agreement by
another party, provided, however, that each party shall retain any remedies for
such breach that it may be entitled to in a court of law or equity.
ARTICLE IX
MISCELLANEOUS PROVISIONS
9.1 AGREEMENT PREVAILS. This Agreement shall prevail in the event of
any conflicting terms or legends that may appear on any portion of the
Licensed Technology.
9.2 NOTHING CONSTRUED. Neither the execution of this Agreement nor
anything in it or in the Licensed Lucent Technology, Licensed Corporate
Technology and Licensed Agere Technology shall be construed as an obligation
upon any party or its Related Companies to furnish to any other party or its
Related Companies, any assistance of any kind whatsoever, or any information
other than the portion of Licensed Lucent Technology, Licensed Corporate
Technology and Licensed Agere Technology, as applicable, requested pursuant to
Section 2.1, or to revise, supplement or elaborate upon the Licensed Lucent
Technology, Licensed Corporate Technology and Licensed Agere Technology.
9.3 DISCLAIMER. NO PARTY OR ANY OF ITS RELATED COMPANIES MAKES ANY
REPRESENTATION, EXTENDS ANY WARRANTY OF ANY KIND, ASSUMES ANY RESPONSIBILITY OR
OBLIGATION WHATSOEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR
OTHERWISE, OTHER THAN THE RIGHTS AND WARRANTIES HEREIN EXPRESSLY GRANTED.
9.4 CONFIDENTIALITY. (a) Subject to Section 9.4(d), each of Lucent, GRL,
Agere, and Agere Guardian agrees to hold, and to cause its respective directors,
officers, employees, agents, accountants, counsel and other advisors and
representatives to hold, in strict confidence, with at least the same degree of
care that applies to such party's confidential and proprietary information, all
information of another party hereto that is either in its possession or
furnished by one party to the other or its respective directors,
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officers, employees, agents, accountants, counsel and other advisors and
representatives at any time pursuant to this Agreement or otherwise, and shall
not use any such information other than for the purposes of performing its
obligations under this Agreement, except, in each case, to the extent that such
information has been (i) in the public domain through no fault of such party or
any of their respective directors, officers, employees, agents, accountants,
counsel and other advisors and representatives, (ii) later lawfully acquired
from other sources by such party which sources are not themselves bound by a
confidentiality obligation, or (iii) independently generated without reference
to any proprietary or confidential information of the other party.
(b) Each party agrees not to release or disclose, or permit to be released
or disclosed, any such information to any other person, except its directors,
officers, employees, agents, accountants, counsel and other advisors and
representatives who need to know such information for purposes of performing
such party's obligations under this Agreement (who shall be advised of their
obligations hereunder with respect to such information), except as specified in
Section 2.5 or in compliance with Section 9.4(d) or with the prior written
consent of the other party.
(c) Without limiting the foregoing, when any information is no longer needed for
the purposes contemplated by this Agreement, each party will promptly after
request of a furnishing party either return to the furnishing party all
information in a tangible form (including all copies thereof and all notes,
extracts or summaries based thereon) or certify to the furnishing party that it
has destroyed such information (and such copies thereof and such notes, extracts
or summaries based thereon).
(d) In the event that any party (the "disclosing party") either determines
on the advice of its counsel that it is required to disclose any information
pursuant to applicable law or receives any demand under lawful process or from
any governmental authority to disclose or provide information of any other party
that is subject to the confidentiality provisions hereof, such disclosing party
shall notify the other party prior to disclosing or providing such information
and shall cooperate at the expense of the other party in seeking any reasonable
protective arrangements requested by such other party. Subject to the foregoing,
the person that received such request may thereafter disclose or provide
information to the extent required by such law (as so advised by counsel) or by
lawful process or such governmental authority.
9.5 COUNTERPARTS; ENTIRE AGREEMENT; CORPORATE POWER. (a) This
Agreement may be executed in one or more counterparts, all of which shall
be considered one and the same agreement.
(b) This Agreement and any exhibits, schedules and appendices hereto
contain the entire agreement between the parties with respect to the subject
matter hereof, supersede all previous agreements, negotiations, discussions,
writings, understandings, commitments and conversations with respect to such
subject matter and there are no agreements or understandings between the parties
other than those set forth or referred to herein.
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(c) Each party represents as follows:
(i) each has the requisite corporate or other power and authority and has
taken all corporate or other action necessary in order to execute, deliver and
perform this Agreement and to consummate the transactions contemplated hereby;
and
(ii) this Agreement has been duly executed and delivered by it and
constitutes a valid and binding agreement of it enforceable in accordance with
the terms thereof.
