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EXHIBIT 10.56
PATENT LICENSE AGREEMENT
AND MUTUAL RELEASE
between
LUCENT TECHNOLOGIES INC.
and
ASPECT TELECOMMUNICATIONS CORPORATION
Effective as of January 1, 1998
Relating to [*]
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[*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - GRANTS OF LICENSES
1.01 Grant
1.02 Duration and Extent
1.03 Scope
1.04 Ability to Provide Licenses
1.05 Joint Inventions
1.06 Publicity
1.07 Pending Patent Litigation
ARTICLE II - ROYALTY AND PAYMENTS
2.01 Royalty Calculation
ARTICLE III - TERMINATION
3.01 Breach
3.02 Voluntary Termination
3.03 Survival
ARTICLE IV - MISCELLANEOUS PROVISIONS
4.01 Disclaimer
4.02 Limited Assignability; Mergers and Acquisitions
4.03 Addresses
4.04 Taxes
4.05 Choice of Law
4.06 Integration
4.07 Outside the United States
4.08 Dispute Resolution
4.09 Releases
4.10 Existing License Agreements
DEFINITIONS APPENDIX
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PATENT LICENSE AGREEMENT
Effective as of January 1, 1998 (the "Effective Date"), LUCENT
TECHNOLOGIES INC., a Delaware corporation ("LUCENT"), having an office at ▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, and ASPECT TELECOMMUNICATIONS
CORPORATION, a California corporation ("ASPECT"), having an office at ▇▇▇▇ ▇▇▇
▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, agree as follows:*
ARTICLE I
GRANTS OF LICENSES
1.01 GRANT
(a) LUCENT hereby grants to ASPECT under LUCENT's PATENTS personal,
nonexclusive and non-transferable worldwide licenses for:
[*]
(b) ASPECT hereby grants to LUCENT under ASPECT's PATENTS personal,
nonexclusive, royalty-free and non-transferable worldwide licenses
for:
[*]
1.02 DURATION AND EXTENT
All licenses granted herein by either party under any patent shall
terminate on the earlier of such patent's expiration or the end of the LIMITED
PERIOD. At the end of the LIMITED PERIOD, the cross-licenses for future use of
the patents shall expire unless renewed, but the parties and their customers,
acting within the scope of the license, shall be immune from infringement claims
for activities during the LIMITED PERIOD, and such protection shall extend to
the parties and their customers, acting within the scope of the license, for all
transactions during the LIMITED PERIOD. For example, manufacture, sale or lease
of LICENSED PRODUCTS during the LIMITED PERIOD would not be subject to a
retroactive claim for damages after the LIMITED PERIOD ends, and no parties or
customers, acting within the scope of the license, would be subject to claims
for infringement at any time for LICENSED PRODUCTS initially sold or leased
during the LIMITED PERIOD.
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* Any term in capital letters which is defined in the Definitions Appendix
shall have the meaning specified therein.
[*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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1.03 SCOPE
(a) The licenses granted herein are licenses to (i) make, have made,
use, lease, offer to sell, sell and import LICENSED PRODUCTS; (ii)
make, have made, use and import machines, tools, materials and other
instrumentalities, insofar as such machines, tools, materials and
other instrumentalities are involved in or incidental to the
development, manufacture, testing or repair of LICENSED PRODUCTS
which are or have been made, used, leased, owned, sold or imported
by the grantee of such license; and (iii) convey to any customer of
the grantee, with respect to any LICENSED PRODUCT which is sold or
leased by such grantee to such customer, rights to use and resell
such LICENSED PRODUCT as sold or leased by such grantee (whether or
not as part of a larger combination); provided, however, that no
rights may be conveyed to customers with respect to any invention
which is directed to (1) a combination of such LICENSED PRODUCT (as
sold or leased) with any other product not furnished by grantee, (2)
a method or process which is other than the method of operation
carried out by the LICENSED PRODUCT in the form furnished by
grantee, or (3) a method or process involving the use of a LICENSED
PRODUCT to manufacture (including associated testing) any other
product.
(b) The licenses granted herein are not to be construed either (i) as
consent by the grantor to any act which may be performed by the
grantee, except to the extent impacted by a patent licensed herein
to the grantee, or (ii) to include licenses to contributorily
infringe or induce infringement under U.S. law or a foreign
equivalent thereof for products not manufactured and sold (or
leased) by ASPECT and its SUBSIDIARIES, licensed pursuant to the
provisions of this Agreement, or LUCENT and its SUBSIDIARIES,
licensed pursuant to the provisions of this Agreement.
