Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "Diamond Intellectual Property" consists of the following intellectual property: (i) all patents, trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefor, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing; (ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein; (iii) all other tangible or intangible proprietary information and materials; and (iv) all license and other rights in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of Diamond or any Subsidiary or that are being, and/or have been, used, or are currently under development for use, in the business of Diamond or any Subsidiary as it has been, is currently or is currently planned to be conducted; provided, however, that Diamond Intellectual Property will not include any commercially available third party software or related intellectual property. (b) Section 3.5 of the Diamond Disclosure Schedule lists: (i) all patents, copyright registrations, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in Diamond Intellectual Property and owned by or on behalf of Diamond or any Subsidiary; (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by Diamond or any Subsidiary; and (iii) all licenses, sublicenses and other agreements to which Diamond or any Subsidiary is a party and pursuant to which Diamond or any Subsidiary or any other person is authorized to use any Diamond Intellectual Property or exercise any other right with regard thereto. The disclosures described in (iii) hereof include the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royalty. (c) Diamond Intellectual Property consists solely of items and rights that are either: (i) owned solely by Diamond or any of its Subsidiaries; (ii) in the public domain; or (iii) rightfully used and authorized for use by Diamond or any Subsidiary and their successors pursuant to a valid license. All Diamond Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 of the Diamond Disclosure Schedule. Diamond and its Subsidiaries have all rights in Diamond Intellectual Property necessary to carry out Diamond's or any Subsidiary's current, former and planned future activities, including without limitation rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign and sell Diamond Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. (d) Diamond is not, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated hereby, or performance of Diamond's obligations hereunder or the consummation of the Merger, will Diamond be, in violation of any license, sublicense or other agreement relating to any Diamond Intellectual Property to which Diamond or any Subsidiary is a party or otherwise bound. Diamond is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Diamond or Surviving Corporation, as successor to Diamond, in Diamond Intellectual Property. (e) To the knowledge of Diamond or any of its Subsidiaries, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Diamond or any Subsidiary does not infringe any copyright, patent, trade secret, trademark, service mark, ▇▇ade name, firm name, logo, trade dress, moral right, other intellectual property right, right of privacy, or right in personal data of any Person. No claims (i) challenging the validity, effectiveness, or ownership by Diamond or any Subsidiary of any Diamond Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service, or process as used, provided or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, (f) Section 3.5 of the Diamond Disclosure Schedule separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Diamond Intellectual Property. Diamond and its Subsidiaries have secured from all parties who have created any portion of, or otherwise have any rights in or to, Diamond Intellectual Property valid and enforceable written assignments of any such work or other rights to or such Subsidiaries and has provided true and complete copies of such assignments to Parent. (g) Diamond has obtained written agreements from all employees and from third parties with whom Diamond, to its knowledge, has shared confidential proprietary information (i) of Diamond or any Subsidiary or (ii) received from others that Diamond is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, that agreements require such employees and third parties to keep such information confidential in accordance with the terms thereof. Diamond has made available copies of such written agreements, as executed, to Parent.
Appears in 1 contract
Sources: Agreement and Plan of Reorganization (Data Dimensions Inc)
Technology and Intellectual Property Rights. (a) For the purposes of As used in this AgreementSection 4.15, "Diamond Company Intellectual Property" consists of the following intellectual propertyfollowing:
(i) all inventions, patents, trademarks, trade names, service marks, trade dressdomain names, original works of authorship, copyrights and any renewal rights thereforrights, applications and registrations for any of the foregoing, and all trade dress, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights rights, computer software programs or applications (as applicable, in both source and applications and registrations for object code form) owned in whole or in part by the Company or any of the foregoingCompany Subsidiary;
(ii) all goodwill associated with trademarks, trade names service marks and trade dress owned in whole or in part by the Company or any Company Subsidiary;
(iii) all software, including without limitation source code, object code and system build software and instructions related to all software described herein owned in whole or in part by the Company or any Company Subsidiary;
(iv) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described hereinherein owned in whole or in part by the Company or any Company Subsidiary;
(iiiv) all other tangible or intangible proprietary information and materialsmaterials owned in whole or in part by the Company or any Company Subsidiary; and
(ivvi) all license and other rights held by the Company or any Company Subsidiary in any third party product product, intellectual property, proprietary or any third party personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (i) through (iiiv) above; that are owned or held by or on behalf of Diamond or any Subsidiary or that are being, and/or have been, used, or are currently under development for use, in the business of Diamond the Company or any Company Subsidiary as it has been, is currently or is currently planned anticipated to be (up to the Closing), conducted; provided, however, that Diamond . Company Intellectual Property will not include any commercially available third party software or related intellectual propertydescribed in clauses (i) to (v) above is referred to herein as "Company Owned Intellectual Property" and the Company Intellectual Property described in clause (vi) above is referred to herein as "Company Licensed Intellectual Property." Unless otherwise noted, all references to "Company Intellectual Property" shall refer to both Company Owned Intellectual Property and Company Licensed Intellectual Property.
