LICENSE AND TECHNICAL ASSISTANCE AGREEMENT
THIS LICENSE AND TECHNICAL ASSISTANCE AGREEMENT ("Agreement") is made
and entered into as of October 6, 2000 ("Effective Date"), by and between ▇▇▇▇▇,
INC., a Delaware corporation, having principal offices at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("▇▇▇▇▇"), and OPTICNET, INC., a Delaware
corporation, having principal offices at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("OpticNet").
WHEREAS, ▇▇▇▇▇ has developed certain proprietary silicon micro
electromechanical systems ("MEMs") technology and operates an equipped and
staffed MEMs fabrication facility;
WHEREAS, OpticNet has proprietary designs for optical components using
MEMs and intends to build and market systems based on said optical products;
WHEREAS, OpticNet desires to obtain certain MEMs technical assistance
and support services from ▇▇▇▇▇;
WHEREAS, ▇▇▇▇▇ desires to provide the MEMs technical assistance and
support services requested by OpticNet on the terms set forth herein;
NOW, THEREFORE, in consideration of the above premises and the mutual
covenants contained herein, the parties hereto agree as follows:
1. DEFINITIONS.
1.1 "Designs" shall mean any of OpticNet's proprietary designs for
optical components using MEMs for use in the OpticNet Market and any other
design created by OpticNet related to the OpticNet Market.
1.2 "Fabricated Designs" shall mean any Designs or elements of Designs
fabricated by ▇▇▇▇▇ or OpticNet with ▇▇▇▇▇ technical assistance and support or
using the ▇▇▇▇▇ Process pursuant to the terms of this Agreement.
1.3 "Milestones" means the target specifications of the Fabricated
Design and any other deadlines or targets established by OpticNet.
1.4 "OpticNet Market" shall mean the telecommunications data
transmission market.
1.5 "OpticNet Products" shall mean products manufactured by or for
OpticNet incorporating the Fabricated Designs manufactured pursuant to this
Agreement.
1.6 "Project" means all work and effort in the performance of a
Statement of Work in connection with this Agreement.
1.7 "Project Technology" shall mean any Technology or inventions, and
improvements thereto, conceived and reduced to practice or otherwise discovered
or developed by either or both of the parties in connection with producing the
Fabricated Designs.
1.
1.8 "Proprietary Rights" shall mean patent rights, trademark rights,
copyrights, mask work rights, trade secret rights and similar intellectual
property rights, and all applications and registrations therefor.
1.9 "▇▇▇▇▇ Components" shall mean MEMs components based on ▇▇▇▇▇
Technology manufactured by or for ▇▇▇▇▇.
1.10 "▇▇▇▇▇ Process" shall mean the proprietary silicon micromachining
processes developed by ▇▇▇▇▇, including but not limited to, silicon wafer fusion
bonding, deep reactive ion plasma etching of silicon wafers and deep via
lithography for electric interconnects.
1.11 "▇▇▇▇▇ Technical Assistance and Support Services" shall mean the
provision by ▇▇▇▇▇ to OpticNet of assistance and advice in understanding the
▇▇▇▇▇ Technology and access to ▇▇▇▇▇'▇ MEMs production capabilities in producing
the Fabricated Designs.
1.12 "▇▇▇▇▇ Technology" shall mean all Technology, including but not
limited to the ▇▇▇▇▇ Process and ▇▇▇▇▇ Components, owned or developed by or for
▇▇▇▇▇ prior to the Effective Date and all Technology developed by or for ▇▇▇▇▇
independently of the development efforts undertaken pursuant to this Agreement.
1.13 "Specifications" shall mean the specifications and technical
descriptions of the Designs in any SOW.
1.14 "Statement of Work" or "SOW" shall mean the development plan,
specifications, Milestones and schedule for the Fabricated Designs as specified
by OpticNet and as modified, supplemented or subsequently established by
OpticNet.
1.15 "Technology" means all foreign and domestic patents, patent
applications, patent rights, know-how, trade secrets, copyrights, technical
data, inventions (whether patentable or not), discoveries, designs,
specifications, plans, works of authorship, techniques, methods, processes, test
procedures and all other scientific or technical information or materials, in
whatever form.