(c) Until an event specified in Section 4.02(c) occurs, the grant of
each license hereunder includes the right to grant sublicenses
within the scope of such license to a party's SUBSIDIARIES for so
long as they remain its SUBSIDIARIES. Any such sublicense may be
made effective retroactively, but not prior to the effective date
hereof, nor prior to the sublicensee's becoming a SUBSIDIARY of such
party. When an event specified in Section 4.02(c) occurs, only the
party acquired is precluded from granting sublicenses to its
SUBSIDIARIES.
(d) The "have-made" right of ASPECT and LUCENT to sell LICENSED PRODUCTS
does not include the right to distribute products or offer services
of a third party for the purpose of shielding such products and/or
services from the patents of the other party.
1.04 ABILITY TO PROVIDE LICENSES
(a) It is recognized that certain actions of the parties to this
Agreement may limit their ability to provide licenses hereunder
without constituting a breach. In particular, (i) prior to the
actual or constructive reduction to practice of an invention
disclosed in a patent application of a party or its SUBSIDIARY, such
party or SUBSIDIARY may assign to a third party the title to patents
on such invention, or (ii) prior to the execution of this Agreement,
a party or its SUBSIDIARY may have limited by contract its ability
to provide licenses hereunder with respect to certain patents or
technologies.
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(b) Each party agrees to disclose to the other party, promptly upon
receipt of a written request for such disclosure, any such
assignment or other contractual limitation with respect to any
patent and/or technology which is specifically identified in such
request.
(c) Each party represents that it has already disclosed to the other
party any such assignment or other contractual limitation currently
in effect with respect to any patent and/or technology specifically
identified in any such disclosure request received by it prior to
execution of this Agreement.
(d) A party's failure to meet any obligation hereunder, due to the
assignment of title to any invention or patent, or the granting of
any licenses, to the United States Government or any agency or
designee thereof pursuant to a statute or regulation of, or contract
with, such Government or agency, shall not constitute a breach of
this Agreement.
(e) LUCENT represents and warrants that, except for its patents (and
applications) relating to the following areas of technology, LUCENT
has the right and ability to grant under LUCENT's PATENTS the
licenses and releases in this Agreement:
optical tweezers, connector system products, optical traps,
insecticide dispensers, printed circuit boards and backplanes,
scalpel machines, locator devices, near field scanning optical
instruments, undersea surveillance, manufacture of copper wire,
fingerprint identification systems and fifty telecommunications
services patents that are jointly owned by AT&T Corp. and LUCENT.
Telecommunications services is defined as the operation of a
communications network to provide communication services to
customers, including the processing of information, to the extent
needed to transfer information between locations. Except as limited
by a confidential agreement with AT&T regarding the grant of rights
for telecommunication services under the fifty patents, LUCENT
grants rights herein to ASPECT under the fifty patents in accordance
with ARTICLE 1 of this Agreement.
(f) ASPECT represents and warrants that, except for its patents (and
applications) relating to the following areas of technology, ASPECT
has the right and ability to grant for ASPECT's PATENTS the licenses
and releases in this Agreement:
automatic warranty registration outside the field of hardware,
software or peripheral equipment principally used in commercial
telecommunications systems.
1.05 JOINT INVENTIONS
(a) There are countries (not including the United States) which require
the express consent of all inventors or their assignees to the grant
of licenses or rights under patents issued in such countries for
joint inventions.
(b) Each party shall give such consent, or shall obtain such consent
from its SUBSIDIARIES, its employees or employees of any of its
SUBSIDIARIES, as required to make
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full and effective any such licenses and rights respecting any joint
invention granted to the grantee hereunder by such party and by
another licensor of such grantee.
(c) Each party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents
are necessary to make full and effective such licenses and rights
respecting any joint invention purported to be granted by it
hereunder. If, in spite of such reasonable steps, such party is
unable to obtain the requisite consents from such third parties, the
resulting inability of such party to make full and effective its
purported grant of such licenses and rights shall not be considered
to be a breach of this Agreement provided, however, that such party
shall afford the grantee the opportunity to obtain such consents
itself.
