EXHIBIT 2.3
3COM/PALM CONFIDENTIAL
DRAFT - WSGR 12/01/1999
MASTER TECHNOLOGY OWNERSHIP AND
LICENSE AGREEMENT
between
3COM CORPORATION
and
PALM, INC.
Effective as of ________, 2000
3COM/PALM CONFIDENTIAL
DRAFT - WSGR 12/01/1999
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
Page
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ARTICLE 1 DEFINITIONS............................................. 1
1.1 ANCILLARY AGREEMENTS................................... 1
1.2 COPYRIGHTS............................................. 1
1.3 DATABASE RIGHTS........................................ 2
1.4 DISTRIBUTION DATE...................................... 2
1.5 GALAHAD PROJECT........................................ 2
1.6 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT............ 2
1.7 INVENTION DISCLOSURE................................... 2
1.8 IPO REGISTRATION STATEMENT............................. 2
1.9 JOINT TECHNOLOGY....................................... 2
1.10 MASK WORK RIGHTS....................................... 2
1.11 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT............... 3
1.12 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT....... 3
1.13 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........... 3
1.14 PALM BUSINESS.......................................... 3
1.15 PALM COMPUTING PLATFORM................................ 3
1.16 PALM OS................................................ 3
1.17 PALM PRODUCTS DATABASE................................. 3
1.18 PALM TECHNOLOGY........................................ 3
1.19 PALM TECHNOLOGY DATABASE............................... 4
1.20 PATENTS................................................ 4
1.21 PERSON................................................. 4
1.22 SELL................................................... 4
1.23 SEPARATION DATE........................................ 4
1.24 SUBSIDIARY............................................. 4
1.25 TDC.................................................... 4
1.26 TECHNOLOGY............................................. 5
1.27 THIRD PARTY............................................ 5
ARTICLE 2 OWNERSHIP............................................... 5
2.1 OWNERSHIP OF PALM TECHNOLOGY........................... 5
2.2 JOINT TECHNOLOGY....................................... 6
2.3 PRIOR GRANTS........................................... 6
2.4 ASSIGNMENT DISCLAIMER.................................. ▇
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TABLE OF CONTENTS
(continued)
Page
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ARTICLE 3 LICENSES AND RIGHTS..................................... 7
3.1 PALM COMPUTING PLATFORM................................ 7
3.2 GALAHAD PROJECT AND TDC................................ 7
3.3 RIGHTS TO JOINT TECHNOLOGY............................. 8
3.4 NO PATENT LICENSES..................................... 9
3.5 THIRD PARTY TECHNOLOGY................................. 9
ARTICLE 4 CONFIDENTIALITY......................................... 9
ARTICLE 5 NO TERMINATION.......................................... 9
ARTICLE 6 DISPUTE RESOLUTION...................................... 9
6.1 MEDIATION.............................................. 9
6.2 ARBITRATION............................................ 10
6.3 COURT ACTION........................................... 10
6.4 CONTINUITY OF SERVICE AND PERFORMANCE.................. 11
ARTICLE 7 LIMITATION OF LIABILITY................................. 11
ARTICLE 8 MISCELLANEOUS PROVISIONS................................ 11
8.1 DISCLAIMER............................................. 11
8.2 NO IMPLIED LICENSES.................................... 12
8.3 INFRINGEMENT SUITS..................................... 12
8.4 NO OTHER OBLIGATIONS................................... 12
8.5 ENTIRE AGREEMENT....................................... 12
8.6 GOVERNING LAW.......................................... 13
8.7 DESCRIPTIVE HEADINGS................................... 13
8.8 NOTICES................................................ 13
8.9 NONASSIGNABILITY....................................... 14
8.10 SEVERABILITY........................................... 14
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE.. 14
8.12 AMENDMENT.............................................. 14
8.13 COUNTERPARTS........................................... 15
-ii-
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the "Agreement") is
effective as of ________, 2000 (the "Effective Date"), between 3Com Corporation,
a Delaware corporation ("3Com"), having an office at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ and Palm, Inc., a Delaware corporation ("Palm"), having
an office at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇.
