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EXHIBIT 10.8
NOVELL CONFIDENTIAL EXECUTION ORIGINAL
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▇▇▇▇▇▇ ▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇, NE2000, NE2000T, NE2100, AND NE3200
NIC TECHNOLOGY LICENSE AGREEMENT
BETWEEN
NOVELL, INC. AND MICRODYNE, INC.
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▇▇▇▇▇▇ ▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇, NE2000, NE2000T, NE2100, AND NE3200
NIC TECHNOLOGY LICENSE AGREEMENT
BETWEEN
NOVELL, INC. AND MICRODYNE, INC.
AGREEMENT entered into between Novell, Inc., a Delaware corporation
principally located at ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇, ▇▇ ("Novell"), and
Microdyne, Inc., a Delaware corporation principally located at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ("Microdyne").
1 TERM. The term of this Agreement shall be for two (2) years from the
date executed by Novell ("Effective Date") and shall automatically
renew for additional one (1) year terms unless either party elects to
terminate the Agreement by providing the other party 180 days or more
prior written notice.
2 DEFINITIONS.
2.1 Confidential Information. "Confidential Information" means
the information and materials which are marked or noticed
by either Novell or Microdyne as confidential or
proprietary, and any trade secrets or know-how of Novell
disclosed to Microdyne hereunder and related to the
Products. Confidential Information shall not include any
information that the receiving party can document is (i)
already in the possession of the receiving party without
obligation of confidence; (ii) independently developed by
the receiving party without use of Confidential
Information; or (iii) or becomes available to the general
public without breach of this Agreement; or (iv) rightfully
received by the receiving party from a third party without
obligation of confidence; or (v) released for disclosure by
the receiving party with the disclosing party's prior
written consent.
2.2 Deliverables. "Deliverables" means the items listed in
Exhibit A. The Deliverables shall be shipped F.O.B.
Novell's facilities. All title (except in intellectual
property) and risk of loss shall pass to Microdyne upon
delivery to Microdyne or its carrier.
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2.3 Products. "Products" means the Novell NE1000, NE1500T,
NE2000, NE2000T, NE2100, and NE3200 network interface
cards, and the related Software, hardware and filmware
provided by Novell to Microdyne under this Agreement.
2.4 Software. "Software" means the computer programs
identified in Exhibit A. "Software" does not include
enhanced systems or applications software or any software
other than the software necessary to make the Products
operate.
3 GRANTS OF RIGHTS, RESTRICTIONS.
3.1 Rights to Manufacture, Remanufacture, Support and
Distribute. Subject to compliance with this Agreement,
Novell grants Microdyne a non-exclusive, non-transferable
world-wide license to use, enhance, modify, improve,
manufacture, support, market, distribute and sell the
Products. The right granted herein to manufacture the
Products shall include the right to have the Products
manufactured by third parties, except such right to
manufacture the Software shall be limited to reproducing
the Software in binary form only. The right to distribute
the Products shall include the right to sublicense the
Software in binary form only. all rights not expressly
granted herein remain in Novell, including any right to
sublicense the underlying technology of the Products and/or
Software.
3.2 Ownership of the Products. No title to or ownership of the
Products or Novell Confidential Information, or any of the
parts thereof, is transferred to Microdyne. Title to all
applicable rights and patents, copyrights and trade secrets
in the Products and Software furnished hereunder shall
remain in Novell. Microdyne agrees to take appropriate
action by instruction or agreement with its employees,
agents, contractors and sublicensees who are permitted
access to Novell technology to fulfill its obligations
hereunder. EXCEPT AS SET FORTH HEREIN, OR AS MAY BE
PERMITTED IN WRITING BY NOVELL, MICRODYNE SHALL NOT PROVIDE
NOVELL SUPPLIED TECHNOLOGY OR ANY NOVELL CONFIDENTIAL
INFORMATION TO ANY THIRD PARTY. IN THE EVENT MICRODYNE IS
GRANTED ANY RIGHT TO SUBLICENSE ANY RIGHT HEREUNDER,
MICRODYNE AGREES THAT IT SHALL ENTER INTO APPROPRIATE
AGREEMENTS WITH SUBLICENSEES TO PROTECT NOVELL'S RIGHTS IN
THE TECHNOLOGY.
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4 TRADEMARKS.
