EXHIBIT 2.3
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
LSI LOGIC CORPORATION
AND
LSI LOGIC STORAGE SYSTEMS, INC.
DECEMBER 31, 2003
TABLE OF CONTENTS
PAGE
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ARTICLE I DEFINITIONS AND CONSTRUCTION............................ 1
1.1 Definitions from Separation Agreement....................... 1
1.2 Other Definitions........................................... 1
1.3 Construction................................................ 4
ARTICLE II SSI IP ALLOCATION...................................... 4
2.1 IP to be Allocated to SSI IP................................ 4
2.2 Assignment of SSI IP........................................ 5
2.3 Assignment of LSI Logic IP.................................. 6
2.4 Future Assignment to SSI of Certain SSI IP.................. 6
2.5 No Other Transfers; Prior Grants; Removal of Restrictions... 6
ARTICLE III TECHNOLOGY AND PATENT LICENSES........................ 6
3.1 IP to be Licensed to SSI.................................... 6
3.2 License to SSI of LSI Logic Storage IP...................... 7
3.3 Sublicensing of LSI Logic Storage IP; Have Made Rights...... 7
3.4 License to SSI of LSI Logic Retained Patents................ 7
3.5 License to LSI Logic Licensed Marks......................... 8
3.6 License from SSI to LSI Logic............................... 9
3.7 Sublicensing of SSI IP; Have Made Rights.................... 9
3.8 No Improvements............................................. 9
3.9 Reservation of Rights; Restrictions......................... 9
3.10 License to Santricity Software.............................. 10
ARTICLE IV IP DELIVERY, TRANSFER OF LEGAL TITLE, AND SCHEDULE
MODIFICATIONS.................................................... 10
4.1 Delivery.................................................... 10
4.2 SSI IP Schedules............................................ 10
4.3 Cooperation and Legal Transfers............................. 11
4.4 Dispute Procedures.......................................... 12
ARTICLE V NON-COMPETE............................................. 12
5.1 Restrictions................................................ 12
5.2 Separate Covenants.......................................... 12
5.3 Necessary to Preserve Value................................. 12
5.4 Injunctive Relief........................................... 13
ARTICLE VI LICENSE AGREEMENTS WITH THIRD PARTIES.................. 13
6.1 License Agreements.......................................... 13
6.2 Assignments, Delegation and Novation of SSI License 13
Agreements..................................................
6.3 Shared License Agreements................................... 13
ARTICLE VII CONFIDENTIAL INFORMATION AND LSI LOGIC EMPLOYEE
AGREEMENTS....................................................... 14
7.1 Confidential Information Exclusions......................... 14
7.2 Confidentiality Obligations................................. 14
7.3 Residuals................................................... 15
7.4 Disclosure to LSI Logic or SSI.............................. 15
7.5 Remedies.................................................... 15
7.6 Required Disclosure......................................... 15
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7.7 Public Announcements........................................ 15
7.8 LSI Logic Employee Agreements............................... 15
ARTICLE VIII REPRESENTATIONS AND WARRANTIES....................... 16
8.1 Representations and Warranties.............................. 16
8.2 Completeness of Schedules................................... 16
8.3 Warranty Disclaimers........................................ 16
8.4 LSI Logic Disclaimer........................................ 17
ARTICLE IX TERM AND TERMINATION................................... 17
9.1 Term........................................................ 17
ARTICLE X MISCELLANEOUS........................................... 17
10.1 Further Instruments and Assistance.......................... 17
10.2 Bankruptcy.................................................. 18
10.3 Limitation of Liability..................................... 18
10.4 Entire Agreement............................................ 18
10.5 Governing Law............................................... 18
10.6 Dispute Resolution.......................................... 18
10.7 Notices..................................................... 18
10.8 Counterparts................................................ 19
10.9 Binding Effect.............................................. 19
10.10 Assignment and Transfer..................................... 19
10.11 Severability................................................ 19
10.12 Failure or Indulgence Not Waiver; Remedies Cumulative....... 19
10.13 Amendment................................................... 19
10.14 Interpretation.............................................. 19
10.15 Conflicting Agreements...................................... 19
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SCHEDULES AND EXHIBITS
SCHEDULES
Schedule 1.2(b) Excluded IP
Schedule 1.2(h) LSI Logic Licensed Marks
Schedule 1.2(l) LSI Logic Storage IP
Schedule 1.2(m) License Agreements
Schedule 1.2(n) Marked Items
Schedule 1.2(x) SSI Products
Schedule 1.2(v)(i) SSI Patents
Schedule 1.2(v)(ii) SSI Copyrights and Maskworks
Schedule 1.2(v)(iv) SSI Internet Properties
Schedule 1.2(v)(v) Other SSI Intellectual Property Rights
Schedule SSI Marks
1.2(v)(iii)
Schedule 1.2(v)(vi) SSI Technology
Schedule 3.5 Guidelines for Use of LSI Logic Licensed Marks
EXHIBITS
Exhibit 4.3(d)(i) Form of Patent Assignment
Exhibit 4.3(d)(ii) Form of Trademark Assignment
Exhibit 4.3(d)(iii) Registrar Information for Internet Properties
Exhibit 4.3(d)(iv) Form of Copyright Assignment
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INTELLECTUAL PROPERTY AGREEMENT
This
Intellectual Property Agreement (this "Agreement") is entered into as
of December 31, 2003 between LSI Logic Corporation, a Delaware corporation ("LSI
Logic"), and LSI Logic Storage Systems, Inc., a Delaware corporation ("SSI").
LSI Logic and SSI are referred to in this Agreement collectively as the
"Parties" and individually as a "Party." Capitalized terms have the meanings set
forth below.
RECITALS
1. SSI is engaged in the storage systems business, which is independent of
the businesses of LSI Logic.
2. SSI has developed or uses certain Technology and Intellectual Property
Rights in connection with the operation of its business.
3. LSI Logic and SSI are entering into a Master Separation Agreement and
other Ancillary Agreements to delineate and clarify their relationship with
respect to the independent businesses of by LSI Logic and SSI (the
"Separation").
4. In connection with the Separation, LSI Logic and SSI wish to set forth
the allocation of rights to certain Technology and related Intellectual Property
Rights associated with SSI's business, and LSI Logic wishes to transfer to SSI
legal title to certain of the foregoing Technology and related Intellectual
Property Rights.
5. LSI Logic and SSI wish to enter into license arrangements with respect
to certain rights of SSI, and other Technology and Intellectual Property Rights,
all on the terms and conditions herein.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises contained in this Agreement, the Parties hereby agree as follows:
ARTICLE I
DEFINITIONS AND CONSTRUCTION
1.1 Definitions from Separation Agreement. The following capitalized
terms have the meanings set forth in the Separation Agreement: Ancillary
Agreements, Confidential Information, Dispute, Distribution Date, LSI Logic
Group, Person, Separation, Separation Date, SSI Contract, SSI Group, Subsidiary,
and Transition Services Agreement.
1.2 Other Definitions. The following capitalized terms have the meanings
set forth below.
(a) "Control" (including the terms "Controlling," and "Controlled by")
means the direct or indirect ownership, possession, or power to vote by
voting agreement or other arrangement, by the controlling entity of (i)
voting shares or other securities, representing more than a specified
percentage of the outstanding shares or securities entitled to vote for the
election of the board of directors or similar managing authority of such
controlled entity, or (ii) if such controlling entity does not have voting
shares or other securities, more than the specified percentage of the
ownership interest that represents the right to make decisions, including
the election of directors, for such controlled entity. For the purposes of
this definition, the "specified percentage" means the percentage referred
to when this definition is used herein.
(b) "Excluded IP" means: (i) IP (1) that is first owned by LSI Logic
following the Separation Date (except for that IP described in Section
1.2(v)(A)), or (2) that comes into existence or is created following the
Separation Date (except as provided in Section 4.2(b)(i) with respect to
Patents, where the underlying subject matter was in existence prior to the
Patent coming into existence. and except for that IP described in Section
1.2(v)(A)), or (3) the benefits of which are provided by SSI to LSI Logic
pursuant to the Transition Services Agreement, or (4) which is listed on
Schedule 1.2(b) (if any); and (ii) with respect to Technology, any
Technology for which only one substantiation exists, which is material to
the LSI Logic Storage Business or another retained business of LSI Logic,
and which is not capable of being replicated without material cost.
(c) "IP" means Technology, Marks, and Intellectual Property Rights.
(d) "IP Schedule(s)" means any one or more of the following schedules
that list certain IP to be licensed or transferred hereunder: Schedule
1.2(b) (Excluded IP), Schedule 1.2(l) (LSI Logic Storage Patents), Schedule
1.2(h) (LSI Logic Licensed Marks), Schedule 1.2(v)(i) (SSI Patents),
Schedule 1.2(v)(ii) (SSI Copyrights and Maskworks), Schedule 1.2(v)(iv)
(SSI Internet Properties), Schedule 1.2(v)(v) (Other SSI Intellectual
Property Rights), Schedule 1.2(v)(iii) (SSI Marks), and Schedule 1.2(v)(vi)
(SSI Technology).