(b) Section 3.5 4.15 of the Diamond Company Disclosure Schedule lists: (i) all patents, copyright registrationsregistered copyrights, mask works, registered trademarks, registered and material unregistered trademarks and service marks, trade dress, any renewal rights for any of the foregoing, marks and any applications and registrations for any of the foregoing, that are included in Diamond the Company Owned Intellectual Property and owned by or on behalf of Diamond or any SubsidiaryProperty; (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by Diamond or any Subsidiary; and (iii) all material licenses, sublicenses and other agreements to which Diamond the Company or any Company Subsidiary is a party and pursuant to which Diamond or any Subsidiary or any other person is authorized to have access to or use any Diamond the Company Owned Intellectual Property or exercise any other right with regard thereto. The disclosures described thereto (except standard form, unmodified end user license agreements in the forms that have existed from time to time and dealer/distributor agreements for the Company's and the Company Subsidiaries' commercially distributed products, entered into between the Company or any Company Subsidiary and the end users of the Company products in the ordinary course of business); (iii) hereof include all material Company Licensed Intellectual Property (other than license agreements for "shrink wrapped, off the identities shelf," commercially available, third party products used by the Company or any Company Subsidiary but including any software tools or "open source" licenses); and (iv) any obligations of exclusivity, noncompetition, nonsolicitation, right of first refusal or first negotiation to which the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty Company or summary of any formula or procedure for determining such royaltyCompany Subsidiary is subject.
(c) Diamond The Company Intellectual Property consists solely of items and rights that are either: (i) owned solely by Diamond the Company or any of its Subsidiaries; Company Subsidiary, (ii) in the public domain; , or (iii) rightfully used and authorized for use by Diamond the Company or any Company Subsidiary and their successors pursuant to a valid license. All Diamond Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 agreement. The Company and each of the Diamond Disclosure Schedule. Diamond and its Company Subsidiaries have all rights in Diamond the Company Intellectual Property reasonably necessary to carry out Diamondthe Company's and each Company Subsidiaries' current activities and has or any Subsidiary's current, former and planned future activities, including without limitation had all rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign and sell Diamond in the Company Intellectual Property in all geographic locations reasonably necessary to carry out the Company's and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenseseach Company Subsidiaries' former activities.
(d) Diamond is The Company and the Company Subsidiaries are not, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated herebyAgreement, or performance of Diamondthe Company's obligations hereunder or the consummation of the Mergerhereunder, will Diamond the Company or any Company Subsidiary be, in violation of any license, sublicense or other agreement relating to any Diamond the Company Intellectual Property to which Diamond the Company or any Company Subsidiary is a party or otherwise bound. Diamond is Except pursuant to the terms of the agreements listed in the Company Disclosure Schedule, the Company and the Company Subsidiaries are not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any considerationconsideration from the Company or any Company Subsidiary, with respect to any exercise of rights by Diamond the Company or Surviving Corporation, as successor to Diamond, any Company Subsidiary or their successors in Diamond the Company Intellectual Property.
(e) To the knowledge of Diamond or any of its Subsidiaries, the The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, Company Owned Intellectual Property or any other authorized exercise of rights, rights in or to the Company Owned Intellectual Property by Diamond the Company or any Company Subsidiary or their licensees does not and will not infringe any copyright, patent, trade secret, trademark, service mark, ▇▇ade ▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any Personperson. No claims (i) challenging the validity, effectiveness, or ownership by Diamond the Company or any Company Subsidiary of any Diamond of the Company Owned Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, sale or any other exercise of rights in any product, work, technology, serviceCompany Owned Intellectual Property by the Company or any Company Subsidiary or their licensees infringes, or process as usedwill infringe on, provided any intellectual property or offered at other proprietary or personal right of any timeperson, have been asserted or, to the knowledge of Company, are threatened by any person nor, to the knowledge of Company, are there any valid grounds for any bona fide claim of any such kind. All granted or as proposed for issued patents and all registered trademarks listed on the Company Disclosure Schedule and all copyright registrations held by the Company or any Company Subsidiary are valid, enforceable and subsisting. To the knowledge of the Company, there is no unauthorized use, reproductioninfringement or misappropriation of any of the Company Owned Intellectual Property by any third party, modification, distribution, licensing,employee or former employee.
(f) Except as set forth in Section 3.5 4.15(f) of the Diamond Company Disclosure Schedule, no parties other than the Company or any Company Subsidiary possess any current or contingent rights to any source code that is part of the Company Owned Intellectual Property (including, without limitation, through any escrow account).
(g) Section 4.15(g) of the Company Disclosure Schedule separately lists all parties (other than employees) who have created any material portion of, or otherwise have any rights in or to, Diamond the Company Owned Intellectual PropertyProperty other than employees of the Company and any Company Subsidiary whose work product was created by them entirely within the scope of their employment by the Company or any Company Subsidiary. Diamond The Company and its the Company Subsidiaries have secured from all parties who have created any material portion of, or otherwise have any rights in or to, Diamond the Company Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to or such the Company and the Company Subsidiaries and has have provided Parent access to true and complete copies of such assignments to Parentor licenses.
(gh) Diamond has obtained Section 4.15(h) of the Company Disclosure Schedule includes a true and complete list of all support or maintenance agreements relating to Company Owned Intellectual Property or to which the Company or any Company Subsidiary is a party as to Company Licensed Intellectual Property, as of the date set forth on such schedule (which shall not be more than five business days prior to the date of this Agreement).
(i) Except as set forth in Section 4.15(i) of the Company Disclosure Schedule, the Company and the Company Subsidiaries have entered into written agreements from all with employees and from third parties with whom Diamond, to its knowledge, the Company or any Company Subsidiary has shared confidential proprietary information (i) shared material confidential or proprietary information of Diamond the Company or any Subsidiary Company Subsidiary, or (ii) received from others that Diamond confidential or proprietary information which the Company or any Company Subsidiary is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, that which agreements require such employees and third parties to keep such information confidential in accordance with the terms thereoftheir terms. Diamond The Company has made available provided Parent with access to true and correct copies of all such written agreements, as executed, to Parent.