4.1 License. Conditional upon Microdyne's compliance with this
Section 4.1, Novell hereby grants to Microdyne a
non-exclusive, world-wide license to use the Novell
trademarks and designations identified in Exhibit G (the
"Marks") solely in conjunction with marketing, distributing
and sublicensing Products. Microdyne or its agents may use
the Marks on such promotional display and advertising
materials as may, in Microdyne's judgment, promote such
Products. Microdyne may use the Marks with Microdyne's own
marks after obtaining the prior written approval of Novell,
which shall not unreasonably be withheld.
4.2 Advertisements, Packaging and Promotional Material. The
first article, advertising proof or mock-up of all
advertisements, packaging and promotional materials using
the Marks will be subject to Novell's prior review and
approval. Microdyne agrees to send a copy of such to
Novell Communications in Provo, Utah with a copy to
Novell's Technology Law Group in Provo, Utah. Novell shall
promptly review and respond to Microdyne's requests for
approval and shall have a period of five business days to
accept or reject such requests.
4.3 Approvals. Microdyne acknowledges that it is of
fundamental importance to Novell that the versions of
Products (including Documentation) in connection with which
Microdyne uses the Marks are of comparable quality to the
NetWare products of Novell. Accordingly, Microdyne
acknowledges that Novell retains the right to determine in
its reasonable discretion whether the versions of Products
in connection with which Microdyne uses the marks are
comparable to Novell's standards of merchantability. In
the event that Novell reasonably determines that Microdyne
is no longer meeting accepted levels of quality, Novell
agrees to so advise Microdyne and to provide Microdyne with
reasonable guidance and a commercially reasonable time of
no less than ninety (90) days to meet the above-referenced
standards of quality and integrity.
4.4 Reservation of Rights and Goodwill. Novell retains all
rights in and to the Marks not expressly conveyed to
Microdyne by this Section 4. Microdyne acknowledges that
all goodwill which accrues in use of the Marks by Microdyne
shall exclusively inure to the benefit of, and belong to,
Novell. Microdyne has no rights of any kind whatsoever
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with respect to the Marks licensed under this
Agreement except to the extent of the license
granted in Section 4.1
4.5 No Registration by Microdyne.
4.5.1 Representation. Microdyne represents that there
is no registration or application for any
trademark and/or service ▇▇▇▇ which is the same
as, or confusingly similar to, the Marks in any
class and in any and all countries of the world,
which is made by, on behalf and/or in the name
of Microdyne.
4.5.2 Preexisting Registrations and Applications.
Upon Novell's request and at Novell's expense,
and for the purpose of and to the extent
necessary for use or registration of the Marks
by Novell, Microdyne agrees to immediately
assign over to Novell or, at the discretion of
Novell withdraw, abandon, cancel, or otherwise
transfer ownership and/or control (such transfer
or control may be effected through exclusive
license, consent or other similar agreements) of
any trademark and/or service ▇▇▇▇ registration
and/or application existing as of the Effective
Date in any class, and in any and all countries
of the world mad by, on behalf and/or in the
name of Microdyne, or any officer, director,
employee, agent, servant, with respect to any
and all trademarks and/or service marks which
are confusingly similar to the Marks.
4.5.3 Prospective Prohibition. Microdyne further
agrees to refrain from filing any new trademark
and/or service ▇▇▇▇ application(s) with regard
to any specification in any class and in any
country, for any trademark and/or service ▇▇▇▇
which is confusingly similar to the Marks,
without the prior written consent of Novell.
Novell shall consider in good faith any request
of Microdyne to register the Marks in particular
countries.
4.5.4 Subsidiaries & Affiliates. In the event that
Novell discovers any person, employee, officer,
director, agent, servant or juristic entity,
each of which is controlled by, or under common
control of, Microdyne has filed for, or obtained
a registration of, or is otherwise using any
trademark which is confusingly similar to Marks,
Novell shall provide written
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notice of such to Microdyne. Commencing upon
receipt of such notice, Microdyne agrees to
exercise best efforts to cause such juristic
entity to assign to, or otherwise provide Novell
with an exclusive license for the Marks.
4.5.5 Resellers & Licensees. Microdyne agrees to
exercise best efforts to incorporate into each
agreement through which it sublicenses or sells
Products provisions consistent with Section 4.5.
4.5.6 Confusing Similarity. For purposes of Section
4.5, whether a ▇▇▇▇ is "confusingly similar"
shall be determined in accordance with the laws
of the jurisdiction in which the question
arises.
4.5.7 Survivability. The provisions of this Section
4.5, as they apply to Microdyne, shall survive
any termination or expiration of this Agreement
for a period of three (3) years after all of
Microdyne's obligations under this Agreement are
fulfilled.
4.6 Protection of Rights. Microdyne shall assist Novell, at
Novell's expense and to the extent reasonably necessary, to
protect or to obtain protection for any of Novell's rights
to the Marks. Novell, if it so desires, may commence or
prosecute any applications to register the Marks in the
name of Novell for the Marks throughout the world.
Microdyne shall promptly notify Novell in writing of any
known or suspected abuses of the Marks. Novell shall have
the sole right to determine whether or not any action shall
be taken on account of such uses by others. Novell shall
not institute any suit or take any action on account of
such use by others except with Novell's prior written
consent.
4.7 Recordation. Prior to using the Marks in any country
outside of the United States, Microdyne agrees to provide
written notice to Novell of such country. Based upon the
notice, Novell may, where it deems appropriate in its sole
discretion, effect recordation of Microdyne as a registered
user of such ▇▇▇▇ in such country and/or recordation of the
Agreement or other license agreements which meet
appropriate local standards with appropriate authorities.
Microdyne shall assist Novell as appropriate in carrying
out such recording process. To defray Novell's expenses
for charges imposed on Novell by such
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country and by local associated for the recording
activities contemplated above, Novell shall invoice
Microdyne a recordal fee of $300 per country in which
recordal is effected. Such invoice shall be payable to
Novell within thirty (30) days after receipt of the
applicable invoice. Upon the termination or expiration of
this Agreement of Microdyne's right to use the Marks in any
country to which this Section applies, Novell and Microdyne
agree to execute any documents that may be necessary to
restore Novell to its former position in all respects.
4.8 Indemnification by Microdyne. Microdyne hereby agrees to
indemnify and hold Novell harmless against any loss,
liability, damage, cost or expense (including reasonable
legal fees) arising out of any claims or suits, whatever
their nature and however arising, which may be brought or
made against Novell (i) by reason of Microdyne's material
breach of this Section 4 and/or (ii) arising out of the use
by Microdyne of the Marks in any manner whatsoever except
in the form expressly licensed hereunder. In the vent
Novell seeks indemnification under this Section 4.8, it
shall immediately notify Microdyne, in writing, of any
claim or proceeding brought against it for which it seeks
indemnification hereunder. Microdyne shall have the sole
control of the defense of the claim or proceeding and all
negotiations for its settlement or compromise. In no event
may Microdyne enter into any third party agreements which
would in any manner whatsoever affect the rights of, or
bind Novell in any manner to the third party, without the
prior written consent of Novell.
4.9 Indemnification by Novell. Novell hereby agrees to
indemnify and hold Microdyne harmless against any loss,
liability, damage, cost or expense (including reasonable
legal fees) arising out of any claims or suits, whatever
their nature and however arising, which may be brought or
made against Microdyne arising out of the use by Microdyne
of the Marks in the form expressly licensed hereunder. In
the event Microdyne seeks indemnification under this
Section 4.9, it shall immediately notify Novell, in
writing, of any claim or proceeding brought against it for
which it seeks indemnification hereunder. In no event may
Novell enter into any third party agreements which would in
any manner whatsoever affect the rights of, or bind
Microdyne in any manner to the third party, without the
prior written consent of Microdyne. Novell shall have the
sole control of the defense of the claim or proceeding and
all negotiations for its settlement or
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compromise. Novell reserves the right to replace or modify
the Marks at any time should use of the Marks become, or in
Novell's opinion be likely to become, the subject of an
allegation or infringement.
5 TESTING AND CERTIFICATION.
5.1 Testing. Microdyne agrees to submit each Product to Novell
for testing. Microdyne acknowledges that the Products
shall be subject to the testing and certification
requirements of this Agreement whenever any functional
revision is made to either Software or to the hardware of
the Products. Testing and certification shall be
controlled by the then current testing and certification
policies and procedures of Novell Labs for co-labelled
products and shall be subject to the charges applicable
under the Novell Labs Program. Novell may request a copy
of the then current testing and certification policies and
procedures prior to submitting any of the Products for
testing.
5.2 Certification Requests. Novell shall only receive requests
for testing and certification from a single designee within
Microdyne at any given time. Microdyne acknowledges that
Novell will handle all request for testing and
certification on a first-come-first-served queuing basis.
Novell agrees to treat Microdyne's request for testing and
certification as it treats any other similar requests.
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6 CONSIDERATION.
6.1 Per-Copy Royalty. Royalties to Novell will accrue for each
copy of the Products sold, licensed or otherwise
transferred by Microdyne in accordance with the royalties
specified in Table 1 below and a minimum royalty as
specified in Section 6.2 below.
TABLE I - PER COPY ROYALTIES
==============================================================================
PRODUCT ROYALTY
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NE1000 (Single $12.00
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NE1000 (5-Pack) $54.00
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NE2000 (Single) $19.00
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NE2000 (5-Pack) $85.50
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NE2000T (Single) $27.00
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NE2000T (5-Pack) $108.00
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NE2100 (Single) $19.00
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NE1500T (Single) $24.00
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NE3200 (Single) $200.00
==============================================================================
6.2 Minimum Royalty. Microdyne agrees to pay to Novell a
non-refundable minimum royalty of Two Million Dollars
($2,000,000). One Million Dollars ($1,000,000) of such
shall be paid within ninety (90) days of execution of this
Agreement, and the remainder ($1,000,000) of such shall be
paid within one hundred eighty days. To the extent that
actual earned royalties under this Agreement and all other
agreements currently existing between the parties exceed
such minimum royalty, Microdyne shall pay Novell for actual
earned royalties in accordance with the respective
agreements. To the extent that such minimum royalty
exceeds the actual royalties paid under this and other
agreements existing between the parties, such excess shall
be known as prepaid royalties and shall be recoupable
against future earned royalties during the term of this
Agreement.
6.3 Suggested Retail Prices and Discounts. Novell and
Microdyne will jointly establish the suggested list prices
and discounts for the
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Products. All changes in the list prices for the Products
will be subject to mutual agreement.
6.4 Point of Sale Reports. Subject to this Section 6.4,
Microdyne agrees to exercise its best efforts to bind its
distribution customers to provide point of sales
information for the Productions within ten (10) days of
each calendar month to Microdyne and supply the information
thereby obtained from its distributors to Novell within
fifteen (15) days of each calendar month. In addition,
Microdyne agrees to provide Novell a written point of sales
report within forty-five (45) days at the end of each
Novell quarter. The point of sales report will list the
version of Products licensed or sold (by part number)
directly by Microdyne to its customers and those resold by
Microdyne's direct customers, the quantities of Product
sold (by part number, and the zip code of the acquiring
entity, if within the United States, or by country, if the
acquiring entity is outside the United States). With
respect to POS Reports from international distributors,
Microdyne solely agrees to exercise best efforts to obtain
the required information. The quarterly POS Reports
described in this section shall not include the name of any
Microdyne customer. A ▇▇▇ of the POS Report will be sent
to the following Novell designees:
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
Novell may change the foregoing designees at any time upon
providing written notice to Microdyne.
6.5 Time of Payment. Except as set forth above in Section 6.2,
royalties shall accrue immediately upon the earlier to
occur of delivery of the Products to a customer or
Microdyne's invoicing the customer. Such royalties shall
be paid to Novell no later than thirty (30) days after the
end of each calendar month. Payments shall be sent to a
Novell employee designated by Novell, or such other
designee as, from time to time, substituted by Novell.
Payments not made within such thirty (30) day period shall
bear interest at the lower of two and one-half percent (2
1/2%) per annum over the prime interest rate of the Chase
Manhattan Bank of New York or the highest rate permitted
under applicable law. Payments shall be in U.S. dollars
and shall not be reduced by any withholding
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taxes or other governmental charges. All such withholding
taxes and charges shall be the responsibility of Microdyne.
6.6 Charge Backs. Microdyne shall have the right to charge
back Novell amounts previously paid or credited to Novell
for reasonable returns and bad debt allowances.
6.7 Audit. Microdyne agrees to keep and maintain true and
accurate records regarding information and data reasonably
necessary or required to compute and verify amounts payable
by Microdyne hereunder. Microdyne further agrees to allow
Novell to examine its records relating to Section 4 of
this Agreement to determine compliance or noncompliance
with this Agreement. Any examination shall be at the
expense of Novell and shall be solely for the purposes of
ensuring compliance with the royalty provisions of the
Agreement. Examinations shall occur during regular
business hours at Microdyne's offices and shall not
interfere unreasonably with Microdyne's business
activities. Examinations shall be made no more frequently
than annually and Novell shall give Microdyne thirty (30)
or more days prior written notice of the date of each such
examination and the name of the auditor who will be
conducting the examination. All information obtained by
the auditor shall be maintained confidential. The
foregoing notwithstanding, the auditor shall give Microdyne
and Novell an examination report containing only the
information necessary to indicate compliance or
non-compliance with Section 4 of this Agreement and if
non-compliance, the amount of such non-compliance.
7 COVENANTS AND CONDITIONS
7.1 Novell.
7.1.1 Deliverables. In connection with this
Agreement, Novell, upon execution of this
Agreement, shall make available to Microdyne a
copy of the hardware specifications and
drawings, including assemblies, top assemblies,
bottom assemblies and subassemblies and bills of
materials as provided in Exhibit A, and approved
vendor lists, vendor part numbers and vendor
releases which Novell has and deems useful and
necessary in the manufacture and maintenance of
the Products.
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7.1.2 Training. Novell will provide initial training
to Microdyne in accordance with Exhibit A. Upon
request, Novell will provide additional training
to Microdyne per trainer day at the rate of
$1,500.00.
7.1.3 Support. Engineering support from Novell will
be available on an "as-needed" basis, subject to
reasonable Novell engineering support
constraints. Novell engineering support will be
made available to Microdyne on a time and
material basis, such to be charged at Novell's
standard rates.
7.1.4 Marketing. Novell agrees to include the
Products in Novell's U.S. retain packaged
products corporate price list by a Novell or
Microdyne part number, as mutually agreed upon
by the parties. Novell also agrees to include a
reference to a single Microdyne telephone number
where interested parties may place orders with
Microdyne. Except as specifically stated in
this Section, Novell shall have no
responsibility for manufacturing, order entry,
order processing, marketing, fulfillment,
shipping or distribution with respect to the
Products offered by Microdyne.
7.2 Microdyne.
7.2.1 Product Notices. Microdyne agrees that its
packaging (containers) and any advertisements or
materials relating to the distribution of the
Products shall contain language, clearly and
conspicuously placed, identifying Microdyne as
the manufacturer of the Products. In addition,
Microdyne shall not remove any copyright notices
contained in, or displayed by, the Software.
7.2.2 Manufacturing. In manufacturing the Products,
Microdyne agrees to use parts that have been
obtained from Novell approved vendors.
Microdyne may request the approval by Novell of
additional vendors. Novell agrees to reasonably
consider Microdyne's reasonable vendor approval
requests.
7.2.3 Support. Microdyne shall be responsible for
providing all support for the Products sold by
Microdyne. Such support shall include competent
technical advisory support for the
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Products to all End Users. In the event
Microdyne identifies a priority 1 bug in the
Software (one that causes the network connection
to become inoperable), Microdyne agrees to
promptly inform Novell of the condition and to
provide an update of the Software to Novell when
it is released from Microdyne's SSQA.
7.2.4 Business Conduct. Microdyne agrees (i) to
conduct business in a manner which reflects
favorably at all times on the products, goodwill
and reputation of Novell; (ii) to avoid
deception, misleading or unethical practices
which are or might be detrimental to Novell or
its products; and (iii) to make no false or
misleading representations with regard to Novell
or its products.
7.2.5 Quality Assurance. Microdyne agrees to maintain
a high quality standard in manufacturing the
Products, and, from time to time upon Novell's
request, agrees to provide a reasonable number
of samples of the Products for Novell to
inspect.
8 PRODUCT DEVELOPMENT.
8.1 Hardware. Novell, in the vent that it updates the hardware
design on the Products, agrees to provide Microdyne details
concerning such updates within thirty (30) days of the date
such updates within thirty (30) days of the date such
updates were made. Microdyne agrees to implement such
updates within a reasonable period of time. Microdyne
shall solely be responsible for providing such updates to
its installed base.
8.2 Software. Novell may update the Software to incorporate
bug fixes and adapt the Software to new systems. Novell,
if an update is made, agrees to provide Microdyne details
concerning such update and to provide Microdyne with a copy
of such update within thirty (30) days of the date such
update is released by Novell. Microdyne agrees to
implement such update within a reasonable period of time.
Microdyne shall solely be responsible for providing such
update to its installed base.
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9 INTELLECTUAL PROPERTY RIGHTS, INDEMNIFICATION
9.1 Indemnification. Novell shall indemnify, defend and hold
Microdyne harmless from any and all damages, liabilities,
costs and expenses incurred by Microdyne as a result of any
claims, judgments or adjudication against Microdyne that
the Products infringe any patent, or copyright or trade
secret, provide: (i) Microdyne shall promptly notify
Novell in writing of such claim; (ii) Novell shall have the
sole control of the defense of any such action and all
negotiations for its settlement and compromise.
9.2 Actual or Potential Infringement. Should the Product, or
the operation thereof, become, or in Novell's opinion be
likely to become, the subject of infringement of a United
States patent or copyright, Microdyne shall permit Novell,
at its option and expense, either to procure for Microdyne
the right to continue using such Product, to replace or
modify the same so that it becomes non-infringing.
9.3 Disclaimer. THE ABOVE STATES THE ENTIRE LIABILITY OF
NOVELL WITH RESPECT TO INFRINGEMENT OF PATENTS, COPYRIGHTS,
TRADEMARKS OR ANY OTHER FORM OF INTELLECTUAL PROPERTY BY
ANY PRODUCTS SUPPLIED BY NOVELL.
9.4 Ownership. Except as otherwise as provided below, Novell
shall retain all title and ownership of all intellectual
property rights; all Software; all filmware; all master
diskettes; all manuals; all copies of Software, master
diskettes, manuals and related materials produced by
Microdyne' and all modification to and derivative works of
the Products and Software made by Microdyne, Novell or any
third party. Novell does not transfer any portion of such
title and ownership, or any of the goodwill associated
therewith, to Microdyne; and this Agreement shall not be
construed to grant Microdyne any right or License, whether
by implication, estoppel or otherwise, except as expressly
provided herein. The foregoing notwithstanding, Microdyne
shall retain ownership of derivative works of the Products
and Software to the extent that the derivative works are
based upon a controller chipset other than the chipsets
incorporated into the Products and subsequent revisions
thereof or the SNIC chipset. In the event that Microdyne
develops a derivative work of which it retains ownership
under the preceding sentence, hereby grants Microdyne a
fully paid-up, royalty fee, non-exclusive world-wide
license to u se,
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enhance, modify, improve, manufacture, support, distribute
and/or maintain such derivative work of the Products.
9.5 Confidentiality. Each party receiving Confidential
Information hereunder agrees (i) that it will not disclose
such Confidential Information to any other person, firm or
corporation, except as provided in this Agreement and shall
use the same degree of care to avoid publication or use of
Confidential Information as it employees with respect to
its own Proprietary Information (ii) not to consider itself
to be a member of the general public for the purpose of
receiving the proposed disclosure of the Confidential
Information and to hold the disclosure of Confidential
Information in confidence, disclosing to its employees
Confidential Information in confidence, disclosing to its
employees Confidential Information only to the extent
necessary to fulfill the intent and terms of this
Agreement, (iii) not to use or exploit Confidential
Information for the benefit of itself or any third party,
and to make only such use of the confidential Information
as specifically authorized by this Agreement, (iv) that no
license under any patent, trade secret, or copyright, now
or hereafter obtained is granted, agreed to be granted, or
implied by either this Agreement or the disclosure of the
Confidential Information, (v) to the extent necessary, to
protect the disclosing party's right by having appropriate
written agreements with its employees whose services it may
require sufficient to enable it to comply with all the
terms of this Agreement, and (vi) not to copy or duplicate
any material containing Confidential Information except as
necessary to accomplish the purposes of this Agreement.
Upon termination of this Agreement, each party agrees to
return all materials containing Confidential Information
which have been provided pursuant to this Agreement upon
termination of this Agreement.
10 WARRANTIES.
10.1 Errors and Specific Regulations. NOVELL DOES NOT WARRANT
THAT PRODUCTS FURNISHED HEREUNDER WILL BE FREE FROM ERRORS
OR WILL MEET MICRODYNE'S SPECIFIC REQUIREMENTS. In the
event that Microdyne, during the term of the Agreement, is
required to replace the Products because of design defect
in the Products as delivered by Novell, Novell agrees to
grant Microdyne a credit against future royalties for each
defective Product replaced. Microdyne and its end users
assumes complete responsibility for
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decisions made or actions taken based on information
obtained using the Products. Any statements made
concerning the utility of the Products are NOT to be
construed as expressed or implied warranties.
10.2 Disclaimer. NOVELL EXPRESSLY DISCLAIMS ALL WARRANTIES
EXCEPT THE LIMITED WARRANTY SET FORTH ABOVE INCLUDING, BUT
NOT LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE. NOVELL WILL NOT BE
LIABLE TO MICRODYNE OR ANY THIRD PARTY FOR ANY DAMAGES
INCLUDING, BUT NOT LIMITED TO, LOST PROFITS, LOST SAVINGS
OR OTHER SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES
ARISING OUT OF THE USE OF OR INABILITY TO USE SUCH PRODUCT,
EVEN IF NOVELL HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
10.3 Limited Liability. IN NO EVENT SHALL ANY LIABILITY OF
NOVELL EXCEED IN THE AGGREGATE THE SUM OF ROYALTIES PAID TO
NOVELL BY MICRODYNE.
11 DEFAULT/TERMINATION.
11.1 Right to Terminate. In addition to any other rights or
remedies that Novell may be entitled to under this
Agreement or at law or equity,may terminate this Agreement
upon default.
11.2 Default. The following are events of default:
11.2.1 Failure to Pay or Breach. If Microdyne is in
default of any payment obligations hereunder and
such default continues for ten (10) days
following receipt of written notice from Novell,
or, if Microdyne is in default continues for
thirty (30) days following receipt of written
notice.
11.2.2 Change of Ownership. If Microdyne is dissolved;
or attempts to assign this Agreement or any of
its rights hereunder in violation of Section
11.6. The foregoing notwithstanding, a public
offering of Microdyne common stock through which
Microdyne becomes a publicly traded corporation
shall not constitute an event of default under
this subsection.
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11.2.3 Insolvency, Assignment, or Bankruptcy. If
Microdyne becomes insolvent, files or has filed
against it a petition under any Bankruptcy Law
(which, if involuntary, is unresolved after
sixty days), proposes any dissolution,
liquidation, composition, financial
reorganization or recapitalization with
creditors, makes an assignment or trust mortgage
for the benefit of creditors, or if a receiver
trustee, custodian or similar agent is appointed
or takes possession with respect to any property
or business of Microdyne.
11.3 Acceleration of Payment. Upon termination of this
Agreement for cause, the due dates of all outstanding
invoices to Microdyne for Products and Software will
automatically be accelerated so that they become due and
payable on the effective date of termination, even if
longer terms had been provided previously. All orders or
portions thereof remaining unshipped as of the effective
date of such termination shall automatically be cancelled.
11.4 Termination of Convenience. Neither party may terminate
this Agreement until 180 days after the Effective Date.
Thereafter, either party may terminate this Agreement
solely for convenience upon 180 days prior written notice.
11.5 Effect of Termination on Obligations. Termination of this
Agreement shall not affect any of Microdyne's
pre-termination obligations hereunder and any such
termination is without prejudice to the enforcement of any
undischarged obligations existing at the time of
termination. The obligations and covenants of Sections 2,
3.3, 3.4, 4, 5, 6.21., 6.22., 6.23, 9.9, 10.6, 10.8 and 11,
to the extent applicable, shall continue beyond termination
of this Agreement.
11.6 Irreparable Injury and Injunctive Relief. Microdyne
acknowledges that the violation of any provision of this
Agreement concerning intellectual property, copyright
and/or trademark protection, and/or product distribution
constitutes irreparable injury, and therefore, grants to
Novell a right of temporary, preliminary and permanent
injunctive relief in order to prevent further injury.
11.7 Return of Technology. Upon termination of this Agreement
and receipt of a written request from Novell. Microdyne
shall return at its expense any and all documents referred
to in Sections 7.1.1 and 9.5
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and shall destroy any copies of such documents or any other
media containing any of Novell's trade secrets and know
how.
11.8 Cessation of Licenses. Upon termination of this Agreement,
Microdyne shall immediately cease to manufacture and sell
the Products and all rights granted hereunder to Microdyne
shall immediately and automatically revert to Novell.
12 GENERAL PROVISIONS.
12.1 Force Majeure. If either party shall be prevented from
performing any portion of the Agreement (except the payment
of money) by causes beyond its control, including labor
disputes, civil commotion, war, governmental regulations or
controls, casualty, inability to obtain materials or
services or acts of God, such defaulting party shall be
excused from performance for the period of the delay and
for a reasonable time thereafter.
12.2 Jurisdiction. This Agreement shall in all respects be
governed by and interpreted in accordance with the laws of
the State of Utah, without regard to the laws of Utah
governing conflicts of law. IN addition, the parties
expressly agree that exclusive jurisdiction and venue of
any claims arising under this Agreement shall be vested in
the courts of competent jurisdiction of the State of Utah.
12.3 Survival of Terms. The provisions of the Agreement which
by their nature extend beyond the expiration or termination
of the Agreement will survive and remain in effect until
all obligations are satisfied.
12.4 Waiver. No waiver of any right or remedy on one occasion
by either party shall be deemed a waiver of such right or
remedy on any other occasion.
12.5 Superior Agreement. This Agreement sets forth the entire
agreement and understanding between the parties as to the
subject matter hereof and merges all prior discussions,
agreements and understandings as to the subject matter,
including any agreements the parties have executed
concerning the Products, and neither of the parties shall
be bound by an conditions, definitions, warranties,
understandings or representations with respect to such
subject matter other than as expressly provided herein, or
in any prior existing written agreement
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between the parties, or as duly set forth on or subsequent
to the effective date hereof in writing and signed by a
proper and duly authorized representative of the party to
be bound thereby. The foregoing notwithstanding, the
agreement executed between the parties relative to NE3200
network interface cards shall remain in effect pursuant to
its terms and conditions. No provision appearing on any
form originated by either party shall be applicable unless
such provision is expressly accepted in writing by the
other party.
12.6 Assignment. The Agreement is not assignable by either
party, in whole or in part, without the other party's prior
written consent except to a successor in interest of all or
substantially all of the assets or business of a party
hereto. Notwithstanding, neither party shall unreasonably
withhold consent to an assignment of the Agreement or any
part of the Agreement to a parent, subsidiary or affiliate.
Any attempted assignment without written consent shall be
null and void.
12.7 Notice. Unless otherwise agreed to by the parties, all
notices required under the Agreement (except those relating
to product pricing, changes and upgrades) shall be deemed
effective when received and made in writing by either (i)
registered mail, (ii) certified mail, return receipt
requested, or (iii) overnight mail, addressed and sent to
the address first above written and to the attention of the
party executing the Agreement or that person's successor,
or (iv) by telephone facsimile transfer appropriately
directed to the attention of the party executing the
Agreement or that person's successor. Notices given
pursuant to this Section 12.7 shall not be effective on
either Party unless a copy of the notice is delivered to
the office of General Counsel of the Party being served.
12.8 Severability. If any provision of the Agreement is held
invalid, illegal, or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in
any way be affected or impaired thereby, and shall be
construed giving in accordance with the intent of the
severed provisions.
12.9 Independent Contractors. Microdyne acknowledges that both
parties to the Agreement are independent contractors and
that Microdyne will not, except in accordance with the
Agreement, represent itself as an agent or legal
representative of Novell.
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12.10 Compliance with Laws. Microdyne shall comply, at
Microdyne's own expense, with all statutes, regulations,
rules, ordinances, and orders of any governmental body,
department or agency which apply to or result from
Microdyne's obligations under the Agreement. Microdyne
hereby agrees that it and its subsidiaries and affiliates
do not intend and will not knowingly, without prior written
consent, if required, of the office of Export
Administration of the U.S. Department of Commerce,
Washington, D.C. 20230, export or transmit directly or
indirectly any of the Products to Afghanistan, the Peoples
Republic of China, or to any group Q, S, W, Y or Z country
specified in of the Export Administration Regulations
issued by the U.S. Department of Commerce or to any country
to which such transmission is restricted by applicable
regulations or statute.
IN WITNESS WHEREOF the parties have entered into this Agreement to
take effect on the date executed by Novell.
MICRODYNE, INC. NOVELL, INC.
Signature /s/▇▇▇▇▇ ▇▇▇▇▇ Signature /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
---------------------- ---------------------------------
Print Name ▇▇▇▇▇ ▇▇▇▇▇ Print Name ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
--------------------- --------------------------------
Print Title Vice President of Sales Print Title Vice President Engineering
------------------------ --------------------------------
Date 31 July, 1992 Date 31 July, 1992
--------------------------------- --------------------------------------
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EXHIBIT A
DELIVERABLES
Technology for manufacturing the Products ...
including:
Schematics, ▇▇▇▇ of Materials, Machine Readable Manuals, EPROM master, film,
gorber tape, master driver diskette with the latest version at the time of
contract.
Master Source copy of the drivers for:
NE1000
NE1500T
NE2000
NE2000T
NE2100
N32000 (Already Provided)
Notes: 1) Microdyne will have to obtain the Ethernet
manufacturer's identification code from EEE.
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EXHIBIT B
NOVELL MARKS
Novell
Novell Logotype
Novell Tigers Teeth Logotype
NE1000
NE1500T
NE2100
NE3200
Netware
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