Non-Exclusive Limited Patent License Agreement - Instinet Global Holdings Inc. and Reuters Ltd.
NON-EXCLUSIVE LIMITED PATENT LICENSE AGREEMENT
This Agreement is effective this 2nd day of August, 2002, by and between
INSTINET GLOBAL HOLDINGS, INC., a Delaware corporation, with offices at 3 Times
Square, New York, NY 10036 ("Instinet") and REUTERS LIMITED, a company organized
under the laws of England and Wales, with offices at 85 Fleet Street, London
EC4P 4AJ, United Kingdom ("Reuters"). In consideration of the mutual covenants
and promises contained herein, and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereby
agree as follows:
Section 1.0 Recitals
1.1 Reuters owns the Licensed Patent.
1.2 Instinet has designed, developed and intends to sell, and will
continue to sell, a variety of Negotiated Matching Systems.
1.3 Instinet has requested a grant of license for the Licensed Product(s),
the term of said license to commence on the effective date of this
Agreement and to continue until the expiration of the Licensed Patent.
As an accommodation to Instinet, Reuters has agreed to provide the
license requested by Instinet, subject to all the terms and conditions
of this Agreement.
Section 2.0 Definitions
2.1 "Negotiated Matching System" means a system including functionalities
to identify counterparties to a transaction and to enable communication
between the counterparties to negotiate the terms of the transaction,
whether such system is implemented in computer hardware, computer
software, or other structures.
2.2 "Affiliate(s)" means any corporation, company, or other business entity
controlled by a party to this Agreement. For purposes of this
Agreement, control means direct or indirect beneficial ownership of
greater than fifty percent (50%) of the voting securities or greater
than fifty percent (50%) interest in the income of such corporation,
company, or other business entity.
2.3 "Current Affiliate(s)" means any Affiliate that is an Affiliate of a
party to this Agreement as of the effective date of this Agreement.
2.4 "After-Acquired Affiliate(s)" means any corporation, company, or other
business entity that is not an Affiliate of a party to this Agreement
as of the effective date of this Agreement, but becomes an Affiliate of
a party to this Agreement after the effective date of this Agreement.
2.5 "Licensed Product(s)" means any product constituting or otherwise
incorporating a Negotiated Matching System used or sold by or made by
or on behalf of Instinet or its Affiliates, including the Targeted
Orders Facility and Targeted Orders Plus.
2.6 "Licensed Patent(s)" means United States Patent Number 5,924,082,
entitled "Negotiated Matching System," granted on July 13, 1999, to
David L. Silverman et al.
Section 3.0 Non-Exclusive License Grant
3.1 Subject to the terms and conditions of this Agreement, Reuters grants
to Instinet a non-exclusive, non-transferable, worldwide, terminable
(subject to Section 7.2) license under the Licensed Patent(s) to make,
have made, use, import, offer to sell and/or sell, the Licensed
Product(s).
3.2 By this Agreement, no license is granted by Reuters to Instinet, either
expressly or by implication, estoppel, or otherwise (i) other than
under the Licensed Patent(s); (ii) with respect to any products other
than Licensed Product(s); or (iii) with respect to any products made
and sold by third parties incorporating source or object code from
Instinet or a Current Affiliate of Instinet.
3.3 The license granted herein includes a license of the same scope granted
to Instinet in Section 3.1 above to Instinet's Affiliates identified in
Appendix A, which may be amended by Instinet from time to time.
3.4 Each Affiliate licensed under this Agreement shall be bound by the
terms and conditions of this Agreement as if it were named herein in
the place of Instinet. Instinet represents to Reuters that it has the
power to bind each such Affiliate to the terms and conditions of this
Agreement. The license granted to an Affiliate shall terminate on the
date such Affiliate ceases to be an Affiliate.
