Asset Purchase Agreement - Auspex Systems Inc. and Network Appliance Inc.
ASSET PURCHASE AGREEMENT
This Asset Purchase Agreement (hereinafter "Agreement"), is entered into
as of June 20, 2003 (the "Effective Date"), by and between Auspex Systems, Inc.,
a Chapter 11 debtor in possession, United States Bankruptcy Court for the
Northern District of California (the "Bankruptcy Court"), Case No. 03-52596-mml
1 (hereinafter "Seller"), and Network Appliance, Inc., a Delaware corporation
(hereinafter "Purchaser").
Whereas Seller is the owner of full right and title (both legal and
equitable) to certain inventions, patents, and applications, defined herein as
"Seller Patents"; and
Whereas Purchaser is desirous of acquiring the entire domestic and foreign
right title and interest in and to such Seller Patents.
Now, therefore, Seller and Purchaser hereby covenant and agree as follows:
1. DEFINITIONS
1.1. "Seller Patents" shall mean those patents and applications
identified as such in Exhibit A and (i) all U.S. and foreign patents
and patent applications that claim priority to such identified
patents and applications and all U.S. and foreign patents and
applications to which such identified patents and applications
relate or claim priority, (ii) any continuations,
continuations-in-part, divisions, reissue applications, extensions,
Patent Cooperation Treaty applications, or derivatives of any of the
foregoing, both foreign and domestic, and (iii) all patentable
inventions, in the U.S. and every foreign country, described or
embodied in any of the foregoing.
1.2. "Prosecution History Files" shall mean all files, documents and
tangible things, as those terms have been interpreted pursuant to
Federal Rule of Civil Procedure 34, constituting, comprising or
relating to investigation, evaluation, prosecution, filing and
registration of the Seller Patents, and specifically includes e-mail
messages and other electronic or computer stored or generated data.
2. TRANSFER OF RIGHTS
2.1. For good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, Seller hereby agrees to assign and
transfer to Purchaser and its representatives, successors and
assigns its full and exclusive right, title and interest in and to
all Seller Patents. Seller also hereby agrees to assign and transfer
to Purchaser and its representatives, successors and assigns their
full and exclusive right, title and interest in and to all
protectable (e.g., as by patenting) inventions, in the U.S. and
every foreign country, described or embodied in the Seller Patents.
2.2. Seller hereby agrees to assign and transfer to Purchaser and its
representatives, successors and assigns the full and exclusive right
to sue upon and otherwise enforce the Seller Patents and to recover
all past damages and other potential relief arising from
infringement of the Seller Patents assigned by this Agreement.
2.3. The closing (the "Closing") of the assignment and transfer of the
Seller Patents and other rights and assets described in Section 2.1
and 2.2 (the "Purchased Assets") shall take
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place on the second business day following the satisfaction of the
conditions set forth in Sections 2.4 through 2.7 and Section 5.19 of
this Agreement or at such other place and time as Seller and
Purchaser may mutually agree.
2.4. For the purpose of recordation and in accordance with the transfers
herein, at the Closing, Seller shall execute the assignment document
attached as Exhibit B listing the Seller Patents. Upon the written
request of the Buyer and without additional charge or at the Buyer's
expense, the Seller shall execute and deliver to the Buyer all such
additional instruments of transfer, conveyance, endorsement and
assignment (in a form satisfactory to the Buyer) as shall be
necessary to transfer (or perfect or record the transfer of) the
Seller Patents to Buyer including separate assignments for each
Seller Patent.
2.5. Effective upon the Closing, Seller authorizes and requests the
Commissioner of Patents to issue U.S. patents to Purchaser, its
representatives, successors and assigns relating to the inventions
and applications conveyed by this Agreement.
2.6. Effective upon the Closing, Seller conveys to Purchaser, its
representatives, successors and assigns, the right to make
applications on their own behalf for protection of the inventions
conveyed herein in the U.S. and foreign countries and to claim,
under United States law, the Patent Cooperation Treaty, the
International Convention and/or other international arrangements for
any such application, priority to any earlier application or patent.
2.7. Within 30 days of the Closing, Seller shall i) provide a complete
and accurate docket identifying the relevant dates when any action
or response is due within the next six (6) months in any US and
foreign patent offices with respect to the Seller Patents, and ii)
transfer, at Purchaser's expense, all Prosecution History Files and
related files maintained by Seller outside counsel and in-house
counsel for the Seller Patents to Purchaser.
3. NO IMPLIED OR EXPRESS LICENSES
3.1. Except for the Limited Use License (as defined below) set forth as
Exhibit C hereto, Purchaser does not grant to Seller or any other
entity any implied or express licenses or rights whatsoever under
this Agreement. Purchaser does not grant to Seller or any other
entity any implied or express licenses or rights with respect to any
patents other than the Seller Patents. No licenses or rights are
granted to Seller or any other entity regarding subject matter not
invented by employees, contractors or other agents of Seller.
4. PAYMENT
4.1. As consideration for the assignment of the Seller Patents and other
rights granted by Seller herein, Purchaser shall pay to Seller on or
prior to the Closing, the total sum of eight million nine hundred
seventy-five thousand U.S. Dollars ($8,975,000) (hereinafter
referred to as the "Purchase Price"). The assignment and license
provisions set forth herein are contingent upon the payment of the
Purchase Price to Seller on or prior to Closing.