(e) "Intellectual Property Rights" means any or all of the following
and all rights in, arising out of, or associated therewith: (i) all United
States and foreign patents and utility models and applications therefor,
and all reissues, divisions, re-examinations, renewals, extensions,
provisionals, continuations and continuations-in-part thereof, and
equivalent or similar rights anywhere in the world in inventions and
discoveries ("Patents"); (ii) trade secret rights and all other rights in
or to Proprietary Information (as defined below); (iii) mask works, mask
work registrations and applications therefor, and any equivalent or similar
rights in semiconductor masks, layouts architecture or topology throughout
the world ("Mask Works"); (iv) all copyrights, copyrights registrations and
applications therefor and all other similar or equivalent rights
corresponding thereto throughout the world ("Copyrights"); (v) all
industrial designs and any registrations and applications therefor
throughout the world ("Industrial Designs"); (vi) all rights in WWW
addresses, uniform resource locators and domain names and applications and
registrations therefor ("Internet Properties"); (vii) any similar,
corresponding or equivalent rights to any of the foregoing anywhere in the
world. Intellectual Property Rights specifically excludes Marks and rights
in and to Marks, and also specifically excludes contractual rights,
including license grants.
(f) "LSI Logic Employee Agreement" means the Employee Invention and
Confidential Information Agreement in the United States and corresponding
agreements in foreign countries executed by each LSI Logic employee.
(g) "LSI Logic IP" means Pre-Separation IP that is not SSI IP.
(h) "LSI Logic Licensed Marks" means the Marks of LSI Logic that are
listed on Schedule 1.2(h) in accordance with Section 3.1(b) (as such
Schedule may revised pursuant to Section 4.2).
(i) "LSI Logic Retained Patents" means any Patents of LSI Logic
included in Pre-Separation IP that are not SSI Patents or LSI Logic Storage
Patents.
(j) "LSI Logic Storage Business" means the business being conducted by
LSI Logic as of the Separation Date, of designing, manufacturing, selling
and supporting storage components. LSI Logic Storage Business does not
include the SSI Business.
(k) "LSI Logic Storage IP" means (a) LSI Logic Storage Patents, (b)
Technology that as of the Separation Date is LSI Logic IP, is in the
possession of SSI, is related to the SSI Business, and is either used in
the SSI Business or reasonably intended to be used in the SSI Business
following the Separation Date, and (c) Intellectual Property Rights (other
than Patents) that as of the Separation Date are LSI Logic IP, and that are
(i) embodied in the Software and other Technology used in the SSI Business
as of the Separation Date or prior to the Separation Date during any period
in which SSI was a Subsidiary of LSI Logic, or (ii) embodied in the
Software or other Technology in the possession of the SSI Business as of
the Separation Date and reasonably intended to be used in the SSI Business
following the Separation Date, or (iii) incorporated in the SSI Products as
of the Separation Date. In all of the foregoing (c)(i), (c)(ii) and
(c)(iii), LSI Logic Storage IP includes Intellectual Property Rights within
Pre-Separation IP that are not included in SSI IP or are not transferred or
assigned to SSI under Section 2.2 (for whatever reason) but which would be
infringed by making, using, selling, offering for sale or importing
Technology that is SSI IP.
(l) "LSI Logic Storage Patents" means Patents listed on Schedule
1.2(k) in accordance with Section 3.1 (as such Schedule may be revised
pursuant to Section 4.2).
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(m) "License Agreement" means a written license of Intellectual
Property Rights, to the extent in effect as of the Separation Date, that
the Parties have determined is material to the SSI Business or to the
Separation, as set forth on Schedule 1.2(m).
(n) "Marked Items" means goods and services that may be identified
using an SSI Licensed ▇▇▇▇, as set forth on Schedule 1.2(n).
(o) "Marks" means all trade names, logos, trademarks and service
marks; trademark and service ▇▇▇▇ registrations and applications (including
intent-to-use registrations and applications).
(p) "Pre-Separation IP" means IP of either LSI Logic or SSI
immediately prior to the Separation Date.
(q) "Restriction" means that an action hereunder would or would be
likely to trigger any of the following: (i) a material violation of the
terms of any current agreement or other current arrangement with any third
party; (ii) an expansion of existing rights or licenses from LSI Logic to a
third party; or (iii) a requirement to pay any material royalty or other
consideration to any third party that would not have been required had the
applicable right or license not been provided under this Agreement.
(r) "Separation Agreement" means the Master Separation Agreement
entered into by and between LSI Logic and SSI as of even date herewith.
(s) "Shared License Agreements" means those License Agreements between
either SSI and a third party or LSI Logic and a third party that the
Parties have identified should be either allocated to LSI Logic and shared
with SSI or allocated to SSI and shared with LSI Logic, all designated on
Schedule 1.2(m) as "Shared License Agreements," excluding those License
Agreements removed as Shared License Agreements pursuant to Section 6.3(c).
(t) "SSI Employee" means any individual who: (i) is actively employed
by SSI in the United States on the Separation Date; (ii) moves to the
employ of SSI in the United States from the employ of LSI Logic at any time
prior to the Distribution Date; (iii) is an employee or group of employees
designated as SSI Employees by LSI Logic and SSI, by mutual agreement; or
(iv) is an individual in the United States hired by SSI on or after the
Separation Date.
(u) "SSI Business" means the business being conducted by SSI as of the
Separation Date, of designing, manufacturing, selling and supporting
storage systems and subsystems, including the SSI Products and related
services and operations, and including the development and other activities
in which substantial resources have been invested as of the Separation
Date. "SSI Business" shall not include (a) the processes relating to or
products resulting from designing, simulating, testing, packaging or
fabricating integrated circuits, or (b) the business of designing,
manufacturing, selling and supporting storage components.
(v) "SSI IP" means (A) any Technology or Intellectual Property Rights
created by an SSI Employee engaged in the SSI Business between the
Separation Date and the Distribution Date, and (B) Pre-Separation IP to be
allocated to SSI, including:
(i) the Patents listed on Schedule 1.2(v)(i) in accordance with
Section 2.1(a)(i) (as such Schedule may be revised pursuant to Section
4.2);
(ii) the Copyrights or Maskworks listed on Schedule 1.2(v)(ii) in
accordance with Section 2.1(a)(ii) (as such Schedule may be revised
pursuant to Section 4.2), or otherwise identified in Section 2.1(a)(ii);
(iii) the Marks (and associated goodwill) listed on Schedule
1.2(v)(iii) in accordance with Section 2.1(b) (as such Schedule may be
revised pursuant to Section 4.2);
(iv) the Internet Properties listed on Schedule 1.2(v)(iii) in
accordance with Section 2.1(a)(iii) (as such Schedule may be revised
pursuant to Section 4.2);
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(v) the other Intellectual Property Rights listed on Schedule
1.2(v)(v) in accordance with Section 2.1(a)(iv) (as such Schedule may be
revised pursuant to Section 4.2), or otherwise identified in Section
2.1(a)(iv); and
(vi) the Technology listed on Schedule 1.2(v)(vi) in accordance
with Section 2.1(c) (as such Schedule may be revised pursuant to Section
4.2), or otherwise identified in Section 2.1(c).
(w) "SSI License Agreement" means those License Agreements between LSI
Logic and a third party or between or SSI and a third party that the
Parties have determined are material and are to be allocated to SSI, all
designated on Schedule 1.2(m) as "SSI License Agreements."
(x) "SSI Products" means (i) those SSI products listed on Schedule
1.2(x), and (ii) other products that result from development activities of
SSI in which, as of the Separation Date, substantial resources have been
invested.
(y) "Technology" means any and all of the following tangible or
intangible items or things, in any format, but specifically excluding any
Intellectual Property Rights therein or thereto:
(i) computer software and code, including assemblers, applets,
compilers, source code, object code, data (including image and sound
data), design tools and user interfaces, including documentation,
annotations or comments, and including all related algorithms, data and
data structures ("Software");
(ii) trade secrets and confidential information, including without
limitation invention disclosures, know-how, show-how, techniques,
algorithms, routines, works of authorship, processes, devices,
prototypes, net list, mask works, test methodologies, hardware
development tools, materials that document design or design processes
(including failed designs), or that document research or testing (both
design, processes and results) ("Proprietary Information");
(iii) databases and data collections; and
(iv) any media on which any of the foregoing is recorded, and any
other tangible embodiments or copies of any of the foregoing.