3.5 Instinet and its Affiliate(s) may not sublicense third parties under
this Agreement except that Instinet may sublicense as follows:
3.5.1 Instinet and its Affiliate(s) may sublicense the rights under the
Licensed Patents set forth in Section 3.1 to their respective customers
for the limited purpose or permitting such customers to use the
Licensed Products; and
3.5.2 Instinet and its Affiliate(s) may sublicense the rights under the
Licensed Patents set forth in Section 3.1 to third parties solely for
the purpose of permitting such third parties to make and use Licensed
Products to be licensed by, sold or otherwise distributed by Instinet
or its Affiliates, including, without limitation to e-Xchange
Advantage Corporation ("eXA") for the purpose of permitting eXA to (i)
integrate Instinet's Targeted Orders technology (a Licensed Product)
with eXA's BlockLink technology to create Targeted Orders Plus (a
Licensed Product) and (ii) install, test, operate and, maintain,
support and modify such Licensed Products during the term of, and
otherwise fulfill its obligations under the Software License and
Development Services Agreement between Instinet and eXA. Instinet
agrees that any such sublicense shall be consistent with and subject
to the terms of this Agreement and that it shall be fully liable and
responsible to Reuters for compliance by its sublicensees with the
terms of this Agreement.
3.6 No right is granted to Instinet nor to Instinet's Affiliate(s) to
bring any legal action, in its own name, the name of its Affiliate(s),
or in the name of Reuters, for infringement of any Licensed Patent(s)
against any third party.
Section 4.0 Release
4.1 Subject to the conditions set forth in Section 4.2 below, Reuters
releases Instinet and its Current Affiliate(s) identified in Appendix A
from any and all claims of infringement of the Licensed Patent(s) with
respect to any Licensed Product(s) used or sold by Instinet or its
Current Affiliates(s) before the effective date of this Agreement, to
the extent such Licensed Product(s) would have been licensed hereunder
had they been designed, developed, used, or sold after the effective
date of this Agreement. This release shall not apply to an
After-Acquired Affiliate, although Reuters in its sole discretion may
grant such release. This release applies only to the Licensed
Patent(s), and shall not apply to any other patents owned or subject to
license by Reuters. The release set forth in this Section 4.0 is
granted exclusively to the named party identified on Page 1 of this
Agreement as Instinet and any Current Affiliate(s) identified in
Appendix A for the above-mentioned activities before the effective date
of this Agreement and is not transferable or assignable to any other
party.
4.2 If Instinet materially breaches or terminates this Agreement, then the
release shall apply only to Licensed Product(s) designed, developed
and/or sold by Instinet and its Current Affiliate(s) under the Licensed
Patent(s) prior to the date of such material breach, and Reuters
reserves the right to pursue Instinet and its Current Affiliate(s) for
claims of infringement of the Licensed Patent(s) with respect to any
Licensed Product(s) designed, developed and/or sold by Instinet or its
Current Affiliate(s) subsequent to the date of such material breach.
Additionally, Instinet shall not receive any credit toward any payments
owing to Reuters subsequent to Instinet's material breach or
termination of this Agreement for monies paid to Reuters under Section
5.0 hereof.
4.2.1 The foregoing provisions shall be subject to Instinet's right to cure
such material breach within thirty (30) days of Reuters's written
notice to Instinet of such breach.
Section 5.0 Taxes, Fees and other Payments
5.1 Instinet will pay to Reuters or to any relevant taxing authority,
regulatory or government agency, or such other third party, as
appropriate, any applicable sales, use, goods and services, value
added, income or other taxes, surcharges and fees, including any late
fees or penalty, that Reuters may incur or become liable for as a
result of this Agreement.
Section 6.0 Assignments
6.1 Instinet shall not assign (by operation of law or otherwise including,
but not limited to, the transfer of a substantial portion or all of
Instinet' s assets to a third party) any of its rights or privileges
hereunder without the prior written consent of Reuters. Notwithstanding
the foregoing, the release set forth in Section 4.0 above is granted
exclusively to the named party identified on Page 1 of this Agreement
as Instinet and any Current Affiliates identified in Appendix A for
activities released under such section before the effective date of
this Agreement and is not transferable or assignable to any other
party.
