Exhibit 10.30
INTELLECTUAL PROPERTY LICENSE
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THIS LICENSE AGREEMENT dated this 1st day of November, 1999,
by and between GLENAYRE ELECTRONICS, INC. ("Electronics"), a Colorado
corporation having a place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, on behalf of itself, its parent corporation Glenayre
Technologies, Inc., and all of their respective subsidiaries except WMC
(collectively, "Glenayre") and WESTERN MULTIPLEX CORPORATION, a California
corporation having a place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("WMC").
WHEREAS, pursuant to the Glenayre Omnibus Intellectual
Property Agreement effective December 31, 1994 ("Omnibus Agreement"),
Electronics was designated as sole owner of all present and future intellectual
property rights of Electronics, GTI and their wholly-owned subsidiaries and
granted a royalty-free and non-exclusive license to all such entities other than
itself to use such intellectual property rights;
WHEREAS, after GTI acquired all of the outstanding capital
stock of WMC in April 1995 (the "Glenayre Acquisition"), and WMC became a
wholly-owned subsidiary thereof, an addendum to the Omnibus Agreement was
executed as of June 20, 1995 (the "Addendum"), whereby WMC was bound to the
Omnibus Agreement as if it were an original party thereto;
WHEREAS, pursuant to the Acquisition Agreement by and among
GTI, GTI Acquisition Corp. and WMC dated as of September 30, 1999 ("Acquisition
Agreement"), GTI Acquisition Corp., a wholly-owned subsidiary of GTI that owned
the shares of WMC as of such date, has agreed to sell the shares of WMC to WMC
Holding Corp.; and
WHEREAS, now that WMC shall no longer be a subsidiary of GTI
Acquisition Corp., Electronics wishes to license to WMC, and WMC wishes to
accept, the license of all intellectual property rights that WMC uses in the
Business (as defined in the Acquisition Agreement) and WMC wishes to license,
and Glenayre wishes to accept, the license of all intellectual property rights
that WMC will own as of the Closing Date (as defined in the Acquisition
Agreement); and
NOW, THEREFORE, for good and valuable consideration (including
that recited in the Acquisition Agreement), the receipt and sufficiency of which
is hereby acknowledged, the parties hereto agree as follows:
Article 1. Grant of Licenses.
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Section 1.1. Licenses to WMC. (a) Glenayre hereby grants to
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WMC a worldwide, non-exclusive, royalty-free right and license under any and all
intellectual property, including without limitation, patents, patent
applications, inventions, copyrights and copyrightable works, software, mask
works, databases, technology, systems, know-how, processes, formulae,
confidential or proprietary information ("Intellectual Property") that were
delivered to or used by WMC prior to the Closing Date and relate to the
▇▇▇▇.▇▇▇▇ fractional radio development ("LYNX IP"), (i) to continue to use the
LYNX IP after the Closing Date and for so long as WMC markets or services the
▇▇▇▇.▇▇▇▇ fractional radio or any successor
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upgrade product of materially similar functionality; (ii) to make, have made,
use, distribute, offer and sell and service the ▇▇▇▇.▇▇▇▇ fractional radio and
any successor upgrade product of materially similar functionality; and (iii)
subject to Article 5, to copy, distribute and make derivative works based upon
the LYNX IP to the extent necessary to service and upgrade the ▇▇▇▇.▇▇▇▇
fractional radio and any successor upgrade product of materially similar
functionality.
(b) Glenayre hereby grants to WMC a perpetual, worldwide,
non-exclusive, royalty-free right and license under any and all Intellectual
Property relating to Glenayre's application software platform (as used in the
Glenayre GL-C9000 Base Station Controller) that includes the following major
functions: Real-time operating system interface, TCP/IP network protocol stack,
PPP interface, routing, and network management (the "Software"), (i) to continue
to use the Software after the Closing Date to make, have made, use, distribute,
offer and sell current and future microwave radio products for the Business; and
(iii) subject to Article 5, to copy, distribute and make derivative works based
upon the Software to the extent necessary to service and upgrade WMC's microwave
radio products in connection with the Business.
(c) Glenayre hereby grants to WMC a worldwide, non-exclusive,
royalty-free right and license to use the name "Glenayre" (i) for one year, in
connection with WMC's operation of the Business outside the United States and
Canada; provided that, WMC may also use the name "Glenayre" within the United
States and Canada during such time, solely to the extent such use is on products
made by machines imprinted, tooled, dyed, cast or embedded with the name
"Glenayre"; (ii) for one year, in connection with the electronic mail address
"▇▇▇.▇▇▇.▇▇▇▇▇▇▇▇.▇▇▇"; provided that, within a reasonable time after the
Closing Date, WMC shall make all reasonable efforts to begin transitioning to an
e-mail address that does not contain the name "Glenayre"; and (iii) for three
years, solely to the extent such use is on internal circuit boards imprinted
with the name "Glenayre." The license in the preceding sentence is limited to
WMC's use of the name only in immediate proximity to the words "Western
Multiplex" or "Western Multiplex Corporation." WMC agrees that all uses of the
name shall maintain the quality standards in effect as of the Closing Date.
Section 1.2. License to Glenayre. (a) Subject to Glenayre's
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non-competition obligations under Section 5.9 of the Acquisition Agreement, WMC
hereby grants to Glenayre a non-exclusive, royalty-free right and license, for
the life thereof, under U.S. Patent Application Serial No. 09/033,507, "Method
and Apparatus for Isolating High-Frequency Signals in a Multi-Layer Printed
Circuit Board" (filed March 2, 1998) and a continuing U.S. Patent Application
Serial No. 09/053,045, "Method and Apparatus for Isolating High-Frequency
Signals in a Printed Circuit Board" (filed April 1, 1998), and all technology
and know-how related thereto, (i) to make, have made, use, distribute, offer and
sell current and future products and services in connection with Glenayre's
business; and (ii) subject to Article 5, to copy, distribute and make derivative
works in connection with Glenayre's business.
(b) WMC hereby grants to Glenayre a temporary worldwide,
non-exclusive, royalty-free right and license to use any trademarks owned by WMC
solely to the extent necessary to allow Glenayre the benefits of Section
5.9(a)(3) of the Acquisition Agreement regarding depletion of current inventory;
provided that this license shall expire after six months,
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even if such depletion is not yet completed. Glenayre agrees that all uses of
such trademarks shall maintain the quality standards in effect as of the Closing
Date.
Section 1.3. No Other Property. Each party acknowledges that
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the licenses granted to it in Article 1 cover only Intellectual Property that
the licensing party owns and do not grant to the licensed party any rights or
licenses in any Intellectual Property owned by any third parties.
Article 2. Ownership of Intellectual Property.
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Section 2.1. Ownership. Each party agrees that, as between
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itself and the other party, the party licensing any Intellectual Property
hereunder is the sole and exclusive owner of all right, title and interest in
and to such Intellectual Property, subject to the licensed rights granted
hereunder. Each party agrees not to directly or indirectly question, attack,
contest or in any other manner impugn the validity and/or enforceability of the
other party's Intellectual Property licensed hereunder ("Licensed Property") or
its rights therein, including without limitation, in any action in which
enforcement of a provision of this Agreement is sought; nor shall either party
willingly become a party adverse to the other party in litigation in which a
third party contests the validity and/or enforceability of any Licensed Property
or such licensing party's rights therein.
Section 2.2. Improvements. After the Effective Date, if either
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Glenayre or WMC creates any improvements, modifications, derivative works and/or
upgrades based upon the other party's Licensed Property ("Improvements"), such
party creating the Improvement shall own all Intellectual Property rights
therein; provided that, each party shall not, and shall not allow third parties
to use any such Improvements in connection with products, services and/or
businesses or operations that are beyond the scope of such party's right to use
the underlying Licensed Property under Article 1.
Article 3. Maintenance. Each party agrees to take actions, pay
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fees and execute documents as reasonably necessary to protect and maintain its
own Licensed Property, such that the licensed party thereunder does not lose the
benefits of this agreement.
Article 4. Material Breach and Termination.
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Section 4.1. Material Breach. In the event that either party
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materially breaches any of its obligations under this Agreement (in such case,
the "Breaching Party"), the other party (the "Non-Breaching Party") may, by
written notice, require that the Breaching Party take corrective action. The
Breaching Party shall immediately take whatever steps are necessary to remedy
the breach, at its sole cost and expense. If the Breaching Party does not (i)
remedy such breach within 60 days of receipt of such notice or (iii) use its
best efforts within such 60-day period to cure such breach and make substantial
progress
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toward cure, the Breaching Party shall immediately cease using any and all
Licensed Property affected by the breach until such breach is remedied, and the
Non-Breaching Party may apply to a court of competent jurisdiction for
appropriate relief. If such court determines that a material breach of this
Agreement has occurred and has not been cured, or that the Breaching Party has
not made substantial progress towards cure, or that such breach is not capable
of being cured in a reasonable amount of time, then the Non-Breaching Party
shall be entitled to all rights and remedies available at law or in equity,
including without limitation termination of all licenses granted to the
Breaching Party herein and the Breaching Party shall be deemed to have
irrevocably and unconditionally consented to the entry of an order by a court of
competent jurisdiction granting an injunction against further use of the
Licensed Property.
Section 4.2. Default. Either party may terminate the licenses
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it has granted under this Agreement at any time, upon written notice, if the
other party makes an assignment for the benefit of creditors, admits in writing
its inability to pay debts as they mature, has a trustee or receiver appointed
for a substantial part of its assets, or, to the extent enforceable under the
U.S. Bankruptcy Code, has instituted against it a proceeding in bankruptcy which
is acquiesced in, is not dismissed within 120 days, or results in an
adjudication of bankruptcy. If such an event occurs, the non-bankrupt party
shall have the right, in addition to its other rights and remedies, to suspend
the bankrupt party's rights regarding the Licensed Property while the bankrupt
party attempts to remedy the situation.
Section 4.3. After Termination. Upon termination of any
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license under Article 1, the parties agree to cooperate so as best to preserve
the value of the applicable Licensed Property. Upon such termination, the
licensed party agrees immediately to discontinue all use of the applicable
Licensed Property.
Article 5. Confidentiality.
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Section 5.1. Technology. Each party shall use commercially
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reasonable efforts, including executing all necessary contractual provisions, to
prevent unauthorized third parties from modifying, altering, changing,
reproducing, reverse engineering, dissembling, decompiling, distributing or
copying the other party's licensed property or deriving any source code or
algorithms therefrom.
Section 5.2. Confidential Information. In connection with this
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Agreement, each party (each a "Disclosing Party") may each disclose certain
Confidential Information (as hereinafter defined) to the other party (each a
"Receiving Party"). "Confidential Information," subject to the provisions of
Section 5.4, shall mean (i) any information disclosed by one party to the other
either before or after the Closing Date and designated in writing as
confidential, proprietary, or marked with words of like import; and (ii) any
information orally or visually conveyed, if the Disclosing Party provides
specific written notice that such oral or visual communication shall be deemed
Confidential Information and delivers such writing to the Receiving Party within
10 days after the oral or visual conveyance.
Section 5.3. Restricted Disclosure. Each party acknowledges
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the confidential and proprietary nature of the other party's Confidential
Information and agree that as the Receiving Party, it shall use the same level
of care it accords its own confidential information (but in any event, no less
than a reasonable standard of care) not to reveal or disclose any Confidential
Information for any purpose (except as permitted by the following sentence) to
any third party not a Receiving Party, nor use any Confidential Information for
any purpose other
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than as contemplated hereby, in each case, without the prior written consent of
the Disclosing Party. In the event that a Receiving Party wishes to disclose
Confidential Information to a third party (other than another Receiving Party),
it may do so only with the express written consent of the Disclosing Party or if
the third party is a reputable party and signs an agreement with the Receiving
Party that is appropriate under the circumstances and is reasonably calculated
to ensure the confidentiality of the applicable Confidential Information
according to terms at least as protective as those set forth in this Section 5.
Upon request, the Disclosing Party shall have the right to review such
agreements to ensure that the foregoing obligation is fulfilled.
Section 5.4. Exceptions. Notwithstanding anything contained
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herein to the contrary, Confidential Information shall not include information
which:
(a) at or prior to the time of disclosure by the Disclosing Party
was known to or independently developed by the Receiving Party as
evidenced by one or more documents, except to the extent unlawfully
appropriated by the Receiving Party or third party;
(b) at or after the time of disclosure by the Disclosing Party
becomes generally available to the public through no wrongful or
negligent act or omission on the Receiving Party's part;
(c) is later developed by the Receiving Party independent of any
Confidential Information it receives from the Disclosing Party:
(d) the Receiving Party receives from a third party free to make
such disclosure without breach of any legal obligation; or
(e) is required to be disclosed pursuant to any statute,
regulation, order, subpoena or document discovery request, provided
that prior written notice of such disclosure is furnished to the
Disclosing Party as soon as practicable in order to afford the
Disclosing Party an opportunity to seek a protective order (it being
agreed that if the Disclosing Party is unable to obtain or does not
seek a protective order and the Receiving Party is legally compelled
to disclose such information, disclosure of such information may be
made without liability).
Section 5.5. Injunctive Relief. In view of the difficulties of
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placing a monetary value on the Confidential Information, the Disclosing Party
may be entitled to a preliminary and final injunction without the necessity of
posting any bond or undertaking in connection therewith to prevent any further
breach of this Article 5 or further unauthorized use of Confidential
Information. This remedy is separate and apart from any other remedy the
Disclosing Party may have.
Section 5.6. Remedial Measures. Licensor or Licensee, as the
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case may be, shall notify the Disclosing Party immediately upon discovery of any
prohibited use or disclosure of the Confidential Information, or any other
breach of this Article 5 by a Receiving Party, and shall fully cooperate with
the Disclosing Party to help the Disclosing Party regain possession of
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the Confidential Information and prevent the further prohibited use or
disclosure of the Confidential Information.
Article 6. Infringement. Each party agrees to notify the other
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party immediately after it becomes aware of any actual or threatened
Infringement of the other partys Licensed Property by a third party.
Article 7. Bankruptcy. The licenses in Article 1 (excluding
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the trademark licenses) shall be deemed to be, for purposes of Section 365(n) of
the U.S. Bankruptcy Code, licenses to rights in "intellectual property" as
defined in Section 101 of the Bankruptcy Code. The parties agree that the
licensed party thereunder shall retain and may fully exercise all of its rights
and elections under the Bankruptcy Code. In the event that a bankruptcy
proceeding under the Bankruptcy Code is commenced by or against the licensing
party, the licensed party shall be entitled, at its option, to: (a) retain all
of its rights under this Agreement (including without limitation the rights and
licenses granted under Article 1 hereof) pursuant to Section 365(n) of the U.S.
Bankruptcy Code; or (b) receive a complete duplicate of, or complete access to,
all Intellectual Property licensed hereunder constituting "intellectual
property" under Section 101 of the Bankruptcy Code and all embodiments thereof.
If such Intellectual Property is not already in the licensed party's possession,
it shall be promptly delivered to the licensed party upon such party's written
request (i) upon any such commencement of a bankruptcy proceeding, unless the
licensing party elects to continue to perform all of its obligations under this
Agreement; or (ii) upon the rejection of this Agreement by or on behalf of the
licensing party.
Article 8. Miscellaneous.
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Section 8.1. Notices. All notices, requests, demands and other
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communications which are required or may be given under this Agreement shall be
in writing and shall be deemed to have been duly given if delivered personally,
if telecopied or mailed, first class mail, postage prepaid, return receipt
requested, or by overnight courier as follows:
If to Glenayre:
GTI Acquisition Corp.
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ West Indies
Attention: President
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
with copies to:
Glenayre Electronics, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: President
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
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▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇, L.L.P.
Bank of America Corporate Center
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Facsimile No: (▇▇▇) ▇▇▇-▇▇▇▇
If to WMC:
WMC Holding Corp.
c/o Leeward Technology Partners
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
and
WMC Holding Corp.
c/o Ripplewood Holding LLC
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to:
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address as either party shall have specified by notice in
writing to the other party. All such notices, requests, demands and
communications shall be deemed to have been received on the date of personal
delivery or telecopy, on the third business day after the mailing thereof or on
the first day after delivery by overnight courier.
Section 8.2. Entire Agreement. This Agreement constitutes the
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entire agreement between the parties hereto and supersedes all prior agreements
and understandings, oral and written, between the parties hereto with respect to
the subject matter hereof.
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Section 8.3. Binding Effects; Benefit. This Agreement shall
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inure to the benefit of and be binding upon the parties hereto and their
respective successors and assigns. Nothing in this Agreement, expressed or
implied, is intended to confer on any Person other than the parties hereto or
their respective successors and assigns, any rights, remedies, obligations or
liabilities under or by reason of this Agreement.
Section 8.4. Assignments and Sublicenses. (a) This Agreement,
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or any portion thereof or license therein, may not be assigned or sublicensed by
either party to any person not controlled by, controlling or under common
control with such party, either directly or indirectly, without the prior
written consent of the other party, such consent not to be withheld
unreasonably; provided that, either party may assign this Agreement in
connection with a sale of all or substantially all of its capital stock or
assets; provided that, such successor or purchaser shall be expressly bound by
all of the assigning or sublicensing party's obligations hereunder, including
without limitation, all non-competition obligations.
(b) In the event of any permitted assignment, (i) this
Agreement shall be binding upon the successors, assigns and/or purchasers of any
assigning party; and (ii) all reference herein to Glenayre or WMC shall mean
both Glenayre and WMC and their respective assignees, and the assignees shall
not be entitled to assign further this Agreement or sublicense rights governed
hereby without the prior written consent of the other party.
Section 8.5. Amendment; Waiver. This Agreement, including this
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Section, may be amended, supplemented or otherwise modified only by a written
instrument executed by the parties hereto. No waiver by either party of any of
the provisions hereof shall be effective unless explicitly set forth in writing
and executed by the party so waiving. Except as provided in the preceding
sentence, no action taken pursuant to this Agreement, including without
limitation, any investigation by or on behalf of any party, shall be deemed to
constitute a waiver by the party taking such action of compliance with any
representations, warranties, covenants, or agreements contained herein, and in
any documents delivered or to be delivered pursuant to this Agreement. The
waiver by any party hereto of a breach of any provision of this Agreement shall
not operate or be construed as a waiver of any subsequent breach.
Section 8.6. Governing Law. The validity of this Agreement,
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the construction of its terms and the determination of the rights and duties of
the parties hereto shall be governed by, and construed in accordance with the
laws of the United States and those of the State of New York applicable to
contracts made and to be performed wholly within such state and without regard
to the conflict of laws principles thereof.
Section 8.7. Further Assurances. Each party agrees to execute
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such further documentation and perform such further actions, including the
recordation of such documentation with appropriate authorities, as may be
reasonably requested by the other party hereto to evidence and effectuate
further the purposes and intents set forth in this Agreement and to maintain and
protect the validity and/or ownership rights of any
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Intellectual Property licensed hereunder. Any such actions shall be at the
expense of the requesting party, but without any further compensation.
Section 8.8. Section Headings; Table of Contents. The section
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headings contained in this Agreement are for reference purposes only and shall
not affect the meaning or interpretation of this Agreement.
Section 8.9. Severability. If any provision of this Agreement
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shall be declared by any court of competent jurisdiction to be illegal, void or
unenforceable, all other provisions of this Agreement shall not be affected and
shall remain in full force and effect.
Section 8.10. Counterparts. This Agreement may be executed in
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any number of counterparts, each of which shall be deemed to be an original and
all of which together shall be deemed to be one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed and
delivered this Agreement as of the date first above written.
GLENAYRE ELECTRONICS, INC.
(on behalf of itself, Glenayre Technologies,
Inc. and all of their respective subsidiaries)
By: /s/ ▇▇▇▇. ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title:
Date: Nov 1, 1999
WESTERN MULTIPLEX CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇
-----------------------------------
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇
Title: C.F.O.
Date: November 1, 1999