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4.2. Payment under Paragraph 4.1 shall be made by electronic funds
transfer. Such payment shall be deemed to be made on the date
credited to the following account:
Pay to: City National Bank
150 California Street
San Francisco, CA 94111
Routing & Transit #: 1220-1606-6
For Credit Of: Cooley Godward LLP FBO Auspex Systems,
Inc.
Credit Account #: 432-654869
(Clearly indicate the originator (Purchaser's Name) and the
beneficiary (Auspex Systems, Inc.)
5. COVENANTS AND OTHER PROVISIONS
5.1. Seller represents and warrants that (a) it has the right to assign
the Purchased Assets, and (b) it is conveying through this Agreement
its undivided right, title and interest in and to the Purchased
Assets and that, to its knowledge, no other party has any claim of
ownership to the Purchased Assets, except as explicitly provided for
herein.
5.2. Seller represents and warrants that no agreements with third parties
under any of the Seller Patents prevent Seller from entering into
this Agreement. Seller further represents and warrants that no
entities have licenses or rights under 11 U.S.C. Section 365(n) with
respect to the Seller Patents.
5.3. Seller represents and warrants that, to its knowledge it has not
taken, and will not take, any action materially adversely affecting
the validity, enforceability, or issuance of the Seller Patents.
5.4. Seller represents and warrants that, to its knowledge, all of the
domestic patent applications listed in Exhibit A are pending in the
United States Patent and Trademark Office and that none of such
applications have been abandoned.
5.5. Seller represents and warrants that except as set forth on Schedule
5.5, no procedures are necessary and no payment of filing,
examination or maintenance fees are required to be paid on or prior
to July 30, 2003 with respect to any issued patents or pending
patent applications included in the Seller Patents to maintain their
compliance with formal legal requirements for filing, issuance and
maintenance.
5.6. Seller represents and warrants that none of the Seller Patents set
forth on Exhibit A is involved in any interference or opposition
proceeding, and to Seller's, knowledge, no such proceeding is being
threatened with respect to any such Seller Patents.
5.7. Seller represents and warrants that subject to appropriate order of
the Bankruptcy Court, it is able to convey the Seller Patents free
and clear of any liens, encumbrances, security interests, or other
claims to the fullest extent of the Bankruptcy Court's authority to
so order, except for the Limited Use License noted in this
Agreement.
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5.8. Seller shall pay all transfer taxes imposed on the sale of the
Purchased Assets, including all sales, gross receipts, excise and
gross income taxes.
5.9. Subject to the authority and jurisdiction of the Bankruptcy Court
and except as is consistent with the applicable orders of the
Bankruptcy Court with respect to the procedures relating to the sale
of its assets, Seller covenants and agrees that it shall not execute
any writing or do any act whatsoever conflicting with the terms of
this Agreement, and that, following the Closing, Seller will at any
time upon request, without further or additional consideration, but
at the expense of Purchaser, execute such additional assignments or
other writings and perform such additional acts as Purchaser may
deem reasonably necessary to perfect Purchaser's ownership of the
Purchased Assets. Seller further covenants and agrees, at
Purchaser's expense, to render all reasonably necessary assistance
following the Closing in making application for, prosecuting in any
patent office internationally, and obtaining original, continuation,
continuation-in-part, divisional, reissued, reexamined, and National
phase patents of the U.S. or of any and all foreign countries on the
inventions assigned herein, and in enforcing any rights or choses in
action accruing as a result of the rights assigned herein, and by
executing statements and other affidavits, it being understood that
the foregoing covenant and agreement shall bind, and inure to the
benefit of, the assigns and representatives of all parties hereto.
5.10. At the Closing, Purchaser agrees to execute and deliver to such
party as may be designated by Seller, a limited use license in the
form set forth as Exhibit C (the "Limited Use License").
5.11. This Agreement and all matters relating to this Agreement shall be
construed and controlled by the laws of the State of California. If
any legal proceeding or other legal action relating to this
Agreement is brought or otherwise initiated by the parties to this
Agreement, the venue therefore will be the Bankruptcy court.
Purchaser and Seller hereby expressly and irrevocably consent and
submit to the jurisdiction of the Bankruptcy Court.
5.12. Except as otherwise provided in the Agreement, the parties shall pay
their respective expenses incurred in connection with the
preparation, execution, and delivery of this Agreement and the
consummation of the transactions contemplated hereby.
5.13. All notices, requests, demands, and other communications hereunder
shall be deemed to have been duly given on the day they are (i)
deposited in the U.S. mail, postage prepaid, certified or
registered, return receipt requested; or (ii) sent by air express
courier, charges prepaid, and addressed as follows:
5.13.1. If to Purchaser: Network Appliance, Inc., 495 East Java
Drive, Sunnyvale, CA 94089 Attention: Gary Ross, Esq.
5.13.2. If to Seller: Auspex Systems, Inc., c/o J. Michael
Kelly, Cooley Godward LLP One Maritime Plaza, 20th
Floor, San Francisco, CA 94111.
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5.13.3. A copy to Daren Brinkman, Esq., 4333 Park Terrace St.,
Suite 205, Westlake Village, CA 91361.