1.06 PUBLICITY
(a) Nothing in this Agreement shall be construed as conferring upon
either party or its SUBSIDIARIES any right to include in
advertising, packaging or other commercial activities related to a
LICENSED PRODUCT, any reference to the other party (or any of its
SUBSIDIARIES), its trade names, trademarks or service marks.
(b) Neither party shall disclose any of the terms and conditions
(including but not limited to payments) of this Agreement without
the written consent of the other party, unless such disclosure is:
(i) in response to a valid order of a court or other governmental
body of the United States or any political subdivision
thereof; provided, however, that the disclosing party shall
have given prior notice to the other party and made a
reasonable effort to obtain a protective order requiring that
the information so disclosed be used only for the purposes for
which the order was issued; or
(ii) otherwise required by law, including but not limited to
disclosures required by securities laws or regulations; or
(iii) necessary to establish rights under this Agreement; or
necessary for use by outside accountants and legal counsel
Notwithstanding (ii) and (iii), each party shall take reasonable
steps to preclude the release of the financial terms of this
Agreement such as, for example, filing this Agreement in confidence
with the Securities and Exchange Commission (SEC), and deleting the
financial terms therefrom in any copy, if any, made available to the
public.
(c) The parties will issue a joint press release, either prior to the
stock market opening or after its close, reciting that the parties
have dismissed their respective lawsuits, released one another for
claims of past infringement, settled their disputes, and that Aspect
will pay an undisclosed sum to Lucent in connection with the
settlement and cross license. In accordance with Section 1.06(b),
except as required by the securities laws or similar governmental
regulations, reporting to auditors and legal process, the terms of
the agreement shall remain confidential.
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1.07 PENDING PATENT LITIGATION
(a) The parties agree that the following pending patent litigations will
be dismissed with prejudice within ten (10) days after execution of
this Agreement:
(i) LUCENT v. ASPECT, Civil Action No. 97-1618 in the U.S.
District Court for the Eastern District of Pennsylvania
("Allentown Action");
(ii) LUCENT v. ASPECT, Civil Action No. 3-98CV0280-G in the U.S.
District Court for the Northern District of Texas; and
(iii) ASPECT v. LUCENT, Civil Action No. C98-0422 in the U.S.
District Court for the Northern District of California
("California Action").
(b) The parties also agree not to pursue any arbitration proceedings
involving Aspect, Lucent, Octel, Syntellect or STC concerning the
interpretation of any contract that relates to patents acquired by
Aspect.
(c) Each party shall bear its own costs and attorneys' fees in all
litigations and arbitrations.
(d) The parties represent that there are no other pending lawsuits or
arbitrations against the other involving intellectual property.
(e) With respect to the pending litigation set forth in Section 1.07(a),
each of the parties represents and warrants to the other that it has
not heretofore assigned or transferred or purported to assign or
transfer any of the claims in such suits, or any part or portion
thereof, and agrees to indemnify and hold harmless the other from
and against any claim, demand, damage, debt, liability, account,
reckoning, obligation, cost, expense, lien, action and cause of
action (including the payment of attorneys' fees and cost actually
incurred, whether or not litigation is commenced) based on, in
connection with or arising out of any such assignment or transfer or
purported or claimed assignment or transfer.
(f) LUCENT warrants that it owns the four patents asserted in the
Allentown Action; that the term LUCENT's PATENTS includes each of
these patents; that licenses and releases are granted herein to
ASPECT with respect to each of the four patents; and that LUCENT has
the right to grant such licenses and releases.
(g) ASPECT warrants that it owns the seven patents asserted in the
California Action; that the term ASPECT's PATENTS includes each of
these patents; that licenses and releases are granted herein to
LUCENT with respect to each of the seven patents;. and that ASPECT
has the right to grant such licenses and releases.
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ARTICLE II
ROYALTY AND PAYMENTS
2.01 ROYALTY CALCULATION
(a) [*] U.S. dollars ($[*]), payable to LUCENT by wire transfer within
ten business days after execution of this Agreement representing
fourteen million U.S. dollars ($14,000,000) for the releases granted
in Section 4.09(a) and [*] U.S. dollars ($[*]) for royalties for
calendar year 1998.