1.3 Construction. For purposes of this Agreement, whenever the context
requires: (i) the singular number includes the plural, and vice versa; the
masculine gender includes the feminine and neuter genders; the feminine gender
includes the masculine and neuter genders; and the neuter gender includes the
masculine and feminine genders; (ii) any rule of construction to the effect that
ambiguities are to be resolved against the drafting Party will not be applied in
the construction or interpretation of this Agreement; and (iii) the words
"include" and "including" and variations thereof, will not be deemed to be terms
of limitation, but rather will be deemed to be followed by the words "without
limitation."
ARTICLE II
SSI IP ALLOCATION
2.1 IP to be Allocated to SSI IP. Certain Pre-Separation IP shall be
allocated, in accordance with this Section 2.1, to SSI, and to the extent not
owned by SSI prior to the Separation Date, assigned to SSI in accordance with
Section 2.2. Such IP shall, following the Separation Date, be SSI IP. All such
IP that is subject to a governmental registration or that is material and
capable of being scheduled will be set forth on a Schedule referred to in this
Section. Prior to the Separation Date, the Parties will use reasonable efforts
to compile such schedules and will use reasonable efforts to complete or correct
such schedules following the Separation Date in accordance with Section 4.2.
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(a) Intellectual Property Rights. The following Pre-Separation IP
shall be allocated to SSI as of the Separation Date:
(i) Patents. All of those Patents:
(1) that are listed on Schedule 1.2(v)(i) as of the date hereof,
or
(2) that would be entitled or required to designate as inventors
only individuals that were engaged in the SSI Business (including any
predecessor to the SSI Business) at the time such invention was made,
and that are added to Schedule 1.2(v)(i) pursuant to Section 4.2;
(ii) Copyrights and Maskworks. All (A) Copyrights that are
embodied in or constitute an SSI Product that exists as of the
Separation Date, (B) Maskworks for integrated circuits that were
designed specifically for the SSI Business, and (C) other Copyrights and
Maskworks that are listed on Schedule 1.2(v)(ii);
(iii) Internet Properties. All of those Internet Properties:
(1) that are listed on Schedule 1.2(v)(iv), to the extent such
scheduled Internet Properties are associated with the SSI Business
and are not primarily associated with the LSI Logic Storage Business
or other retained businesses of LSI Logic, or
(2) that are associated with the SSI Business and are not
primarily associated with the LSI Logic Storage Business or other
retained businesses of LSI Logic, and are added to Schedule
1.2(v)(iv), pursuant to Section 4.2; and
(iv) Other Intellectual Property Rights. Any other Intellectual
Property Rights that are listed on Schedule 1.2(v)(v).
(b) Marks. The following Marks and associated goodwill shall be
allocated to SSI as of the Separation Date: All of those Marks:
(i) that are listed on Schedule 1.2(v)(iii), to the extent such
scheduled Marks are associated with the SSI Business or used in
connection with SSI Products as of the Separation Date and are not
primarily associated with the LSI Logic Storage Business or the other
retained businesses of LSI Logic, or
(ii) that as of the Separation Date are associated with the SSI
Business or are used in connection with SSI Products, are not primarily
associated with the LSI Logic Storage Business or the other retained
businesses of LSI Logic, and are added to Schedule 1.2(v)(iii) pursuant
to Section 4.2.
(c) Technology that is SSI IP. Technology (including Software) that
is Pre-Separation IP will be allocated to SSI under Section 2.2 if it is
primarily used in or necessary to the SSI Business (including the
manufacture, use or sale of the SSI Products that exist as of the
Separation Date), or if it is incorporated in the SSI Products that exist
as of the Separation Date. The material items of Technology that are SSI IP
are identified on Schedule 1.2(v)(vi).
2.2 Assignment of SSI IP. To the extent legal ownership of an item within
SSI IP does not reside with SSI as of the Separation Date, and subject to the
last sentence of this Section 2.2, LSI Logic agrees to assign and transfer, and
hereby does assign and transfer to SSI, effective as of the Separation Date, and
to take such action as is necessary or appropriate therefor, as such actions are
more fully set forth in Section 4.3 and Section 10.1:
(a) all Intellectual Property Rights constituting SSI IP, including
all causes of action and the right to past and future damages for
infringement of such Intellectual Property Rights;
(b) the SSI Marks and all associated goodwill, and all causes of
action and the right to past and future damages for infringement of such
Marks; and
(c) all Technology constituting SSI IP.
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Notwithstanding anything to the contrary set forth in this Section, no
Excluded IP shall be allocated, transferred or assigned to SSI hereunder; to the
extent, however, that such Excluded IP is Excluded IP due to Restriction with
respect to transfer or assignment by LSI Logic, then such Excluded IP will cease
to be Excluded IP if and when such Restriction is removed pursuant to Section
2.5(c).
2.3 Assignment of LSI Logic IP. To the extent that SSI owns or has the
right to assign to LSI Logic any LSI Logic IP, SSI shall assign and hereby does
assign to LSI Logic all of its right title and interest in and to such LSI Logic
IP, including all causes of action and the right to past and future damages for
infringement of Intellectual Property Rights included therein and the goodwill
associated with any Marks included therein.
2.4 Future Assignment to SSI of Certain SSI IP. With respect to
Technology or Intellectual Property Rights that are SSI IP because of the
creation thereof by an SSI Employee engaged in the SSI Business between the
Separation Date and the Distribution Date (i.e., under Section 1.2(v)(A) and not
Section 1.2(v)(B)), but that are owned by LSI Logic, either as works made for
hire or pursuant to an LSI Logic Employee Agreement between an SSI Employee and
LSI Logic, LSI Logic shall assign and hereby does assign to SSI all of its right
title and interest in and to such SSI IP, including all causes of action and the
right to past and future damages for infringement of Intellectual Property
Rights included therein.
2.5 No Other Transfers; Prior Grants; Removal of Restrictions.
(a) Subject to compliance with Section 4.2, any IP not allocated or
assigned by one Party to the other in accordance with this ARTICLE II shall
remain the property of the Party holding legal title to such IP as of the
Separation Date.
(b) SSI acknowledges and agrees that the foregoing assignments are
subject to any and all licenses or other rights that may have been granted
by LSI Logic or its Subsidiaries with respect to the SSI Patents or other
SSI IP prior to the Separation Date. LSI Logic shall respond to reasonable
inquiries from SSI regarding any such prior grants.
(c) To the extent any IP to be transferred cannot be transferred
because it is Excluded IP due to a Restriction, the Parties will use
reasonable efforts to remove that Restriction; provided that neither Party
will be required to pay any material consideration (monetary or
non-monetary) to any third party to remove such Restriction.
ARTICLE III
TECHNOLOGY AND PATENT LICENSES
3.1 IP to be Licensed to SSI. Certain rights in or to Pre-Separation IP,
to the extent those rights are LSI Logic Storage IP, LSI Logic Retained Patents,
or LSI Logic Licensed Marks, are allocated by license to SSI as described in
Sections 3.2, 3.3, 3.4 or 3.5. If such licenses are under Intellectual Property
Rights required to be scheduled, then prior to the Separation Date the Parties
will use reasonable efforts to compile such schedules and will use reasonable
efforts to correct or complete such schedules following the Separation Date in
accordance with Section 4.2.
(a) The following Patents that are Pre-Separation IP shall be included
in LSI Logic Storage Patents and are licensed to SSI: All of those Patents:
(i) that are listed on Schedule 1.2(k), or (ii) that designate, or would be
entitled or required to designate, as inventors only individuals that were
engaged in the SSI Business (including any predecessor to the SSI Business)
at the time such invention was made and are added to Schedule 1.2(k)
pursuant to Section 4.2.
(b) The following Marks that are Pre-Separation IP shall be included
in LSI Logic Licensed Marks and are licensed to SSI: All of those Marks:
(i) that are listed on Schedule 1.2(h), to the extent they are used by SSI
as of the Separation Date to identify the source or origin of the SSI
Business or SSI Products and are not SSI Marks, and (ii) that that are used
by SSI as of the Separation Date to identify the source or origin of the
SSI Business or SSI Products and are not SSI Marks, and are added to
Schedule 1.2(h) pursuant to Section 4.2.
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3.2 License to SSI of LSI Logic Storage IP. Effective as of the
Separation Date and subject to Section 3.9, SSI hereby retains, and without
limiting the foregoing LSI Logic agrees to grant and hereby does grant (and
shall cause its Subsidiaries to grant) SSI a perpetual, irrevocable,
non-terminable, fully paid-up, royalty-free, non-exclusive, non-transferable
(except as provided in Section 10.10) right and license:
(a) under the Copyrights in the LSI Logic Storage IP, to copy, create
derivative works from, distribute, publicly perform and display, and
transmit any Technology within the LSI Logic Storage IP or any product or
Technology in which such Technology is embodied; and grant sublicenses
under the foregoing rights in connection with the distribution, licensing
and sale of the SSI Products and other of SSI's products and services;
(b) under the Maskworks in the LSI Logic Storage IP, to make and have
made semiconductor devices;
(c) under the LSI Logic Storage Patents, to make, have made (subject
to Section 3.3), use, sell, offer for sale and import any product, to
practice any process, method or procedure claimed in any such Patent, and
to otherwise exercise the license granted in Section 3.2(a) and Section
3.2(b); and
(d) under all other Intellectual Property Rights in the LSI Logic
Storage IP, to fully exercise, use and exploit SSI IP and to conduct the
SSI Business following the Separation Date; provided that the foregoing
license shall be subject to any restrictions with respect to Confidential
Information of LSI Logic set forth in Section 7.2 and 7.4.