9.6 GOVERNING LAW. This Agreement shall be governed by and construed and
interpreted in accordance with the laws of the State of New York applicable to
contracts to be performed solely within the State of New York, exclusive of
Conflicts of Laws provisions, as to all matters, including matters of validity,
construction, effect, enforceability, performance and remedies.
9.7 ASSIGNABILITY; SUCCESSORS. (a) This Agreement shall be binding upon
and inure to the benefit of the parties hereto and their respective successors
and assigns; provided, however, that a party-grantee may not assign this
Agreement, in whole or in part, or its respective rights or obligations without
the prior written consent of the party-grantor except as provided in Section
9.7(b) below.
(b) By the provision of notice thereof in accordance with this Agreement,
a party may assign this Agreement and its rights and obligations hereunder,
either in whole or in part, to any entity that is, or that was immediately
preceding such assignment, a current Subsidiary, business unit, division or
other Related Company of such party, in each case that is the successor to the
business and assets of any such party that relates to this Agreement.
(c) If Lucent, Agere or any of their Related Companies, divests a portion
of its business and such divested business continues operation as a separately
identifiable business, then the licenses and rights granted hereunder to the
divesting party may be sublicensed to such divested separate business without
the consent of the other party, but only to the extent and for the time the
divested business functions as a separately identifiable business. With respect
to patent licenses, such sublicenses shall further be limited to 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. With respect to all other intellectual property licenses herein, such
sublicenses shall further be limited to products and services of the kind
provided or under development by the divested business prior to its divestiture
and not to any other category of products or services of any entity which
acquires the divested business. As used herein, the term "other category of
products or services" of an acquiring entity shall mean only those products and
services which are not of the kind or type provided by the divested business
prior to its divestiture. This Section 9.7(c) shall apply regardless of whether
the business is divested by a distribution to existing shareholders, a sale of
assets
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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, provided the acquisition of such business was not a sham for
the purpose of extending rights to the acquired (and then divested) business.
9.8 THIRD PARTY BENEFICIARIES. The provisions of this Agreement are solely
for the benefit of the parties and are not intended to confer upon any person
except the parties any rights or remedies hereunder, and there are no third
party beneficiaries of this Agreement, and this Agreement shall not provide any
third person with any remedy, claim, liability, reimbursement, claim of action
or other right in addition to those existing without reference to this
Agreement.
9.9 NOTICES. All notices or other communications under this Agreement
shall be in writing and shall be deemed to be duly given when (a) delivered in
person or (b) deposited in the United States mail or private express mail,
postage prepaid, addressed as follows:
If to Lucent, to: Lucent Technologies Inc.
184 Liberty Corner Road
Warren, NJ 07059
Attn: President-Intellectual Property
Business
If to Agere to: Agere Systems Inc.
2 Oak Way
Berkeley Heights, N.J. 07922-2747
Attn: Vice President-Law, Intellectual
Property
If to GRL, Lucent Guardian, Lucent Technologies GRL Corporation
Lucent Optical Networking Suite 105
Guardian, Lucent Wireless 14645 N.W. 77th Avenue
Guardian or Lucent Fiber Miami Lakes, Florida 33014
Guardian, to: Attn: Contract Administrator
Intellectual Property Organization
If to Agere Guardian or Agere Agere Systems Guardian Corp.
Optoelectronics Guardian, to: Suite 105
14645 N.W. 77th Avenue
Miami Lakes, Florida 33014
Attn: President
Any party may, by notice to the other party, change the address to which
such notices are to be given to such noticing party.
9.10 SEVERABILITY. If any provision of this Agreement or the application
thereof to any person or circumstance is determined by a court of competent
jurisdiction to be invalid, void or unenforceable, the remaining provisions
hereof, or the application of such
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provision to persons or circumstances or in jurisdictions other than those as to
which it has been held invalid or unenforceable, shall remain in full force and
effect and shall in no way be affected, impaired or invalidated thereby, so long
as the economic or legal substance of the transactions contemplated hereby or
thereby, as the case may be, is not affected in any manner adverse to any party.
Upon such determination, the parties shall negotiate in good faith in an effort
to agree upon such a suitable and equitable provision to effect the original
intent of the parties.
9.11 FORCE MAJEURE. Except with respect to payment obligations hereunder,
no party shall be deemed in default of this Agreement to the extent that any
delay or failure in the performance of its obligations under this Agreement
results from any cause beyond its reasonable control and without its fault or
negligence, such as acts of God, acts of civil or military authority, embargoes,
epidemics, war, riots, insurrections, fires, explosions, earthquakes, floods,
unusually severe weather conditions, labor problems or unavailability of parts
or raw materials, or, in the case of computer systems, any failure in electrical
or air conditioning equipment. In the event of any such excused delay, the time
for performance shall be extended for a period equal to the time lost by reason
of the delay.
