ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99 EXHIBIT 10.1
LUCENT GRL PROPRIETARY & CONFIDENTIAL
PATENT LICENSE AGREEMENT
BETWEEN
LUCENT TECHNOLOGIES GRL CORPORATION
AND
ACTIVE VOICE CORPORATION
RELATING TO INTERACTIVE MESSAGING AND RESPONSE PRODUCTS
Portions of this agreement are omitted pursuant to an application for
confidential treatment, under Rule 24b-2 of the Securities Exchange Act of
1934, filed separately with the Securities Exchange Commission.
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - GRANTS OF LICENSES
1.01 Grant
1.02 Duration and Extent
1.03 Scope
1.04 Ability to Provide Licenses
1.05 Joint Inventions
1.06 Publicity
ARTICLE II - ROYALTY AND PAYMENTS
2.01 Royalty Calculations & Initial Fee
2.02 Running Royalty on Excess Net Gross Revenues
2.03 Accrual
2.04 Records and Adjustments
2.05 Reports and Payments
ARTICLE III - TERMINATION
3.01 Breach
3.02 Voluntary Termination
3.03 Survival
ARTICLE IV - MISCELLANEOUS PROVISIONS
4.01 Disclaimer
4.02 Limited Assignability; Mergers and Acquisitions
4.03 Addresses
4.04 Taxes
4.05 Choice of Law
4.06 Integration
4.07 Outside the United States
4.08 Dispute Resolution
4.09 Releases
4.10 Counterparts
DEFINITIONS APPENDIX
APPENDIX A LIST OF COMPANIES IN LITIGATION WITH LUCENT ET AL.
i
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99 EXHIBIT 10.1
LUCENT GRL PROPRIETARY & CONFIDENTIAL
PATENT LICENSE AGREEMENT
THIS AGREEMENT, effective upon signing of both Parties (the "Effective Date"),
is between LUCENT TECHNOLOGIES GRL CORPORATION, a Delaware corporation ("LUCENT
GRL"), having an office at Suite 105, 14645 N.W. ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇, and ACTIVE VOICE CORPORATION ("ACTIVE VOICE"), a Washington
corporation, having an office at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
The Parties agree as follows:*
ARTICLE I
GRANTS OF LICENSES
1.01 GRANT
(a) LUCENT GRL grants to ACTIVE VOICE under LUCENT GRL's PATENTS
personal, worldwide, nonexclusive and non-transferable licenses for:
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS
(b) ACTIVE VOICE grants to LUCENT GRL under ACTIVE VOICE's PATENTS
personal, worldwide, nonexclusive, royalty-free and non-transferable licenses
for:
COMMUNICATIONS PRODUCTS
1.02 DURATION AND EXTENT
All licenses granted herein under any patent shall terminate on the earlier of
such patent's expiration or the end of the LIMITED PERIOD. If, upon the
Effective Date hereof, the grantor has less than full rights, with respect to
any of its patents, the license granted herein under such patent shall be
limited to that which the grantor has the right to grant.
--------
*ANY TERM IN CAPITAL LETTERS WHICH IS DEFINED IN THE DEFINITIONS APPENDIX SHALL
HAVE THE MEANING SPECIFIED THEREIN.
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
1.03 SCOPE
(a) The licenses granted herein are licenses (i) to make, have made, use,
lease, sell and import LICENSED PRODUCTS; (ii) make, have made, use and import
machines, tools, materials and other instrumentalities, insofar as such
machines, tools, materials and other instrumentalities are involved in or
incidental to the development, manufacture, testing or repair of LICENSED
PRODUCTS which are or have been made, used, leased, owned, sold or imported by
the grantee of such license; and (iii) convey to any customer of the grantee,
whether directly or through an intermediate dealer or OEM (subject to Sections
1.03(d), (e) and (f) and any other provisions in this Agreement), with respect
to any LICENSED PRODUCT which is sold or leased by such grantee to such
customer, rights to use and resell such LICENSED PRODUCT as sold or leased by
such grantee (whether or not as part of a larger combination); provided,
however, that no rights may be conveyed to customers with respect to any
invention which is directed to (1) a combination of such LICENSED PRODUCT (as
sold or leased) with any other product, (2) a method or process which is other
than the inherent use of such LICENSED PRODUCT itself (as sold or leased), or
(3) a method or process involving the use of a LICENSED PRODUCT to manufacture
(including associated testing) any other product. The rights granted herein to
either Party to this Agreement do not include licenses for products manufactured
by a third party and sold by a Party to this Agreement where such sales do not
meet a legitimate business purpose but are merely for the purpose of
sublicensing a Parties' patents to the third party. It is understood that such
limitation is not intended to restrict either Party's or their RELATED
COMPANIES' bona fide business transactions of the type entered into by them in
the course of their current business practices.