5.13.4. Such addresses may be changed, from time to time, by
means of a written notice delivered by the party seeking
to change such address in the manner provided for in
this paragraph.
5.14. This Agreement shall be binding upon and inure to the benefit of the
parties and their respective successors and assigns.
5.15. This Agreement may be terminated only by mutual consent of the
parties or by either party prior to the Closing upon approval by the
Bankruptcy Court of a transaction or series of transactions
involving a sale, transfer or assignment of all or substantially all
the Purchased Assets to a party other than Purchaser. In the event
that this Agreement shall be terminated pursuant to this Section
5.15, all further obligations of the parties under this Agreement
shall terminate without further liability or obligation of any party
hereunder; provided, that the parties will remain bound by the
provisions of that certain confidentiality agreement dated May 8,
2003 by and between the parties.
5.16. The invalidity or unenforceability of any term or provision of this
Agreement or the application of such term or provision to any person
or circumstance shall not impair or affect the remainder of this
Agreement or its application to other persons and circumstances, and
the remaining terms and provisions shall remain in full force and
effect.
5.17. This Agreement constitutes the entire agreement between the parties
and supersedes all prior agreements and understandings, oral and
written, among the undersigned with respect to the subject matter
hereof.
5.18. None of Seller's representations, warranties and pre-closing
covenants contained in this Agreement or in any other agreement,
document or certificate delivered pursuant to this Agreement shall
survive the Closing. Notwithstanding any provision hereof to the
contrary, Seller's undertakings set forth in the second sentence of
Section 2.4, Section 2.7 (ii), Section 5.8 and Section 5.9 shall
continue in full force and effect following the Closing. Neither
Seller nor any of its officers, directors, representatives,
employees, advisors or agents shall have any liability to Purchaser
or any other party after the Closing for any breach thereof.
5.19. The Closing and the transactions contemplated herein are and shall
be contingent upon (i) the issuance by the Bankruptcy Court of an
order, in a form reasonably satisfactory to Purchaser, approving the
transactions provided for herein free and clear of liens and
encumbrances to the fullest extent of the Bankruptcy Court's
authority to so order (the "Sale Order"); (ii) execution and
delivery of the documents and other instruments required to be
delivered by Purchaser and Seller on or prior to Closing pursuant to
this Agreement; and (iii) receipt by Seller of the Purchase Price.
The Sale Order shall contain, among other things, a finding that the
sale of the Purchased Assets to Purchaser is in good faith within
the meaning of Bankruptcy Code Section 363(m).
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In witness whereof, the parties hereto have caused this agreement to be
Trade and executed by duly authorized officers as of the dates indicated below.
Agreed to: Agreed to:
AUSPEX SYSTEMS, INC. NETWORK APPLIANCE, INC.
By: /s/ Peter R. Simpson By:
--------------------- ---------------------
Name: Peter R. Simpson Name:
------------------- -------------------
Title: CFO Title:
------------------ ------------------
Date: 6/19/2003 Date:
------------------- -------------------
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In witness whereof, the parties hereto have caused this agreement to be
made and executed by duly authorized officers as of the dates indicated below.
Agreed to: Agreed to:
AUSPEX SYSTEMS, INC. NETWORK APPLIANCE, INC.
By: By: /s/ Steven Gomo
--------------------- ---------------------
Name: Name: Steven Gomo
------------------- -------------------
Title: Title: Sr. VP and CFO
------------------ ------------------
Date: Date: 6/19/2003
------------------- -------------------
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EXHIBIT A TO ASSET PURCHASE AGREEMENT
All U.S. and foreign patents and patent applications currently assigned to
Seller, under an obligation to assign to Seller, or in which Seller has an
ownership interest, including specifically the following identified patents and
patent applications:
SELECT SELLER U.S. AND FOREIGN PATENTS:
TITLE PATENT NUMBER STATUS COUNTRY/REGION
----- ------------- ------ --------------
Bridge for Direct Data
Storage Device Access 5,941,969 Issued US
Bridge for Direct Data
Storage Device Access 6,253,271 Issued US
Processing System with
Dynamically Allocatable
Buffer Memory 6,081,883 Issued US
Characterization of Data
Access Using File System 6,442,682 Issued US
Intelligent Virtual Volume
Access 6,389,432 Issued US
Method an Apparatus for
Using Intercepted Operator
Messages to Control
Robotics 5,465,329 Issued US
System and Method for
Reading and Writing Disks
Formatted for an Operating
System Foreign to Host
Computer 5,537,592 Issued US
Parallel I/O Network File
Server Architecture 5,163,131 Issued US
Parallel I/O Network File
Server Architecture 647414 Issued Australia
Parallel I/O Network File
Server Architecture 670376 Issued Australia
Parallel I/O Network File
Server Architecture 0490973 Issued European
Parallel I/O Network File
Server Architecture 0490973 Issued UK
Parallel I/O Network File
Server Architecture 1011772 Issued Hong Kong
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Parallel I/O Network File
Server Architecture 201574 Issued South Korea
Parallel I/O Network File
Server Architecture 95447 Issued Israel
Parallel I/O Network File
Server Architecture 116288 Issued Israel
Parallel I/O Network File
Server Architecture 107646 Issued Israel
Parallel I/O Network File
Server Architecture 107645 Issued Israel
Parallel I/O Network File
Server Architecture 107644 Issued Israel
Parallel I/O Network File
Server Architecture 5,355,435 Issued US
Parallel I/O Network File
Server Architecture 5,802,366 Issued US
Parallel I/O Network File
Server Architecture 5,931,918 Issued US
Multiple Facility Operating
System Architecture 5,485,579 Issued US
Multiple Facility Operating
System Architecture 6,065,037 Issued US
Multiple Facility Operating
System Architecture 201772 Issued South Korea
Multiple Facility Operating
System Architecture 2945757 Issued Japan
Multiple Facility Operating
System Architecture 95449 Issued Israel
Multiple Facility Operating
System Architecture 1014064 Issued Hong Kong
Multiple Facility Operating
System Architecture 0490980 Issued European
Multiple Facility Operating
System Architecture 2,066,566 Issued Canada
Multiple Facility Operating
System Architecture 651321 Issued Australia
Multiple Facility Operating
System Architecture 0490980 Issued UK
8.
