Common use of License Back Clause in Contracts

License Back. Subject to the terms and conditions of this Agreement, as of the Closing Date, Purchaser hereby grants to Seller a non-transferable (except as set forth below), non-sublicensable (except as set forth below), royalty-free, non-exclusive license under the Transferred Patents, in each jurisdiction where rights exist, to make, have made, use, sell, offer to sell and import the products of Seller excluding any product in the wired communications field that is: a DSL solution and/or a broadband network processor and/or router which has the primary purpose of providing network processing and/or routing. Notwithstanding, it shall not be prohibited for Seller to conduct the activities described in Section 2.04(2) of the Licensing Agreement. The Seller may grant sublicenses to the Transferred Patents (excluding sublicenses for the sublicensee to make or have made the Licensed AFE products for a party other than Seller), provided, however, that the terms and conditions of any such sublicenses provide (x) for all appropriate use restrictions, and (y) are comparable to those under which the Seller licenses its own valuable Intellectual Property Rights of a similar nature. The licenses granted to the Seller pursuant to this Section 2.4 may not be transferred or assigned by the Seller, provided, however, Seller may transfer such license upon notice to Purchaser to a successor entity by way of a reorganization, merger or sale of all or substantially all of the assets of Seller. Notwithstanding the foregoing, Seller may not transfer or assign (through merger, sale of asset or reorganization) the licenses granted herein with respect to Licensed AFEs to any successor entity that provides products or technology in the wired communications field that are: a DSL solution and/or a broadband network processor and/or router which has the primary purpose of providing network processing and/or routing. Any assignment or transfer of the licenses granted to Seller in this Section 2.4 in violation of this Section 2.4 shall be null and void. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE TRANSFERRED PATENTS ARE LICENSED BY PURCHASER TO SELLER “AS IS” WITHOUT ANY WARRANTY, INCLUDING ANY WARRANTY AS TO THE VALIDITY OF ANY CLAIM THEREIN. Purchaser reserves all right, title and interest in all of its Intellectual Property Rights, including the Transferred Intellectual Property Rights that are not expressly granted by Purchaser in this Section 2.4.

License Back. Subject If within 18 months of the Effective Time of the Merger (the “TPA Date”) the Third Party Agreement Milestone has not occurred then, in lieu of being obligated to make a payment under Section 2.07(e)(i), Parent shall elect by prompt written notice to the Stockholder Representative to either: (A) Grant, subject to the terms and conditions of this AgreementSection 2.07(j)(A), as of to Newco, a worldwide, sublicensable (through one or more layers) license under only any and all Company Intellectual Property, data and regulatory filings owned or controlled by Company immediately before the Closing Date(and, Purchaser hereby grants to Seller a non-transferable (except as set forth below)accordingly, non-sublicensable (except as set forth below), royalty-free, non-exclusive license under by the Transferred Patents, in each jurisdiction where rights exist, Surviving Corporation immediately after the Closing) to make, have made, use, selloffer for sale, offer to sell and import a Catheter Heart Valve System (including improvements or modifications thereto made by, on behalf of or under authority of Newco) and other products claimed in patents within such Company Intellectual Property; such license is exclusive with respect to the products patent rights so licensed. In connection therewith, Newco or its designee shall have the sole right to control the prosecution, maintenance and enforcement of Seller excluding any product patent rights within the Company Intellectual Property so licensed. Such license will be granted “AS IS” with no warranty, express or implied, as to infringement or otherwise. Further, as a condition of the license, Newco (and its affiliates) must agree (and in such case do hereby agree) to fully indemnify Parent and its affiliates from any damage, loss, liability, settlement, attorney fees and other costs and expenses resulting from or in connection with any third party claim relating to any exercise of such license. Newco shall pay royalties to Parent within 60 days of each calendar quarter equal to 7% of all revenues of Newco, its affiliates and sublicensees from the sale of Catheter