Section 7.0 Term of Agreement; Termination
7.1 Subject to Section 7.5 below, the term of this Agreement and the
license granted hereunder in Section 3.0 will be from the effective
date hereof until the expiration of the the Licensed Patent.
7.2 Reuters may terminate this Agreement if:
7.2.1 Instinet materially breaches or defaults under any term of
this Agreement, which breach or default is not cured within
thirty (30) days of written notice from Reuters; or
7.2.2 Instinet becomes insolvent or admits in writing its
inability to pay its debts as they mature or makes an
assignment for the benefit of creditors; or
7.2.3 Instinet files a petition under any foreign or United
States bankruptcy law; or
7.2.4 Instinet ceases to be an Affiliate of Reuters; however, in
the event that Instinet ceases to be an Affiliate of
Reuters, the licenses and rights granted in Section 3
herein shall remain in full force and effect with respect
to all uses of Licensed Products existing on or before the
date of such expiration or termination; or
7.2.5 the Licensed Products competes with any Reuters product,
including the family of product sold under the Dealing
product name.
The rights and remedies set forth in this section are not exclusive and
are in addition to any other legal or equitable rights and remedies
available to Reuters.
7.3 Subject to Section 7.2.4, if this Agreement or the license granted
hereunder is terminated under this Section 7.0 or assigned under
Section 6.0, the corresponding licenses granted to Affiliates of
Instinet under Section 3.3 and sublicenses of Instinet under Section
3.5 will likewise terminate, but no notices need be given by Reuters to
such Affiliates.
7.4 Instinet's obligations under all of the terms and conditions of this
Agreement which accrued prior to the date of expiration or termination
hereof, including but not limited to Instinet's obligations under
Section 5.0, shall survive any expiration or termination of this
Agreement. Such expiration or termination shall not affect any rights
of Reuters arising under this Agreement or at law or equity before such
expiration or termination.
Section 8.0 Payments, Notices and Other Communications
8.1 Any notice or other communication pursuant to this Agreement shall be
made by registered airmail (except that registered or certified mail
may be used where delivery is in the same country as mailing) and will
be effective upon receipt by the addressee. Such notice or
communication shall be mailed to the parties' respective addresses as
follows, or to such other address as either party shall provide by
notice given in accordance herewith:
In the case of Reuters:
Reuters Limited
85 Fleet Street
London EC4P 4AJ
United Kingdom
In the case of Instinet:
Instinet Global Holdings, Inc.
Office of the General Counsel
3 Times Square - 10th Floor
New York, NY 10036
Section 9.0 Applicable Law; Venue; Jurisdiction
9.1 This Agreement shall be construed, and the legal relations between the
parties shall be determined, in accordance with the substantive laws of
the State of New York (without giving effect to the choice of law
provisions thereof) and, as applicable, the laws of the United States
of America.
Section 10.0 Miscellaneous
10.1 Nothing contained in this Agreement shall be construed as:
10.1.1 requiring the filing of any patent application, the
securing of any patents or the maintenance of any patents;
or
10.1.2 a warranty or representation by Reuters as to the validity
or scope of any Licensed Patent; or
10.1.3 a warranty or representation that the manufacture, use, or
sale of any Licensed Product is free from infringement of any
patents (except for the Licensed Patent) or other rights of
third parties; or
10.1.4 an obligation upon Reuters to furnish any manufacturing or
technical information, or any information concerning other
licensees; or
10.1.5 an obligation upon Reuters to determine the applicability
of any Licensed Patent(s) to any of Instinet's products; or
10.1.6 a license with respect to any act which would otherwise
constitute inducement of infringement or contributory
infringement under United States patent law or its equivalent
under any law foreign to the United States; or
10.1.7 conferring any right to use, in advertising, publicity, or
otherwise, any name, trade name, trademark, service mark,
symbol or any other identification or any contraction,
abbreviation or simulation thereof; or conferring any rights
by implication, estoppel or otherwise, to or under copyrights
with respect to any computer software under any present system
of statutory protection or one hereinafter enacted in any
country or countries, wherein the copying of such computer
software is a requisite of infringement under such system; or
10.1.8 an obligation to bring or prosecute actions or suits
against third parties for infringement of any patent; or
10.1.10 to convey any rights or proprietary interest in the Licensed
Patent(s) to Instinet or its Affiliate(s), other than the
specific license granted hereunder.