(b) Four annual payments to LUCENT as follows:
[*] U.S. dollars ($[*]) royalty for calendar year 1999 payable on
March 15, 1999;
[*] U.S. dollars ($[*]) royalty for calendar year 2000 payable on
March 15, 2000;
[*] U.S. dollars ($[*]) royalty for calendar year 2001 payable on
March 15, 2001; and
[*] U.S. dollars ($[*]) royalty for calendar year 2002 payable on
March 15, 2002.
(c) Two annual payments payable to LUCENT as follows:
[*] U.S. dollars ($[*]) royalty for calendar year 2003 payable on
March 15, 2003; and
[*] U.S. dollars ($[*]) royalty for calendar year 2004 payable on
March 15, 2004.
(d) ASPECT shall have the option to extend or not extend the LIMITED
PERIOD on a year-by-year basis as follows:
(1) On or before November 1, 2004, ASPECT shall notify
LUCENT if ASPECT elects not to extend the LIMITED PERIOD for
calendar year 2005. In the absence of such a notification, the
one-year extension shall be automatic and, on or before March
15, 2005, ASPECT shall pay LUCENT the sum of [*] U.S. Dollars
($[*]). This is a minimum payment for the calendar year 2005.
The amount actually owed for calendar year 2005 is the higher of
[*] U.S. dollars ($[*]) or [*] U.S. dollars ($[*]) plus [*]% of
the amount, if any, by which ASPECT's publicly reported
"Product" revenues for calendar year 2005 exceed [*] U.S.
dollars ($[*]). For example, if ASPECT's Product revenues for
2005 were $[*], the total royalty due would be [*] U.S. dollars
($[*]), i.e., [*] plus [*].
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[*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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Any royalty due above the minimum payment (e.g., [*] dollars in
the example) is payable March 15, 2006.
(2) On or before November 1, 2005, ASPECT shall notify
LUCENT if ASPECT elects not to extend the LIMITED PERIOD for
calendar year 2006. In the absence of such a notification, the
one year extension shall be automatic and, on or before
March 15, 2006, ASPECT shall pay LUCENT the sum of [*] U.S.
dollars ($[*]). This is a minimum payment for the calendar year
2006. The amount actually owed for calendar year 2006 is the
higher of [*] ($[*]) or [*] U.S. dollars ($[*]) plus [*]% of the
amount, if any, by which ASPECT's publicly reported Product
revenues for calendar year 2006 exceed [*] U.S. dollars ($[*]).
Any royalty due above the minimum payment is payable March 15,
2007.
(3) On or before November 1, 2006, ASPECT shall notify
LUCENT if ASPECT elects not to extend the LIMITED PERIOD from
January 1, 2007 through February 28, 2008. In the absence of
such a notification, the fourteen month extension shall be
automatic and, on or before March 15, 2007, ASPECT shall pay
LUCENT the sum of [*] U.S. Dollars ($[*]). This is a minimum
payment for the period from January 1, 2007 and February 28,
2008. The amount actually owed for this period is the higher of
[*] U.S. dollars or [*] U.S. dollars plus [*]% of the amount, if
any, by which ASPECT's publicly reported Product revenues for
calendar year 2007 exceed [*] U.S. dollars ($[*]). Any royalty
due above the minimum payment is payable March 15, 2008.
An election by ASPECT not to extend the LIMITED PERIOD shall
operate to preclude any extension of the LIMITED PERIOD for
subsequent years as well.
(e) Overdue payments hereunder shall be subject to a late payment charge
calculated at an annual rate of three percentage points (3%) over
the prime rate or successive prime rates (as posted in New York
City) during delinquency. If the amount of such charge exceeds the
maximum permitted by law, such charge shall be reduced to such
maximum.
ARTICLE III
TERMINATION
3.01 BREACH
In the event of a breach of this Agreement by either party, the other
party may, in addition to any other remedies that it may have, at any time
terminate all licenses and rights granted by it hereunder by not less than two
(2) months written notice specifying such breach, unless within the period of
such notice all breaches specified therein shall have been remedied.
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3.02 VOLUNTARY TERMINATION
(a) By written notice to the other party, either party may voluntarily
terminate all or a specified portion of the licenses and rights
granted to it hereunder. Such notice shall specify the effective
date (not more than six (6) months prior to the giving of said
notice) of such termination and shall clearly specify any affected
patent, invention or product.