3.3 Sublicensing of LSI Logic Storage IP; Have Made Rights.
(a) Patent Sublicensing. The license under the LSI Logic Storage
Patents set forth in Section 3.2(c) shall not be sublicensable by SSI
except to (i) an entity that is Subsidiary of SSI but only while such
entity is a Subsidiary of SSI, and (ii) a third party which SSI Controls at
the ten percent (10%) or greater level and in connection with the transfer
or licensing of substantial other IP of SSI to such entity. In either case
the sublicensed entity must agree to be bound by the relevant license
restrictions in this Agreement, and SSI shall be responsible for
performance by any sublicensee.
(b) Sublicensing of LSI Logic Storage IP other than LSI Logic Storage
Patents. SSI may grant sublicenses with respect to LSI Logic Storage IP
other than LSI Logic Storage Patents, and the licenses in Section 3.2
(other than Section 3.2(c)) include the right to grant such sublicenses, in
the ordinary course of its business, subject to any restrictions set forth
in Sections 7.2 and 7.4. with respect to disclosure of the Confidential
Information of LSI Logic.
(c) Have Made Rights. SSI's rights to have products made for it by
third parties under the licenses granted in Section 3.2(c) shall apply only
when (i) SSI creates and furnishes to the third party manufacturer the
designs, specifications and working drawings for the manufacture of such
products, (ii) the product manufactured by the third party is sold to SSI,
and (iii) the product manufactured by the third party is identified with
SSI's Marks. SSI understands and acknowledges that the licenses granted in
Section 3.2(c) and in Section 3.3(a) hereunder are intended to cover only
the products of SSI and its permitted sublicensees, and are not intended to
cover manufacturing activities that SSI or a sublicensee may undertake on
behalf of third parties (patent laundering activities); similarly, the
licenses granted in Section 3.2(c) and in Section 3.3(a) are not intended
to cover services provided by SSI or its sublicensees to the extent that
such services are provided to or on behalf of a third party using tangible
or intangible materials provided by or on behalf of the third party. SSI
shall not exercise the have made rights granted in Section 3.2(c) in a
manner that would circumvent, or could reasonably be expected to result in
the circumvention of the limitations on sublicensing set forth in this
Section 3.3(a), unless and to the extent expressly permitted in this
Section 3.3(c).
3.4 License to SSI of LSI Logic Retained Patents. Effective as of the
Separation Date and subject to Section 3.9, SSI hereby retains, and without
limiting the foregoing LSI Logic agrees to grant and hereby does grant (and
shall cause its Subsidiaries to grant) SSI a personal, fully paid up,
royalty-free, non-exclusive, non-transferable, non-assignable right and license,
without any right to grant or authorize sublicenses, under the
7
LSI Logic Retained Patents, to make, but not to have made, and to use, sell,
offer for sale and import SSI Products and future products of the SSI Business,
but not to perform any activities, or to make, have made, use, offer for sale,
sell, import or otherwise exploit any products or services within the Excluded
Field. For purposes of this Agreement, "Excluded Field" means storage components
and design, testing, packaging or fabrication of any integrated circuits or
elements thereof. The foregoing licenses are for the life of the LSI Logic
Retained Patents.
3.5 License to LSI Logic Licensed Marks. Effective as of the Separation
Date and continuing until twenty-four (24) months thereafter, and subject to
Section 3.9, SSI hereby retains, and without limiting the foregoing LSI Logic
agrees to grant and hereby does grant (and shall cause its Subsidiaries to
grant) SSI a royalty-free, non-exclusive right and license, with the right to
sublicense (as described below), under the LSI Logic Licensed Marks, to use
those LSI Logic Licensed Marks for the purposes of describing the SSI Business
and promoting and offering Marked Items, all in territories in which LSI Logic
owns the rights to those LSI Logic Licensed Marks, and all in accordance with
any guidelines or restrictions set forth on Schedule 3.5. The licenses in this
Section 3.5 are not transferable (except as provided in Section 10.9), and are
not sublicensable except (i) to a Subsidiary of SSI, during the period in which
that Subsidiary remains a Subsidiary of SSI, and (ii) in connection with the
sale or transfer of all or substantially all of one or more products or product
lines of SSI or its Subsidiaries that includes Marked Items; provided, however,
that the respective successor shall not have any rights or licenses under the
LSI Logic Licensed Marks separate or apart from the Marked Items within the
product line(s) so transferred. In all of the foregoing cases, the sublicensee
must agree to be bound by the relevant license restrictions in this Agreement,
and SSI is responsible for performance by any sublicensee.
(a) All goodwill associated with or that arises from use of the LSI
Logic Licensed Marks under this Section 3.5 inures to the sole benefit of
LSI Logic.
(b) SSI shall not use LSI Logic Licensed Marks in a manner that is
disparaging to, or that otherwise would harm the goodwill associated with,
those LSI Logic Licensed Marks. The quality of the Marked Items must be at
least as high as the quality of the good and services with which LSI Logic
has used those LSI Logic Licensed Marks. Unless otherwise agreed in advance
in writing, all representations of the LSI Logic Licensed Marks that SSI
intends to use must first be submitted to LSI Logic for approval (which
will not be unreasonably withheld or delayed) of design, color and other
details, or will be exact copies of those used by LSI Logic. Without
limiting the foregoing, upon LSI Logic's request, SSI shall, at no charge
to LSI Logic, provide LSI Logic with: (i) a description, and where
appropriate, access, at LSI Logic facilities, to, or samples of, the Marked
Items; and (ii) the form and manner in which SSI uses or intends to use the
LSI Logic Licensed Marks.
(c) If LSI Logic reasonably determines that SSI's use of the LSI Logic
Licensed Marks would be harmful to the goodwill associated with those LSI
Logic Licensed Marks, then LSI Logic shall provide SSI with a written
description of the basis for its determination. SSI shall promptly modify
its use of the LSI Logic Licensed Marks or the quality of the Marked Item
with which those LSI Logic Licensed Marks are used so as to conform to LSI
Logic's directions.
(d) SSI shall not use or attempt to register in its own name any ▇▇▇▇
confusingly similar to the LSI Logic Licensed Marks.
(e) If any act or omissions of SSI detracts from or is likely to
detract from the goodwill of LSI Logic in the LSI Logic Licensed Marks, LSI
Logic may, upon sixty (60) days' notice to SSI, terminate all licenses to
those LSI Logic Licensed Marks if the act or omission of SSI is not
remedied to LSI Logic's reasonable satisfaction during that sixty (60) day
period.
(f) To the extent necessary to properly protect LSI Logic's rights,
LSI Logic and SSI shall enter into registered user agreements with respect
to the LSI Logic Licensed Marks under applicable trademark law requirements
in countries outside the United States. SSI will be responsible for proper
filing of the registered user agreement with appropriate government
authorities and shall pay all costs or fees associated with that filing.
8
3.6 License from SSI to LSI Logic. Effective as of the Separation Date,
SSI agrees to grant, and hereby does grant (and shall cause its Subsidiaries to
grant) LSI Logic a perpetual, irrevocable, non-terminable, fully paid-up,
royalty-free, non-exclusive, non-transferable (except as provided in Section
10.10) right and license:
(a) under the Copyrights in SSI IP, to copy, create derivative works
from, distribute, publicly perform and display, and transmit any Technology
within SSI IP or products or technology in which such Technology is
embodied; and to sublicense the foregoing rights in connection with the
distribution, licensing and sale of LSI Logic's products and services;
(b) under the Maskworks in SSI IP, to make and have made semiconductor
devices;
(c) under the Patents in SSI IP, to make, have made, use, sell, offer
for sale and import any product, practice any process, method or procedure,
claimed in any such Patent and to otherwise exercise the license granted in
Section 3.6(a); and
(d) under all other Intellectual Property Rights of SSI in SSI IP, to
fully exercise, use and exploit the Technology that is SSI IP and to
conduct the LSI Logic Storage Business and LSI Logic's other retained
businesses following the Separation Date; provided that the foregoing
license shall be subject to any restrictions with respect to Confidential
Information of SSI set forth in Sections 7.2 and 7.4 and the non-compete in
ARTICLE V.