Appears in 1 contract
Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, The "Diamond Company Intellectual Property" consists of the following intellectual propertyfollowing:
(i) all patents, trademarks, trade names, service marks, trade dressmask works, domain names, copyrights and any renewal rights thereforrights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, software, firmware, technology, manufacturing processes, customer and supplier lists, customer lists, trade secrets, know-how, moral rights rights, computer software programs or applications (in both source and applications and registrations for any of the foregoingobject code form) owned by Company;
(ii) all goodwill associated with trademarks, trade names service marks and trade dress owned by Company;
(iii) all software and firmware listings, and updated software source code, and complete system build software and instructions related to all software described in the Company Disclosure Schedule pursuant to Section 2.1.5(b) hereof owned by Company;
(iv) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described hereinherein owned by Company;
(iiiv) all other tangible or intangible proprietary information and materialsmaterials owned by Company; and
(ivvi) all license and other rights in any third party product product, intellectual property, proprietary or any third party personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (i) through (iiiv) above; that are owned or held by or on behalf of Diamond or any Subsidiary or that are being, and/or have been, used, or are currently under development for use, in the business of Diamond or any Subsidiary Company as it has been, is currently or is currently planned anticipated to be (up to the Closing), conducted; provided, however, that Diamond . Company Intellectual Property will not include any commercially available third party software or related intellectual propertydescribed in clauses (i) to (v) above is referred to herein as "Company Owned Intellectual Property" and Company Intellectual Property described in clause (vi) above is referred to herein as "Company Licensed Intellectual Property." Unless otherwise noted, all references to "Company Intellectual Property" shall refer to both Company Owned Intellectual Property and Company Licensed Intellectual Property.
(b) Section 3.5 of the Diamond The Company Disclosure Schedule lists: (i) all patents, copyright registrationsregistered copyrights, registered mask works, trademarks, registered service marks, domain names, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in Diamond the Company Owned Intellectual Property and owned by or on behalf of Diamond or any SubsidiaryProperty; (ii) all hardware products and tools, software products and tools tools, and services that are currently published, offered, or under development by Diamond or any SubsidiaryCompany; and (iii) all licenses, sublicenses and other agreements to which Diamond or any Subsidiary Company is a party and pursuant to which Diamond any end user or any Subsidiary or any other person third party is authorized to have access to or use any Diamond the Company Intellectual Property or exercise any other right with regard thereto; (iv) all Company Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by Company); and (v) any obligations of exclusivity, noncompetition, nonsolicitation, first refusal or first negotiation to which Company is subject under any agreement that does not fall within the ambit of (iii) or (iv) above. The disclosures described in (iii), (iv), and (v) hereof include the names and dates of the relevant agreements, as well as the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royalty.
(c) Diamond The Company Intellectual Property consists solely of items and rights that which are either: (i) owned solely by Diamond or any of its SubsidiariesCompany; (ii) in the public domain; or (iii) rightfully used and authorized for use by Diamond or any Subsidiary Company and their its successors pursuant to a valid license. All Diamond Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 of the Diamond Disclosure Scheduleagreement. Diamond and its Subsidiaries have Company has all rights in Diamond the Company Intellectual Property necessary to carry out DiamondCompany's current and anticipated future (up to the Closing) activities and has or any Subsidiaryhad all rights in the Company Intellectual Property reasonably necessary to carry out Company's current, former and planned future activities, including without limitation limitation, and solely to the extent necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), disclose, transmit, display and perform publicly, license, rent, lease, assign assign, and sell Diamond the Company Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. All software and firmware listings that are part of the Company Owned Intellectual Property are adequately commented in accordance with generally accepted standard industry practices.
(d) Diamond Company is not, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated hereby, or performance of DiamondCompany's obligations hereunder or the consummation of the Mergerthereunder, will Diamond Company be, in violation of any license, sublicense sublicense, or other agreement relating to any Diamond the Company Intellectual Property to which Diamond or any Subsidiary Company is a party or otherwise bound. Diamond Except as specifically described in the Company Disclosure Schedule, Company is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Diamond Company or Surviving Corporation, as successor to Diamond, its successors or licensees in Diamond the Company Intellectual Property.
(e) To The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Owned Intellectual Property or any other authorized exercise of rights in or to the Company Owned Intellectual Property by Company or its successors or licensees does not and will not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity, or right in personal or other data of any person. Further, to the knowledge of Diamond or any of its SubsidiariesCompany and the Principal Stockholders, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, Company Licensed Intellectual Property or any other authorized exercise of rights, rights in or to the Company Licensed Intellectual Property by Diamond Company or any Subsidiary its licensees does not and will not infringe any copyright, patent, trade secret, trademark, service mark, ▇▇ade ▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any Personperson. No claims (i) challenging the validity, effectiveness, or ownership by Diamond or any Subsidiary Company of any Diamond of the Company Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, serviceCompany Intellectual Property by Company or its successors or licensees infringes, or process as usedwill infringe on, provided any intellectual property or offered at other proprietary or personal right of any timeperson, have been asserted or, to the knowledge of Company and the Principal Stockholders, are threatened by any person nor, to the knowledge of Company and the Principal Stockholders, are there any valid grounds for any bona fide claim of any such kind. All granted or issued patents and all registered mask works, domain names, and trademarks listed on the Company Disclosure Schedule and all copyright registrations held by Company are valid, enforceable and subsisting. To the knowledge of Company and the Principal Stockholders, there is no unauthorized use, infringement, or as proposed for usemisappropriation of any of the Company Owned Intellectual Property by any employee, reproductionor former employee, modification, distribution, licensing,or other third party.
(f) Section 3.5 No parties other than Company possess any current or contingent rights to any source code that is part of the Diamond Company Owned Intellectual Property (including, without limitation, through any escrow account).
(g) The Company Disclosure Schedule separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Diamond Intellectual Property. Diamond and its Subsidiaries have secured from all parties who have created any portion of, or otherwise have any rights in or to, Diamond the Company Owned Intellectual Property other than employees of Company whose work product was created by them within the scope of their employment by Company and constitutes works made for hire owned by Company. Company has secured from all parties who are not employees and who have created any material portion of, or otherwise have any rights in or to, the Company Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to or such Subsidiaries Company and has provided true and complete copies of such assignments or licenses to ParentExpedia.
(gh) Diamond The Company Disclosure Schedule includes a true and complete list of support and maintenance agreements relating to Company Owned Intellectual Property or to which Company is a party as to Company Licensed Intellectual Property, including the identity of the parties and the respective dates of such agreements.
(i) Company has obtained legally binding written agreements from all employees and from third parties with whom Diamond, to its knowledge, Company has shared confidential proprietary information (i) of Diamond or any Subsidiary Company or (ii) received from others that Diamond which Company is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, that which agreements require such employees and third parties to keep such information confidential confidential.
(j) Company has obtained any and all necessary consents from consumers with regard to Company's collection and dissemination of personal consumer information in accordance with Company's privacy policy as published on its website. Company's practices regarding the terms thereofcollection and use of consumer personal information are in accordance with Company's privacy policy as published on its website.
(k) The Company Owned Intellectual Property is, and any products manufactured and commercially released by Company or currently under development, are fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time during or after the calendar year A.D. 2000. Diamond has made available copies To the knowledge of such written agreementsCompany and the Principal Stockholders, as executedthe Company Licensed Intellectual Property is fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time during or after the calendar year 2000. Schedule 2.1.5(k) sets forth the tests, inquiries and other activities undertaken by Company up to Parent.the Closing, with respect to the Year 2000 Compliant nature of any and all Company Intellectual Property. For the purposes of this Agreement, "Year 2000 Compliant" means that neither the performance nor the functionality of any Company Intellectual Property is or will be materially affected by dates prior to, during or after the calendar year A.D. 2000 and in particular (but without limitation):
Appears in 1 contract
Sources: Merger Agreement (Expedia Inc)
Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, The "Diamond Company Intellectual Property" consists of the following intellectual propertyfollowing:
(i) all patents, trademarks, trade names, service marks, trade dressmask works, domain names, copyrights and any renewal rights thereforrights, applications and registrations for any of the foregoing, and all trade dress, net lists, schematics, software, firmware, technology, manufacturing processes, customer and supplier lists, customer lists, trade secrets, know-how, moral rights rights, computer software programs or applications (in both source and applications and registrations for any of the foregoingobject code form) owned by Company;
(ii) all goodwill associated with trademarks, trade names service marks and trade dress owned by Company;
(iii) all software and firmware listings, and updated software source code, and complete system build software and instructions related to all software described in the Company Disclosure Schedule pursuant to Section 2.1.5(b) hereof owned by Company;
(iv) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described hereinherein owned by Company;
(iiiv) all other tangible or intangible proprietary information and materialsmaterials owned by Company; and
(ivvi) all license and other rights in any third party product product, intellectual property, proprietary or any third party personal rights, documentation, or tangible or intangible property, including without limitation the types of intellectual property and tangible and intangible proprietary information described in (i) through (iiiv) above; that are owned or held by or on behalf of Diamond or any Subsidiary or that are being, and/or have been, used, or are currently under development for use, in the business of Diamond or any Subsidiary Company as it has been, is currently or is currently planned anticipated to be (up to the Closing), conducted; provided, however, that Diamond . Company Intellectual Property will not include any commercially available third party software or related intellectual propertydescribed in clauses (i) to (v) above is referred to herein as "Company Owned Intellectual Property" and Company Intellectual Property described in clause (vi) above is referred to herein as "Company Licensed Intellectual Property." Unless otherwise noted, all references to "Company Intellectual Property" shall refer to both Company Owned Intellectual Property and Company Licensed Intellectual Property.
(b) Section 3.5 of the Diamond The Company Disclosure Schedule lists: (i) all patents, copyright registrationsregistered copyrights, registered mask works, trademarks, registered service marks, domain names, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in Diamond the Company Owned Intellectual Property and owned by or on behalf of Diamond or any SubsidiaryProperty; (ii) all hardware products and tools, software products and tools tools, and services that are currently published, offered, or under development by Diamond or any SubsidiaryCompany; and (iii) all licenses, sublicenses and other agreements to which Diamond or any Subsidiary Company is a party and pursuant to which Diamond any end user or any Subsidiary or any other person third party is authorized to have access to or use any Diamond the Company Intellectual Property or exercise any other right with regard thereto; (iv) all Company Licensed Intellectual Property (other than license agreements for standard "shrink wrapped, off the shelf," commercially available, third party products used by the Company); and (v) any obligations of exclusivity, noncompetition, nonsolicitation, first refusal or first negotiation to which Company is subject under any agreement concerning Company Intellectual Property that does not fall within the ambit of (iii) or (iv) above. The disclosures described in (iii), (iv), and (v) hereof include the names and dates of the relevant agreements, as well as the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royalty.
(c) Diamond The Company Intellectual Property consists solely of items and rights that which are either: (i) owned solely by Diamond Company by assignment or any of its Subsidiariesotherwise; (ii) in the public domain; or (iii) rightfully used and authorized for use by Diamond or any Subsidiary Company and their its successors pursuant to a valid license. All Diamond Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 of the Diamond Disclosure Scheduleagreement. Diamond and its Subsidiaries have Company has all rights in Diamond the Company Intellectual Property necessary to carry out DiamondCompany's current and anticipated future (up to the Closing) activities and has or any Subsidiaryhad all rights in the Company Intellectual Property reasonably necessary to carry out Company's current, former and planned future activities, including without limitation limitation, and solely to the extent necessary to carry out such activities, rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), disclose, transmit, display and perform publicly, license, rent, lease, assign assign, and sell Diamond the Company Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. All software and firmware listings that are part of the Company Owned Intellectual Property are adequately commented in accordance with generally accepted standard industry practices.
(d) Diamond Company is not, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated hereby, or performance of DiamondCompany's obligations hereunder or the consummation of the Mergerthereunder, will Diamond Company be, in violation of any license, sublicense sublicense, or other agreement relating to any Diamond the Company Intellectual Property to which Diamond or any Subsidiary Company is a party or otherwise bound. Diamond Except as specifically described in the Company Disclosure Schedule, Company is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Diamond Company or Surviving Corporation, as successor to Diamond, its successors or licensees in Diamond the Company Intellectual Property.
(e) To The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any Company Owned Intellectual Property or any other authorized exercise of rights in or to the Company Owned Intellectual Property by Company or its successors or licensees does not infringe any copyright, patent, trade secret, trademark, service ▇▇▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity, or right in personal or other data of any person. Further, to the knowledge of Diamond or any of its SubsidiariesCompany and the Principal Shareholders, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, Company Licensed Intellectual Property or any other authorized exercise of rights, rights in or to the Company Licensed Intellectual Property by Diamond Company or any Subsidiary its licensees does not infringe any copyright, patent, trade secret, trademark, service mark, ▇▇ade ▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, right of publicity or right in personal or other data of any Personperson. No claims (i) challenging the validity, effectiveness, or ownership by Diamond or any Subsidiary Company of any Diamond of the Company Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, serviceCompany Intellectual Property by Company or its successors or licensees infringes, or process as usedwill infringe on, provided any intellectual property or offered at other proprietary or personal right of any timeperson, have been asserted or, to the knowledge of Company and the Principal Shareholders, are threatened by any person nor, to the knowledge of Company and the Principal Shareholders, are there any valid grounds for any bona fide claim of any such kind. All granted or issued patents and all registered mask works, domain names, and trademarks listed on the Company Disclosure Schedule and all copyright registrations held by Company are valid, enforceable and subsisting. To the knowledge of Company and the Principal Shareholders, there is no unauthorized use, infringement, or as proposed for usemisappropriation of any of the Company Owned Intellectual Property by any employee, reproductionor former employee, modification, distribution, licensing,or other third party.
(f) Section 3.5 No parties other than Company possess any current or contingent rights to any source code that is part of the Diamond Company Owned Intellectual Property (including, without limitation, through any escrow account).
(g) The Company Disclosure Schedule separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Diamond Intellectual Property. Diamond and its Subsidiaries have secured from all parties who have created any portion of, or otherwise have any rights in or to, Diamond the Company Owned Intellectual Property other than employees of Company whose work product was created by them within the scope of their employment by Company and constitutes works made for hire owned by Company. Company has secured from all parties who are not employees and who have created any material portion of, or otherwise have any rights in or to, the Company Owned Intellectual Property valid and enforceable written assignments or licenses of any such work or other rights to or such Subsidiaries Company and has provided true and complete copies of such assignments or licenses to ParentExpedia.
(gh) Diamond The Company Disclosure Schedule includes a true and complete list of support and maintenance agreements relating to Company Owned Intellectual Property or to which Company is a party as to Company Licensed Intellectual Property, including the identity of the parties and the respective dates of such agreements.
(i) Company has obtained legally binding written agreements from all employees and from third parties with whom Diamond, to its knowledge, Company has shared confidential proprietary information (i) of Diamond or any Subsidiary Company or (ii) received from others that Diamond which Company is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, that which agreements require such employees and third parties to keep such information confidential confidential.
(j) Company has obtained any and all necessary consents from consumers with regard to the Company's collection and dissemination of personal consumer information in accordance with Company's privacy policy as published on its website. Company's practices regarding the terms thereofcollection and use of consumer personal information are in accordance with Company's privacy policy as published on its website.
(k) The Company Owned Intellectual Property is, and any products manufactured and commercially released by Company or currently under development, are fully Year 2000 Compliant in all material respects and will not cease to be fully Year 2000 Compliant in any material respect at any time during or after the calendar year AD 2000. Diamond has made available copies of such written agreements, as executed, to Parent.To the knowledge
Appears in 1 contract
Sources: Merger Agreement (Expedia Inc)
Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "Diamond Intellectual Property" consists of the following intellectual property:
(i) all All patents, trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefor, schematics, software, firmwaremask works, net lists, schematics, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and rights, applications and registrations for any of the foregoing;
(ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein;
(iii) all other tangible or intangible proprietary information and materials; and
or materials that are or have been used in (ivincluding in the development of) all license and other rights in any third party product product, technology or any third party intellectual property described in process (i) through (iii) above; that are owned currently being or held formerly manufactured, developed or marketed by or on behalf of Diamond or any Subsidiary or that are being, and/or have been, usedCompany, or are (ii) previously or currently under development for usepossible future manufacturing, in development, marketing or other use by Company will hereinafter be referred to as the business of Diamond or any Subsidiary as it has been, is currently or is currently planned to be conducted; provided, however, that Diamond Intellectual Property will not include any commercially available third party software or related intellectual property"COMPANY INTELLECTUAL PROPERTY."
(ba) Section 3.5 of the Diamond The Company Disclosure Schedule lists: (i) all patents, copyright registrationscopyrights, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, trademarks and any applications and registrations for any of the foregoing, that are foregoing included in Diamond the Company Intellectual Property Property, together with a list of all of Company's currently manufactured products and owned by or on behalf of Diamond or any Subsidiary; currently published software products, (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by Diamond or any Subsidiary; and (iii) all licenses, sublicenses and other agreements to which Diamond or any Subsidiary Company is a party and pursuant to which Diamond or any Subsidiary Company or any other person is authorized to use any Diamond of the Company Intellectual Property or exercise any other right with regard thereto. The disclosures described in Property, and (iii) hereof include the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royaltyall development agreements entered into by Company.
(cb) Diamond The Company Intellectual Property consists solely of items and rights that are eitherwhich are: (i) owned solely by Diamond or any of its Subsidiaries; Company, (ii) in the public domain; , or (iii) rightfully used by Company and authorized for use by Diamond or any Subsidiary and their its successors pursuant to a valid license. All Diamond written license and, with respect to Company Intellectual Property that consists owned by Company, Company owns the entire right, title and interest in and to such Company Intellectual Property free and clear of license or other rights to third party property is separately set forth in Section 3.5 any Liens. To the Knowledge of the Diamond Disclosure Schedule. Diamond and its Subsidiaries have Company, Company has all rights in Diamond the Company Intellectual Property necessary to carry out Diamond's or any SubsidiaryCompany's current, former former, and planned anticipated future (up to the Closing) activities, including without limitation rights to make, use, exclude others from using, sell, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign assign, and sell Diamond the Company Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses.
(c) All right and title in the patents and applications thereto included in the Company Intellectual Property ("PATENTS") are owned exclusively by Company. To the Knowledge of Company, the inventions which are the subject of the Patents were not known or used by Company or its employees or agents or by third parties in any country before the invention thereof by said employees or agents. To the Knowledge of Company, the inventions which are the subject of the Patents were not patented or described in a printed publication in any country or placed in public use or on sale in any country more than one year prior to the date of application for patents by Company. To the Knowledge of Company there is no prior art more relevant to the inventions which are the subject of the Patents than that considered by the relevant patent office during the prosecution of the patent applications and patents for the inventions which are the subject of the Patents.
(d) Diamond Company is not, nor nor, as a result of the execution or delivery of this Agreement and all other agreements contemplated herebyAgreement, or performance of DiamondCompany's obligations hereunder or the consummation of the Mergerhereunder, will Diamond Company be, in violation of any license, sublicense or other agreement relating to any Diamond Intellectual Property to which Diamond or any Subsidiary Company is a party or otherwise bound. Diamond Company is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, consideration with respect to any exercise of rights by Diamond Company or Surviving Corporation, as successor to Diamond, Buyer in Diamond the Company Intellectual Property.
(e) To the knowledge of Diamond or any of its SubsidiariesCompany, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Diamond or any Subsidiary Company Intellectual Property does not infringe on any patent, copyright, patent, trade secret, trademark, service mark, ▇▇ade ▇▇, trade name, firm name, logo, trade dress, moral right, other intellectual property right, right of privacymask work, or right in personal data moral rights, of any Person. No claims (i) challenging the validity, effectiveness, or ownership by Diamond or any Subsidiary Company of any Diamond of the Company Intellectual Property, or (ii) to the effect that the Company Intellectual Property infringes or will infringe on any intellectual property or other proprietary right of any person have been asserted against the Company or, to the Knowledge of Company, are threatened by any person against the Company nor to the Knowledge of Company are there any valid grounds for any bona fide claim of any such kind against the Company. All granted or issued patents and mask works and all trademarks and copyrights held by Company are valid, enforceable and subsisting, and all patent applications, provisional patents, copyright applications and trademark applications with respect to the Company Intellectual Property are pending and in good standing, all without challenge of any kind; and no aspect thereof is subject to any outstanding order, ruling, decree, judgment or stipulation by or with any governmental authority or arbitrator. To the Knowledge of Company, there is no material unauthorized use, reproductioninfringement or misappropriation of any of the Company Intellectual Property by any third party, modification, manufacturing, distribution, licensing, sublicensing, sale, employee or any other exercise of rights in any product, work, technology, service, or process as used, provided or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing,former employee.
(f) Section 3.5 of the Diamond Disclosure Schedule separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Diamond Intellectual Property. Diamond and its Subsidiaries have Company has secured from all parties who have created any portion of, or otherwise have any rights in or to, Diamond the Company Intellectual Property valid and enforceable written assignments of any such work or other rights to or such Subsidiaries and has provided true and complete copies of such assignments to ParentCompany.
(g) Diamond has obtained written agreements All software included in the Company Intellectual Property relating to any critical business function of the Company, other than any software included in any products sold by the Company at any time prior to a date one year prior to Closing, is year 2000 Compliant ("YEAR 2000 COMPLIANT"). All software included in any products sold by the Company was purchased from all employees and from warranted by third parties with whom Diamondparty vendors. Year 2000 Compliant means date information that accurately processes date/time data (including storing, to its knowledgecalculating, has shared confidential proprietary information (icomparing, and sequencing) of Diamond or any Subsidiary or (ii) received from others that Diamond is obligated to treat as confidential from, into, and to obtain between the written agreement of employees twentieth and others to keep confidentialtwenty-first centuries, that agreements require such employees the years 1999, 2000 and third parties to keep such information confidential in accordance with 2001 specifically, and the terms thereof. Diamond has made available copies of such written agreements, as executed, to Parentleap year calculations.
Appears in 1 contract
Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "Diamond Intellectual Property" consists of the following intellectual property:
(i) all patents, trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefor, mask works, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing;
(ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein;
(iii) all other tangible or intangible proprietary information and materials; and
(iv) all license and other rights in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of Diamond or any Subsidiary Horizon or that are being, and/or have been, used, or are currently under development for use, in the business of Diamond or any Subsidiary Horizon as it has been, is currently or is currently planned to be conducted; provided, however, that Diamond Horizon Intellectual Property will not include any commercially available intellectual property of any third party software or related intellectual propertyparty.
(b) Section 3.5 of the Diamond Horizon Disclosure Schedule lists: (i) all patents, copyright registrations, mask works, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in Diamond Horizon Intellectual Property and owned by or on behalf of Diamond or any SubsidiaryHorizon; (ii) all material hardware products and tools, software products and tools and services that are currently published, offered, or under development by Diamond or any SubsidiaryHorizon; and (iii) all licenses, sublicenses and other agreements to which Diamond or any Subsidiary Horizon is a party and pursuant to which Diamond or any Subsidiary Horizon or any other person is authorized to use any Diamond Horizon Intellectual Property or exercise any other right with regard thereto. The disclosures described in (iii) hereof include the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royalty.
(c) Diamond Except as disclosed in Section 3.5 of the Horizon Disclosure Schedule, Horizon Intellectual Property consists solely of items and rights that are either: (i) owned solely by Diamond or any of its SubsidiariesHorizon; (ii) in the public domain; or (iii) rightfully used and or authorized for use by Diamond or any Subsidiary Horizon and their its successors pursuant to a valid license, and none of such items or rights is in the public domain or is "free-▇▇▇▇" or "shareware". All Diamond Horizon Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 of the Diamond Horizon Disclosure Schedule. Diamond and its Subsidiaries have Other than as set forth in Section 3.5 of the Horizon Disclosure Schedule, Horizon has all rights in Diamond Horizon Intellectual Property necessary to carry out DiamondHorizon's or any Subsidiary's current, current and former and planned future activities, including without limitation rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign and sell Diamond Horizon Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses.
(d) Diamond Other than as disclosed in Section 3.5 of the Horizon Disclosure Schedule, Horizon is not, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated hereby, or performance of DiamondHorizon's obligations hereunder or the consummation of the Merger, will Diamond Horizon be, in violation of any license, sublicense or other agreement relating to any Diamond Horizon Intellectual Property to which Diamond or any Subsidiary Horizon is a party or otherwise bound. Diamond Horizon is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Diamond Horizon or Surviving CorporationTranSwitch, as successor to DiamondHorizon, in Diamond Horizon Intellectual Property.
(e) To the knowledge of Diamond or any of its Subsidiaries, the The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Diamond or any Subsidiary Horizon through the Closing Date does not infringe any copyright, patent, trade secret, trademark, service mark, ▇▇ade ▇▇, trade name, firm name, logo, trade dress, mask work, moral right, other intellectual property right, right of privacy, or right in personal data of any Person. No claims (i) challenging the validity, effectiveness, or ownership by Diamond or any Subsidiary Horizon of any Diamond Horizon Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service, or process as used, provided or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing,, sublicensing, sale, or any other exercise of rights, by Horizon infringes or will infringe on any intellectual property or other proprietary or personal right of any Person have been asserted to Horizon or, to the knowledge of Horizon (as defined below), are threatened by any Person nor, to Horizon's knowledge, are there any valid grounds for any bona fide claim of any such kind. Neither Horizon nor the Founder has received notice of any legal or governmental proceedings, including interference, re-examination, reissue, opposition, nullity, or cancellation proceedings pending that relate to any Horizon Intellectual Property, other than review of pending applications for patent, and Horizon is not aware of any information indicating that such proceedings are threatened or contemplated by any Governmental Entity or any other Person. All granted or issued patents and mask works and all registered trademarks and copyright registrations owned by Horizon are valid, enforceable and subsisting. To the knowledge of Horizon, there is no unauthorized use, infringement, or misappropriation of any Horizon Intellectual Property by any third party, employee or former employee.
(f) Section 3.5 of the Diamond Horizon Disclosure Schedule separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Diamond such Horizon Intellectual PropertyProperty other than Horizon Intellectual Property that is licensed to Horizon. Diamond and its Subsidiaries have Horizon has secured from all parties who have created any portion of, or otherwise have any rights in or to, Diamond Horizon Intellectual Property valid and enforceable written assignments of any such work or other rights to or such Subsidiaries Horizon and has provided true and complete copies of such assignments to ParentTranSwitch.
(g) Diamond Horizon has obtained written agreements from all employees and from third parties with whom DiamondHorizon, to its knowledge, has shared confidential proprietary information (i) of Diamond or any Subsidiary Horizon or (ii) received from others that Diamond Horizon is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, that which agreements require such employees and third parties to keep such information confidential in accordance with the terms thereof. Diamond Horizon has made available copies of such written agreements, as executed, to ParentTranSwitch.
Appears in 1 contract
Sources: Agreement and Plan of Reorganization (Transwitch Corp /De)
Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "Diamond Intellectual Property" consists of the following intellectual property:
(i) all patents, All trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefortherefor (excluding any right of whatever kind relating to "ABB", "BBC", "Asea" or "▇▇▇▇▇ Boveri", including any such name spelled in upper or lower case or any combination thereof, or any names confusingly similar thereto or any combination of such names), software, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing;
, that are in (including in the development of) any product, technology or process (i) currently being or formerly (but not prior to January 1, 1995) manufactured, developed or marketed by Company with respect to the business of Company, or (ii) all documentspreviously (but not prior to January 1, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing 1995) or customer support for all intellectual property described herein;
(iii) all other tangible or intangible proprietary information and materials; and
(iv) all license and other rights in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of Diamond or any Subsidiary or that are being, and/or have been, used, or are currently under development for usepossible future manufacturing, in development, marketing or other use by Company with respect to the business of Diamond or any Subsidiary Company and set forth in SCHEDULE 3.12 will hereinafter be referred to as it has been, is currently or is currently planned to be conducted; provided, however, that Diamond Intellectual Property will not include any commercially available third party software or related intellectual propertythe "COMPANY INTELLECTUAL PROPERTY."
(ba) Section 3.5 of the Diamond Disclosure Schedule SCHEDULE 3.12(a) lists: (i) all patents, copyright registrations, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, trademarks and any applications and registrations for any of the foregoing, that are foregoing included in Diamond the Company Intellectual Property Property, together with a list of all of Company's currently manufactured products and owned by or on behalf of Diamond or any Subsidiary; currently published software products, (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by Diamond or any Subsidiary; and (iii) all material written licenses, sublicenses and other agreements to which Diamond or any Subsidiary Company is a party and pursuant to which Diamond or any Subsidiary Company or any other person is authorized to use any Diamond of the Company Intellectual Property or exercise any other right with regard thereto. The disclosures described in Property, and (iii) hereof include the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royaltyall material development agreements entered into by Company.
(cb) Diamond Except as set forth in SCHEDULE 3.12(b), the Company Intellectual Property consists solely of items and rights that are eitherwhich are: (i) owned solely by Diamond or any of its Subsidiaries; Company, (ii) in the public domain; , or (iii) to Company's Knowledge, rightfully used by Company and authorized for use by Diamond or any Subsidiary and their its successors pursuant to a valid license, and, with respect to Company Intellectual Property owned by Company, Company owns the entire right, title and interest in and to such Company Intellectual Property free and clear of any Liens. To Company's Knowledge, no Company Intellectual Property is being used which requires a license without such license. All Diamond Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 of the Diamond Disclosure Schedule. Diamond and its Subsidiaries have To Company's Knowledge, Company has all rights in Diamond the Company Intellectual Property necessary to carry out Diamond's or any SubsidiaryCompany's current, former and planned future activities(but not prior to January 1, including without limitation rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly1995), transmit, display and perform publicly, license, rent, lease, assign and sell Diamond Intellectual Property in all geographic locations and fields of use, and anticipated future (up to sublicense any or all such rights to third parties, including the right to grant further sublicensesClosing) activities.
(dc) Diamond is notTo Company's Knowledge, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated hereby, or performance of Diamond's obligations hereunder or the consummation of the Merger, will Diamond be, in violation of any license, sublicense or other agreement relating to any Diamond Company Intellectual Property to which Diamond or any Subsidiary is a party or otherwise bound. Diamond is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Diamond or Surviving Corporation, as successor to Diamond, in Diamond Intellectual Property.
(e) To the knowledge of Diamond or any of its Subsidiaries, the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Diamond or any Subsidiary does not infringe on any copyright, patent, trade secret, trademark, service mark, ▇▇ade name, firm name, logo, trade dress, moral right, other intellectual property right, proprietary right of privacy, or right in personal data of any Person. No claims (i) challenging the validity, effectiveness, or ownership by Diamond or any Subsidiary Company of any Diamond of the Company Intellectual Property, or (ii) to the effect that the Company Intellectual Property infringes or will infringe on any intellectual property or other proprietary right of any person have been asserted or, to the Knowledge of Company, are threatened by any person nor to the Knowledge of Company are there any valid grounds for any bona fide claim of any such kind. All trademarks held by Company are valid and enforceable, and all trademark applications with respect to the Company Intellectual Property are pending and all applicable administrative actions, including the payment of fees and filing of applicable documentation, have been taken, all without challenge of any kind; and no aspect thereof is subject to any outstanding order, ruling, decree, judgment or stipulation by or with any governmental authority or arbitrator. To the Knowledge of Company, there is no material unauthorized use, reproductioninfringement or misappropriation of any of the Company Intellectual Property by any third party, modification, manufacturing, distribution, licensing, sublicensing, sale, employee or any other exercise of rights in any product, work, technology, service, or process as used, provided or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing,former employee.
(fd) Section 3.5 of the Diamond Disclosure Schedule separately lists Company has provided to Buyer all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Diamond Intellectual Property. Diamond and its Subsidiaries have secured written assignments from all parties who have created any portion of, or otherwise have any rights in or to, Diamond the Company Intellectual Property valid and enforceable written assignments of any such work or other rights to or such Subsidiaries and has provided true and complete copies of such assignments to ParentCompany.
(g) Diamond has obtained written agreements from all employees and from third parties with whom Diamond, to its knowledge, has shared confidential proprietary information (i) of Diamond or any Subsidiary or (ii) received from others that Diamond is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, that agreements require such employees and third parties to keep such information confidential in accordance with the terms thereof. Diamond has made available copies of such written agreements, as executed, to Parent.
Appears in 1 contract