WHEREAS, the Board of Directors of 3Com has determined that it is in the
best interest of 3Com and its stockholders to separate 3Com's existing
businesses into two independent businesses;
WHEREAS, as part of the foregoing, 3Com and Palm's predecessor, Palm
Computing, Inc., a California Corporation, have entered into a Master Separation
and Distribution Agreement (as defined below), which provides, among other
things, for the separation of certain Palm assets and Palm liabilities, the
initial public offering of Palm stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing; and
WHEREAS, also as part of the foregoing, the parties desire to confirm
Palm's ownership or joint ownership of certain technology.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 ANCILLARY AGREEMENTS. "Ancillary Agreements" shall have the meaning
set forth in the Master Separation and Distribution Agreement.
1.2 COPYRIGHTS. "Copyrights" mean (i) any copyright in any original works
of authorship fixed in any tangible medium of expression as set forth in 17
U.S.C. Section 101 et. seq., whether registered or unregistered, including any
applications for registration thereof, (ii) any corresponding foreign copyrights
under the laws of any jurisdiction, in each case, whether registered or
unregistered, and any applications for registration thereof, and (iii) moral
rights under the laws of any jurisdiction.
1.3 DATABASE RIGHTS. "Database Rights" means any rights in databases under
the laws of the United States or any other jurisdiction, whether registered or
unregistered, and any applications for registration thereof.
1.4 DISTRIBUTION DATE. "Distribution Date" shall have the meaning set
forth in the Master Separation and Distribution Agreement.
1.5 GALAHAD PROJECT. "Galahad Project" means the development effort within
3Com's Wireless Connectivity Division (WCD) currently known internally as the
Galahad Project.
1.6 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT. "General Assignment and
Assumption Agreement" means the General Assignment and Assumption Agreement
between the parties.
1.7 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of an
invention (i) written for the purpose of allowing legal and business people to
determine whether to file a Patent application with respect to such invention
and (ii) recorded with a control number in the owning party's records.
1.8 IPO REGISTRATION STATEMENT. "IPO Registration Statement" means the
registration statement on Form S-1 pursuant to the Securities Act of 1933, as
amended, to be filed with the Securities and Exchange Commission registering the
shares of common stock of Palm to be issued in the initial public offering,
together with all amendments thereto.
1.9 JOINT TECHNOLOGY. "Joint Technology" means the manufacturing
Technology indicated to be jointly owned in the Palm Technology Database, and
Technology which has been jointly developed by the parties prior to the
Separation Date that is incorporated into Current Palm Products (as defined in
the Master Patent Ownership and Assignment Agreement); provided, however, that
Joint Technology shall not include any Technology developed under the Galahad
Project or work done by TDC, except as otherwise agreed by the parties in
writing.
1.10 MASK WORK RIGHTS. "Mask Work Rights" means (i) any rights in mask
works, as defined in 17 U.S.C. Section 901, whether registered or unregistered,
including applications for registration thereof, and (ii) any foreign rights in
semiconductor topologies under the laws of any jurisdiction, whether registered
or unregistered, including applications for registration thereof.
1.11 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT. "Master Confidential
Disclosure Agreement" means the Master Confidential Disclosure Agreement between
3Com and Palm.
1.12 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT. "Master Patent
Ownership and Assignment Agreement" means the Master Patent Ownership and
Assignment Agreement between 3Com and Palm.
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1.13 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation and
Distribution Agreement" means the Master Separation and Distribution Agreement
between 3Com and Palm.
1.14 PALM BUSINESS. "Palm Business" means the business and operations of
Palm as described in the IPO Registration Statement.
1.15 PALM COMPUTING PLATFORM. "Palm Computing Platform" means the Palm OS
and other related software and hardware technology and documentation generally
licensed by Palm to third party developers of handheld computing or
communication products.
1.16 PALM OS. "Palm OS" means the Palm operating system software files and
build tools.
1.17 PALM PRODUCTS DATABASE. "Palm Products Database" means the mutually
agreed Palm Products Database as of the Separation Date, as it may be updated by
the parties upon mutual agreement (signed by authorized officers) of the parties
to add Palm products as of the Separation Date.
1.18 PALM TECHNOLOGY. "Palm Technology" means (i) all Technology developed
solely by Palm or Subsidiaries of Palm or by its subcontractors for Palm or its
Subsidiaries, (ii) all Technology for which the direct costs were solely paid
for by Palm, (iii) the Palm Computing Platform, (iv) the manufacturing
technology that is indicated as to be owned by Palm in the Palm Technology
Database, and (v) all Technology developed or being developed solely by the Palm
Business as of the Separation Date. For the avoidance of doubt, the parties
agree that 3Com owns all right, title and interest in and to any Technology that
may have been jointly developed by the parties in the Galahad Project and any
projects with the TDC and any Technology either developed solely by 3Com or for
which the direct costs were solely paid for by 3Com.
1.19 PALM TECHNOLOGY DATABASE. "Palm Technology Database" means the
mutually agreed Palm Technology Database as of the Separation Date, as it may be
updated by the parties upon mutual agreement (signed by authorized officers) of
the parties to add Palm Technology as of the Separation Date.
1.20 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions or industrial designs anywhere in the world and
all reissues, renewals, re-examinations and extensions of any of the foregoing.
1.21 PERSON. "Person" means an individual, a partnership, a corporation, a
limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
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1.22 SELL. To "Sell" a product means to sell, transfer, lease or otherwise
dispose of a product. "Sale" and "Sold" have the corollary meanings ascribed
thereto.
1.23 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
February 26, 2000, or such other date as may be fixed by the Board of Directors
of 3Com.
1.24 SUBSIDIARY. "Subsidiary" of any Person means a corporation or other
organization, whether incorporated or unincorporated, of which at least a
majority of the securities or interests having by the terms thereof ordinary
voting power to elect at least a majority of the board of directors or others
performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by such Person or by
any one or more of its Subsidiaries, or by such Person and one or more of its
Subsidiaries; provided, however, that no Person that is not directly or
indirectly wholly-owned by any other Person shall be a Subsidiary of such other
Person unless such other Person controls, or has the right, power or ability to
control, that Person. For purposes of this Agreement, Palm shall be deemed not
to be a subsidiary of 3Com.
1.25 TDC. "TDC" means the 3Com Technology Development Center.
1.26 TECHNOLOGY. "Technology" means technological models, algorithms,
manufacturing processes, design processes, behavioral models, logic diagrams,
schematics, test vectors, know-how, computer and electronic data processing and
other apparatus programs and software (object code and source code), databases
and documentation thereof, trade secrets, technical information, specifications,
drawings, records, documentation, works of authorship or other creative works,
websites, ideas, knowledge, data or the like. The term Technology includes
Copyrights, Database Rights, Mask Work Rights, trade secrets and any other
intellectual property right, but expressly does not include (i) any trademark,
trade name, trade dress or service ▇▇▇▇, or applications for registration
thereof or (ii) any Patents or applications therefor, including any of the
foregoing that may be based on Invention Disclosures that are covered by the
Master Patent Ownership and License Agreement between the parties, but does
include trade secret rights in and to inventions disclosed in such Patent
applications and Invention Disclosures.
1.27 THIRD PARTY. "Third Party" means a Person other than 3Com and its
Subsidiaries and Palm and its Subsidiaries.
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF PALM TECHNOLOGY. The parties hereby confirm that Palm
owns all right, title and interest in and to the Palm Technology. Subject to
Sections 2.3 and 2.4 below, to the extent that 3Com has any ownership rights in
and to the Palm Technology, 3Com hereby grants, conveys and assigns (and agrees
to cause its appropriate Subsidiaries to grant, convey and assign) to Palm, by
execution hereof (or, where appropriate or required, by execution of separate
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instruments of assignment), all its (and their) right, title and interest in and
to the Palm Technology, to be held and enjoyed by Palm, its successors and
assigns. 3Com further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Palm all its (and
their) right, title and interest in and to any and all causes of action and
rights of recovery for past infringement of Copyrights, Database Rights and Mask
Work Rights in and to the Palm Technology, and for past misappropriation of
trade secrets in and to the Palm Technology. 3Com further covenants that 3Com
will, without demanding any further consideration therefor, at the request and
expense of Palm (except for the value of the time of 3Com employees), do (and
cause its Subsidiaries to do) all lawful and just acts that may be or become
necessary for evidencing, maintaining, recording and perfecting Palm's rights to
such Palm Technology consistent with 3Com's general business practice as of the
Separation Date, including but not limited to, execution and acknowledgement of
(and causing its Subsidiaries to execute and acknowledge) assignments and other
instruments in a form reasonably required by Palm for each Copyright, Mask Work
Right or Database Right jurisdiction.
2.2 JOINT TECHNOLOGY. The parties hereby confirm that 3Com and Palm
jointly own all right, title and interest in and to the Joint Technology.
(a) Subject to Sections 2.3 and 2.4 below, 3Com hereby grants, conveys
and assigns (and agrees to cause its appropriate Subsidiaries to grant, convey
and assign) to Palm an undivided one-half interest in and to the Joint
Technology to be held and enjoyed by Palm, its successors and assigns. 3Com
further grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Palm an undivided one-half interest
in and to any and all causes of action and rights of recovery for past
infringement of Copyrights, Database Rights and Mask Work Rights in and to the
Joint Technology, and for past misappropriation of trade secrets in and to the
Joint Technology. 3Com further covenants that 3Com will, without demanding any
consideration therefor, at the request and expense of Palm (except for the value
of the time of 3Com employees), do (and cause its Subsidiaries to do) all lawful
and just acts including the execution and acknowledgement of instruments, that
may be or become necessary for evidencing, maintaining and perfecting Palm's
rights to such Joint Technology consistent with 3Com's general business practice
as of the Separation Date, including but not limited to, execution and
acknowledgement of (and causing its Subsidiaries to execute and acknowledge)
assignments and other instruments in a form reasonably required by Palm for each
Copyright, Mask Work Right or Database Right jurisdiction.
(b) Subject to Sections 2.3 and 2.4 below, Palm hereby grants,
conveys and assigns (and agrees to cause its appropriate Subsidiaries to grant,
convey and assign) to 3Com an undivided one-half interest in and to the Joint
Technology to be held and enjoyed by 3Com, its successors and assigns. Palm
further grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to 3Com an undivided one-half interest
in and to any and all causes of action and rights of recovery for past
infringement of Copyrights, Database Rights and Mask Work Rights in and to the
Joint Technology, and for past misappropriation of trade secrets in
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and to the Joint Technology. Palm further covenants that Palm will, without
demanding any consideration therefor, at the request and expense of 3Com (except
for the value of the time of Palm employees), do (and cause its Subsidiaries to
do) all lawful and just acts including the execution and acknowledgement of
instruments, that may be or become necessary for evidencing, maintaining and
perfecting 3Com's rights to such Joint Technology consistent with Palm's general
business practice as of the Separation Date, including but not limited to,
execution and acknowledgement of (and causing its Subsidiaries to execute and
acknowledge) assignments and other instruments in a form reasonably required by
3Com for each Copyright, Mask Work Right or Database Right jurisdiction.
2.3 PRIOR GRANTS.
(a) Palm acknowledges and agrees that the foregoing assignment is
subject to any and all licenses or other rights that may have been granted by or
to 3Com or its Subsidiaries with respect to the Palm Technology prior to the
Separation Date. 3Com shall respond to reasonable inquiries from Palm regarding
any such prior grants.
(b) 3Com acknowledges and agrees that the foregoing assignment is
subject t any and all licenses or other rights that may have been granted by or
to Palm or its Subsidiaries with respect to the 3Com Technology prior to the
Separation Date. Palm shall respond to reasonable inquiries from 3Com regarding
any such prior grants.
2.4 ASSIGNMENT DISCLAIMER. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT NEITHER
PARTY NOR ANY SUBSIDIARY OF EITHER PARTY HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. FURTHER, THE PARTIES ACKNOWLEDGE AND AGREE
THAT NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER PARTY SHALL HAVE ANY OBLIGATION
UNDER THIS AGREEMENT TO MAINTAIN OR SUPPORT ANY OF THE TECHNOLOGY ASSIGNED UNDER
THIS AGREEMENT OR TO PROVIDE ANY UPGRADES OR ENHANCEMENTS THERETO TO THE OTHER
PARTY.
ARTICLE 3
LICENSES AND RIGHTS
3.1 PALM COMPUTING PLATFORM. In recognition of the fact that 3Com and Palm
were affiliated entities prior to the Separation Date, Palm agrees to grant a
license (i) to 3Com with respect to the Palm Computing Platform on favorable
terms, and (ii) to 3Com (IAD) with respect to certain portions of the Palm OS on
favorable terms. The parties agree to negotiate such licensing
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agreements reasonably and in good faith as promptly as they can reasonably
accomplish, but in no event later than the Distribution Date.
3.2 GALAHAD PROJECT AND TDC. The parties agree to negotiate reasonably and
in good faith joint development and licensing agreements with respect to
Technology developed in the Galahad Project and TDC (with respect to Palm
related projects) as promptly as they can reasonably accomplish, but in no event
later than the Distribution Date.
3.3 RIGHTS TO JOINT TECHNOLOGY.
(a) Each party has the right to (i) use and exploit the Joint
Technology, (ii) license the Joint Technology to Third Parties, and (iii)
transfer its ownership interest in any or all Joint Technology to any Third
Party, in each case (x) without restriction, (y) without the consent of the
other party, and (z) without the obligation to account to the other party for
profits derived therefrom.
(b) Should either party (the "Registering Party") desire at any time
to register Copyrights, Database Rights or Mask Work Rights in and to the Joint
Technology in any jurisdiction, such party shall notify the other party (the
"Non-Registering Party") in writing of its intent and the reasons therefor. The
Non-Registering Party promptly shall communicate in writing any objections it
may have. In the absence of any written objections within thirty (30) days after
the date of its notice, the Registering Party shall be free to proceed with the
desired registration in the name of both 3Com and Palm. In the event of any such
objections by the Non-Registering Party, the parties shall discuss and negotiate
reasonably and in good faith to resolve the objections based on each party's
business objectives with respect to the relevant item of Joint Technology. The
parties shall share equally any actual and reasonable out-of-pocket expenses
(expressly excluding the value of the time of either party's employees) incurred
in connection with any such registration. The Registering Party promptly shall
provide the Non-Registering Party with copies of each application and issued
registration under this Section 3.3(b).
(c) Should either party become aware of any actual infringement or
misappropriation of Joint Technology, such party shall promptly communicate the
details to the other party and the parties will meet and confer regarding any
enforcement action with respect to such Joint Technology. If the parties decide
jointly to bring an action for infringement or misappropriation of such Joint
Technology, the parties shall equally share all actual and reasonable expenses
associated therewith (except for the value of the time of each party's employees
in connection with the action; each party shall alone bear its employee
expenses) and any resulting damages or compensation, including any amounts paid
in settlement. If the parties decide not to jointly bring such an action, either
party or any of its Subsidiaries may, at its own expense (including, as the
parties shall agree on a case by case basis, compensation, if any, of the other
party for the value of time of the other party's employees as reasonably
required in connection with the action), enforce any Joint Technology against
any Third Party infringer or misappropriating Person without the consent of the
other party, subject to the following: (i) neither party shall have any
obligation to be joined as a party plaintiff in such action without its prior
written consent, which may
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be granted or withheld in its sole discretion, regardless of whether such
joinder is required in order to confer jurisdiction in the jurisdiction in which
the action is to be brought, (ii) if either party brings any such action on its
own, including cases in which the other party consents to be named as party
plaintiff, the party bringing the action agrees to defend, indemnify and hold
harmless the other party for all losses, costs, liabilities and expenses arising
out of or related to the bringing of such action, and (iii) the party bringing
such action may not take any action, or make any admissions, that may affect the
validity of any registration for Copyrights, Database Rights or Mask Work Rights
covering Joint Technology without the prior written consent of the other party.
If the enforcing party or its Subsidiaries recovers any damages or compensation
for any action the enforcing party or the Subsidiaries of the enforcing party
takes hereunder, including any settlement, the enforcing party or the
Subsidiaries of the enforcing party shall retain one hundred percent (100%) of
such damages. If the parties cooperate in any such enforcement action, then any
recovery of damages or compensation shall be allocated pursuant to mutual
agreement.
3.4 NO PATENT LICENSES. Nothing contained in this Agreement shall be
construed as conferring to either party by implication, estoppel or otherwise
any license or right under any Patent or applications therefor, whether or not
the exercise of any right herein granted necessarily employs an invention of any
existing or later issued Patent. The applicable licenses granted by 3Com to Palm
with respect to Patents are set forth in a separate Master Patent Ownership and
License Agreement.
3.5 THIRD PARTY TECHNOLOGY. The assignment of any applicable license
agreements with respect to Third Party Technology are set forth in the General
Assignment and Assumption Agreement.
ARTICLE 4
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
ARTICLE 5
NO TERMINATION
Each party acknowledges and agrees that its remedy for breach by the other
party of any provision hereof shall be, subject to the requirements of Article
6, to bring a claim to recover damages subject to the limits set forth in this
Agreement and to seek any other appropriate equitable relief, other than
termination of this Agreement. For the avoidance of doubt, the parties intend
that this Agreement continue in perpetuity.
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ARTICLE 6
DISPUTE RESOLUTION
6.1 MEDIATION. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement appropriate senior executives (e.g. director or V.P. level) of each
party who shall have the authority to resolve the matter shall meet to attempt
in good faith to negotiate a resolution of the Dispute prior to pursuing other
available remedies. The initial meeting between the appropriate senior
executives shall be referred to herein as the "Dispute Resolution Commencement
Date." Discussions and correspondence relating to trying to resolve such Dispute
shall be treated as Confidential Information developed for the purpose of
settlement and shall be exempt from discovery or production and shall not be
admissible. If the senior executives are unable to resolve the Dispute within
thirty (30) days from the Dispute Resolution Commencement Date, and either party
wishes to pursue its rights relating to such Dispute, then the Dispute will be
mediated by a mutually acceptable mediator appointed pursuant to the mediation
rules of JAMS/Endispute within thirty (30) days after written notice by one
party to the other demanding non-binding mediation. Neither party may
unreasonably withhold consent to the selection of a mediator or the location of
the mediation. Both parties will share the costs of the mediation equally,
except that each party shall bear its own costs and expenses, including
attorneys' fees, witness fees, travel expenses, and preparation costs. The
parties may also agree to replace mediation with some other form of non-binding
or binding alternate dispute resolution ("ADR").
6.2 ARBITRATION. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days of the Dispute Resolution Commencement Date,
unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), by three (3) arbitrators in Santa ▇▇▇▇▇ County,
California. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall be
entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior negotiation or mediation). The decision
of the arbitrator shall be final and non-appealable and may be enforced in any
court of competent jurisdiction. The use of any ADR procedures will not be
construed under the doctrine of laches, waiver or estoppel to adversely affect
the rights of either party.
6.3 COURT ACTION. Any Dispute regarding the following is not required to
be negotiated, mediated or arbitrated prior to seeking relief from a court of
competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute
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shall make a good faith effort to negotiate and mediate such Dispute, according
to the above procedures, while such court action is pending.
6.4 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement during the course of dispute resolution
pursuant to the provisions of this Article 6 with respect to all matters not
subject to such dispute, controversy or claim.
ARTICLE 7
LIMITATION OF LIABILITY.
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE OTHER
PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL
OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY THEORY OF
LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT,
WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S
OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE MASTER SEPARATION AND
DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES
SHALL APPLY IN ANY EVENT.
ARTICLE 8
MISCELLANEOUS PROVISIONS
8.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY AND
ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER IS PROVIDED ON AN "AS IS"
BASIS, AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKES ANY
REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
foregoing, neither party nor any of its Subsidiaries makes any warranty or
representation that any manufacture, use, importation, offer for sale or sale of
any product or service will be free from infringement of any Patent or other
intellectual property right of any Third Party.
8.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Palm Technology and
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the Joint Technology. Neither party is required hereunder to furnish or disclose
to the other any technical or other information, except as specifically provided
herein.
8.3 INFRINGEMENT SUITS. Neither party shall have any obligation hereunder
to institute any action or suit against Third Parties for infringement of any
Copyrights, Database Rights or Mask Work Rights or misappropriation of any trade
secret rights in or to any Technology licensed to the other party hereunder, or
to defend any action or suit brought by a Third Party which challenges or
concerns the validity of any of such rights or which claims that any Technology
assigned or licensed to the other party hereunder infringes any Patent,
Copyright, Database Right, Mask Work Right or other intellectual property right
of any Third Party or constitutes a misappropriated trade secret of any Third
Party. 3Com shall not have any right to institute any action or suit against
Third Parties for infringement of any of the Copyrights, Database Rights or Mask
Work Rights in or to the Palm Technology.
8.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated under this Agreement to provide any
technical assistance.
8.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements and the Exhibits and
Schedules referenced or attached hereto and thereto constitute the entire
agreement between the parties with respect to the subject matter hereof and
thereof and shall supersede all prior written and oral and all contemporaneous
oral agreements and understandings with respect to the subject matter hereof and
thereof. This Agreement shall prevail in the event of any conflicting terms or
legends which may appear on any portion of the Palm Technology or the Joint
Technology. To the extent there is a conflict between this Agreement and the
Master Assignment and Assumption Agreement between the parties, the terms of
this Agreement shall govern. To the extent that the parties enter into specific
agreements regarding specific projects such as the Galahad Project or the Palm
Computing Platform license, such agreements shall supersede this Agreement with
respect to any common subject matter.
8.6 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Santa ▇▇▇▇▇ County and/or the United States District Court for the Northern
District of California shall have jurisdiction and venue over all Disputes
between the parties that are permitted to be brought in a court of law pursuant
to Article 6 above.
8.7 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in any
Exhibit or Schedule hereto and in the table of contents to this Agreement are
for reference purposes
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only and shall not affect in any way the meaning or interpretation of this
Agreement. Any capitalized term used in any Exhibit or Schedule but not
otherwise defined therein, shall have the meaning assigned to such term in this
Agreement. When a reference is made in this Agreement to an Article or a
Section, Exhibit or Schedule, such reference shall be to an Article or Section
of, or an Exhibit or Schedule to, this Agreement unless otherwise indicated.
8.8 NOTICES. Notices, offers, requests or other communications required or
permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to 3Com:
3Com Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
if to Palm:
Palm, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance or renewal shall be sent by hand delivery, recognized
overnight courier or, within the United States, may also be sent via certified
mail, return receipt requested. All other notices may also be sent by fax,
confirmed by first class mail. All notices shall be deemed to have been given
and received on the earlier of actual delivery or three (3) days from the date
of postmark.
8.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in whole
or in part, whether by operation of law or otherwise, assign or transfer this
Agreement, without the other party's prior written consent, and any attempted
assignment, transfer or delegation without such prior written consent shall be
voidable at the sole option of such other party. Notwithstanding the foregoing,
each party (or its successive assignees or transferees hereunder) may, without
such consent, assign this Agreement to an entity that succeeds to all or
substantially all of the business or assets of such party as long as such Person
agrees to accept all of the terms set forth herein; provided, however, that the
rights and obligations set forth in Sections 3.1 and 3.2 may not be assigned or
transferred in any event (except in the case of a reincorporation of such party
in another state). Without limiting the foregoing, this Agreement will be
binding upon and inure to the benefit of the parties and their permitted
successors and assigns.
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8.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
8.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
8.13 COUNTERPARTS. This Agreement, including the Ancillary Agreements and
the Exhibits and Schedules hereto and thereto and the other documents referred
to herein or therein, may be executed in counterparts, each of which shall be
deemed to be an original but all of which shall constitute one and the same
agreement.
WHEREFORE, the parties have signed this Master Technology Ownership and
License Agreement effective as of the date first set forth above.
3COM CORPORATION PALM, INC.
By:_______________________________ By:_______________________________
Name:_____________________________ Name:_____________________________
Title:____________________________ Title:____________________________
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