3.7 Sublicensing of SSI IP; Have Made Rights.
(a) Patent Sublicensing. The license under the Patents in *** set
forth in Section 3.6(c) shall not be sublicensable by LSI Logic except to
(i) an entity that is Subsidiary of LSI Logic but only while such entity is
a Subsidiary of LSI Logic, or (ii) a third party which LSI Logic Controls
at the ten percent (10%) or greater level and in connection with the
transfer or licensing of substantial other IP of LSI Logic to such entity.
In either case the sublicensed entity must agree to be bound by the
relevant license restrictions in this Agreement, and LSI Logic shall be
responsible for performance by any sublicensee.
(b) Sublicensing of Other SSI IP. LSI Logic may grant sublicenses
with respect to SSI IP other than SSI Patents, and the licenses in Section
3.6 (other than Section 3.6(c)) include the right to grant such
sublicenses, in the ordinary course of its business, subject to any
restrictions set forth in Sections 7.2 and 7.4 with respect to disclosure
of Confidential Information of SSI.
(c) Have Made Rights. LSI Logic's rights to have products made for it
by third parties under the licenses granted in Section 3.6(c) shall apply
only when (i) LSI Logic creates and furnishes to the third party
manufacturer the designs, specifications and working drawings for the
manufacture of such products, (ii) the product manufactured by the third
party is sold to LSI Logic, and (iii) the product manufactured by the third
party is identified with LSI Logic's Marks. SSI understands and
acknowledges that the licenses granted in Section 3.6(c) and in Section
3.7(a) hereunder are intended to cover only the products of LSI Logic and
its permitted sublicensees, and are not intended to cover manufacturing
activities that LSI Logic or a sublicensee may undertake on behalf of third
parties (patent laundering activities); similarly, the licenses granted in
Section 3.6(c) and in Section 3.7(a) are not intended to cover services
provided by LSI Logic or its sublicensees to the extent that such services
are provided to or on behalf of a third party using tangible or intangible
materials provided by or on behalf of the third party. LSI Logic shall not
exercise the have made rights granted in Section 3.6(c) in a manner that
would circumvent, or could reasonably be expected to result in the
circumvention of the limitations on sublicensing set forth in this Section
3.6(a), unless and to the extent expressly permitted in this Section
3.7(c).
3.8 No Improvements. Neither Party has an obligation to disclose or
license to the other Party any improvement or updates made to any IP, including
the Pre-Separation IP, SSI IP, LSI Logic Storage IP or LSI Logic Retained
Patents, after the Separation Date.
3.9 Reservation of Rights; Restrictions. Each Party reserves all rights
not expressly granted. Without limiting the foregoing, all licenses granted by
either Party to the other under this Agreement are subject to any
9
and all licenses and other agreements between the granting Party and any third
party or parties entered into prior to the date hereof. No rights are granted or
licensed to SSI with respect to any IP for which such license would be subject
to a Restriction.
3.10 License to Santricity Software. SSI will grant to LSI Logic, under
reasonable terms and conditions to be negotiated between the Parties in good
faith, a royalty free, paid up, non-exclusive license to the Santricity
Software. For purposes hereof, "Santricity Software" means that software
referred to internally at LSI Logic as "Santricity," including but not limited
to any user interfaces, functionality and algorithms included or incorporated
therein, as such may be more fully defined in connection with negotiating the
terms and conditions for the above license.
ARTICLE IV
IP DELIVERY, TRANSFER OF LEGAL TITLE, AND SCHEDULE MODIFICATIONS
4.1 Delivery.
(a) Unless otherwise expressly provided herein (including under
Section 4.1(c)), each Party shall retain in its possession all items of
Technology currently in its possession.
(b) To the extent not already in SSI's possession and upon SSI's
reasonable notice given within twelve (12) months following the Separation
Date, LSI Logic shall deliver or otherwise make available to SSI at no cost
and, where possible, through electronic means such as file transfer or FTP,
any Technology (including Software) included within the definitions of SSI
IP that is in LSI Logic's possession and not in SSI's possession. Unless
otherwise specified, all Software shall be provided in both source and
object code form.
(c) To the extent not already in LSI Logic's possession and upon LSI
Logic's reasonable notice given within twelve (12) months following the
Separation Date, SSI shall deliver or otherwise make available to LSI
Logic, at no cost and, where possible, through electronic means such as
file transfer or FTP, any Technology (including Software) included within
the definitions of LSI Logic IP that is in SSI's possession and not in LSI
Logic's possession. Unless otherwise specified, all Software shall be
provided in both source and object code form.
(d) Upon SSI's reasonable request, LSI Logic shall deliver copies of
all SSI License Agreements, any SSI Shared License Agreements, and any
other License Agreements under which SSI will be obtaining a benefit or
will be required to perform under ARTICLE VI.
(e) Notwithstanding Section 2.2, to the extent that more than one
instantiation of any Technology assigned pursuant to Section 2.2 exists or
to the extent such Technology is capable of being copied without material
cost, both Parties shall retain such Technology subject to the terms of
this Agreement.
4.2 SSI IP Schedules.
(a) IP other than Patents, Marks and Internet Properties. It is
understood that the IP Schedules have been created in good faith, using
reasonable efforts to be complete and accurate. Notwithstanding the
foregoing, if it is reasonably determined, within two (2) years after the
date of this Agreement, that a material item of IP that should have been
included on the relevant Schedule has been omitted, or that an item of IP
included on such a Schedule should not have been included, or to the extent
the Parties reasonably agree in good faith that an item has been improperly
omitted or improperly included, then such schedule or schedules shall be
amended accordingly to exclude or include such item, as the case may be,
without further consideration, and as amended shall become part of this
Agreement.
(b) Patents.
(i) If SSI files a patent application based on an invention
disclosure listed on Schedule 1.2(v)(vi) (SSI Technology) during the
first twelve (12) months following the Separation Date, then SSI shall
provide LSI Logic notice thereof;
10
(ii) Whether or not notice is provided under Section 4.2(b)(i), any
Patents issuing from an invention disclosure listed on Schedule
1.2(v)(vi) (SSI Technology) shall be deemed included on Schedule
1.2(v)(i) regardless of whether such Schedule is amended to include such
Patents and the associated patent applications.
(iii) Notwithstanding any thing to the contrary set forth in
Section 4.2(a), Patents may not be removed from a Schedule unless there
is mutual agreement to do so; Patents may be added, however, to the
extent they meet the requirement set forth in Section 2.1(a)(i)(2).
(c) Marks and Internet Properties. Notwithstanding any thing to the
contrary set forth in Section 4.2(a), Marks and Internet Properties may be
removed from Schedule 1.2(v)(iii) or Schedule 1.2(v)(iv), as applicable, if
such items initially were included but are determined to have failed to
meet the requirements of Section 2.1(b)(ii) or Section 2.1(a)(iii)(2), as
applicable, and may be added to Schedule 1.2(v)(iii) or Schedule
1.2(v)(iv), as applicable, if such items initially were not included but
are determined to meet the requirements of Section 2.1(b)(ii) or Section
2.1(a)(iii)(2), as applicable.
4.3 Cooperation and Legal Transfers.
(a) Cooperation. The Parties shall cooperate to effect a smooth
transfer of legal title from SSI to LSI Logic, where necessary, and along
with legal title, the responsibility for prosecution, maintenance and
enforcement of the SSI Patents from LSI Logic to SSI.
(b) Continuing Prosecution and Maintenance Pending Transfer. Until
transfer of legal title from SSI to LSI Logic has been effected, LSI Logic
agrees to continue the prosecution and maintenance of, and ongoing
litigation (if any) with respect to, the SSI Patents (including payment of
maintenance fees), and to maintain its files and records related to the SSI
Patents using the same standard of care and diligence that it uses with
respect to LSI Logic's other Patents. SSI will reimburse LSI Logic for all
actual and reasonable expenses (excluding the value of the time of LSI
Logic employees) to continue to prosecute and maintain the SSI Patents
after the Separation Date until the transfer of responsibility for the SSI
Patents has been completed. The Parties shall agree on a case by cases
basis on compensation, if any, of LSI Logic for the value of time of LSI
Logic's employees as reasonably required in connection with any such
litigation. LSI Logic shall provide SSI with the originals or copies of its
files related to the SSI Patents upon such transfer or at such earlier time
as the Parties may agree.
(c) Support by LSI Logic. LSI Logic shall provide continuing
reasonable support to SSI with respect to the SSI Patents, including by way
of example, by executing all documents prepared by SSI necessary for the
prosecution, maintenance, and litigation of the SSI Patents, forwarding
copies of correspondence sent and received concerning the SSI Patents
within a reasonable period of time after receipt by LSI Logic, and making
all relevant documents in the possession or control of LSI Logic and
corresponding to the SSI Patents, or any licenses thereunder, available to
SSI or its counsel. Other details regarding cooperation will be as set
forth in the Transition Services Agreement.