Heart Valve Systems (including improvements or modifications thereto by, on behalf of or under authority of Newco and any related catheters) up to a cap of $10 million, after which such license shall become fully-paid and irrevocable. Product that is the subject of such a royalty will not be treated as loss leaders. Newco will keep books and records reflecting all information relevant to royalty calculations and compliance with the limited license scope; Parent will have rights to audit such books and records annually upon request (if the audit shows a 5% or greater discrepancy, Newco will reimburse Parent for the audit costs). The foregoing license is subject to and may be limited by any agreements of or constrains on Company existing prior to Closing, as well as by applicable law, and Newco will be responsible for compliance therewith, including, without limitation, payment of any amounts that may be required thereby as a result of the foregoing license or any activity under such license. For the avoidance of doubt, the foregoing license does not include any right or license with respect to anything that was not owned or controlled by Company prior to the Closing; or (B) make a payment to the Company Stockholders pursuant to the payment distribution allocations provided for in Section 2.01(a)(i), in the wired communications field that is: a DSL solution and/or a broadband network processor and/or router which has the primary purpose amount of providing network processing and/or routing. Notwithstanding$5,000,000, it shall not such payment to be prohibited for Seller to conduct the activities described in Section 2.04(2) made within 60 days of the Licensing Agreement. The Seller may grant sublicenses to TPA Date (the Transferred Patents (excluding sublicenses for the sublicensee to make or have made the Licensed AFE products for a party other than Seller“2.07(j)(B) Payment Date”), ; provided, however, that in the terms event Parent elects to make such payment under this Section 2.07(j)(B), then the amount payable upon achievement of the FDA PMA Milestone shall be increased by $5,000,000 from six million ($6,000,000) to eleven million ($11,000,000). If the FDA PMA Milestone has been achieved and conditions of any such sublicenses provide (x) for all appropriate use restrictions, and (y) are comparable to those under which the Seller licenses its own valuable Intellectual Property Rights of a similar nature. The licenses granted related payment made prior to the Seller date of an election under this Section 2.07(j)(B), the Parent shall, upon making this election, be obligated to promptly make a payment to the Company Stockholders pursuant to the payment distribution allocations provided for in Section 2.01(a)(i), of the additional $5,000,000 provided for in this Section 2.4 may not be transferred or assigned by the Seller, 2.07(j)(B); provided, however, Seller may transfer that if Parent fails to make such license upon notice to Purchaser to a successor entity by way of a reorganization, merger or sale of all or substantially all election within 30 days of the assets of Seller. Notwithstanding TPA Date, Parent shall be deemed to have elected 2.07(j)(A) above. (C) For the foregoing, Seller may not transfer or assign (through merger, sale of asset or reorganization) the licenses granted herein with respect to Licensed AFEs to any successor entity that provides products or technology in the wired communications field that are: a DSL solution and/or a broadband network processor and/or router which has the primary purpose of providing network processing and/or routing. Any assignment or transfer of the licenses granted to Seller in this Section 2.4 in violation of this Section 2.4 2.07(j), “Newco” shall mean an entity designated by the Stockholder Representative whose capitalization shall solely be null Common Stock and void. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE TRANSFERRED PATENTS ARE LICENSED BY PURCHASER TO SELLER “AS IS” WITHOUT ANY WARRANTY, INCLUDING ANY WARRANTY AS TO THE VALIDITY OF ANY CLAIM THEREIN. Purchaser reserves owned in the same proportion as the Company Common Stock is owned by the Company Stockholders immediately prior to the Effective Time (including (i) all right, title shares of Company Common Stock issued upon the conversion of the Company Preferred Stock and interest in all (ii) the Company Preferred Stock issued upon the net exercise of its Intellectual Property Rights, including the Transferred Intellectual Property Rights that are not expressly granted by Purchaser in this Section 2.4Company Preferred Warrants immediately prior to the Effective Time).