9.12 PUBLICITY. Each of Lucent and Agere shall consult with each other
prior to issuing any press releases or otherwise making public statements with
respect to this Agreement or the transactions contemplated hereby. In addition,
neither party shall issue or release for publication any articles, advertising,
or publicity materials relating to Licensed Technology of the other party under
this Agreement or mentioning or implying the name, trademarks, logos, trade
name, service mark or other company identification of the other party or any of
its affiliates or any of its personnel without the prior written consent of the
other party.
9.13 HEADINGS. The article, section and paragraph headings contained in
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement.
9.14 WAIVERS OF DEFAULT. Waiver by any party of any default by the other
party of any provision of this Agreement shall not be deemed a waiver by the
waiving party of any subsequent or other default, nor shall it prejudice the
rights of the other party.
9.15 SPECIFIC PERFORMANCE. In the event of any actual or threatened
default in, or breach of, any of the terms, conditions and provisions of this
Agreement, the party or parties who are or are to be thereby aggrieved shall
have the right to specific performance and injunctive or other equitable relief
of its rights under this Agreement, in addition to any and all other rights and
remedies at law or in equity, and all such rights and remedies shall be
cumulative. The parties agree that the remedies at law for any breach or
threatened breach, including monetary damages, are inadequate compensation for
any loss and that any defense in any action for specific performance that a
remedy at law would be adequate is waived. Any requirements for the securing or
posting of any bond with such remedy are waived.
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9.16 AMENDMENTS. No provision of this Agreement shall be deemed waived,
amended, supplemented or modified by any party, unless such waiver, amendment,
supplement or modification is in writing and signed by the authorized
representative of the party against whom it is sought to enforce such waiver,
amendment, supplement or modification.
9.17 INTERPRETATION. Words in the singular shall be held to include the
plural and vice versa and words of one gender shall be held to include the other
genders as the context requires. The terms "hereof," "herein," and "herewith"
and words of similar import shall, unless otherwise stated, be construed to
refer to this Agreement as a whole (including all of the schedules, exhibits and
appendices hereto) and not to any particular provision of this Agreement.
Article, section, exhibit, schedule and appendix references are to the articles,
sections, exhibits, schedules and appendices to this Agreement unless otherwise
specified. The word "including" and words of similar import when used in this
Agreement shall mean "including, without limitation," unless the context
otherwise requires or unless otherwise specified. The word "or" shall not be
exclusive. Unless expressly stated to the contrary in this Agreement, all
references to "the date hereof," "the date of this Agreement," "hereby" and
"hereupon" and words of similar import shall all be references to the Effective
Date, regardless of any amendment or restatement hereof.
31
<PAGE> 39
IN WITNESS WHEREOF, the parties have caused this PATENT AND TECHNOLOGY
LICENSE AGREEMENT to be executed in four originals by their duly authorized
representatives as of the Effective Date.
LUCENT TECHNOLOGIES INC.
By: /s/ DANIEL P. MCCURDY
---------------------
Daniel P. McCurdy
President, Intellectual Property Business
LUCENT GRL CORPORATION
By: /s/ DANIEL P. MCCURDY
---------------------
Daniel P. McCurdy
Chairman
LUCENT TECHNOLOGIES GUARDIAN I CORP.
By: /s/ DANIEL P. MCCURDY
---------------------
Daniel P. McCurdy
Chairman
LUCENT TECHNOLOGIES OPTICAL NETWORKING
GUARDIAN CORP.
By: /s/ DANIEL P. MCCURDY
---------------------
Daniel P. McCurdy
Chairman
32
<PAGE> 40
LUCENT TECHNOLOGIES WIRELESS GUARDIAN
CORP.
By:/S/ DANIEL P. MCCURDY
__________________________
Daniel P. McCurdy
Chairman
LUCENT TECHNOLOGIES FIBER GUARDIAN CORP.
By: /S/ DANIEL P. MCCURDY
___________________________
Daniel P. McCurdy
Chairman
AGERE SYSTEMS INC.
By: /S/ GERARD A. DEBLASI
___________________________
Gerard A. deBlasi
Vice President
AGERE SYSTEMS GUARDIAN CORP.
By: /s/ FRED M. ROMANO
___________________________
Fred M. Romano
President
AGERE SYSTEMS OPTOELECTRONICS GUARDIAN
CORP.
By: /s/ FRED M. ROMANO
___________________________
Fred M. Romano
President
33