(b) In the event of an acquisition/merger as specified in Section
4.02(c), if the acquired company fails to remain a separately
identifiable business for a period of one month, this shall be
deemed a voluntary termination of this Agreement by the acquired
company.
3.03 SURVIVAL
(a) If a company ceases to be a SUBSIDIARY of a party, licenses and
rights granted hereunder with respect to patents of such SUBSIDIARY
on applications filed prior to the date of such cessation, shall not
be affected by such cessation.
(b) Any termination of licenses and rights of a party under the
provisions of this Article III shall not affect such party's
licenses, rights and obligations with respect to any LICENSED
PRODUCT made prior to such termination, shall not affect the
licenses and rights of CUSTOMERS of such party with respect to past
and future use of LICENSED PRODUCTS initially sold or leased prior
to such termination, and shall not affect the other party's licenses
and rights (and obligations related thereto) during the LIMITED
PERIOD.
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.01 DISCLAIMER
NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKES ANY REPRESENTATIONS,
EXTENDS ANY WARRANTIES OF ANY KIND, ASSUMES ANY RESPONSIBILITY OR OBLIGATIONS
WHATEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR OTHERWISE, OTHER THAN
THE LICENSES, RIGHTS AND WARRANTIES HEREIN EXPRESSLY GRANTED.
4.02 LIMITED ASSIGNABILITY; MERGERS AND ACQUISITIONS
(a) The licenses granted hereunder to LUCENT shall extend to the
products or services of any business LUCENT acquires during the
license term without the payment of any additional royalties for so
long as that business is a part of LUCENT or is a SUBSIDIARY of
LUCENT.
(b) The licenses granted hereunder to ASPECT shall extend to [*]
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[*]
(c) [*]
4.03 ADDRESSES
(a) Any notice or other communication hereunder shall be sufficiently
given to ASPECT when sent by certified mail addressed to General
Counsel, Aspect Telecommunications Corporation, ▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, or to LUCENT when sent by certified
mail addressed to Contract Administrator, Intellectual Property
Organization, Lucent
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[*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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Technologies, Inc., Suite 105, 14645 N.W. 77th Avenue, Miami Lakes,
Florida 33014, United States of America. Changes in such addresses
may be specified by written notice.
(b) Payments by ASPECT shall be made to LUCENT at Sun Trust, ▇.▇. ▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇-▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of America.
Alternatively, payments to LUCENT may be made by bank wire transfers
to LUCENT's account: Lucent Technologies Licensing, Account No.
▇▇▇-▇-▇▇▇▇▇▇, Swift Code: ▇▇▇▇▇▇▇▇, ABA Code: ▇▇▇▇▇▇▇▇▇, at Chase
Manhattan Bank, N.A., ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America. Changes in such address or account may be
specified by written notice. If any date specified herein for the
payment of royalties falls on a weekend or holiday, the payment will
be timely if made on the next business day following said date. All
payments shall be made in U.S. dollars.
4.04 TAXES
Each party shall bear the tax, duty, levy, customs fee, or similar charge
("taxes"), including interest and penalties thereon, however designated, imposed
on it as a result of the operation or existence of this Agreement. More
specifically, Lucent shall pay (i) net income taxes imposed upon LUCENT by any
governmental entity within the United States (the fifty (50) states and the
District of Columbia), and (ii) net income taxes imposed upon LUCENT by
jurisdictions outside the United States which are allowable as a credit against
the United States Federal income tax of LUCENT or any of its SUBSIDIARIES. In
order for the exception in (ii) to be effective, ASPECT must furnish to LUCENT
evidence sufficient to satisfy the United States taxing authorities that such
taxes have been paid. Such evidence must be furnished to LUCENT within thirty
(30) days of issuance by the local taxing authority.
4.05 CHOICE OF LAW
The parties are familiar with the principles of New York commercial law,
and desire and agree that the law of New York shall apply in any dispute arising
with respect to this Agreement.
4.06 INTEGRATION
This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter hereof and merges all prior discussions
between them. Neither of the parties shall be bound by any warranties,
understandings or representations with respect to such subject matter other than
as expressly provided herein or in a writing signed with or subsequent to
execution hereof by an authorized representative of the party to be bound
thereby.