2. PROJECT DEVELOPMENT.
2.1 Manufacture of the Fabricated Designs. ▇▇▇▇▇ shall use commercially
reasonable efforts to manufacture or support the manufacture by OpticNet of the
Fabricated Designs according to any SOW provided by OpticNet. ▇▇▇▇▇ and OpticNet
shall perform the manufacturing work at ▇▇▇▇▇'▇ fabrication facilities. ▇▇▇▇▇
shall provide sufficient resources (including access to personnel, equipment and
technical information and expertise) to accomplish the Milestones in accordance
with any SOW.
2.2 Technical Assistance and Support.
(a) ▇▇▇▇▇ Technical Assistance. Following any transfer of
▇▇▇▇▇ Technology to OpticNet pursuant to Section 2.3 hereto, and from time to
time thereafter until termination of this Agreement (other than under Section
10.2(a)), ▇▇▇▇▇ shall provide ▇▇▇▇▇ Technical Assistance and Support Services
requested by OpticNet. ▇▇▇▇▇ will provide a reasonable level
2.
of technical support to OpticNet to ensure the OpticNet Products can be
manufactured effectively. Any assistance provided after termination of this
Agreement shall be at OpticNet's expense at ▇▇▇▇▇'▇ then applicable standard
rates.
(b) OpticNet Technical Assistance. OpticNet shall use
commercially reasonable efforts (i) to collaborate with and assist ▇▇▇▇▇ with
the development of the Products to accomplish the Milestones in accordance with
any SOW and (ii) to provide data and technical support as reasonably requested
by ▇▇▇▇▇ in connection with the Project. OpticNet, at its own cost and expense,
will allocate sufficient resources to provide such assistance and support.
2.3 Transfer of Technical Information and Materials. The parties shall
freely share with each other all technical information in connection with the
Project. From time to time as each party may request (but, in any event, at any
termination or expiration of this Agreement), each party shall disclose and
transfer to the other party as soon as possible (and in any event delivery,
disclosure and transfer must be fully completed within two (2) weeks of such
request, termination or expiration) all technical and other information and
materials relating to the Project. Upon termination of this Agreement by
OpticNet pursuant to Section 10.2 below, or in the event ▇▇▇▇▇ unilaterally
terminates this Agreement pursuant to Section 10 prior to commercialization by
OpticNet of an OpticNet Product incorporating the Fabricated Designs or ▇▇▇▇▇
Technology; then, in such case, ▇▇▇▇▇, promptly after written request from
OpticNet, shall license the ▇▇▇▇▇ Technology to OpticNet or its designee to the
extent necessary to allow OpticNet or its designee to manufacture the Fabricated
Designs and OpticNet Products developed by OpticNet pursuant to this Agreement.
The parties agree to enter into good faith negotiations to adequately compensate
▇▇▇▇▇ for such license of such ▇▇▇▇▇ Technology.
2.4 Project Delays; Project Failure. If at any time during the course
of the Project, ▇▇▇▇▇ anticipates that it will not be able to timely provide the
▇▇▇▇▇ Technical Assistance and Support Services contemplated by this Agreement
or any SOW despite ▇▇▇▇▇'▇ good faith commercially reasonable efforts to do so,
▇▇▇▇▇ shall promptly so notify OpticNet in writing specifying the reasons for
delay. From and after such notice, the parties shall cooperate and use diligent
efforts to solve the problems identified, and the Milestone dates or other
deadlines may, with OpticNet's written approval, be set back for as long a
period as is required to solve the problems so identified; provided, however,
that if, for any reason other than due to the fault of OpticNet, ▇▇▇▇▇ does not
use or ceases to use commercially reasonable efforts to provide ▇▇▇▇▇ Technical
Assistance and Support Services, then OpticNet may terminate this Agreement
immediately on written notice pursuant to Section 10.2(a) below.
2.5 Production of OpticNet Products. OpticNet shall have the right, in
its sole discretion, to engage third parties to manufacture the OpticNet
Products (a "Third Party Contract"). In the event OpticNet decides to enter into
a Third Party Contract, OpticNet shall, whenever feasible, applying its
reasonable commercial judgment, consider utilizing ▇▇▇▇▇ for such work.
3.
3. OWNERSHIP OF INTELLECTUAL PROPERTY
3.1 Ownership of ▇▇▇▇▇ Technology. As between the parties, ▇▇▇▇▇ shall
own all Proprietary Rights in and to all ▇▇▇▇▇ Technology, including, without
limitation, all Project Technology consisting of or incorporating any ▇▇▇▇▇
Technology.
3.2 Ownership of Technology Benefiting the OpticNet Market. In the
event that Project Technology that would otherwise be owned by ▇▇▇▇▇ pursuant to
the provisions of Section 3.1, has application primarily within OpticNet Market,
OpticNet shall own such Project Technology ("OpticNet Technology"). ▇▇▇▇▇ hereby
assigns any and all Proprietary Rights to such OpticNet Technology (except its
rights in any ▇▇▇▇▇ Technology incorporated therein) to OpticNet and shall
execute any instrument reasonably necessary to evidence or perfect such
assignment. Notwithstanding the foregoing, nothing in this Section shall be
construed as granting to OpticNet an assignment of any rights in any ▇▇▇▇▇
Technology.
3.3 Ownership of Project Technology. Subject to Sections 3.1 and 3.2,
the parties shall jointly own all Project Technology; provided however, that
OpticNet shall exploit its ownership interest in such Project Technology solely
within the OpticNet Market, and ▇▇▇▇▇ shall exploit its ownership interest in
such Project Technology solely outside the OpticNet Market.
3.4 Ownership of the Designs. As between the parties, OpticNet shall
own all Proprietary Rights in and to the Designs. Nothing in this Agreement
shall be construed as granting to ▇▇▇▇▇ an assignment of any rights in any
Designs.
3.5 Ownership of the Fabricated Designs and OpticNet Products. Subject
to Sections 3.1, 3.2 and 3.3, OpticNet shall have all right, title and interest
in and to the Fabricated Designs and OpticNet Products.
3.6 Patent Prosecution and Maintenance.
(a) Patent Rights in OpticNet or ▇▇▇▇▇ Technology. Each party
shall be solely responsible for and shall control the preparation, filing,
prosecution, grant and maintenance of all patent applications and rights with
respect to its respective Technology.
(b) Patent Rights in Project Technology. Subject to Sections
3.1 and 3.2, the parties shall share joint responsibility for the preparation,
filing, prosecution, grant and maintenance of all patent applications and rights
with respect to Project Technology.
(c) Patent Rights in the Fabricated Designs and OpticNet
Products. OpticNet shall be solely responsible for and shall control the
preparation, filing, prosecution, grant and maintenance of all patent
applications and rights with respect to the Fabricated Designs and OpticNet
Products.
(d) Mutual Assistance. Each party shall make available to the
other or the other's authorized attorneys, agents or representatives, the
party's employees, agents or consultants and any necessary and appropriate
assistance to enable the other to file, prosecute and maintain patent
applications and resulting patents with respect to any Project Technology,
Fabricated Designs or OpticNet Products and the use of the OpticNet Products for
a period of time sufficient for a party to obtain the assistance it needs from
such personnel. Where
4.
appropriate, the parties shall sign or cause to have signed all documents
relating to said patent applications or patents at no charge to the other party.
4. LICENSE GRANTS
4.1 License of ▇▇▇▇▇ Technology. Subject to the terms and conditions of
this Agreement, ▇▇▇▇▇ hereby grants to OpticNet an exclusive (even as to ▇▇▇▇▇),
worldwide, perpetual, royalty-free license (except as set forth in Section 5.1
below) to use the ▇▇▇▇▇ Technology, to make, have made, develop, produce, use,
import, sell, offer for sale, market and distribute (through subdistributors and
other channels) the Fabricated Designs and OpticNet Products within the OpticNet
Market. As provided in Section 2.5 above, OpticNet shall, in good faith,
consider using ▇▇▇▇▇ as an alternative source for OpticNet Products not
manufactured by OpticNet. OpticNet's license to the ▇▇▇▇▇ Technology shall
extend solely to use in the OpticNet Market, and nothing in this Agreement shall
be construed as granting to OpticNet the right to use the ▇▇▇▇▇ Technology in
any field other than the OpticNet Market. ▇▇▇▇▇ may use the ▇▇▇▇▇ Technology in
the Optic Market solely for the purpose of fulfilling a Third Party Contract
awarded to ▇▇▇▇▇ by OpticNet, and may sublicense the ▇▇▇▇▇ Technology to a
subcontractor of ▇▇▇▇▇ solely for the purpose of fulfilling such a Third Party
Contract.
4.2 License of OpticNet Technology. Subject to the terms and conditions
of this Agreement, OpticNet hereby grants to ▇▇▇▇▇ an exclusive (even as to
OpticNet) worldwide, perpetual, royalty-free license to use the OpticNet
Technology and improvements thereto to make, have made, develop, produce, use,
import, sell, offer for sale, market and distribute (through subdistributors and
other channels) products outside the OpticNet Market. ▇▇▇▇▇'▇ license to the
OpticNet Technology and improvements thereto shall extend solely to use outside
the OpticNet Market, and nothing in this Agreement shall be construed as
granting to ▇▇▇▇▇ the right to use the OpticNet Technology in any manner within
OpticNet Market.
4.3 Restrictions on Sublicenses. OpticNet shall have no right to
sublicense, cross-license, or otherwise transfer any Proprietary Rights in any
▇▇▇▇▇ Technology to any third party, as a standalone product or process.
However, OpticNet shall have the full right to sublicense, cross-license, or
otherwise transfer elements of the ▇▇▇▇▇ Technology to any third party for sale
or use in the OpticNet Market without obtaining a separate license from ▇▇▇▇▇
for such ▇▇▇▇▇ Technology; provided, however, that (i) the ▇▇▇▇▇ Technology is
an embedded element of an OpticNet Product and such third party shall be
restricted from extracting or using the ▇▇▇▇▇ Technology separately from such
OpticNet architecture; (ii) the ▇▇▇▇▇ Technology is used solely for the
manufacture, use or sale of OpticNet Products alone or in connection with third
party products in the OpticNet Market; and (iii) OpticNet pays ▇▇▇▇▇ the royalty
set forth in Section 5.1 below (an "Authorized Sublicense").
4.4 Updates and Improvements. During the term of this Agreement, each
party will provide the other party with all improvements, upgrades and updates
to ▇▇▇▇▇ Technology or Project Technology, as and when such upgrades and updates
are available. Each party will reimburse the other for reasonable out-of-pocket
costs associated with transferring such upgrades and updates.
5.
5. LICENSE FEES , PROJECT FEES, PAYMENTS AND AUDIT RIGHTS
5.1 License Fee for ▇▇▇▇▇ Technology. In the event OpticNet grants a
sublicense of the ▇▇▇▇▇ Technology in accordance with Section 4.3 above,
OpticNet shall pay ▇▇▇▇▇ a royalty equal to fifty (50) percent of the sublicense
fee collected by OpticNet.
5.2 Royalty-Free Licenses for Third Party Contracts. To the extent
OpticNet enters into a Third Party Contract with a party other than ▇▇▇▇▇ to
manufacture OpticNet Products solely for OpticNet, any limited license to the
▇▇▇▇▇ Technology granted in connection therewith to perform such work shall be
royalty-free as between OpticNet and ▇▇▇▇▇. To the extent that ▇▇▇▇▇ grants any
limited license in the ▇▇▇▇▇ Technology to a subcontractor solely to perform
Third Party Contract work for OpticNet, such limited license shall be
royalty-free as between OpticNet and ▇▇▇▇▇.
5.3 License Reports. In connection with any licenses or contracts
subject to Sections 5.1 and 5.2 above, OpticNet shall prepare and deliver,
within thirty (30) days of the last day of each calendar quarter during the term
of this Agreement, a written report ("License Report") which shall describe: (i)
all Authorized Sublicenses granted by OpticNet during the immediately preceding
calendar quarter; (ii) all Third Party Contracts entered into by OpticNet during
the immediately preceding calendar quarter; (iii) all revenue owed and received
in connection therewith; and (iv) such other information as ▇▇▇▇▇ may reasonably
request.
5.4 License Payments. OpticNet shall, at the time it submits a License
Report, pay to ▇▇▇▇▇ through electronic transfer (as designated by ▇▇▇▇▇) the
total royalty due to ▇▇▇▇▇ as set forth in such License Report.
5.5 Project Budget. ▇▇▇▇▇ and OpticNet shall agree on fully-burdened
hourly labor rates (including a reasonable fee) for each major category of labor
to be supplied by ▇▇▇▇▇ to OpticNet in support of this Agreement as well as a
monthly usage fee for use of ▇▇▇▇▇'▇ facility and MEMs production equipment for
the completion of the Project contemplated by this Agreement.
5.6 Project Billing and Payment. ▇▇▇▇▇ shall submit to OpticNet a
written invoice on a monthly basis for its actual labor hours incurred
performing any SOW at the agreed upon labor billing rates and facility and
equipment usage fees. OpticNet's payment shall be due within 30 days after the
receipt of ▇▇▇▇▇'▇ invoice.
5.7 Audit Rights. OpticNet shall keep accurate books of account and
records covering all transactions relating to this Agreement, and ▇▇▇▇▇ or its
designee shall have the right at all reasonable business hours upon 48 hours
advance notice to OpticNet to make complete verifications, examinations and
audits of said books of account and records and all other documents and material
in the possession or under the control of the other party relating to this
Agreement, and shall have reasonable access thereto on OpticNet's premises for
said purposes and for the purpose of making extracts therefrom. OpticNet's books
of account and records shall be considered confidential, Proprietary Information
as defined in Section 7. If, as a result of any verification, examination and/or
audit, it is determined that there is a deficiency or discrepancy in the payment
of any amounts under this Agreement, then the party owing such amount shall
6.
immediately pay such amount, with interest, to the other party. ▇▇▇▇▇'▇ costs
and expenses arising out of such verifications, examinations and audits shall be
borne by ▇▇▇▇▇; provided, however, that in the event that as a result of any
such verification, examination and/or audit, the amount due from OpticNet to
▇▇▇▇▇ shall be increased by more than 5%, OpticNet shall reimburse ▇▇▇▇▇ for the
costs and expenses thereof incurred by ▇▇▇▇▇ or its designee. All books and
records of OpticNet covering transactions relating to this Agreement shall be
kept available until at least three (3) years after such transactions.
6. REPRESENTATIONS AND WARRANTIES.
6.1 By ▇▇▇▇▇. ▇▇▇▇▇ represents and warrants to OpticNet as follows:
(a) This Agreement has been duly authorized, executed and
delivered by ▇▇▇▇▇ and constitutes a valid and binding obligation of ▇▇▇▇▇,
enforceable in accordance with its terms.
(b) To the best knowledge of ▇▇▇▇▇, the ▇▇▇▇▇ Technology in
general, and when used in accordance with the licenses granted under this
Agreement, does not and will not infringe any patent, copyright, trade secret or
other proprietary right of any third party.
(c) Any Fabricated Designs and ▇▇▇▇▇ Components provided by
▇▇▇▇▇ shall be substantially in compliance with the Specifications.
6.2 By OpticNet. OpticNet represents and warrants to ▇▇▇▇▇ as follows:
(a) OpticNet represents and warrants to ▇▇▇▇▇ that this
Agreement has been duly authorized, executed and delivered by OpticNet and
constitutes a valid and binding obligation of OpticNet enforceable in accordance
with its terms.
(b) To the best knowledge of OpticNet, the Designs do not and
will not infringe any patent, copyright, trade secret or other proprietary right
of any third party.
6.3 WARRANTY DISCLAIMER. EXCEPT FOR THE LIMITED WARRANTIES SET FORTH IN
SECTIONS 6.1 AND 6.2 ABOVE, NEITHER PARTY MAKES ANY REPRESENTATION OR WARRANTY
OF ANY KIND WHETHER EXPRESSED OR IMPLIED (EITHER IN FACT OR BY OPERATION OF LAW)
WITH RESPECT TO ITS PRODUCTS OR SERVICES OR THE DELIVERABLES, AND HEREBY
DISCLAIMS ALL SUCH OTHER WARRANTIES INCLUDING ALL WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, ACCURACY, AND NON-INFRINGEMENT.
7. CONFIDENTIALITY
The parties acknowledge that the Designs and Technology identified in
this Agreement constitute Proprietary Information (defined below). In addition
each party agrees that all inventions (whether or not patentable), trade
secrets, ideas, processes, formulas, materials, chemicals, technology, know-how
and all other business, technical and financial information it obtains from the
other are the confidential property of the disclosing party ("Proprietary
7.
Information" of the disclosing party). Except as expressly allowed in this
Agreement the receiving party will hold in confidence and not use or disclose
any Proprietary Information of the disclosing party during the term of this
Agreement and for a period of five (5) years after termination of this
Agreement, and its employees shall be similarly bound. The receiving party shall
not be obligated under this Section 7 with respect to any information the
receiving party can document:
(a) is or has become readily publicly available through no
fault of the receiving party or its employees or agents; or
(b) is received from a third party lawfully in possession of
such information and lawfully empowered to disclose such information and
provided the receiving party abides by all restrictions, if any, imposed by such
third party; or
(c) was rightfully in the possession of the receiving party
prior to its disclosure by the other party provided the receiving party abides
by all restrictions, if any, imposed on its possession of such information; or
(d) was independently developed by employees or consultants of
the receiving party without use of or access to Proprietary Information of the
disclosing party; or
(e) is necessary in the filing of any patent application.
Notwithstanding the foregoing, the receiving party may disclose Proprietary
Information to the extent it is required to be disclosed to a governmental
entity or agency in connection with seeking any governmental or regulatory
registration, approval or license, or pursuant to the lawful requirement or
request of a governmental entity or agency, provided that reasonable measures
are taken to obtain confidential treatment thereof and to guard against further
disclosure.
8. LIMITATION OF LIABILITY.
EXCEPT FOR EACH PARTY'S OBLIGATIONS WITH RESPECT TO CONFIDENTIALITY,
INDEMNIFICATION AND ANY INTELLECTUAL PROPERTY, NEITHER PARTY WILL BE LIABLE TO
THE OTHER WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR
ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES.
9. INDEMNIFICATION.
9.1 By ▇▇▇▇▇. Subject to Section 9.3 below, ▇▇▇▇▇ shall indemnify,
defend and hold OpticNet and its officers, directors, agents and employees
harmless from liability resulting from infringement by the ▇▇▇▇▇ Technology of
any patent, copyright, or misappropriation of any trade secret or violation of
any third party proprietary rights, provided ▇▇▇▇▇ is promptly notified of any
and all threats, claims and proceedings related thereto and given reasonable
assistance at ▇▇▇▇▇'▇ cost and the opportunity to assume sole control over the
defense and all negotiations for a settlement or compromise.
8.
9.2 By OpticNet. Subject to Section 9.3 below, OpticNet shall
indemnify, defend and hold ▇▇▇▇▇ and its officers, directors, agents and
employees harmless from liability resulting from infringement by the Designs of
any patent, copyright, or misappropriation of any trade secret or violation of
any third party proprietary rights, provided OpticNet is promptly notified of
any and all threats, claims and proceedings related thereto and given reasonable
assistance at OpticNet's cost and the opportunity to assume sole control over
the defense and all negotiations for a settlement or compromise.
9.3 Limitations. The rights granted to the parties under this Section 9
shall be the sole and exclusive remedy for any alleged infringement by material
or services provided by the parties of any patent, copyright, trademark or other
proprietary right. ▇▇▇▇▇ will have no liability or obligation to OpticNet under
this Section 9 if any alleged patent or copyright infringement or claim thereof
is based upon the modifications made by OpticNet to ▇▇▇▇▇'▇ software, hardware
or other Technology, use of such Technology in connection with the combination
of equipment, devices, or software not delivered by ▇▇▇▇▇ or other combinations
for which it was designed (if such infringement or claim could have been avoided
by the use of such technology with other equipment, devices or software) or use
of any of ▇▇▇▇▇'▇ software, hardware, products or Technology in a manner for
which it was not intended or use of other than the most current release of any
software or hardware product if such claim could have been prevented by proper
use of the most current version.
10. Term and Termination.
10.1 Term. This Agreement will commence as of the Effective Date and,
unless terminated as provided below, shall continue in effect for five (5) years
("Initial Term"). Thereafter the Agreement will automatically renew for
consecutive one (1) year terms ("Renewal Terms") beginning on each anniversary
of the Effective Date, unless either party shall have given notice of
termination upon sixty (60) days' written notice prior to the end of the
then-current Initial or Renewal Term.
10.2 Termination for Cause. This Agreement may be terminated in its
entirety by a party upon the occurrence of any of the following events:
(a) Immediately by OpticNet upon written notice to ▇▇▇▇▇ if
▇▇▇▇▇ does not use or ceases to use commercially reasonable efforts to provide
▇▇▇▇▇ Technical Assistance and Support Services or support any SOW;
(b) By a party upon sixty (60) days' written notice if there
has been a material breach of any representation, warranty, covenant or
obligation contained in this Agreement on the part of the other party; provided,
however, that, notwithstanding anything else to the contrary, in the event of a
termination by ▇▇▇▇▇ pursuant to this Section 10.2(b), ▇▇▇▇▇ will not be
obligated to continue development work after it gives notice of termination
unless the breach is timely cured during such period;
(c) If the other party ceases to do business, or otherwise
terminates its business operations;
9.
(d) If the other party shall fail to promptly secure or renew
any license, registration, permit, authorization or approval necessary for the
conduct of its business in the manner contemplated by this Agreement, or if any
such license, registration, permit, authorization or approval is revoked or
suspended and not reinstated within sixty (60) days or if reinstatement is not
possible within sixty (60) days, diligent efforts are not being made to effect
such reinstatement; or
(e) If the other party shall seek protection under any
bankruptcy, receivership, trust deed, creditors arrangement, composition or
comparable proceeding, or if any such proceeding is instituted against the other
(and not dismissed within one hundred and twenty (120) days).
10.3 No Liability for Termination. Neither party shall incur any
liability whatsoever for any damage, loss or expenses of any kind suffered or
incurred by the other (or for any compensation to the other) arising from or
incident to any termination of this Agreement by such party which complies with
the terms of this Agreement, whether or not such party is aware of any such
damage, loss or expenses.
10.4 Effect of Termination. In addition to provisions that by their
terms survive termination, the following provisions shall survive the expiration
or termination of this Agreement: Sections 2.3, 3, 5, 6, 7, 8, 9, 10, and 11. In
addition, all remedies for any breaches hereunder will also survive. Each party
will promptly return all Proprietary Information of the other (and all copies
and abstracts thereof, except to the extent necessary to continue to exercise
the licenses hereunder and except that one (1) copy may be retained and shall be
kept in its legal archives for legal record keeping purposes only) that it is
not entitled to under the surviving terms of this Agreement.
10.5 Licenses Upon Termination.
(a) Upon termination of this Agreement by OpticNet pursuant to
Section 10.2(a) above: (i) OpticNet shall have, under all of ▇▇▇▇▇'▇ rights in
the ▇▇▇▇▇ Technology an exclusive, worldwide, perpetual, license to use, make,
have made, develop, produce, import, sell, offer for sale, market, distribute
and use ▇▇▇▇▇ Technology for use with the Fabricated Designs or OpticNet
Products in the OpticNet Market; and (ii) OpticNet shall have the right to
sublicense the ▇▇▇▇▇ Technology, including the ▇▇▇▇▇ Technology, to third
parties to continue the Project and the development of the Fabricated Designs
and OpticNet Products on behalf of OpticNet (provided that such third party is
bound to Section 7).
(b) Upon termination of this Agreement by OpticNet pursuant to
Section 10.2(a) above, (i) ▇▇▇▇▇ agrees that OpticNet, its affiliates, agents
and customers will be immune from suit by ▇▇▇▇▇ under the ▇▇▇▇▇ Technology
(including without limitation all related technical information and know-how
shared or supplied by ▇▇▇▇▇ under this Agreement through the effective date of
such termination and (ii) ▇▇▇▇▇ further agrees and covenants not to ▇▇▇ OpticNet
or its affiliates, agents or customers for infringement related to any use of
the ▇▇▇▇▇ Technology.
10.
10.6 Termination Not Sole Remedy. Termination is not the sole remedy
under this Agreement and, whether or not termination is effected, all other
remedies will remain available.
11. GENERAL.
11.1 Amendment and Waiver. Except as otherwise expressly provided
herein, any provision of this Agreement may be amended and the observance of any
provision of this Agreement may be waived (either generally or in any particular
instance and either retroactively or prospectively) only with the written
consent of both parties. However, it is the intention of the parties that this
Agreement be controlling over additional or different terms of any purchase
order, confirmation, invoice or similar document, even if accepted in writing by
both parties, and that waivers and amendments of any provision of this Agreement
shall be effective only if made by non-pre-printed agreements signed by both
parties and clearly understood by both parties to be an amendment or waiver. The
failure of either party to enforce its rights under this Agreement at any time
for any period shall not be construed as a waiver of such rights.
11.2 Governing Law and Legal Actions. This Agreement shall be governed
by and construed under the laws of the State of California and the United States
without regard to conflicts of laws provisions thereof. Unless otherwise elected
by OpticNet in writing for a particular instance (which OpticNet may do at its
option), the sole jurisdiction and venue for actions related to the subject
matter hereof shall be the California state and U.S. federal courts having
within their jurisdiction the location of OpticNet's principal place of
business. Both parties consent to the jurisdiction of such courts and agree that
process may be served in the manner provided herein for giving of notices or
otherwise as allowed by California state or U.S. federal law. In any action or
proceeding to enforce rights under this Agreement, the prevailing party shall be
entitled to recover costs and attorneys' fees.
11.3 Headings. Headings and captions are for convenience only and are
not to be used in the interpretation of this Agreement.
11.4 Notices. Any notice or other communication required or permitted
to be made or given to either party under this Agreement shall be deemed
sufficiently made or given on the date of delivery if delivered in person or by
overnight commercial courier service with tracking capabilities with costs
prepaid, or three (3) days after the date of mailing if sent by certified first
class U.S. mail, return receipt requested and postage prepaid, at the address of
the parties set forth below or such other address as may be given from time to
time under the terms of this notice provision:
If to ▇▇▇▇▇: ▇▇▇▇▇, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
If to OpticNet: OpticNet, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
11.
11.5 Entire Agreement. This Agreement constitutes the entire
understanding and agreement with respect to the subject matter hereof and
supersedes all proposals, oral or written, all negotiations, conversations, or
discussions between or among the parties relating to the subject matter of this
Agreement and all past dealing or industry custom.
11.6 Severability. If any provision of this Agreement is held to be
illegal or unenforceable, that provision shall be limited or eliminated to the
minimum extent necessary so that this Agreement shall otherwise remain in full
force and effect and enforceable.
11.7 Relationship of parties. Nothing contained herein shall be
construed as creating any agency, partnership, or other form of joint enterprise
between the parties. The parties' relationship will be that of independent
contractors. The parties hereto expressly understand and agree that each is
solely responsible for all of its employees and agents and its labor costs and
expenses arising in connection therewith.
11.8 Assignment. This Agreement and the rights hereunder are not
transferable or assignable without the prior written consent of the parties
hereto, except for rights to payment and except to a person or entity who
acquires all or substantially all of a party's stock, assets or business to
which this Agreement pertains, whether by sale, merger, acquisition or
otherwise.
11.9 Publicity and Press Releases. Except to the extent necessary under
applicable laws or for ordinary marketing purposes, the parties agree that no
press releases or other publicity relating to the substance of the matters
contained herein will be made without approval by both parties. A press release
announcing this Agreement will be jointly developed and released by the parties.
11.10 Force Majeure. No liability or loss of rights hereunder shall
result to either party from delay or failure in performance caused by an event
of force majeure (that is, circumstances beyond the reasonable control of the
party affected thereby, including, without limitation, acts of God, fire, flood,
war, government action, compliance with laws or regulations (including, without
limitation, those related to infringement), strikes, lockouts or other serious
labor disputes, or shortage of or inability to obtain material or equipment) for
so long as such event of force majeure continues in effect.
11.11 Remedies. Except as otherwise expressly stated in this Agreement,
the rights and remedies of a party set forth herein with respect to failure of
the other to comply with the terms of this Agreement (including, without
limitation, rights of full termination of this Agreement) are not exclusive, the
exercise thereof shall not constitute an election of remedies and the aggrieved
party shall in all events be entitled to seek whatever additional remedies may
be available in law or in equity.
11.12 Compliance with Law; Export Control. Each party agrees to comply
with the U.S. Foreign Corrupt Practices Act (regarding among other things,
payments to government officials) and all export laws, restrictions, national
security controls and regulations of the United States or other applicable
foreign agency or authority, and not to export or re-export, or allow the export
or re-export of any Proprietary Information or any copy or direct product
thereof in violation of any such restrictions, laws or regulations, or to any
Group D:1 or E:2 country (or any
12.
national of such country) specified in the then current Supplement No. 1 to Part
740, or, in violation of the embargo provisions in Part 746, of the U.S. Export
Administration Regulations (or any successor regulations or supplement), except
in compliance with and with all licenses and approvals required under applicable
export laws and regulations, including without limitation, those of the U.S.
Department of Commerce.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the Effective Date.
▇▇▇▇▇, INC. OPTICNET, INC.
By: By:
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Name: Name:
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Title: Title:
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13.