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Fault Tolerant NFS Server
System and Mirroring
Protocol 5,513,314 Issued US
High Performance Non-
Volatile RAM Protected
Write Cache Accelerator
System Employing DMA
and Data Transferring
Scheme (as amended) 5,701,516 Issued US
High-Speed, Flexible
Source/Destination Data
Burst Direct Memory Access
Controller 5,175,825 Issued US
High-Speed, Flexible
Source/Destination Data
Burst Direct Memory Access
Controller 95445 Issued Israel
Bus Locking FIFIO Multi-
Processing Communication
System 95448 Issued Israel
Image File Storage and
Retrieval System 5,761,655 Issued US
Enhanced VMEbus protocol
utilizing pseudosynchronous
handshaking and block
mode data transfer 5,388,231 Issued US
Method for transmitting
commands excluded from a Issued and
predefined command set 5,379,389 Lapsed/Abandoned US
System and method for
performing a multi-file Issued and
transfer operation 5,053,945 Lapsed/Abandoned US
SELECT SELLER U.S. AND FOREIGN APPLICATIONS:
Loosely Coupled-Multi Processor
Server 87120169 Pending Taiwan
Coherent Device to Device Data
Replication 09/375,819 Pending US
Intelligent Virtual Machines 10/068,352 Pending US
Microkernel for Real Time
Applications 09/408,149 Pending US
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Parallel I/O Network File Server
Architecture 2066443 Allowed Canada
Multiple Facility Operating System
Architecture 2,358,807 Pending Canada
Fault Tolerant NFS Server
System and Mirroring Protocol 8-523008 Published Japan
Fault Tolerant NFS Server
System and Mirroring Protocol 98103865.9 Published Hong Kong
Fault Tolerant NFS Server
System and Mirroring Protocol 96903668.0 Published European
Fault Tolerant NFS Server
System and Mirroring Protocol 2,211,654 Pending Canada
High Availability Cluster Virtual
Server System 09/911,902 Published US
High Availability Cluster Virtual
Server System WO US02/23417 Published WIPO
Active File Change Notification WO US03/00704 Pending WIPO
Active File Change Notification 10/341,811 Pending US
Internet Cache 09/324,801 Pending US
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EXHIBIT B TO ASSET PURCHASE AGREEMENT
ASSIGNMENT
WHEREAS, AUSPEX SYSTEMS, INC., a Delaware corporation, (hereinafter
referred to as "Assignor") owns all right, title and interest in and to certain
patents and patent applications identified in Exhibit A attached hereto; and
WHEREAS, NETWORK APPLIANCE, INC., a Delaware corporation, (hereinafter
referred to as "Assignee"), is desirous of acquiring the entire domestic and
foreign right, title, and interest in and under the Intellectual Property (as
defined below).
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Assignor assigns and transfers to
the Assignee and the Assignee's legal representatives, successors and assigns,
pursuant to the terms of a concurrently executed Asset Purchase Agreement, its
full and exclusive right, title and interest to those patents and applications
identified as such in Exhibit A hereto, and (i) all U.S. and foreign patents and
patent applications that claim priority to such identified patents and
applications and all U.S. and foreign patents and applications to which such
identified patents and applications relate or claim priority, (ii) any
provisionals, continuations, continuations-in-part, divisions, reissue
applications, extensions, Patent Cooperation Treaty applications, or derivatives
of any of the foregoing, both foreign and domestic, and (iii) all patentable
inventions, in the U.S. and every foreign country, described or embodied in any
of the foregoing, (the "Intellectual Property") and does hereby authorize and
request the Commissioner of Patents to issue U.S. patents to the above-mentioned
Assignee in accordance with the terms of this assignment document. Such full and
exclusive rights shall include, without limitation, the right to sue upon and
otherwise enforce the Intellectual Property and to recover all past damages and
other potential relief arising from infringement of the Intellectual Property
assigned by this Agreement.
ASSIGNOR HEREBY AUTHORIZES the Assignee to insert in Exhibit A to this
assignment document the filing date and application number of any application if
the date and number are unavailable at the time this document is executed.
UPON SAID CONSIDERATION, Assignor conveys to the Assignee the right to
make application in its own behalf for protection of the Intellectual Property
in the U.S. and countries foreign to the U.S. and to claim under the Patent
Cooperation Treaty, the International Convention and/or other international
arrangement for any such application the date of any earlier U.S. application
(or any other application on the invention) to gain priority with respect to
other applications.
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IN WITNESS WHEREOF, Assignor has caused one of its officers to hereunder
set his hand on the date shown below and Assignee has caused one of its officers
to hereunder set his hand on the date shown below to signify its acceptance of
this Assignment.
AUSPEX SYSTEMS, INC.
By:
-------------------------------------
Name:
-----------------------------------
Title:
----------------------------------
Date: , 2003
-----------------------------
STATE OF )
--------------------------------
)SS:
COUNTY OF )
-------------------------------
On this day of before me, a Notary
-------- -------------, ---------,
Public in and for said county, appeared , who is personally known to
me to be the same person whose name is subscribed to the foregoing assignment
document, and acknowledged that he/she signed and delivered the document as
his/her free and voluntary act for the uses and purposes therein set forth.
----------------------------------------------
Notary Public
{SEAL}
My Commission Expires:
-------------------------
12.
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ACCEPTANCE BY ASSIGNEE:
NETWORK APPLIANCE, INC.
By:
-------------------------------------
Name:
-----------------------------------
Title:
----------------------------------
Date:
-----------------------------------
STATE OF )
--------------------------------
)SS:
COUNTY OF )
-------------------------------
On this day of before me, a Notary
-------- -------------, ---------,
Public in and for said county, appeared , who is personally known to
me to be the same person whose name is subscribed to the foregoing assignment
document, and acknowledged that he/she signed and delivered the document as
his/her free and voluntary act for the uses and purposes therein set forth.
----------------------------------------------
Notary Public
{SEAL}
My Commission Expires:
-------------------------
13.
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EXHIBIT C
LIMITED USE LICENSE
FORM OF PATENT LICENSE AGREEMENT
THIS PATENT LICENSE AGREEMENT ("Agreement") is entered into, subject to
Bankruptcy Court approval, as of June , 2003 ("Effective Date") between the
licensor named below ("Licensor") and the licensee named below ("Licensee").
Licensor and Licensee may be referred to herein individually as a "party" and
collectively as the "parties."
RECITALS
A. Auspex Systems, Inc. ("Auspex") is debtor in possession in a chapter 11
bankruptcy case pending in the Bankruptcy Court for the Northern District of
California administered under Case No. 03-52596-MM11.
B. Auspex has, prior the Effective Date, been a provider of network
storage products. Its products include hardware devices that operate in
conjunction with software provided by Auspex or its licensors. Auspex has, prior
to the Effective Date, provided a maintenance and repair service to users of its
products (as defined below, the "Maintenance Service").
C. Auspex has sold to Licensor certain of Auspex's patents (as defined
below, "Licensed Patents").
D. Auspex has sold to Licensee certain other assets relating to its
Maintenance Service. The provision of such Maintenance Service by Licensee may,
in some cases, infringe one or more of the Licensed Patents.
E. Licensee desires to receive, and Licensor desires to grant, a
perpetual, royalty-free license under the Licensed Patents to permit Licensee to
provide Maintenance Services.
AGREEMENT
Now, therefore, in consideration of the mutual covenants and agreements
contained herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties to this Agreement,
intending to be legally bound, hereby agree as follows:
1. DEFINITIONS.
Capitalized terms used in this Agreement are defined in this Section 1 or
in the Section where they are first used.
1.1 "MAINTENANCE SERVICE" means the service of repairing, maintaining or
refurbishing Existing Installed Products, including the provision of
spare parts for same and the correction of Errors in the software
that accompanies or is embedded in Existing Installed Products.
1.2 "ERRORS" means an error or other nonconformity in software that
causes the software, or the hardware product which the software
operates, to malfunction or otherwise
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deviate from its published performance specifications or to be
incompatible with the network, operating system or other environment
in which it is deployed.
1.3 "EXISTING INSTALLED PRODUCTS" means network storage products,
including accompanying or embedded software, manufactured or
distributed by Auspex before the Effective Date.
1.4 "LICENSED PATENTS" means those patents and applications
identified as such in Schedule 1 hereto, including (i) all U.S. and
foreign patents and patent applications that claim priority to such
identified patents and applications and all U.S. and foreign patents
and applications to which such identified patents and applications
relate or claim priority, and (ii) any provisionals, continuations,
continuations-in-part, divisions, reissue applications, extensions,
Patent Cooperation Treaty applications, or derivatives of any of the
foregoing, both foreign and domestic.
2. RIGHTS GRANTED.
2.1 GRANT. Subject to the terms and conditions of this Agreement,
Licensor hereby grants to Licensee a non-exclusive, royalty-free,
limited license under the Licensed Patents to: (a) make, have made,
use, sell, offer for sale, import, compile, modify, reproduce and
distribute software accompanying or embedded in Existing Installed
Products for the sole purpose of correcting Errors in such software,
and (b) otherwise provide Maintenance Services with respect to
Existing Installed Products.
2.2 RESTRICTIONS. The license granted hereunder is made only to the
extent of Licensor's rights in the Licensed Patents. To the extent
that any Licensed Patents are subject to rights of third parties,
Licensee must separately procure a license from such third parties.
2.3 LICENSOR'S RIGHTS. Licensee acknowledges that, subject to the
license grant in Section 2.1, Licensor retains all right, title and
interest in and to the Licensed Patents. There are no implied
licenses under this Agreement, and any rights not expressly granted
to Licensee hereunder are reserved by Licensor, including the right
to grant third parties non exclusive licenses under the Licensed
Patents.
2.4 SUBLICENSING. Licensee may sublicense the rights granted to it
under this Section 2, subject to the teens and conditions of this
Agreement.
3. OTHER MATTERS.
3.1 DISCLOSURE. Licensor has no obligation hereunder to make any
disclosures to Licensee of technical information.
3.2 Services. Licensor has no obligation hereunder to provide
technical support, maintenance, training or any other services of
any kind to Licensee.
3.3 IMPROVEMENTS. As between the parties, Licensee will own any
derivative works or improvements that it makes in respect to the
subject matter of the Licensed Patents ("Improvements") but such
Improvements will remain subject at all times to the Licensed
Patents so that, apart from the rights granted under Section 2.1,
Licensee will have no right to make, use, sell or import
Improvements that embody underlying subject matter protected
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by the Licensed Patents. Licensee will not be required to disclose
Improvements to Licensor.
4. CONFIDENTIALITY OF AGREEMENT.
This Agreement will be confidential. Neither party shall disclose any
terms of this Agreement to anyone other than its attorneys, accountants, and
other professional advisors under a duty of confidentiality except: (a) to the
minimum extent required by law or regulation including any filing required under
the Securities Act of 1933, as amended, or the Securities Exchange Act of 1934,
as amended, or the regulations promulgated thereunder or under the rules of any
selfregulatory body to which such party is subject; (b) pursuant to a mutually
agreeable press release; or (c) to prospective investors, lenders or purchasers
in connection with a proposed merger, financing, or sale of such party's
business; provided that any third party to whom the terms of this Agreement are
to be disclosed agrees in writing to keep such terms confidential.
5. WARRANTY DISCLAIMER.
THE LICENSED PATENTS ARE PROVIDED "AS IS" WITHOUT WARRANTY OF ANY KIND,
EITHER EXPRESS OR IMPLIED. LICENSOR EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES,
EITHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES
OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, NON-INFRINGEMENT OR
QUIET ENJOYMENT.
6. LIMITATION OF LIABILITY.
TO THE EXTENT PERMITTED BY APPLICABLE LAW, IN NO EVENT SHALL LICENSOR BE
LIABLE FOR ANY CONSEQUENTIAL, INCIDENTAL, SPECIAL OR INDIRECT DAMAGES OF ANY
KIND, INCLUDING, BUT NOT LIMITED TO, THIRD PARTY INFRINGEMENT CLAIMS OR LOST
PROFITS, ARISING FROM OR RELATING TO THE LICENSED PATENTS, OR OTHERWISE RELATING
TO THIS AGREEMENT, EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. LICENSEE USES LICENSED PATENTS ENTIRELY AT LICENSEE'S OWN RISK.
7. TERM AND TERMINATION.
7.1 TERM. The term of this Agreement shall begin as of the Effective
Date and shall remain in effect until the expiration of the
last-to-expire of the Licensed Patents.
7.2 TERMINATION FOR CONVENIENCE. Licensee may terminate this
Agreement for any reason or no reason by giving the Licensor thirty
(30) days prior written notice.
7.3 TERMINATION FOR DEFAULT. If either party materially breaches its
obligations hereunder, the non-breaching party may terminate this
Agreement in accordance with the following procedure. The
non-breaching party must provide the breaching party with a notice
of default ("Notice of Default"), specifying in reasonable detail
the nature of the alleged material breach. The breaching party shall
have a thirty (30) day grace period after its receipt of the Notice
of Default ("Grace Period") to correct or cure any material breach
specified therein. If the breach identified in the Notice of Default
is corrected within the Grace Period, then this Agreement shall
remain in effect; otherwise, this Agreement shall terminate upon the
conclusion of the Grace Period.
16.
<PAGE>
7.4 EFFECTS OF TERMINATION. Upon the termination or expiration of
this Agreement the following terms shall apply:
(a) all licenses granted under this Agreement shall immediately
terminate; and
(b) Sections 1 (Definitions), 2.2 (Restrictions), 2.3 (Licensor's
Rights), 3.3 (Improvements), 4 (Confidentiality), 5 (Warranty Disclaimer), 6
(Limitations of Liability), 7.4 (Effects of Termination), 8 (Dispute Management)
and 9 (General) survive the expiration or termination of this Agreement for any
reason.
8. DISPUTE MANAGEMENT.
8.1 APPLICABLE LAW; JURISDICTION. THIS AGREEMENT SHALL BE GOVERNED BY
AND CONSTRUED AND ENFORCED IN ACCORDANCE WITH THE LAWS OF THE STATE
OF CALIFORNIA, EXCLUDING CONFLICT OF LAW RULES AND PRINCIPLES. THE
PARTIES AGREE THAT THE BANKRUPTCY COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA SHALL HAVE EXCLUSIVE JURISDICTION TO DETERMINE ALL
MATTERS RELATING TO THIS AGREEMENT AND THAT VENUE IS PROPER IN SUCH
COURT. ALL PARTIES WAIVE ANY OBJECTIONS TO THE JURISDICTION (IN REM,
PERSONAL OR SUBJECT MATTER) OF OR LAYING OF VENUE IN SUCH COURTS.
ALL PARTIES HEREBY WAIVE PERSONAL SERVICE OF THE SUMMONS, COMPLAINT
AND OTHER PROCESS ISSUED IN ANY SUCH ACTION OR SUIT AND AGREE THAT
SERVICE OF SUCH SUMMONS, COMPLAINT AND OTHER PROCESS MAY BE MADE BY
REGISTERED OR CERTIFIED MAIL ADDRESSED TO SUCH PARTY AT ITS ADDRESS
SET FORTH IN THE PREAMBLE TO THIS AGREEMENT OR TO SUCH OTHER ADDRESS
AS DESIGNATED IN ACCORDANCE WITH THIS AGREEMENT.
8.2 WAIVER OF JURY TRIAL. EACH PARTY TO THIS AGREEMENT WAIVES THE
RIGHT TO TRIAL BY JURY IN ANY ACTION, SUIT, PROCEEDING, OR
COUNTERCLAIM OF ANY KIND ARISING OUT OF OR RELATED TO THIS AGREEMENT
OR THE TRANSACTIONS CONTEMPLATED BY THIS AGREEMENT. EACH SUCH PARTY
WARRANTS AND REPRESENTS THAT IT HAS REVIEWED THE FOREGOING WAIVERS
WITH ITS LEGAL COUNSEL AND HAS KNOWINGLY AND VOLUNTARILY WAIVED ITS
JURY TRIAL RIGHTS FOLLOWING CONSULTATION WITH LEGAL COUNSEL. IN THE
EVENT OF LITIGATION, THIS AGREEMENT MAY BE FILED AS A WRITTEN
CONSENT TO A TRIAL BY THE COURT.
9. GENERAL.
9.1 NOTICES. All notices under this Agreement must be delivered in
writing by courier, electronic facsimile, electronic mail, or by
certified or registered mail (postage prepaid and return receipt
requested) to the other party at its address set forth on the
signature page below or as amended by notice pursuant to this
Section 9.1. If not received sooner, notice by mail shall be deemed
received five (5) days after deposit in the U.S. mails.
17.
<PAGE>
9.2 RELATIONSHIP OF PARTIES. The parties hereto are independent
contractors. Nothing in this Agreement shall be deemed to create an
agency, employment, partnership, fiduciary or joint venture
relationship between the parties. Neither party (nor any agent or
employee of that party) is the representative of the other party for
any purpose and neither party has the power or authority as agent,
employee or in any other capacity to represent, act for, bind or
otherwise create or assume any obligation on behalf of the other
party for any purpose whatsoever.
9.3 NO THIRD PARTY BENEFICIARIES. No party shall be deemed a
third-party beneficiary to this Agreement.
9.4 NO ADMISSION. Nothing in this Agreement shall constitute an
admission by either party with respect to the validity, scope or
infringement of any United States or foreign patent or other
proprietary right except as otherwise provided in the Agreement.
9.5 COSTS AND EXPENSES. Except as expressly provided for elsewhere in
this Agreement, each party shall be responsible for all costs and
expenses incurred by such party in performing its obligations or
exercising its rights under this Agreement.
9.6 CONSTRUCTION. In constructing the terms of this Agreement, no
presumption shall operate in favor of or against any party as a
result of its counsel's role in drafting the terms and provisions
hereof.
9.7 Assignment. This Agreement, and all rights and obligations
hereunder, are assignable by Licensor. Licensee may not assign this
Agreement, nor assign any rights or delegate any obligations under
this Agreement, without the prior written consent of Licensor (which
consent shall not be unreasonably withheld or delayed) except that
Licensee may assign this Agreement, with prior written notice but
without Licensor's written consent, to an entity with whom the
Licensee merges or consolidates or to whom the Licensee sells
substantially all of its assets relating to the Maintenance Service,
but only if such assignee agrees to be bound by all provisions of
this Agreement applicable to Licensee. Any attempted or purported
assignment or delegation by Licensee in violation of this Section
9.7 shall be null and void. This Agreement shall be binding on, and
inure to the benefit of, the parties hereto, and the respective
successors and assigns of each of them.
9.8 WAIVER AND MODIFICATIONS. All waivers must be in writing. Any
waiver by Licensor of a provision of this Agreement on one occasion
shall not be deemed a waiver of any other provision or such
provision on any other occasion. This Agreement may only be amended
by a written document signed by both parties.
[THIS SPACE INTENTIONALLY BLANK]
18.
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9.9 ENTIRE AGREEMENT. This Agreement, including the Schedules hereto,
constitutes the entire and final agreement between the parties
regarding the Licensed Patents and supersedes all prior or
contemporaneous, agreements, understandings and communications,
whether, written and oral, relating to the Licensed Patents.
9.10 COUNTERPARTS. This Agreement may be signed in several counterparts,
each of which shall constitute an original.
IN WITNESS WHEREOF, the undersigned have caused this Agreement to be
executed and delivered as of the Effective Date first set forth above by their
respective authorized representatives.