4.07 OUTSIDE THE UNITED STATES
(a) There are countries in which the owner of an invention is entitled
to compensation, damages or other monetary award for another's
unlicensed manufacture, sale, lease, use or importation involving
such invention prior to the date of issuance of a patent for such
invention but on or after a certain earlier date, hereinafter
referred to as the invention's "protection commencement date" (e.g.,
the date of publication of allowed claims or the date of publication
or
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"laying open" of the filed patent application). In some instances,
other conditions precedent must also be fulfilled (e.g., knowledge
or actual notification of the filed patent application). The parties
agree that (i) an invention which has a protection commencement date
in any such country may be used in such country pursuant to the
terms of this Agreement on and after any such date, and (ii) all
such conditions precedent are deemed satisfied by this Agreement.
(b) There may be countries in which a party hereto may have, as a
consequence of this Agreement, rights against infringers of the
other party's patents licensed hereunder. Each party hereby waives
any such right it may have by reason of any third party's
infringement or alleged infringement of any such patents.
(c) Each party hereby agrees to register or cause to be registered, to
the extent required by applicable law, and without expense to the
other party or any of its SUBSIDIARIES, any agreements wherein
sublicenses are granted by it under the granting party's patents.
Each party hereby waives any and all claims or defenses, arising by
virtue of the absence of such registration, that might otherwise
limit or affect its obligations to the other party.
4.08 DISPUTE RESOLUTION
(a) If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the parties agree to submit
the dispute to a sole mediator selected by the parties or, at any
time at the option of a party, to mediation by the American
Arbitration Association ("AAA"). If not thus resolved, it shall be
referred to a sole arbitrator selected by the parties within thirty
(30) days of the mediation, or in the absence of such selection, to
AAA arbitration which shall be governed by the United States
Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for or
against a party and affording such remedy as is deemed equitable,
just and within the scope of the agreement; (ii) shall be without
findings as to issues (including but not limited to patent validity
and/or infringement) or a statement of the reasoning on which the
award rests; (iii) may in appropriate circumstances (other than
patent disputes) include injunctive relief; (iv) shall be made
within four (4) months of the appointment of the arbitrator; and (v)
may be entered in any court.
(c) The requirement for mediation and arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the
arbitrator is not empowered to act or make any award other than
based solely on the rights and obligations of the parties prior to
any such termination.
(d) The arbitrator shall be knowledgeable in the legal and technical
aspects of this Agreement and shall determine issues of
arbitrability but may not limit, expand or otherwise modify the
terms of the agreement.
(e) The agreement shall be interpreted in accordance with the laws of
the State of New York exclusive of its conflict of laws provisions
and the place of mediation and arbitration shall be New York City.
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(f) Each party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be
borne equally.
(g) A request by a party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive or other
damages in excess of compensatory damages and each party irrevocably
waives any claim thereto.
(i) The parties, their representatives, other participants and the
mediator and arbitrator shall hold the existence, content and result
of mediation and arbitration in confidence.
4.09 RELEASES
(a) In consideration of the sum of fourteen million United States
dollars (U.S.$14,000,000.00) and other good and valuable
consideration paid by ASPECT to LUCENT, and subject to the receipt
thereof, LUCENT, for itself and for its present SUBSIDIARIES, hereby
releases ASPECT, its present SUBSIDIARIES, and all customers (but
only for and to the extent of the products furnished by ASPECT) and
all suppliers (but only for and to the extent of the products sold
to ASPECT) of products of the kinds herein licensed as of the
effective date hereof to ASPECT, only from all claims, demands and
rights of action which LUCENT or any of its present SUBSIDIARIES may
have on account of any infringement or alleged infringement of any
patent issued in any country of the world, or any other alleged
misappropriation of intellectual property rights, by reason of the
manufacture or any past or future use, lease, sale or importation of
any of such products which, prior to the effective date hereof, were
used or furnished by ASPECT or any of its present SUBSIDIARIES.
(b) ASPECT, for itself and for its present SUBSIDIARIES, hereby releases
LUCENT, its present SUBSIDIARIES, and all customers (but only for
and to the extent of the products furnished by LUCENT) and all
suppliers (but only for and to the extent of the products sold to
LUCENT) of products of the kinds herein licensed as of the effective
date hereof to LUCENT, only from all claims, demands and rights of
action which ASPECT or any of its present SUBSIDIARIES may have on
account of any infringement or alleged infringement of any patent
issued in any country of the world, or any other alleged
misappropriation of intellectual property rights, by reason of the
manufacture or any past or future use, lease, sale or importation of
any of such products which, prior to the effective date hereof, were
used or furnished by LUCENT or any of its present SUBSIDIARIES.