License Back. (a) Subject to the terms occurrence of the Closing and conditions the other provisions of this AgreementSection 4.1, as of the Closing Date, Purchaser Networks3 hereby grants to Seller a worldwide irrevocable life-of-patent royalty-free non-exclusive, sublicenseable, non-transferable (except as set forth below)in connection with a Change of Control) right and license, non-sublicensable (except as set forth below), royalty-free, non-exclusive license only under the Transferred PatentsPatents assigned hereunder, in each jurisdiction where rights exist, to Orckit and its Subsidiaries to make, have made, use, selloffer for sale, offer to sell and import Orckit Products. Where permitted by applicable law, this license back shall be registered by Networks3 with the products of Seller excluding relevant governmental filing office. (b) Except for bona fide arms-length making, having made, using, offering for sale, selling and importing Orckit Products, Orckit will (and will cause its Affiliates to) not engage or acquiesce in any product in activity, licensing, arrangement or contract that may, directly or indirectly, have the wired communications field that is: a DSL solution and/or a broadband network processor and/or router which has the primary purpose effect of providing network processing and/or routing. Notwithstandingan Authorization under any of the Patents to any third party in derogation or reduction of the market available to Networks3 for licensing the Patents and enjoying the Patents transferred hereunder. (c) Nothing in this Section 4.1 will be deemed or construed to Authorize any product, it shall not be prohibited for Seller to conduct method or subject matter other than the activities described Orckit Product as sold by a member of the Orckit Group or their bona fide distribution channels under the license in Section 2.04(2) 4.1(a), even if such other product, method or subject matter is combined with such Orckit Product (other than combinations made solely of Orckit Products). Downstream products containing items other than an Orckit Product licensed hereunder may be subject to, among other things, claims for patent infringement or other judicial, arbitral or administrative claims by Networks3 to the extent they are unlicensed products (i.e., except for that portion of such downstream product that is an Orckit Product as sold by a member of the Licensing AgreementOrckit Group or their bona fide distribution channels) or combinations (other than combinations made solely of Orckit Products). (d) The license granted herein applies solely to those Orckit Products expressly licensed hereunder. The Seller may grant sublicenses Except to the Transferred Patents (excluding sublicenses for the sublicensee extent expressly granted herein, nothing in this Agreement will be deemed or construed to make or have made the Licensed AFE products for Authorize a party other than Seller), provided, however, that the terms and conditions of any such sublicenses provide (x) for all appropriate use restrictions, and (y) are comparable to those under which the Seller licenses its own valuable Intellectual Property Rights of a similar nature. The licenses granted to the Seller pursuant to this Section 2.4 may not be transferred or assigned by the Seller, provided, however, Seller may transfer such license upon notice to Purchaser to a successor entity by way of a reorganization, merger or sale of all or substantially all member of the assets of Seller. Notwithstanding the foregoing, Seller may not transfer Orckit Group or assign (through merger, sale of asset any third party under any patent or reorganization) the licenses granted herein any other intellectual property right now or hereafter owned or controlled by Networks3 and its Affiliates with respect to Licensed AFEs any activities taken by a member of the Orckit Group and/or any third party. (e) This Section 4.1 will not be deemed or construed as an Authorization (1) as to any successor entity product that provides products is not an Orckit Product even if a claim of a Patent may apply to such product or technology (2) under any claim of any patent that is outside the definition of Patent (including any claim of any patent of any Affiliate of Networks3). (f) Subject to applicable law, Networks3 may exercise its right, in the wired communications field that are: a DSL solution and/or a broadband network processor and/or router which has the primary purpose of providing network processing and/or routingits sole discretion, to abandon, transfer or allow any Patent to lapse. Any assignment If such actions are undertaken in connection with patent prosecution or transfer of the licenses granted to Seller in this Section 2.4 in violation of this Section 2.4 opposition, review, reexamination or similar events, no notice shall be null required to Orckit. In connection with other abandonments or lapses, Networks3 will give Orckit ninety days advance notice of its intent to undertake such activities and void. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE TRANSFERRED PATENTS ARE LICENSED BY PURCHASER TO SELLER “AS IS” WITHOUT ANY WARRANTYif requested by Orckit, INCLUDING ANY WARRANTY AS TO THE VALIDITY OF ANY CLAIM THEREIN. Purchaser reserves Networks3 will transfer and assign (for no consideration) to Orckit all of its right, title and interest in all and to the Patents that were the subject of its Intellectual Property Rights, including the Transferred Intellectual Property Rights that are not expressly granted by Purchaser such notice. Nothing in this Section 2.4Agreement will be deemed or construed as (1) a representation or warranty by Networks3 as to the validity, enforceability and/or scope of any Patent, (2) imposing any obligation on Networks3 or its Affiliates to file any application or registration with respect to any intellectual property rights or to secure or maintain in force any Patent, (3) imposing upon Networks3 or its Affiliates any legal obligation to institute any suit or action for infringement of any Patent or to defend any suit, action or administrative proceeding which challenges or concerns the validity, enforceability or scope of any Patent, (4) a representation or warranty that manufacture (including having manufactured), importation, offer for sale or sale of any product licensed hereunder will be free from infringement, misappropriation or other violation of any patent or other intellectual property right of Networks3 or its Affiliates (other than the Patents licensed hereunder) or of any third party, (5) licensing any intellectual property of any current or future Affiliate of Networks3, (6) licensing any trade secret, copyright or other non-Patent intellectual property or (7) imposing any obligation to furnish any technical information or know how. (g) Networks3 grants, solely under the Patents, to the applicable member of the Orckit Group the right to sublicense the Patents solely to the extent that such Orckit Group member is legally obligated under an Identified Encumbrance Agreement to grant a license under the Patents to the counterparty of such Identified Encumbrance Agreement of the scope required in such Identified Encumbrance Agreement and in renewals or replacements thereof that do not expand the field of use, scope, products or other rights of such counterparty beyond those in the applicable Identified Encumbrance Agreement. (h) Networks3 grants, solely under the Patents, to the applicable member of the Orckit Group, the right to sublicense to (a) Telrad Networks Ltd., an Israeli company (“Telrad”), and its bona fide OEM customers a license to make, use, import, offer for sale and sell PWE Solutions (as defined in the Strategic Cooperation Agreement, made 24 December 2009, effective as of 15 February 2009 (the “Telrad Agreement”), and (b) Woorinet, a corporation organized under the laws of the Republic of Korea, and its bona fide OEM customers a license to make, use, import, offer for sale and sell the products to be made under the memorandum of agreement made 24 October 2012 (without change or supplement to the form included in the Orckit Disclosure Letter, the “Woorinet MOU”). However, for purposes of the sublicense right to Telrad, the term PWE Solutions is limited to PWE Solutions as defined under such agreement as amended to the date of this Agreement and to the engineering work completed to the date of this Agreement.

License Back. Subject to the terms and conditions of this Agreement, as of the Closing Date, Purchaser hereby grants to Seller a non-transferable (except as set forth below), non-sublicensable (except as set forth below), royalty-free, non-exclusive license under the Transferred Patents, in each jurisdiction where rights exist, to make, have made, use, sell, offer to sell and import the products of Seller excluding any product in the wired communications field that is: a DSL solution and/or a broadband network processor and/or router which has the primary purpose of providing network processing and/or routing. Notwithstanding, it shall not be prohibited for Seller to conduct the activities described in Section 2.04(2) of the Licensing Agreement. The Seller may grant sublicenses to the Transferred Patents (excluding sublicenses for the sublicensee to make or have made the Licensed AFE products for a party other than Seller), provided, however, that the terms and conditions of any such sublicenses provide (x) for all appropriate use restrictions, and (y) are comparable to those under which the Seller licenses its own valuable Intellectual Property Rights of a similar nature. The licenses granted to the Seller pursuant to this Section 2.4 may not be transferred or assigned by the Seller, provided, however, Seller may transfer such license upon notice to Purchaser to a successor entity by way of a reorganization, merger or sale of all or substantially all of the assets of Seller. Notwithstanding the foregoing, Seller may not transfer or assign (through merger, sale of asset or reorganization) the licenses granted herein with respect to Licensed AFEs to any successor entity that provides products or technology in the wired communications field that are: a DSL solution and/or a broadband network processor and/or router which has the primary purpose of providing network processing and/or routing. Any assignment or transfer of the licenses granted to Seller in this Section 2.4 in violation of this Section 2.4 shall be null and void. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE TRANSFERRED PATENTS ARE LICENSED BY PURCHASER TO SELLER “AS IS” WITHOUT ANY WARRANTY, INCLUDING ANY WARRANTY AS TO THE VALIDITY OF ANY CLAIM THEREIN. Purchaser reserves all right, title and interest in all of its Intellectual Property Rights, including the Transferred Intellectual Property Rights Rights, that are not expressly granted by Purchaser in this Section 2.4.