10.2 If Instinet owns (now or in the future) any patent for a Negotiated
Matching System or substantially similar subject matter, Instinet
agrees to grant Reuters, for the benefit of Reuters Group PLC and its
Affiliates, a license to such patent at such terms and conditions no
worse than the terms and conditions of this Agreement.
10.3 The waiver by either party of a breach or default of any provision of
this Agreement by the other party shall not be construed as a waiver of
any succeeding breach of the same or any other provision, nor shall any
delay or omission on the part of either party to exercise or avail
itself of any right, power or privilege that it has or may have
hereunder operate as a waiver of any right, power or privilege of such
party.
10.4 Both parties intend to make this Agreement binding only to the extent
that it may be lawfully done under existing applicable law as
identified in Section 9.0. If any sentence, paragraph, clause or
combination of the same is in violation of any applicable law, that
portion which is in violation shall be severed from this Agreement and
the remainder of this Agreement shall remain binding upon the parties
hereto, except that no release or license is granted, expressly or by
implication, unless taxes and fees are paid under Section 5.0.
10.5 Each party represents and warrants that it has the full right and power
to enter into this Agreement and that there are no outstanding
agreements, assignments, or encumbrances to which the representing
party is bound which may restrict, or prohibit entry into, or
performance under, this Agreement. Reuters further represents and
warrants that it has the full power to grant the license and release
set forth in Sections 3.0 and 4.0. Neither party makes any other
representations or warranties, express or implied, other than the
representations set forth in Section 3.4 regarding Instinet Affiliates.
10.6 The headings of the several sections are inserted for convenience of
reference only and are not intended to affect the meaning or
interpretation of this Agreement.
10.7 This Agreement may be executed in any number of copies, but all of such
counterparts together shall constitute one and the same Agreement. The
parties also agree to be legally bound hereby even though the signature
pages initially exchanged may contain only facsimile-transmitted
signatures, subject to their post-signing exchange of original
signature pages as soon as practicable.
10.8 The parties acknowledge that this instrument sets forth the entire
agreement and understanding of the parties hereto relating solely to
the subject matter hereof and supersedes all previous communications,
representations and understandings, either oral or written, between the
parties relating to the subject matter hereof, except prior written
agreements signed by both parties, and shall not be subject to any
change or modification except by the signing of a written instrument by
or on behalf of both parties.
10.9 All references in this Agreement to the United States shall include its
territories and possessions, the District of Columbia, and the
Commonwealth of Puerto Rico.
10.10 Each party acknowledges that it has executed this Agreement with its
full knowledge and understanding of its content. This Agreement shall
be construed as if drafted by both Instinet and Reuters and shall not
be strictly construed against either party.
Section 13.0 Confidentiality
13.1 The parties and their agents agree that they will treat as confidential
the contents of this Agreement, shall take all reasonable precautions
to keep them confidential and shall not disclose to others the contents
of this Agreement except as required by law or in order to enforce
their respective rights hereunder; provided, however, that this
obligation of confidentiality does not preclude either party from
divulging to others only the fact that this License Agreement exists.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly signed as
of the dates written below, to be effective as of the date first above written.
INSTINET GLOBAL HOLDINGS INC.
By:
Witness: Title:
Date:
-----------------------------
REUTERS, LTD.
By:
Witness: Title:
Date:
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APPENDIX A
Instinet's Affiliates as of the effective date of this Agreement are: