EXHIBIT 10.1
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Network-1 Security Solutions, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇, ▇.▇. ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ June 17, 2008
Executive Vice President and General Manager
Microsemi Corp-
Analog Mixed Signal Group Ltd.
▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇
Dear ▇▇. ▇▇▇▇▇▇▇▇▇▇:
Reference is made to that certain Settlement Agreement ("Settlement
Agreement"), dated as of November 16, 2005, by and among Network-1 Security
Solutions, Inc, a Delaware Corporation ("Network-1"), and PowerDsine, Inc., a
New York corporation ("PowerDsine USA") and PowerDsine LTD, an Israeli
corporation ("PowerDsine Ltd"), relating to the settlement of certain litigation
involving U.S. Patent No. 6,218,930 (the `930 Patent).
During January of 2007, Microsemi Corporation, a Delaware corporation
("MSCC") acquired PowerDsine, Ltd. and the name of PowerDsine Ltd. was changed
to Microsemi Corp- Analog Mixed Signal Group Ltd ("Microsemi") and, through
operation of law, is still bound to the terms and conditions of the Settlement
Agreement.
You have informed us that as a result of Network-1's licensing
activities relating to the `930 Patent, including the recent litigation filed by
Network-1 in the United States District Court for the Eastern District of Texas,
Tyler Division Docket No. 6:08-cv-00030 (the "Litigation") against various
companies, including several companies using Microsemi products, Microsemi would
like to assist its customers (including those that are defendants in the
"Litigation") in evaluating the licensing opportunities to the `930 Patent
without Microsemi breaching certain provisions of the Settlement Agreement.
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Executive Vice President
Because of Microsemi's unique position as market leader in the sale
of Power over Ethernet integrated circuits and Midspan products and because of
Microsemi's existing relationships with a large number of vendors of Power over
Ethernet products, Network-1 is willing to allow Microsemi to provide
assistance, as more fully set forth below, to third parties to fully understand
and evaluate the matter and their licensing needs relating to the `930 Patent,
subject to the following terms and conditions:
1. Within five (5) days of the date hereof, Network-1 will commence a
new industry wide licensing program for the `930 Patent to vendors of Power over
Ethernet equipment (the "Special Licensing Program"). The Special Licensing
Program is of limited duration and is being implemented to offer discounted
running royalty rates and exceptions to Network-1's standard licensing terms and
conditions relating to the `930 Patent to vendors who are "early adopters" of
Network-1's licensing program and enter into license agreements without delay to
avoid litigation costs and higher royalty rates. The terms and conditions
offered during the Special Licensing Program shall terminate on December 31,
2008, unless extended by Network-1.
2. Upon execution of this Agreement and through December 31, 2008,
Microsemi is, subject to paragraph 3 below, authorized to communicate the terms
of the Special Licensing Program to Microsemi's customers that have purchased or
purchase Microsemi integrated circuits including those customers that are
parties in the Litigation. Network-1 agrees to grant an "early adopter" license
to the `930 Patent to such third party customers provided such customers agree
to execute a license agreement no later than December 31, 2008, in the form
substantially attached to this agreement as Exhibit A (the "Form License
Agreement") which requires the payment of running royalties for the term of the
`930 Patent for sales of infringing products.
3. Upon execution of appropriate confidentiality agreements, with
respect to Paragraphs 1 and 2 above Network-1 will provide royalty rates and
other financial terms and conditions to Microsemi for communication to customers
and third parties interested in desirous of understanding the licensing
opportunities under the Special Licensing Program for the `930 Patent.
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▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Executive Vice President
4. Parties that are currently defendants in the Litigation will be
offered a limited opportunity to take advantage of the Special Licensing Program
so long as (ii) a Rule 408 confidentiality agreement has been executed between
Network-1 and any such defendant prior to any licensing and settlement
discussions and (ii) a license agreement, substantially in the form of the Form
Licensing Agreement (including additional provisions customary in settlement
agreements), is executed within 120 days of the date a scheduling order is
issued in the Litigation.
5. Notwithstanding the provisions of Paragraph 5 of the Settlement
Agreement, Network-1 agrees that, solely in connection with the Special
Licensing Program and to facilitate the third party customer's review of the
licensing opportunities contemplated by this Agreement, Microsemi may provide
information to its customers regarding (i) the operation of its Power over
Ethernet integrated circuit product offerings and (ii) prior art references
produced in Network-1's litigation against D-Link Corporation and D-Link
Systems, Inc. and other prior art references and related materials previously
provided by Microsemi to Network-1 (collectively the "Information"). The
provision of any of the Information by Microsemi during the Special Licensing
Program shall not be deemed to be a breach of the Settlement Agreement.
6. Except as modified in Paragraph 5 above, Microsemi agrees that all
other terms of the Settlement Agreement shall remain in full force and effect,
including, but not limited to, Sections 6 through 10 thereof, and that providing
the Information after the Special Licensing Program terminates would constitute
a material breach of the Settlement Agreement.
7. It is expressly understood and agreed by Microsemi and Network-1
that the Special Licensing Program is of limited duration and is being
implemented to offer discounted running royalty rates and exceptions to
Network-1's standard licensing terms and conditions relating to the `930 Patent
on an industry-wide basis to vendors of Power over Ethernet equipment who are
"early adopters" of Network-1's licensing program and who enter into a license
without delay to avoid litigation costs and higher royalty rates. The terms and
conditions offered during the Special
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▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Executive Vice President
Licensing Program shall terminate on December 31, 2008, unless extended by
Network-1. Upon expiration of the Special Licensing Program, such terms and
conditions will no longer be available and Network-1 will thereafter offer
licenses to the `930 Patent on its standard terms and conditions which differ in
royalty rate than the "early adopter" rates and may contain terms that are
different than those set forth in the Form License Agreement, all at Network-1's
sole discretion. Microsemi shall communicate such limitations of the Special
Licensing Program to its customers with whom it has discussions relating to the
`930 Patent and Network-1's licensing terms for the '930 Patent.
8. Microsemi and Network-1 irrevocably agree that at the earlier of
August 15, 2008 or upon execution of a Form License Agreement by a third party
under the Special Licensing Program, Microsemi shall execute a license agreement
in the form attached to this agreement as Exhibit B (the "Midspan License")
pursuant to which Network-1 shall provide a license to the `930 Patent under the
Special Licensing Program to Microsemi for certain Midspan products sold by
Microsemi. It is further agreed that a failure by Microsemi to execute the
Midspan License as contemplated hereunder would constitute a material breach of
the Settlement Agreement and this amendment thereto and would result in, among
other remedies available to Network-1 in equity or law, the right of Network-1
to terminate the Settlement Agreement and this letter agreement.
9. Microsemi understands and agrees that following the execution of
this Agreement, Network-1 will be required to file a Form 8-K with the SEC that
will include as an exhibit this Agreement (with Exhibits) as well as a press
release.
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▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Executive Vice President
Each of the parties hereto represents and warrants to the other that
this Letter Agreement constitutes a valid and binding agreement and has been
executed by a duly authorized officer of each such party. If the terms and
conditions contained herein are acceptable to you and Microsemi, please
acknowledge by signing in the space provided below.
Sincerely,
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
--------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman and CEO
AGREED TO AND ACCEPTED
Microsemi Corp-Analog Mixed Signal Group Ltd.
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
--------------------------
By: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Executive Vice President and General Manager
AGREED TO AND ACCEPTED
/s/ ▇▇▇▇▇ ▇▇▇▇▇
--------------------------
PowerDsine, Inc.
▇▇▇▇▇ ▇▇▇▇▇, Esq.
5
EXHIBIT A
PATENT LICENSE AGREEMENT
THIS AGREEMENT made and entered into and effective as of [ ]__, 2008,
is by and between Network-1 Security Solutions, Inc., a Delaware corporation
(the "Licensor") and [ ], a [ ] Corporation (the "Licensee").
WHEREAS, Licensor is the beneficial owner of United States Patent No.
6,218,930 (the "`930 Patent");
WHEREAS, on June ___, 2008, Licensor commenced an industry-wide
Special Licensing Program for the `930 Patent to vendors of Power over Ethernet
equipment. The Special Licensing Program is of limited duration (through
December 31, 2008) and is being implemented on an industry-wide basis to offer
discounted running royalty rates and exceptions to Network-1's standard current
licensing terms and conditions relating to the `930 Patent to ▇▇▇ vendors who
are "early adopters" and enter into license agreements without delay and to
avoid litigation and higher royalties.
WHEREAS, Licensee desires to obtain a royalty-bearing, non-exclusive,
license under `930 Patent, and Licensor is willing to grant Licensee such
license subject to the terms and conditions of this Agreement;
NOW, THEREFORE, in consideration of the premises and covenants
hereinafter set forth, the parties hereby agree as follows:
1. Definitions.
1.1 "Effective Date" of this Agreement shall mean the date first written
above.
1.2 "Expiration Date" means the date on which the Licensed Patent shall
expire. "Have Made" means the right to purchase a Licensed Product
from a third party (E.G., subsidiaries, suppliers and vendors) and/or
have a third party make a Licensed Product for the use by and/or sale
or transfer by Licensee, said third party operating under the license
grant to Licensee for the provision of Licensed Products to Licensee
and for no other purpose.
1.3 "Licensed Patent" shall mean the `930 Patent and any reissues and
reexaminations thereof.
1.4 "Licensed Product" shall mean a Licensed PSE Product and Licensed PD
Product which infringes any claim of an issued, unexpired Licensed
Patent, which claim has not invalidated by a final, non-appealable
order of a court of competent jurisdiction.
1.5 "Licensee Covenanted Party" shall mean Licensee, each of its
Subsidiaries, and each of their respective officers, directors,
employees and successors.
1.6 "Power over Ethernet" or "▇▇▇" means the technology used to deliver
electrical power over Ethernet network cabling for the purpose of
supplying operating power to devices connected to an Ethernet network.
1.7 "Person" or "person" means an individual, corporation, partnership,
limited partnership, limited liability company, syndicate, person
(including, without limitation, a "person" as
6
defined in Section 13(d)(3) of the Exchange Act), trust, association
or entity or government, political subdivision, agency or
instrumentality of a government.
1.8 "PSE" means any apparatus, device, equipment or product that supplies
power to other devices in a ▇▇▇ implementation, including, but not
limited to, products complying with IEEE Standards 802.3af and
802.3at.
1.9 "Sales Price" means with respect to any Licensed Product sold by
Licensee or any of its Subsidiaries, on an arms-length basis to a
party that is not a Subsidiary of Licensee, the selling price actually
invoiced for such product. The calculation of "selling price" shall
include credits for the following items: (i) an exchange of
replacement products returned because of a systemic failure, and (ii)
the payment or credit for the difference in the invoice prices of
exchanged products, within twelve months of original sale, out of a
distributor's inventory, that is returned for such exchange. For the
avoidance of doubt, for royalty calculation purposes, any resale of a
returned product shall be treated as a new sale.
1.10 "Subsidiary" means as to Licensee (Licensor has no Subsidiaries) an
entity of which shares of stock having voting power to elect a
majority of the Board of Directors or other managers of such entity
are at the time owned, or the management of which is otherwise
controlled, directly or indirectly through one or more intermediaries,
or both, by the Licensee.
2. License Grant.
2.1 Licensor hereby grants to the Licensee and its Subsidiaries a
personal, non-exclusive, non-transferable, royalty bearing license
under the Licensed Patent (i) to make, use, lease, sell, offer for
sale, import, design, Have Made and otherwise transfer Licensed
Products, including the right to procure or produce components
therefore, (ii) to practice a method or process involved in the
manufacture thereof, and (iii) practice any method or process involved
in the use thereof. To the extent that the Licensed Products are sold
or otherwise transferred by Licensee or its Subsidiaries to
distributors, private label resellers, channel partners, retailers,
customers and other "arm's length" customers and/or end users, the
license granted under this Section shall encompass such parties for
such Licensed Products. To the extent that a third party is operating
under the Have Made rights granted herein, the license granted under
this Section shall encompass said third party, but only as to such
third party's sales of Licensed Products to Licensee or any Subsidiary
and other licensed conduct for Licensee and its Subsidiaries
contemplated herein, and not for sales to other parties.
2.2 If the Licensee or its Subsidiaries or its or their successors
initiates any action to challenge, directly or indirectly through
their acting officers, directors, employees, representatives, or
agents acting at Licensee's direction, the infringement or validity of
the Licensed Patent, or assist or cooperate in any action, related to
the non-infringement or invalidity of the Licensed Patent or any
declaratory judgment action under the Patent Act of the ▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ Code, the Declaratory Judgment Act, title 28,
United States Code, or otherwise (unless the Licensee is required to
do so pursuant to any applicable law, regulation, judicial or
administrative order or decree, or request by other regulatory
organization having authority pursuant to the law; PROVIDED, HOWEVER,
that in such case the applicable Licensee Party gives Licensor
reasonable advance notice of the same (so as to afford Licensor a
reasonable opportunity to appear, object and obtain appropriate relief
regarding such requirement)) the Licensee shall pay a royalty rate of
three percent (3%) of the Sales Price of a Licensed Product in lieu of
the royalties owed under Section 4.2 hereof on royalties payable after
the date it initiates any of the foregoing.
7
2.3 Licensee is obligated to ▇▇▇▇ all Licensed Products with U.S. Patent
No. 6,218,930 in a font size large enough to be easily read and in a
manner reasonably required to satisfy ▇▇ ▇.▇. ▇▇▇.
3. Third Party Patents and Limitations on Liability.
3.1 Licensor hereby represents and warrants that: (a) it has the authority
to enter into this Agreement and grant the licenses herein; (b) this
Agreement is valid and binding and enforceable in accordance with its
terms except as such enforceability may be limited by applicable
bankruptcy, insolvency, reorganization, moratorium or similar laws
affecting creditors rights generally and general equitable principles;
(c) it has all right, title and interest in and to the Licensed
Patent; and (d) there are no patents or patent applications or foreign
counterparts related to the Licensed Patent, nor does Licensor or its
Subsidiaries own any patent or patent application claiming or
disclosing any ▇▇▇ technology except the Licensed Patent. Licensor
makes no warranty or representation that the practice of the licenses
herein granted to Licensee will not infringe any patent or patents of
any country which is or are owned by any party or parties other than
Licensor. The obligations of Licensee to Licensor shall be in no way
affected and no obligation of any character of Licensor to Licensee
shall be created by the fact that the practice of the licenses granted
hereunder infringes the patent of rights of others.
3.2 EXCEPT AS EXPRESSLY SET FORTH ABOVE IN SECTION 3.1, LICENSOR MAKES NO
WARRANTY, WHETHER EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY OR OF FITNESS FOR A PARTICULAR PURPOSE. UNDER NO
CIRCUMSTANCES SHALL LICENSOR BE LIABLE FOR INCIDENTAL, CONSEQUENTIAL
OR OTHER DAMAGES FROM ALLEGED NEGLIGENCE, BREACH OR WARRANTY, STRICT
LIABILITY, TORT, CONTRACT, OR ANY OTHER LEGAL THEORY ARISING OUT OF
THE USE OR HANDLING OF THE LICENSED PRODUCT.
4. Consideration, Royalty Payments and Royalty Reporting.
4.1 In connection with the Special Licensing Program, Licensor has agreed
to offer Licensee an "early adopter" reduced royalty rate and to
reduce its license initiation fees to $ { } which shall be paid upon
execution of this Agreement.
4.2 In further consideration of the license granted herein, Licensee
agrees to pay Licensor a royalty of two percent (2%)
of the Sales Price of Licensed Product.
4.3 Only one royalty will be paid by Licensee for the sale of a Licensed
Product subject to royalty hereunder; PROVIDED that the Sales Price
for such sales shall be that of the final sale by Licensee or any
Subsidiary.
4.4 Licensee shall make all payments to Licensor in performance of any
obligation of Licensee defined in this Agreement in U.S. Dollars at
such account as Licensor shall designate.
4.5 Licensee shall make running royalty payments within thirty (30) days
after the end of each calendar quarter which any Licensed Product
subject to royalty hereunder was sold. Royalties shall be calculated
in the currency in which sales are made and, in the case of sales
8
made in currency other that U.S. Dollars, for equivalent amount of the
U.S. Dollars for any royalties payable hereunder will be determined on
the basis of the rate of exchange quoted by The Wall Street Journal as
of the due date of the royalty payment. Royalties shall be submitted
with a Monthly Royalty Report, in the form of Exhibit B, showing all
Licensed Products sold by Licensee in the immediately preceding month.
The Royalty Report will also list any additional products that fall
within the scope of Licensed Products and that are to be added to
Exhibit A.
4.6 Licensee assumes responsibility for any payment due but not made by
any Subsidiary.
4.7 Licensee shall submit to Licensor a semi-annual royalty report
("Royalty Report") in the form of Exhibit B hereto within thirty (30)
days after the end of every six month anniversary of the Effective
Date of the Agreement. The Royalty Report shall be certified by an
appropriate responsible employee of Licensee setting forth the amount
of the royalties and calculation thereof for the reported period
regardless of whether or not any payment is due. The Royalty Report
will also list any additional products that fall within the scope of
Licensed Products and that are to be added to Exhibit A.
4.8 Irrespective of any ruling of a court, administrative body or arbitral
tribunal, no royalties paid by Licensee shall be subject to refund
except overpayments made in error and identified by Licensee within
twelve (12) months of actual or constructive notice of erroneous
payment, whichever is later. Any refund that Licensee may be entitled
to pursuant to this Section shall be taken as a credit in a subsequent
Monthly Royalty Report; PROVIDED, HOWEVER that if no further royalties
are due under this Agreement Licensee shall receive a refund instead
of a credit.
4.9 Payments when provided for in this Agreement shall, when overdue, bear
interest compounded monthly (prorated for periods of time less than
one month) at an annualized rate of five percent (5%) over the prime
rate quoted by the Wall Street Journal, in New York, on the date that
the payment is due, for each month during the delinquency. If the
amount of such charge exceeds the maximum permitted by law, such
charge shall be reduced to such maximum.
4.10 Licensee shall keep books and records adequate to accurately determine
the payments under this Agreement, and retain such books and records
for at least three (3) years after the delivery of the Royalty Report
to which they relate. Licensor shall have the right, no more than
twice per calendar year, to have an independent certified public
accountant inspect all relevant books and records of Licensee on
thirty (30) days' prior written notice and during regular business
hours to verify the reports and payments required to be made
hereunder. Such independent certified public accountant shall be
selected by Licensor. The auditor shall enter into an appropriate
nondisclosure agreement with Licensee, and shall disclose no more
information than is reasonably necessary to determine the payments
owed hereunder. Should an underpayment in excess of five percent (5%)
be discovered, Licensee shall reimburse Licensor for the cost of the
audit. In any event, Licensee shall promptly pay any underpayment
together with interest at the compounded annual rate quoted by
Citibank N.A. in New York City or its reference rate on the last day
of each month during the period of the delinquency.
5. Confidentiality. The terms of this Agreement (and the royalty reports and
data contained therein) as well as any audit data provided per Section 4
are confidential information of Licensee except (i) if such information is
generally available to the public through no action of Licensor, (ii) to
the
9
extent necessary to comply with any Court order, law, rule or regulation of
any federal or state agency or administrative body (including the
Securities and Exchange Commission and the U.S. securities laws based on
the advice of counsel) or contractual obligation of any party's insurance
carrier. If necessary, Licensor may utilize this confidential information
in litigation against Licensee relating to royalty payments under this
agreement; however, the information must remain confidential (E.G., under
the provisions of a suitable protective order and/or filing under seal).
6. SEC Filings and Press Releases. Licensee understands that following the
Effective Date, Licensor will be required to file a Form 8-K with the SEC
that will include as an exhibit this Agreement (with exhibits) as well as
issue a press release. Licensee further understands that Licensor will be
required to disclose in certain of its SEC filings and press releases,
among other things set forth in this Agreement, the amount of royalty
revenue received from Licensee pursuant to this Agreement in an aggregated
form that does not reveal royalty revenues specifically attributable to
Licensee hereunder unless otherwise required by the U.S. securities laws
based on the advice of counsel. In addition, Licensor will not disclose in
its SEC filings or press releases any other data contained in the monthly
or semi-annual reports or audit data referenced in Section 4 above unless
otherwise required by the U.S. securities laws based on the advice of
counsel .
7. Term and Termination.
7.1 This Agreement will commence on the Effective Date and will remain in
force and effect until the Expiration Date unless earlier terminated
or in the event the Licensed Patent is found to be invalid by a final
non-appealable order of a court of competent jurisdiction. Other than
as provided for in Section 7.2, the parties hereto may terminate this
Agreement only by mutual written agreement.
7.2 In the event a party to this Agreement breaches any provision hereof
and fails to cure such breach within forty-five (45) days of receipt
of written notice thereof, the other party hereto may terminate the
Agreement upon written notice to the other party hereto.
7.3 If Licensee fails to make royalty payments hereunder and fails to
remedy such breach in accordance with Section 7.2, all royalty
payments subsequent to said breach and all remedial payments for
outstanding payments shall be calculated at a royalty rate of three
percent (3%) instead of the two percent (2%) royalty rate set forth in
Section 4.2.
7.4 Termination of this Agreement by mutual written agreement of the
parties hereto shall not, unless otherwise agreed by the parties, have
the effect of terminating, revoking or withdrawing rights and
obligations set forth herein with respect to matters after the
Effective Date and up through and including the effective date of
termination hereunder. Notwithstanding the foregoing, the termination
of this Agreement for any reason other than by mutual agreement of the
parties hereto, shall not terminate the license granted hereunder for
any Licensed Product sold prior to the termination date but only if
the applicable royalty due hereunder with respect to such product is
paid by licensee
8. Release.
Licensor on behalf of itself and its respective Subsidiaries,
successors and assigns hereby irrevocably releases Licensee and its
Subsidiaries (but only as to sales of Licensed Products to, from, or
on behalf of Licensee) officers, directors, employees,
representatives, agents, successors
10
and assigns, customers, and suppliers, including any suppliers and
customers in the chain of possession of Licensed Products, from any
and all causes of action, known or unknown, in any way related to the
acts, omissions, transactions, and occurrences related to a claim of
infringement of the Licensed Patent, with respect to any Licensed PSE
Product and Licensed PD Product manufactured, used, leased, sold,
offered for sale, imported, or otherwise transferred by Licensee
before the Effective Date of this Agreement.
9. Miscellaneous.
9.1 If any provision of this Agreement is held to be illegal, invalid
or unenforceable under any present or future law, and if the
rights or obligations of any party hereto under this Agreement
will not be materially and adversely affected thereby, (i) such
provision will be fully severable, (ii) this Agreement will be
construed and enforced as if such illegal, invalid or
unenforceable provision had never comprised a part hereof and
(iii) the remaining provisions of this Agreement will remain in
full force and effect and will not be affected by the illegal,
invalid or unenforceable provision or by its severance herefrom.
9.2 Any and all notices, consents, or demands permitted or required
to be made or given under this Agreement shall be in writing,
signed by the individual giving such notice, consent, or demand
and shall be delivered personally or sent by registered or
certified mail, return receipt requested, to the other party at
its address set forth below:
To Licensor: Network-1 Security Solutions, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Chairman and CEO
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to: ▇▇▇▇▇▇▇▇ Chance US LLP
▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
To Licensee: [To Come]
With a copy to: [To Come]
11
9.3 This Agreement may not be assigned by either party without the express
prior written consent of the other party, except in connection with a
merger, acquisition, reorganization or sale of all or substantially all of
such party's assets or equity. This Agreement is binding upon and inures to
the benefit of the parties hereto, and their permitted assigns.
9.4 This Agreement constitutes the entire agreement between the parties to this
Agreement with respect to the subject matter hereof and supersedes all
previous and contemporaneous negotiations, commitments and agreements, both
written and oral, between the parties with respect to such subject matter.
For avoidance of doubt, the Settlement Agreement, as supplemented by the
Amendment, shall remain in full effect in accordance with its terms.
Nothing expressed or implied in this Agreement is intended or shall be
construed to confer upon or give to any Person, other than the parties to
this Agreement and their respective successors and permitted assigns, any
rights or remedies under or by reason of this Agreement.
9.5 This Agreement may be executed in separate counterparts, each of which
shall be considered an original but all of which will constitute one
agreement.
9.6 THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH THE
LAWS OF THE STATE OF NEW YORK. LICENSOR AND LICENSEE HEREBY IRREVOCABLY
SUBMIT TO THE EXCLUSIVE JURISDICTION OF THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK OR ANY COURT OF THE STATE OF NEW YORK
LOCATED IN THE COUNTY OF NEW YORK IN RESPECT OF ANY ACTION, SUIT OR
PROCEEDING BROUGHT BY LICENSOR OR LICENSEE TO ENFORCE THIS AGREEMENT, AND
AGREES THAT ANY SUCH ACTION, SUIT OR PROCEEDING BROUGHT BY A PARTY TO THIS
AGREEMENT SHALL BE BROUGHT ONLY IN SUCH COURT (AND WAIVES ANY OBJECTION
BASED ON FORUM NON CONVENIENS OR ANY OTHER OBJECTION TO VENUE THEREIN);
PROVIDED, HOWEVER, THAT SUCH CONSENT TO JURISDICTION IS SOLELY FOR THE
PURPOSE REFERRED TO IN THIS SECTION 8.6 AND SHALL NOT BE DEEMED TO BE A
GENERAL SUBMISSION TO THE JURISDICTION OF SAID COURTS OR IN THE STATE OF
NEW YORK OTHER THAN FOR SUCH PURPOSE AND SHALL NOT APPLY WITH RESPECT TO,
OR BE DEEMED TO INDICATE THE INTENT OF ANY PARTY HERETO WITH RESPECT TO,
ANY ACTION BROUGHT BY OR AGAINST ANY PERSON(S) EACH OF WHOM IS NOT A PARTY
TO THIS AGREEMENT. Any and all process may be served in any action, suit or
proceeding arising in connection with this Agreement by complying with the
provisions of Section 8.2. Such service of process shall have the same
effect as if the party being served were a resident in the State of New
York and had been lawfully served with such process in such jurisdiction.
The parties hereby waive all claims of error by reason of such service.
Nothing herein shall affect the right of any party to service process in
any other manner permitted by law or to commence legal proceedings or
otherwise proceed against the other in any other jurisdiction to enforce
judgments or rulings of the aforementioned courts.
12
IN WITNESS WHEREOF, each of the parties has caused two original copies of this
Agreement to be executed on its behalf by its duly authorized officer as of the
Effective Date.
NETWORK-1 SECURITY SOLUTIONS, INC.
By:
-------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman and Chief Executive Officer
Licensee
By:
-------------------------
EXHIBIT A
LICENSED PRODUCTS
---------------------------- ---------------------------------------------------
PRODUCT/PRODUCT FAMILY DESCRIPTION
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
A-1
EXHIBIT B
ROYALTY REPORT
The undersigned official of Licensee is providing the following information
to Network-1 pursuant to that License Agreement dated [o] entered into between
Network-1 and Licensee. All capitalized terms used in this Report have the
definitions ascribed to them in the Agreement. This Report reflects the
Royalties payable by Licensee for the month [semi-annual] period ending.
-------------------------- ------------- -------------------------- --------- ---------------------------------------------------
LICENSED PRODUCT MODEL UNITS SOLD SELLING PRICE CHARGED TO RETURNS CALCULATION OF ROYALTIES
NO., NAME & DESCRIPTION UNRELATED BUYER
-------------------------- ------------- -------------------------- --------- ---------------------------------------------------
Net Selling Price Royalty % Amount of
Royalty
-------------------------- ------------- -------------------------- --------- ----------------------- --------------- -----------
-------------------------- ------------- -------------------------- --------- ----------------------- --------------- -----------
Due & Payable Total Royalties
$______________________
The undersigned hereby certifies the foregoing an accurate and complete record
of all royalties due and payable by Licensee for the period ___________.
Signature: _________________________________________________ Date:
Name: _________________________________________________
Title: _________________________________________________
EXHIBIT B
PATENT LICENSE AGREEMENT
THIS AGREEMENT made and entered into and effective as of July __,
2008, is by and between Network-1 Security Solutions, Inc., a Delaware
corporation (the "Licensor") and Microsemi Corporation, a California Corporation
(the "Licensee").
WHEREAS, Licensor is the beneficial owner of United States Patent No.
6,218,930 (the "`930 Patent");
WHEREAS, on June ___, 2008, Licensor commenced an industry-wide
Special Licensing Program for the `930 Patent to vendors of Power over Ethernet
equipment. The Special Licensing Program is of limited duration (through
December 31, 2008) and is being implemented on an industry-wide basis to offer
discounted running royalty rates and exceptions to Network-1's standard
licensing terms and conditions relating to the `930 Patent to ▇▇▇ vendors who
are "early adopters" and enter into license agreements without delay and to
avoid litigation and higher royalties.
WHEREAS, Licensee desires to obtain a royalty-bearing, non-exclusive,
license under `930 Patent, and Licensor is willing to grant Licensee such
license subject to the terms and conditions of this Agreement;
NOW, THEREFORE, in consideration of the premises and covenants
hereinafter set forth, the parties hereby agree as follows:
1. Definitions.
1.1 "Effective Date" of this Agreement shall mean the date first written
above.
1.2 "Expiration Date" means the date on which the Licensed Patent shall
expire. "Have Made" means the right to purchase a Licensed Product
from a third party (E.G., subsidiaries, suppliers and vendors) and/or
have a third party make a Licensed Product for the use by and/or sale
or transfer by Licensee, said third party operating under the license
grant to Licensee for the provision of Licensed Products to Licensee
and for no other purpose.
1.3 "Licensed Patent" shall mean the `930 Patent and any reissues and
reexaminations thereof.
1.4 "Licensed Product" shall mean a MSCC Midspan Product which infringes
any claim of an issued, unexpired Licensed Patent, which claim has not
invalidated by a final, non-appealable order of a court of competent
jurisdiction.
1.5 "Licensee Covenanted Party" shall mean Licensee, each of its
Subsidiaries, and each of their respective officers, directors,
employees and successors.
1.6 "Midspan PSE" means a particular type of PSE that is connected between
a switch and device(s) to be powered over Ethernet network cabling.
1.7 "MSCC Midspan Product" means standalone finished Midspan PSE products,
except Power over Ethernet Midspan PSE products that exclusively use
spare pairs for the transmission of operating power to network
devices, such as the products identified on Exhibit A hereto and
3
future variations thereof, each of which is or will be a Midspan PSE
originally designed by or for MSCC, and manufactured for or by, and
used or sold by MSCC and/or its Subsidiaries.
1.8 "Power over Ethernet" or "▇▇▇" means the technology used to deliver
electrical power over Ethernet network cabling for the purpose of
supplying operating power to devices connected to an Ethernet network.
1.9 "Person" or "person" means an individual, corporation, partnership,
limited partnership, limited liability company, syndicate, person
(including, without limitation, a "person" as defined in Section
13(d)(3) of the Exchange Act), trust, association or entity or
government, political subdivision, agency or instrumentality of a
government.
1.10 "PSE" means any apparatus, device, equipment or product that supplies
power to other devices in a ▇▇▇ implementation, including, but not
limited to, products complying with IEEE Standards 802.3af and
802.3at.
1.11 "Sales Price" means with respect to any Licensed Product sold by
Licensee or any of its Subsidiaries, on an arms-length basis to a
party that is not a Subsidiary of Licensee, in the United States, or
exported from the United States, the selling price actually invoiced
for such product. The calculation of "selling price" shall include
credits for the following items: (i) an exchange of replacement
products returned because of a systemic failure, and (ii) the payment
or credit for the difference in the invoice prices of exchanged
products, within twelve months of original sale, out of a
distributor's inventory, that is returned for such exchange. For the
avoidance of doubt, for royalty calculation purposes, any resale of a
returned product for which a credit was taken under (i) or (ii) above
shall be treated as a new sale.
1.12 "Spare Pair MSCC Midspan Product" means Power over Ethernet standalone
finished midspan products that exclusively use spare pairs for the
transmission of operating power, each of which is or will be a Midspan
PSE originally designed by or for MSCC, and manufactured for or by
MSCC and/or its Subsidiaries.
1.13 "Subsidiary" means as to Licensee (Licensor has no Subsidiaries) an
entity of which shares of stock having voting power to elect a
majority of the Board of Directors or other managers of such entity
are at the time owned, or the management of which is otherwise
controlled, directly or indirectly through one or more intermediaries,
or both, by the Licensee.
2. License Grant.
2.1 Licensor hereby grants to the Licensee and its Subsidiaries a
personal, non-exclusive, non-transferable, royalty bearing license
under the Licensed Patent (i) to make, use, lease, sell, offer for
sale, import, design, Have Made and otherwise transfer Licensed
Products, including the right to procure or produce components
therefore, (ii) to practice a method or process involved in the
manufacture thereof, and (iii) practice any method or process involved
in the use thereof. To the extent that the Licensed Products are sold
or otherwise transferred by Licensee or its Subsidiaries to
distributors, private label resellers, channel partners, retailers,
customers and other "arm's length" customers and/or end users, the
license granted under this Section shall encompass such parties for
such Licensed Products. To the extent that a third party is operating
under the Have Made rights granted herein, the license granted under
this Section shall encompass said third party, but only as to such
third party's sales of Licensed
4
Products to Licensee or any Subsidiary and other licensed conduct for
Licensee and its Subsidiaries contemplated herein, and not for sales
to other parties.
2.2 If the Licensee or its Subsidiaries or its or their successors
initiates any action to challenge, directly or indirectly through
their acting officers, directors, employees, representatives, or
agents acting at Licensee's direction, the infringement or validity of
the Licensed Patent, or assist or cooperate in any action, related to
the non-infringement or invalidity of the Licensed Patent or any
declaratory judgment action under the Patent Act of the ▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ Code, the Declaratory Judgment Act, title 28,
United States Code, or otherwise (unless the Licensee is required to
do so pursuant to any applicable law, regulation, judicial or
administrative order or decree, or request by other regulatory
organization having authority pursuant to the law; PROVIDED, HOWEVER,
that in such case the applicable Licensee Party gives Licensor
reasonable advance notice of the same (so as to afford Licensor a
reasonable opportunity to appear, object and obtain appropriate relief
regarding such requirement)) the Licensee shall pay a royalty rate of
three percent (3%) of the Sales Price of a Licensed Product in lieu of
the royalties owed under Section 4.2 hereof on royalties payable after
the date it initiates any of the foregoing. This Section 2.2 shall not
apply where Licensee or its Subsidiary (a) is defending against an
action brought against it alleging that it is infringing the Licensed
Patent, or (b) is contractually or otherwise legally bound by statute
to hold harmless or indemnify a third party in a judicial proceeding
relating to the infringement of the Licensed Patent which obligation
exists (a) as of, and in connection with, the sale or other
disposition of a product or service by Licensee or its Subsidiary to
such third party; or (b) prior to the initiation of such judicial
proceeding against such third party . In such cases, for the avoidance
of doubt, Licensee or its Subsidiaries shall be free to assert or
assist any non-infringement and/or invalidity counterclaims and/or
defenses related to such action or proceeding under the Licensed
Patent without affecting the royalty rate hereunder.
2.3 Licensee is obligated to ▇▇▇▇ all Licensed Products with U.S. Patent
No. 6,218,930 in a font size large enough to be easily read and in a
manner reasonably required to satisfy ▇▇ ▇.▇. ▇▇▇.
2.4 Licensor, on behalf of itself and any Subsidiary, and each of its
respective officers, directors, employees, shareholders,
representatives, agents and successors (collectively, the "Licensor
Covenanting Parties") hereby covenants not to ▇▇▇ any Licensee
Covenanted Party for any or all claims or liabilities for infringement
of the Licensed Patent, with respect to any Spare Pair MSCC Midspan
Product, PROVIDED, HOWEVER, for the avoidance of doubt, such covenant
shall not extend to any person other than a Licensee Covenanted Party.
3. Third Party Patents and Limitations on Liability.
3.1 Licensor hereby represents and warrants that: (a) it has the authority
to enter into this Agreement and grant the licenses herein; (b) this
Agreement is valid and binding and enforceable in accordance with its
terms except as such enforceability may be limited by applicable
bankruptcy, insolvency, reorganization, moratorium or similar laws
affecting creditors rights generally and general equitable principles;
(c) it has all right, title and interest in and to the Licensed
Patent; and (d) there are no patents or patent applications or foreign
counterparts related to the Licensed Patent, nor does Licensor or its
Subsidiaries own any patent or patent application claiming or
disclosing any ▇▇▇ technology except the Licensed Patent. Licensor
makes no warranty or representation that the practice of the licenses
herein
5
granted to Licensee will not infringe any patent or patents of any
country which is or are owned by any party or parties other than
Licensor. The obligations of Licensee to Licensor shall be in no way
affected and no obligation of any character of Licensor to Licensee
shall be created by the fact that the practice of the licenses granted
hereunder infringes the patent of rights of others.
3.2 EXCEPT AS EXPRESSLY SET FORTH ABOVE IN SECTION 3.1, LICENSOR MAKES NO
WARRANTY, WHETHER EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY OR OF FITNESS FOR A PARTICULAR PURPOSE. UNDER NO
CIRCUMSTANCES SHALL LICENSOR BE LIABLE FOR INCIDENTAL, CONSEQUENTIAL
OR OTHER DAMAGES FROM ALLEGED NEGLIGENCE, BREACH OR WARRANTY, STRICT
LIABILITY, TORT, CONTRACT, OR ANY OTHER LEGAL THEORY ARISING OUT OF
THE USE OR HANDLING OF THE LICENSED PRODUCT.
6
4. Consideration, Royalty Payments and Royalty Reporting.
4.1 In partial consideration for the license granted herein, Licensee
shall provide the assistance set out in the letter agreement by and
between the parties dated June , 2008 and Licensor has agreed to offer
Licensee an "early adopter" reduced royalty rate and to reduce its
license initiation fees to $25,000 which shall be paid upon execution
of this Agreement.
4.2 In further consideration of the license granted herein, Licensee
agrees to pay Licensor a royalty of two percent (2%) of the Sales
Price of Licensed Product.
4.3 Only one royalty will be paid by Licensee for the sale of a Licensed
Product subject to royalty hereunder; PROVIDED that the Sales Price
for such sales shall be that of the final sale by Licensee or any
Subsidiary.
4.4 Licensee shall make all payments to Licensor in performance of any
obligation of Licensee defined in this Agreement in U.S. Dollars at
such account as Licensor shall designate.
4.5 Licensee shall make running royalty payments within thirty (30) days
after the end of each calendar quarter which any Licensed Product
subject to royalty hereunder was sold. Royalties shall be calculated
in the currency in which sales are made and, in the case of sales made
in currency other that U.S. Dollars, for equivalent amount of the U.S.
Dollars for any royalties payable hereunder will be determined on the
basis of the rate of exchange quoted by The Wall Street Journal as of
the due date of the royalty payment. Royalties shall be submitted with
a Monthly Royalty Report, in the form of Exhibit B, showing all
Licensed Products sold by Licensee in the immediately preceding month.
The Royalty Report will also list any additional products that fall
within the scope of Licensed Products and that are to be added to
Exhibit A.
4.6 Licensee assumes responsibility for any payment due but not made by
any Subsidiary.
4.7 Licensee shall submit to Licensor a semi-annual royalty report
("Royalty Report") in the form of Exhibit B hereto within thirty (30)
days after the end of every six month anniversary of the Effective
Date of the Agreement. The Royalty Report shall be certified by an
appropriate responsible employee of Licensee setting forth the amount
of the royalties and calculation thereof for the reported period
regardless of whether or not any payment is due. The Royalty Report
will also list any additional products that fall within the scope of
Licensed Products and that are to be added to Exhibit A4.8
Irrespective of any ruling of a court, administrative body or arbitral
tribunal, no royalties paid by Licensee shall be subject to refund
except overpayments made in error and identified by Licensee within
twelve (12) months of actual or constructive notice of erroneous
payment, whichever is later. Any refund that Licensee may be entitled
to pursuant to this Section shall be taken as a credit in a subsequent
Monthly Royalty Report; PROVIDED, HOWEVER that if no further royalties
are due under this Agreement Licensee shall receive a refund instead
of a credit.
4.8 4.9 Payments when provided for in this Agreement shall, when overdue,
bear interest compounded monthly (prorated for periods of time less
than one month) at an annualized rate of five percent (5%) over the
prime rate quoted by the Wall Street Journal, in New York, on the date
that the payment is due, for each month during the delinquency. If the
amount of such charge exceeds the maximum permitted by law, such
charge shall be reduced to such maximum.4.10 Licensee shall keep books
and records adequate to accurately determine the payments under this
Agreement, and retain such books and records for at least three (3)
years
7
after the delivery of the Royalty Report to which they relate.
Licensor shall have the right, no more than twice per calendar year,
to have an independent certified public accountant inspect all
relevant books and records of Licensee on thirty (30) days' prior
written notice and during regular business hours to verify the reports
and payments required to be made hereunder. Such independent certified
public accountant shall be selected by Licensor. The auditor shall
enter into an appropriate nondisclosure agreement with Licensee, and
shall disclose no more information than is reasonably necessary to
determine the payments owed hereunder. Should an underpayment in
excess of five percent (5%) be discovered, Licensee shall reimburse
Licensor for the cost of the audit. In any event, Licensee shall
promptly pay any underpayment together with interest at the compounded
annual rate quoted by Citibank N.A. in New York City or its reference
rate on the last day of each month during the period of the
delinquency.
5. Confidentiality. The terms of this Agreement (and the royalty reports and
data contained therein) as well as any audit data provided per Section 4
are confidential information of Licensee except (i) if such information is
generally available to the public through no action of Licensor, (ii) to
the extent necessary to comply with any Court order, law, rule or
regulation of any federal or state agency or administrative body (including
the Securities and Exchange Commission and the U.S. securities laws based
on the advice of counsel) or contractual obligation of any party's
insurance carrier. If necessary, Licensor may utilize this confidential
information in litigation against Licensee relating to royalty payments
under this agreement; however, the information must remain confidential
(E.G., under the provisions of a suitable protective order and/or filing
under seal).
6. SEC Filings and Press Releases. Licensee understands that following the
Effective Date, Licensor will be required to file a Form 8-K with the SEC
that will include as an exhibit this Agreement (with exhibits) as well as
issue a press release. Licensee further understands that Licensor will be
required to disclose in certain of its SEC filings and press releases,
among other things set forth in this Agreement, the amount of royalty
revenue received from Licensee pursuant to this Agreement in an aggregated
form that does not reveal royalty revenues specifically attributable to
Licensee hereunder unless otherwise required by the U.S. securities laws
based on the advice of counsel. In addition, Licensor will not disclose in
its SEC filings or press releases any other data contained in the monthly
or semi-annual reports or audit data referenced in Section 4 above unless
otherwise required by the U.S. securities laws based on the advice of
counsel .
7. Term and Termination.
7.1 This Agreement will commence on the Effective Date and will remain in
force and effect until the Expiration Date unless earlier terminated
or in the event the Licensed Patent is found to be invalid by a final
non-appealable order of a court of competent jurisdiction. Other than
as provided for in Section 7.2, the parties hereto may terminate this
Agreement only by mutual written agreement.
7.2 In the event a party to this Agreement breaches any provision hereof
and fails to cure such breach within forty-five (45) days of receipt
of written notice thereof, the other party hereto may terminate the
Agreement upon written notice to the other party hereto.
7.3 If Licensee fails to make royalty payments hereunder and fails to
remedy such breach in accordance with Section 7.2, all royalty
payments subsequent to said breach and all remedial
8
payments for outstanding payments shall be calculated at a royalty
rate of three percent (3%) instead of the two percent (2%) royalty
rate set forth in Section 4.2.
7.4 Termination of this Agreement by mutual written agreement of the
parties hereto shall not, unless otherwise agreed by the parties, have
the effect of terminating, revoking or withdrawing rights and
obligations set forth herein with respect to matters after the
Effective Date and up through and including the effective date of
termination hereunder. Notwithstanding the foregoing, the termination
of this Agreement for any reason other than by mutual agreement of the
parties hereto, shall not terminate the license granted hereunder for
any Licensed Product sold prior to the termination date but only if
the applicable royalty due hereunder with respect to such product is
paid by licensee
8. Release.
Licensor on behalf of itself and its respective Subsidiaries,
successors and assigns hereby irrevocably releases Licensee and its
Subsidiaries (but only as to sales of Licensed Products to, from, or
on behalf of Licensee) officers, directors, employees,
representatives, agents, successors and assigns, customers, and
suppliers, including any suppliers and customers in the chain of
possession of Licensed Products, from any and all causes of action,
known or unknown, in any way related to the acts, omissions,
transactions, and occurrences related to a claim of infringement of
the Licensed Patent, with respect to any MSCC Midspan Product
manufactured, used, leased, sold, offered for sale, imported, or
otherwise transferred by Licensee before the Effective Date of this
Agreement.
9. Miscellaneous.
9.1 If any provision of this Agreement is held to be illegal, invalid or
unenforceable under any present or future law, and if the rights or
obligations of any party hereto under this Agreement will not be
materially and adversely affected thereby, (i) such provision will be
fully severable, (ii) this Agreement will be construed and enforced as
if such illegal, invalid or unenforceable provision had never
comprised a part hereof and (iii) the remaining provisions of this
Agreement will remain in full force and effect and will not be
affected by the illegal, invalid or unenforceable provision or by its
severance herefrom.
9.2 Any and all notices, consents, or demands permitted or required to be
made or given under this Agreement shall be in writing, signed by the
individual giving such notice, consent, or demand and shall be
delivered personally or sent by registered or certified mail, return
receipt requested, to the other party at its address set forth below:
To Licensor: Network-1 Security Solutions, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Chairman and CEO
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to: ▇▇▇▇▇▇▇▇ Chance US LLP
▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
9
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
To Licensee: Microsemi Corporation, ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Legal Department
With a copy to: O'Melveny & ▇▇▇▇▇▇, LLP
▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Will Chuang
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
9.3 This Agreement may not be assigned by either party without the express
prior written consent of the other party, except in connection with a
merger, acquisition, reorganization or sale of all or substantially
all of such party's assets or equity. This Agreement is binding upon
and inures to the benefit of the parties hereto, and their permitted
assigns.
9.4 This Agreement constitutes the entire agreement between the parties to
this Agreement with respect to the subject matter hereof and
supersedes all previous and contemporaneous negotiations, commitments
and agreements, both written and oral, between the parties with
respect to such subject matter. For avoidance of doubt, the Settlement
Agreement, as supplemented by the Amendment, shall remain in full
effect in accordance with its terms. Nothing expressed or implied in
this Agreement is intended or shall be construed to confer upon or
give to any Person, other than the parties to this Agreement and their
respective successors and permitted assigns, any rights or remedies
under or by reason of this Agreement.
9.5 This Agreement may be executed in separate counterparts, each of which
shall be considered an original but all of which will constitute one
agreement.
9.6 THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH
THE LAWS OF THE STATE OF NEW YORK. LICENSOR AND LICENSEE HEREBY
IRREVOCABLY SUBMIT TO THE EXCLUSIVE JURISDICTION OF THE UNITED STATES
DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK OR ANY COURT OF
THE STATE OF NEW YORK LOCATED IN THE COUNTY OF NEW YORK IN RESPECT OF
ANY ACTION, SUIT OR PROCEEDING BROUGHT
10
BY LICENSOR OR LICENSEE TO ENFORCE THIS AGREEMENT, AND AGREES THAT ANY
SUCH ACTION, SUIT OR PROCEEDING BROUGHT BY A PARTY TO THIS AGREEMENT
SHALL BE BROUGHT ONLY IN SUCH COURT (AND WAIVES ANY OBJECTION BASED ON
FORUM NON CONVENIENS OR ANY OTHER OBJECTION TO VENUE THEREIN);
PROVIDED, HOWEVER, THAT SUCH CONSENT TO JURISDICTION IS SOLELY FOR THE
PURPOSE REFERRED TO IN THIS SECTION 8.6 AND SHALL NOT BE DEEMED TO BE
A GENERAL SUBMISSION TO THE JURISDICTION OF SAID COURTS OR IN THE
STATE OF NEW YORK OTHER THAN FOR SUCH PURPOSE AND SHALL NOT APPLY WITH
RESPECT TO, OR BE DEEMED TO INDICATE THE INTENT OF ANY PARTY HERETO
WITH RESPECT TO, ANY ACTION BROUGHT BY OR AGAINST ANY PERSON(S) EACH
OF WHOM IS NOT A PARTY TO THIS AGREEMENT. Any and all process may be
served in any action, suit or proceeding arising in connection with
this Agreement by complying with the provisions of Section 8.2. Such
service of process shall have the same effect as if the party being
served were a resident in the State of New York and had been lawfully
served with such process in such jurisdiction. The parties hereby
waive all claims of error by reason of such service. Nothing herein
shall affect the right of any party to service process in any other
manner permitted by law or to commence legal proceedings or otherwise
proceed against the other in any other jurisdiction to enforce
judgments or rulings of the aforementioned courts.
11
IN WITNESS WHEREOF, each of the parties has caused two original copies of this
Agreement to be executed on its behalf by its duly authorized officer as of the
Effective Date.
NETWORK-1 SECURITY SOLUTIONS, INC.
By:
--------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman and Chief Executive Officer
MICROSEMI CORPORATION
By:
--------------------------
▇▇▇▇▇ ▇▇▇▇▇▇
Chief Operating Officer
EXHIBIT A
POWERDSINE MIDSPAN PRODUCTS
---------------------------- ---------------------------------------------------
PRODUCT/PRODUCT FAMILY DESCRIPTION
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
PD6000G
---------------------------- ---------------------------------------------------
PD7000G
---------------------------- ---------------------------------------------------
PD8000G
---------------------------- ---------------------------------------------------
PD9000G
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
---------------------------- ---------------------------------------------------
A-1
EXHIBIT B
ROYALTY REPORT
The undersigned official of Licensee is providing the following information
to Network-1 pursuant to that License Agreement dated [o] entered into between
Network-1 and Licensee. All capitalized terms used in this Report have the
definitions ascribed to them in the Agreement. This Report reflects the
Royalties payable by Licensee for the month [semi-annual] period ending
_______________________.
------------------------- ------------ -------------------------- --------- --------------------------------------------------
LICENSED PRODUCT MODEL UNITS SOLD SELLING PRICE CHARGED TO RETURNS CALCULATION OF ROYALTIES
NO., NAME & DESCRIPTION UNRELATED BUYER
------------------------- ------------ -------------------------- --------- ---------------------- --------------- -----------
Net Selling Price Royalty % Amount of
Royalty
------------------------- ------------ -------------------------- --------- ---------------------- --------------- -----------
------------------------- ------------ -------------------------- --------- ---------------------- --------------- -----------
Due & Payable Total Royalties
$______________________
The undersigned hereby certifies the foregoing an accurate and complete record
of all royalties due and payable by Licensee for the period ___________.
Signature: _______________________________________ Date:
Name: _______________________________________
Title: _______________________________________
A-2