NETWORK APPLIANCE, INC. GLASSHOUSE TECHNOLOGIES, INC.
By: By:
------------------------------------ ------------------------------------
Name: Name:
---------------------------------- ----------------------------------
Title: Title:
--------------------------------- ---------------------------------
Address for Notice: Address for Notice:
--------------------------------------- --------------------------------------
--------------------------------------- --------------------------------------
Attn: Attn:
--------------------------------- ---------------------------------
Fax: Fax:
--------------------------------- ---------------------------------
[SIGNATURE PAGE TO PATENT LICENSE AGREEMENT]
19.
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SCHEDULE 1
LICENSED PATENTS
TITLE PATENT NUMBER STATUS COUNTRY/REGION
----- ------------- ------ --------------
Bridge for Direct Data Storage Device
Access 5,941,969 Issued US
Bridge for Direct Data Storage Device
Access 6,253,271 Issued US
Processing System with Dynamically
Allocatable Buffer Memory 6,081,883 Issued US
Characterization of Data Access Using
File System 6,442,682 Issued US
Intelligent Virtual Volume Access 6,389,432 Issued US
Method an Apparatus for Using
Intercepted Operator Messages to
Control Robotics 5,465,329 Issued US
System and Method for Reading and
Writing Disks Formatted for an
Operating System Foreign to Host
Computer 5,537,592 Issued US
Parallel I/O Network File Server
Architecture 5,163,131 Issued US
Parallel I/O Network File Server
Architecture 647414 Issued Australia
Parallel I/O Network File Server
Architecture 670376 Issued Australia
Parallel I/O Network File Server
Architecture 0490973 Issued European
Parallel I/O Network File Server
Architecture 0490973 Issued UK
Parallel I/O Network File Server
Architecture 1011772 Issued Hong Kong
Parallel I/O Network File Server
Architecture 201574 Issued South Korea
Parallel I/O Network File Server
Architecture 95447 Issued Israel
Parallel I/O Network File Server 116288 Issued Israel
<PAGE>
Architecture
Parallel I/O Network File Server
Architecture 107646 Issued Israel
Parallel I/O Network File Server
Architecture 107645 Issued Israel
Parallel I/O Network File Server
Architecture 107644 Issued Israel
Parallel I/O Network File Server
Architecture 5,355,435 Issued US
Parallel I/O Network File Server
Architecture 5,802,366 Issued US
Parallel I/O Network File Server
Architecture 5,931,918 Issued US
Multiple Facility Operating System
Architecture 5,485,579 Issued US
Multiple Facility Operating System
Architecture 6,065,037 Issued US
Multiple Facility Operating System
Architecture 201772 Issued South Korea
Multiple Facility Operating System
Architecture 2945757 Issued Japan
Multiple Facility Operating System
Architecture 95449 Issued Israel
Multiple Facility Operating System
Architecture 1014064 Issued Hong Kong
Multiple Facility Operating System
Architecture 0490980 Issued European
Multiple Facility Operating System
Architecture 2,066,566 Issued Canada
Multiple Facility Operating System
Architecture 651321 Issued Australia
Multiple Facility Operating System
Architecture 0490980 Issued UK
Fault Tolerant NFS Server System and
Mirroring Protocol 5,513,314 Issued US
<PAGE>
High Performance Non-Volatile RAM
Protected Write Cache Accelerator
System Employing DMA and Data
Transferring Scheme (as amended) 5,701,516 Issued US
High-Speed, Flexible
Source/Destination Data Burst Direct
Memory Access Controller 5,175,825 Issued US
High-Speed, Flexible
Source/Destination Data Burst Direct
Memory Access Controller 95445 Issued Israel
Bus Locking FIFIO Multi-Processing
Communication System 95448 Issued Israel
Image File Storage and Retrieval
System 5,761,655 Issued US
Enhanced VMEbus protocol utilizing
pseudosynchronous handshaking and
block mode data transfer 5,388,231 Issued US
Method for transmitting commands
excluded from predefined command set 5,379,389 Issued US
System and method for performing a
multi-file transfer operation 5,053,945 Issued US
U.S. AND FOREIGN APPLICATIONS:
Loosely Coupled-Multi Processor
Server 87120169 Pending Taiwan
Coherent Device to Device Data
Replication 09/375,819 Pending US
Intelligent Virtual Machines 10/068,352 Pending US
Microkernel for Real Time
Applications 09/408,149 Pending US
Parallel I/O Network File Server
Architecture 2066443 Allowed Canada
Multiple Facility Operating System
Architecture 2,358,807 Pending Canada
Fault Tolerant NFS Server
System and Mirroring Protocol 8-523008 Published Japan
<PAGE>
Fault Tolerant NFS Server
System and Mirroring Protocol 98103865.9 Published Hong Kong
Fault Tolerant NFS Server
System and Mirroring Protocol 96903668.0 Published European
Fault Tolerant NFS Server
System and Mirroring Protocol 2,211,654 Pending Canada
High Availability Cluster Virtual
Server System 09/911,902 Published US
High Availability Cluster Virtual
Server System WO US02/23417 Published WIPO
Active File Change Notification WO US03/00704 Pending WIPO
Active File Change Notification 10/341,811 Pending US
Internet Cache 09/324,801 Pending US