4.10 EXISTING LICENSE AGREEMENTS
Any preexisting patent license agreements between ASPECT (or its
SUBSIDIARIES or any third party previously owning any patent now licensed by
ASPECT hereunder) and LUCENT (or its SUBSIDIARIES or any third party previously
owning any patent now licensed by LUCENT hereunder) shall remain in full force
and effect notwithstanding this Agreement. ASPECT hereby consents to any
assignment, dated after the lawsuits referenced herein have been
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dismissed, from Octel to LUCENT of the Aspect-Octel Patent License Agreement
dated as of December 30, 1993 and amended as of May 7, 1996.
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives on the
respective dates entered below.
LUCENT TECHNOLOGIES INC.
By: /s/ ▇.▇. ▇▇▇▇▇▇
-----------------------------------
▇.▇. ▇▇▇▇▇▇
Acting President - Intellectual
Property
Date: 2/27/98
-----------------------------------
ASPECT TELECOMMUNICATIONS CORPORATION
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇
-----------------------------------
▇▇▇▇ ▇▇▇▇▇▇▇
Vice President, General Counsel
Date: 2/27/98
-----------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF BOTH PARTIES.
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DEFINITIONS APPENDIX
GENERAL DEFINITIONS:
ASPECT's PATENTS means every patent (including utility models but excluding
design patents and design registrations) issued in any country of the world
which claims or is otherwise directed to an invention disclosed in any patent
application filed in that country or in any other country prior to the end of
the LIMITED PERIOD, provided that, at any time after the actual or constructive
reduction to practice of such invention disclosed in any such application and
after the effective date of this Agreement, ASPECT (or any SUBSIDIARY of ASPECT)
has the right to grant any licenses of the type herein granted by ASPECT under
such patent.
LICENSED PRODUCT means, as to any grantee, any product (including any specified
combination of other products) listed for such grantee in Section 1.01.
LIMITED PERIOD means the period commencing on the effective date of this
Agreement and ending on December 31, 2004. This period shall automatically be
extended, year-by-year, for years 2005, 2006 and 2007, respectively, unless
ASPECT provides timely notice to LUCENT, pursuant to Section 2.01(d), that
ASPECT does not wish to extend the period., If ASPECT provides timely notice to
LUCENT that ASPECT does not wish to extend the period for year 2005, the LIMITED
PERIOD shall end on December 31, 2004 otherwise it shall automatically be
extended to December 31, 2005. Assuming the LIMITED PERIOD has been extended for
2005, if ASPECT provides timely notice to LUCENT that ASPECT does not wish to
extend the period for year 2006, the LIMITED PERIOD shall end on December 31,
2005 otherwise it shall automatically be extended to December 31, 2006. Assuming
the LIMITED PERIOD has been extended for 2005 and 2006, if ASPECT provides
timely notice to LUCENT that ASPECT does not wish to extend the period for year
2007, the LIMITED PERIOD shall end on December 31, 2006, otherwise the LIMITED
PERIOD shall automatically be extended through and including February 28, 2008.
LUCENT's PATENTS means every patent (including utility models but excluding
design patents and design registrations) issued in any country of the world
which claims or is otherwise directed to an invention disclosed in any patent
application filed in that country or in any other country prior to the end of
the LIMITED PERIOD, provided that, at any time after the actual or constructive
reduction to practice of such invention disclosed in any such application and
after the effective date of this Agreement, LUCENT (or any SUBSIDIARY of LUCENT)
has the right to grant any licenses of the type herein granted by LUCENT under
such patent. Provided, however, that in any case "LUCENT's PATENTS" shall be
deemed to exclude all patent claims (including extensions and reissues thereof)
issuing in any country of the world which claim or are otherwise directed to
dispersion compensated fiber or non-zero dispersion fiber (NZDF), or to a
process for manufacturing SEMICONDUCTIVE DEVICES utilizing spatially patterned
masks in conjunction with an electron beam.
SUBSIDIARY of a company means a corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be
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deemed to be a SUBSIDIARY of such company only as long as such control or
ownership and control exists.
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TECHNICAL DEFINITIONS:
[*]
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[*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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