11
(d) Assignment Documents for Legal Title. To the extent required to
perfect the foregoing assignments of SSI IP to SSI under Section 2.2, LSI
Logic shall deliver the following to SSI on or promptly following the
Separation Date:
(i) United States and foreign Patent assignments in the forms set
forth on Exhibit 4.2(c)(d)(i), executed by LSI Logic and evidencing the
foregoing transfer of any Patents included in SSI IP;
(ii) Trademark assignments in the form set forth on Exhibit
4.2(c)(d)(ii), executed by LSI Logic and evidencing the foregoing
assignment and transfer of any Marks included in SSI IP;
(iii) Identification of the registrar for each of the Internet
Properties included in SSI IP, including information for accessing the
account with such registrar, and, where available, documentation of the
transfer of such Internet Property; and
(iv) Copyright assignment in the form set forth on Exhibit
4.2(c)(d)(iv), executed by LSI Logic and evidencing the foregoing
transfer of any Copyrights registered in the United States and included
in SSI IP.
4.4 Dispute Procedures.
(a) If a Party (the "Requesting Party") reasonably believes that an IP
Schedule mistakenly either omits or includes an item of IP, the Requesting
Party shall provide the other Party (the "Requested Party") notice thereof
and the reasons therefor in accordance with Section 10.7. The Requested
Party shall respond to such notice within thirty (30) days, either
accepting such request or stating the reasons for rejecting such request.
If the Parties do not resolve the Dispute within ninety (90) days of the
initial notice, the Dispute shall be resolved by the dispute resolution
mechanism set forth in Section 10.6.
(b) Upon the resolution of the Dispute by agreement or otherwise, the
appropriate IP Schedule shall be modified and signed by both Parties and
shall become a part of this Agreement.
(c) Following the notice by the Requesting Party and until such time
as such matter is resolved in accordance with this Section 4.4 neither
Party may initiate any action against the other or its customers or
suppliers, including one for infringement or validity with respect to any
item of IP that is the subject of such notice and if an action was
initiated prior to the Requesting Party's notice such action shall be
suspended upon such notice and at least during the pendancy of such
Dispute.
ARTICLE V
NON-COMPETE
5.1 Restrictions.
(a) Subject to SSI compliance with the terms and conditions of this
Agreement, beginning as of the date hereof and continuing until eighteen
(18) months after the Distribution Date, LSI Logic agrees that it will not
develop, manufacture or sell a product that is substantially similar to or
a direct substitute for an SSI Product that exists as of the Separation
Date; provided however, that nothing shall restrict LSI Logic from selling
semiconductor components or any LSI Logic product sold by LSI Logic as of
the Separation Date, replacements or new versions of such products,
products that result from development activities of LSI in which, as of the
Separation Date, substantial resources have been invested, or products on
an LSI roadmap, all other than products sold exclusively by or through SSI
as a Subsidiary of LSI Logic.
(b) Notwithstanding the foregoing or any other provisions of this
Agreement, LSI Logic shall not be restricted in any way from providing
support, maintenance (including providing updates, upgrades, bug fixes and
maintaining escrow accounts), consulting and other services, or otherwise
fulfilling its obligations, under any and all licenses, maintenance
contracts and other agreements between LSI Logic and any third party or
parties entered into prior to the date hereof, unless such agreement has
been
12
determined pursuant to this Agreement to be an SSI License Agreement, or
pursuant to an Ancillary Agreement to be an SSI Contract.
5.2 Separate Covenants. The covenants contained in Section 5.1 will be
construed as a series of separate covenants, one for each county, city, state
and country of the geographic scope. If, in any judicial proceeding, a court
refuses to enforce any of those separate covenants (or any part thereof), then
that unenforceable covenant (or part thereof) will be eliminated from this
Agreement to the extent necessary to permit the remaining separate covenants (or
parts thereof) to be enforced. If the provisions of Section 5.1 are deemed to
exceed the time, geographic or scope limitations permitted by applicable law,
then those provisions will be reformed to the maximum time, geographic or scope
limitations, as the case may be, permitted by applicable laws.
5.3 Necessary to Preserve Value. SSI and LSI Logic acknowledge (i) that
the goodwill associated with the existing SSI Business and the assets of the SSI
Business prior to the Separation are an integral component of the value of the
SSI Business, and that such value is reflected in the consideration and terms of
the Separation Agreement and Ancillary Agreements; and (ii) that LSI Logic's
agreement as set forth in Sections 5.1 and 5.2 is necessary to preserve the
value of the assets and SSI Business for SSI following the Separation. LSI Logic
also acknowledges that the limitations of time, geography and scope of activity
agreed to in Section 5.1 are reasonable because, among other things (A) LSI
Logic and SSI are engaged in highly competitive industries, and (B) LSI Logic
has had unique access to the trade secrets and know-how of the SSI Business,
including plans and strategy of the SSI Business.
5.4 Injunctive Relief. LSI Logic acknowledges that in the event of a
breach or threatened breach of Sections 5.1 by LSI Logic, monetary damages would
be inadequate to protect SSI fully from, and compensate SSI for, the harm caused
by such breach or threatened breach. Accordingly, LSI Logic agrees that if it
breaches or threatens breach of any provision in Sections 5.1 or 5.2 SSI is
entitled to seek, in addition to any other right or remedy otherwise available
to it at law or in equity, the right to injunctive relief restraining such
breach or threatened breach and to specific performance of any provision in
Sections 5.1 or 5.2, and SSI shall not be required to post a bond in connection
with, or as a condition to, obtaining such relief before a court of competent
jurisdiction.
ARTICLE VI
LICENSE AGREEMENTS WITH THIRD PARTIES
6.1 License Agreements. Those License Agreements identified as SSI
License Agreements will be allocated to SSI under and subject to the terms of
Section 6.2. The rights and obligations under License Agreements identified as
Shared License Agreements will be shared between the Parties, under and subject
to the terms of Section 6.3 and the associated exhibits.
6.2 Assignments, Delegation and Novation of SSI License Agreements. To
the extent SSI (or one of its predecessor parties) and not LSI Logic is a party
to an SSI License Agreement, SSI shall retain that SSI License Agreement,
subject to Section 6.3.
(a) To the extent it has the right to do so, LSI Logic hereby assigns
all of its rights, delegates its duties and otherwise assigns its rights
and obligations under the SSI License Agreements, and SSI assumes such
rights and obligations.
(b) With respect to SSI License Agreements for which consent to
assignment is required or for which assignment and delegation is subject to
a Restriction, the Parties shall use reasonable commercial efforts to
obtain such consent or remove such Restriction prior to the Separation Date
or within a reasonable time thereafter. Neither LSI Logic nor any of its
Subsidiaries is required to pay any material consideration to any third
party to obtain such consent or remove such Restriction. However, if
obtaining consent or removing a Restriction to enable transfer or
assignment in connection with this Section 6.2 would require payment or
grant of material additional consideration, then LSI Logic shall so inform
SSI. If the additional consideration required is payment of money only, or
if it affects only SSI and not LSI
13
Logic, then at SSI's request and upon SSI's agreement to make the payment
or grant the additional consideration to the third party, LSI Logic will
arrange for a transfer or assignment of the SSI License Agreement to SSI.
LSI Logic is not obligated or required to attempt to assign or transfer an
SSI License Agreement if to do so would adversely affect LSI Logic's future
rights or require LSI Logic to take any action.
(c) If obtaining necessary consents or waivers to enable transfer or
assignment of an SSI License Agreement is not feasible, then the Parties
shall use commercially reasonable efforts to extend the benefits and
burdens of that SSI License Agreement to SSI through other means, which may
include subcontracting or outsourcing. Such other means will be set forth
in an Exhibit to Section 6.3 hereof, the Transition Services Agreement or
another appropriate Transaction Document.
6.3 Shared License Agreements.
(a) Shared License Agreements to which LSI Logic and not SSI is a
Party.
(i) With respect to Shared License Agreements to which LSI Logic
and not SSI is a party, LSI Logic shall use reasonable efforts to
facilitate extension to SSI of licenses and rights (along with
accompanying responsibilities and liabilities) under such Shared License
Agreements, including through a sub-license described in Section 6.3(a).
If such extension would require payment or grant of additional material
consideration, then LSI Logic shall so inform SSI. If the additional
consideration required is a payment of money only, or if it affects only
SSI and not LSI Logic, then at SSI's request and upon its agreement to
make the payment or grant the additional consideration to the third
party, LSI Logic will facilitate such extension. LSI Logic is not
obligated or required to extend any rights if to do so would adversely
affect LSI Logic's future rights or require LSI Logic to take any
action.
(ii) To the extent LSI Logic (or a Subsidiary of LSI Logic) has the
right to do so without Restriction, LSI Logic hereby agrees to grant,
and hereby does grant (or shall cause its Subsidiaries to grant) SSI a
sub-license under a Shared License Agreement described in subsection (i)
above, of the same scope and subject to the same terms and conditions as
LSI Logic has under such Shared License Agreement.
(b) Shared License Agreements to which SSI and not LSI Logic is a
Party.
(i) With respect to Shared License Agreements to which SSI and not
LSI Logic is a party, SSI shall use reasonable efforts to facilitate
extension to LSI Logic of licenses and rights (along with accompanying
responsibilities and liabilities) under such Shared License Agreements,
including through a sub-license described in Section 6.3(a). If such
extension would require payment or grant of additional material
consideration, then SSI shall so inform LSI Logic. If the additional
consideration required is a payment of money only, or if it affects only
LSI Logic and not SSI, then at LSI Logic's request and upon its
agreement to make the payment or grant the additional consideration to
the third party, SSI will facilitate such extension. SSI is not
obligated or required to extend any rights if to do so would adversely
affect SSI's future rights or require SSI to take any action.
(ii) To the extent SSI (or a Subsidiary of SSI) has the right to do
so without Restriction, SSI hereby agrees to grant, and hereby does
grant (or shall cause its Subsidiaries to grant) LSI Logic a sub-license
under a Shared License Agreement described in subsection (i) above, of
the same scope and subject to the same terms and conditions as SSI has
under such Shared License Agreement.
(c) Removing or Adding Shared License Agreements. The Parties may
determine that License Agreements are Shared License Agreements (whether
they were SSI License Agreements, LSI License Agreements or undesignated
License Agreements prior to such determination); upon such determination
those License Agreements will be considered Shared License Agreements
hereunder and designated as such on Schedule 1.2(m). SSI may, at any time
prior to the Distribution Date, request in writing that a License Agreement
held by LSI Logic and designated as a Shared License Agreement no longer be
14
designated as such. Promptly after receipt of such notice by LSI Logic,
Schedule 1.2(m) will be amended to reflect that new designation.
ARTICLE VII
CONFIDENTIAL INFORMATION AND LSI LOGIC EMPLOYEE AGREEMENTS
7.1 Confidential Information Exclusions. Notwithstanding the definition
of "Confidential Information," Confidential Information excludes information
that the Receiving Party can demonstrate: (i) was independently developed by the
Receiving Party without any use of the Disclosing Party's Confidential
Information or by the Receiving Party's employees or other agents (or
independent contractors hired by the Receiving Party) who have not been exposed
to the Disclosing Party's Confidential Information; (ii) becomes known to the
Receiving Party, without restriction, from a source (other than the Disclosing
Party) that had a right to disclose it without breach of this Agreement; (iii)
was in the public domain at the time it was disclosed or enters the public
domain through no act or omission of the Receiving Party; or (iv) was rightfully
known to the Receiving Party, without restriction, at the time of disclosure.
7.2 Confidentiality Obligations. The Receiving Party shall treat as
confidential all of the Disclosing Party's Confidential Information and shall
not use that Confidential Information except as expressly permitted under this
Agreement. Without limiting the foregoing, the Receiving Party shall use at
least the same degree of care that it uses to prevent the disclosure of its own
confidential information of like importance, but in no event with less than
reasonable care, to prevent the disclosure of the Disclosing Party's
Confidential Information.
7.3 Residuals. The restrictions set forth in Section 7.2 do not apply to
a Receiving Party's use of Residual Information (as defined in this Section) and
Residual Information is not considered Confidential Information. "Residual
Information" means information that is retained in the unaided memories of the
Receiving Party's employees who have had access to Confidential Information of
the Disclosing Party or which otherwise constitutes the general knowledge or
skills of those employees.
7.4 Disclosure to LSI Logic or SSI. Except as explicitly provided in this
Agreement, SSI shall not disclose to LSI Logic, and LSI Logic shall not disclose
to SSI, any information that the disclosing Party considers Confidential
Information prior to obtaining the receiving Party's consent to receive such
information as Confidential Information. Any information disclosed by a
disclosing Party without that consent is not considered Confidential Information
of the receiving Party, and the receiving Party is free to use and disclose that
information without restriction.
7.5 Remedies. Unauthorized use by a Party of the other Party's
Confidential Information will diminish the value of that information. Therefore,
if a Party breaches any of its obligations with respect to confidentiality or
use of Confidential Information, the other Party may seek both equitable relief
(including injunctive relief) and money damages to protect its interest in that
Confidential Information.
7.6 Required Disclosure. If the Receiving Party must disclose the
Disclosing Party's Confidential Information under the order or requirement of a
court, administrative agency, or other governmental body, the Receiving Party
shall provide prompt notice thereof to the Disclosing Party and shall use its
reasonable efforts to obtain a protective order or otherwise prevent public
disclosure of such information.
7.7 Public Announcements. Neither SSI nor LSI Logic shall make any
initial public announcement relating to this Agreement until both SSI and LSI
Logic approve the timing, form and content of a public announcement, which
approval may not unreasonably be withheld or delayed.
7.8 LSI Logic Employee Agreements.
(a) Survival of LSI Logic Employee Agreement Obligations and LSI
Logic's Common Law Rights. The LSI Logic Employee Agreements of all former
LSI Logic employees transferred to SSI pursuant to the Separation Agreement
or Ancillary Agreements, and of other LSI Logic employees that become SSI
Employees shall remain in full force and effect according to their terms;
provided, however, that none of
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the following acts committed by former LSI Logic employees or SSI Employees
within the scope of their SSI employment shall constitute a breach of such
LSI Logic Employee Agreements: (i) the use or disclosure of Proprietary
Information (as that term is defined in the former LSI Logic employee's or
SSI Employee's LSI Logic Employee Agreement) for or on behalf of SSI, if
such disclosure is consistent with the rights granted to SSI and
restrictions imposed on SSI under this Agreement, any Ancillary Agreement
or any other agreement between the parties; (ii) the disclosure and
assignment to SSI of rights in proprietary developments authored or
conceived by the former LSI Logic employee or SSI Employee after the
Separation Date and resulting from the use of, or based upon IP (whether
patented or not) that is retained by LSI Logic, provided, however, that in
no event shall such disclosure and assignment be regarded as assigning the
underlying retained IP to SSI; (iii) the rendering of any services,
directly or indirectly, to SSI to the extent such services are consistent
with the assignment or license of rights granted to SSI and the
restrictions imposed on SSI under this Agreement, any Ancillary Agreement
or any other agreement between the parties; and (iv) solicitation of the
employees of one Party by the other Party prior to the Separation Date or
following the Separation Date and prior to the Distribution Date (so long
as such solicitation does not violate the terms of the Separation
Agreement). Further, LSI Logic retains any rights it has under statute or
common law with respect to actions by its former employees to the extent
such actions are inconsistent with the rights granted to SSI and
restrictions imposed on SSI under this Agreement, any Ancillary Agreement
or any other agreement between the parties.
(b) Assignment, Cooperation for Compliance and Enforcement.
(i) LSI Logic retains all rights under the LSI Logic Employee
Agreements of all former LSI Logic employees necessary to permit LSI
Logic to protect the rights and interests of LSI Logic, but hereby
transfers and assigns to SSI its rights under the LSI Logic Employee
Agreements of all former LSI Logic employees and all SSI Employees that
remain subject to such LSI Logic Employee Agreements to the extent
required to permit SSI to enjoin, restrain, recover damages from or
obtain specific performance of the LSI Logic Employee Agreements or
obtain other remedies against any employee who breaches his/her LSI
Logic Employee Agreement.
(ii) SSI shall advise LSI Logic of any violation of the LSI Logic
Employee Agreement by former LSI Logic employees or SSI Employees, and
any violation of the SSI confidential information and assignment of
inventions agreement (or any similar such agreement) that SSI reasonably
believes would affect LSI Logic's rights. LSI Logic shall advise SSI of
any violation of the LSI Logic Employee Agreement by current or former
LSI Logic employees or by SSI Employees subject to the LSI Logic
Employee Agreement that LSI Logic reasonably believes would affect SSI's
rights; provided, however, that the foregoing obligations shall only
apply to violations that become known to an attorney within the legal
department of the Party obligated to provide notice thereof.
(iii) Following the Separation Date and extending only until the
Distribution Date, if either LSI Logic or SSI determines that it may be
necessary to take action to enforce the LSI Logic Employee Agreements of
former LSI Logic employees or of SSI Employees still technically
employed by LSI Logic, then at either Party's request the Parties shall
meet to confer and cooperate regarding such potential enforcement.
(iv) LSI Logic and SSI acknowledge and agree that matters relating
to the making, performance, enforcement, assignment and termination of
employee agreements are typically governed by the laws and regulations
of the national, federal, state or local governmental unit where an
employee resides, or where an employee's services are rendered, and that
such laws and regulations may supersede or limit the applicability or
enforceability of this Section 7.8. In such circumstances, LSI Logic and
SSI agree to take action with respect to the employee agreements that
best accomplishes the parties' objectives as set forth in this Section
7.8 and that is consistent with applicable law.
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ARTICLE VIII
REPRESENTATIONS AND WARRANTIES
8.1 Representations and Warranties. Each Party represents and warrants to
the other that: (i) it has the full right, power and authority to enter into
this Agreement and fully perform its obligations under this Agreement; and (ii)
has the right to grant the licenses granted under this Agreement, (ii) its
performance of all its obligations under this Agreement is not prohibited by or
in conflict with any agreement between that Party and any third party.
8.2 Completeness of Schedules. LSI Logic represents and warrants to SSI
that, to the extent SSI is not the owner or exclusive licensee thereof, (i) LSI
Logic has title to the Technology and Intellectual Property Rights included in
SSI IP, and (ii) that the schedules setting forth the list of SSI Patents and of
Patents within the LSI Logic Storage IP are complete and accurate. SSI's sole
and exclusive remedy and LSI Logic's entire liability for any breach of the
representation or warranty in the foregoing subsection (ii), is that such
schedules shall be supplemented to include those Patents required to make the
representation true and correct as of the Separation Date.
8.3 Warranty Disclaimers. Nothing set forth in this Agreement is or will
be construed to be:
(a) a warranty or representation by LSI Logic as to the condition,
state, performance or functionality or specifications of the SSI Products
or any component thereof;
(b) a warranty, representation or admission by LSI Logic as to the
validity, enforceability or scope of any Intellectual Property Rights
licensed or transferred under this Agreement;
(c) an obligation on either Party to institute any suit or other
action for infringement or misappropriation of any SSI IP, LSI Logic
Storage IP, LSI Logic Retained Patents, or likelihood of confusion
regarding the LSI Logic Licensed Marks;
(d) an obligation on either Party to defend any suit or other action
brought by a third party challenging or concerning the validity of any SSI
IP, LSI Logic Storage IP, LSI Logic Retained Patents, or LSI Logic Licensed
Marks;
(e) a warranty or representation by either Party that any manufacture,
use, licensing, sale, importation or other exploitation of SSI IP or the
exercise of any license granted to SSI under this Agreement will be free
from infringement of any Intellectual Property Right;
(f) subject to LSI Logic's obligations under Section 4.2(c) and
4.3(b), an obligation on either Party to file any Patent application or to
secure any Patent or to maintain any Patent, through the payment of patent
maintenance fees or otherwise; or
(g) any warranty or representation by LSI Logic as to the outcome or
benefits to SSI of entering into any business or other activities based
upon or related to SSI IP or as to the performance or merchantability of
the Technology within SSI IP.
8.4 LSI Logic Disclaimer. WITHOUT LIMITING SECTION 8.2, EXCEPT AS
EXPRESSLY SET FORTH IN THIS AGREEMENT: (a) SSI IP, THE LSI LOGIC LICENSED MARKS,
THE LSI LOGIC STORAGE IP, THE LSI LOGIC RETAINED PATENTS, AND ALL OTHER THINGS
OR RIGHTS PROVIDED, SOLD, TRANSFERRED OR LICENSED BY LSI Logic TO SSI UNDER THIS
AGREEMENT ARE PROVIDED BY LSI LOGIC "AS IS" AND WITHOUT WARRANTY OF ANY KIND;
AND (b) LSI LOGIC MAKES NO, AND HEREBY DISCLAIMS ALL, OTHER WARRANTIES, WHETHER
EXPRESS, STATUTORY, OR IMPLIED, INCLUDING WARRANTIES OF NON-INFRINGEMENT,
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
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ARTICLE IX
TERM AND TERMINATION
9.1 Term. The term of this Agreement begins on the date executed, and
continues indefinitely; provided that the licenses in Section 3.4 are only for
the lives of the Patents involved, and unless otherwise agreed by the Parties in
writing, terminate on an assignment or transfer of this Agreement under Section
10.10, whether or not the remainder of the Agreement is successfully and
properly assigned or transferred.
ARTICLE X
MISCELLANEOUS
10.1 Further Instruments and Assistance.
(a) At the request of LSI Logic and without further consideration, SSI
will execute and deliver, and will cause its applicable Subsidiaries to
execute and deliver, to LSI Logic and its Subsidiaries all instruments,
assumptions, novations, undertakings, substitutions or other documents and
take such other action as LSI Logic may reasonably deem necessary or
desirable in order to have SSI fully and unconditionally assume and
discharge the liabilities contemplated to be assumed by SSI under this
Agreement or any document in connection herewith and to relieve LSI Logic
and its Subsidiaries of any liability or obligation with respect thereto
and evidence the same to third parties.
(b) Neither LSI Logic nor SSI shall be obligated, in connection with
the foregoing, to expend money other than reasonable out-of-pocket
expenses, attorneys' fees and recording or similar fees. Furthermore, each
Party, at the request of the other Party hereto, shall execute and deliver
such other instruments and do and perform such other acts and things as may
be necessary or desirable for effecting completely the consummation of the
transactions contemplated hereby.
10.2 Bankruptcy. All rights and licenses granted under this Agreement
are, and will be deemed to be, for purposes of Section 365(n) of the United
States Bankruptcy Code, licenses to rights of "intellectual property" under that
section. Notwithstanding any provision to the contrary, if the licensor of
rights of intellectual property is subject to a proceeding under the United
States Bankruptcy Code and either that Party (as debtor in possession), or that
Party's trustee in bankruptcy, rightfully elects to reject this Agreement, then
the that Party may, under Sections 365(n)(1) and 365(n)(2) of the United States
Bankruptcy Code, retain any and all of the rights licensed to it under this
Agreement, to the maximum extent permitted by law, subject to any royalty
payments due to that licensor and specified in this Agreement.
10.3 Limitation of Liability. IN NO EVENT SHALL ANY MEMBER OF THE LSI
LOGIC GROUP OR SSI GROUP BE LIABLE TO ANY OTHER MEMBER OF THE LSI LOGIC GROUP OR
SSI GROUP 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 EITHER PARTY'S
INDEMNIFICATION OBLIGATIONS AS SET FORTH IN THE INDEMNIFICATION AND INSURANCE
MATTERS AGREEMENT.
10.4 Entire Agreement. This Agreement, the Separation Agreement, 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.
10.5 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
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▇▇▇▇▇ 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 Section
10.6 below.
10.6 Dispute Resolution. Any Disputes under this Agreement will be
addressed using the same procedure set forth in the Separation Agreement.
10.7 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 at the following addresses:
if to LSI Logic: LSI Logic Corporation
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: General Counsel
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
if to SSI: LSI Logic Storage Systems, 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, termination, 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.
10.8 Counterparts. This Agreement, including the exhibits and schedules
hereto, 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.
10.9 Binding Effect. This Agreement, and the rights and licenses granted
under this Agreement, shall inure to the benefit of and be binding upon the
parties hereto and their respective legal representatives and successors, and
nothing in this Agreement, express or implied, is intended to confer upon any
other Person any rights or remedies of any nature whatsoever under or by reason
of this Agreement. This Agreement may be enforced separately by each member of
the LSI Logic Group and each member of the SSI Group.
10.10 Assignment and Transfer. Neither Party may assign this Agreement or
any rights or obligations hereunder, without the prior written consent of the
other Party, and any such assignment shall be void; provided, however, either
Party may assign this Agreement to a successor entity in conjunction with such
Party's reincorporation, merger, change of control or sale of all or
substantially all of the assets to which this Agreement relates, except that the
license granted to SSI under Section 3.4 is not assignable or transferable to a
successor entity or any other entity by SSI, regardless of the form of the
transaction or whether such assignable or transfer is pursuant to a change of
control or by operation of law or otherwise, without specific consent from LSI
Logic as to the transfer or assignment of such license.
10.11 Severability. If any term or other provision of this Agreement or
the exhibits or schedules attached hereto is determined by a nonappealable
decision 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
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intent of the parties as closely as possible in an acceptable manner to the end
that transactions contemplated hereby are fulfilled to the fullest extent
possible.
10.12 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 or waiver exercise of any such right preclude
other or further exercise thereof or of any other right. All rights and remedies
existing under this Agreement or the exhibits and schedules attached hereto are
cumulative to, and not exclusive of, any rights or remedies otherwise available.
10.13 Amendment. No change or amendment shall be made to this Agreement
or the exhibits or schedules attached hereto except by an instrument in writing
signed on behalf of each of the parties to such agreement.
10.14 Interpretation. 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 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, 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.
10.15 Conflicting Agreements. In the event of conflict between this
Agreement and the Separation Agreement or any Ancillary Agreement to that
Separation Agreement, the provisions of this Agreement prevail with respect to
the subject matter of this Agreement.
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WHEREFORE, the parties have signed this
Intellectual Property Agreement
effective as of the date first set forth above.
LSI LOGIC CORPORATION LSI LOGIC STORAGE SYSTEMS, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
----------------------------------------- -----------------------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Title: Chairman/C.E.O. Title: President
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