(b) Licenses granted herein are not to be construed either (i) as consent
by the grantor to any act which may be performed by the grantee, except to the
extent impacted by a patent licensed herein to the grantee, or (ii) to include
licenses to contributorily infringe or induce infringement under U.S. law or a
foreign equivalent thereof. Notwithstanding the foregoing, for the duration of
this Agreement, each Party agrees for itself and its RELATED COMPANIES that they
shall not bring suit or otherwise exercise any of their other remedies under the
patents licensed herein against the other Party or its RELATED COMPANIES for
contributory infringement or inducing infringement unless they first settle or
exhaust all remedies under their patents against the direct infringer for the
activities which give rise to such contributory or inducing infringement.
(c) The grant of each license hereunder includes the right to grant
sublicenses within the scope of such license to a Party's RELATED COMPANIES for
so long as they remain its RELATED COMPANIES. Any such sublicense may
2
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
be made effective retroactively, but not prior to the Effective Date hereof, nor
prior to the sublicensee's becoming a RELATED COMPANY of such Party.
(d) With respect to ACTIVE VOICE in Section 1.03(a), no rights may be or
are conveyed to non-end user customers of LICENSED PRODUCTS:
(1) with respect to any function or feature of such INTERACTIVE
MESSAGING AND RESPONSE PRODUCT or a larger combination that is not
enumerated within the definition of INTERACTIVE MESSAGING AND
RESPONSE PRODUCT or not a function or feature provided by ACTIVE
VOICE; or
(2) with respect to a component part of an INTERACTIVE MESSAGING AND
RESPONSE PRODUCT or any larger combination, which component part
was manufactured or supplied by such customer and is not required
to implement an INTERACTIVE MESSAGING AND RESPONSE PRODUCT using
software made, sold, licensed or leased by ACTIVE VOICE, (such as
a voice board or general purpose personal computer) and to the
extent such component or combination is required, then only those
rights essential to the performance of functions or features of an
INTERACTIVE MESSAGING AND RESPONSE PRODUCT provided by ACTIVE
VOICE may be conveyed to the customer.
(e) In accordance with rights and licenses provided under the provisions
of this Section 1.03 and Section 1.01, in the event ACTIVE VOICE sells an
INTERACTIVE MESSAGING AND RESPONSE PRODUCT in the form of software to an
intermediary customer (such as an Original Equipment Manufacturer or
distributor), other than directly to an end user, such customer shall be
restricted from making more than one copy of the software, other than for
archival purposes, unless such intermediary customer is provided with a master
copy (i.e., a golden copy for which more than one copy can be made) for the
purpose of making limited copies of the software for loading onto hardware
devices sold by the intermediary customer or for resale directly to an end-user,
in which case:
(1) any copies of the ACTIVE VOICE software made by any such
intermediary customer, including the master copy, not sold as
of the date of any termination of this Agreement, shall cease
to be licensed by LUCENT GRL herein;
(2) the intermediary customer shall be restricted from further
passing on rights to further intermediary customers to make
additional copies of
3
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
ACTIVE VOICE software or modifications other than for archival
purposes; and
(3) if the ACTIVE VOICE software is bundled with any other
software, not provided by ACTIVE VOICE, such other software
shall not be licensed herein under LUCENT GRL's PATENTS.
(f) ACTIVE VOICE shall restrict its customers, as described in Section
1.03(e)(2) by including provisions in their software license agreements to
enable enforcement of the restrictions provided therein.
1.04 ABILITY TO PROVIDE LICENSES
(a) Both Parties represent and warrant that they have received the rights
to grant the licenses and releases under their respective patents herein granted
to each other. LUCENT GRL represents and warrants that the releases and licenses
granted are sufficient to cover the utility patents of LUCENT GRL's PATENTS
owned or applied for, as of the Effective Date, by LUCENT GRL and its RELATED
COMPANIES that claim INTERACTIVE MESSAGING AND RESPONSE PRODUCTS of ACTIVE
VOICE.
(b) A Party's failure to meet any obligation hereunder, due to the
assignment of title to any invention or patent, or the granting of any licenses,
to the United States Government or any agency or designee thereof pursuant to a
statute or regulation of, or contract with, such Government or agency, shall not
constitute a breach of this Agreement.
1.05 JOINT INVENTIONS
(a) There are countries (not including the United States) which require
the express consent of all inventors or their assignees to the grant of licenses
or rights under patents issued in such countries for joint inventions.
(b) Each Party shall give such consent, or shall obtain such consent from
its RELATED COMPANIES, its employees or employees of any of its RELATED
COMPANIES, as required to make full and effective any such licenses and rights
respecting any joint invention granted to the grantee hereunder by such Party
and by another licensor of such grantee.
(c) Each Party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents are necessary
to make full and effective such licenses and rights respecting any joint
invention purported to be granted by it hereunder. If, in spite of such
reasonable steps, such Party is unable to obtain the requisite consents from
such third parties, the
4
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
resulting inability of such Party to make full and effective its purported grant
of such licenses and rights shall not be considered to be a breach of this
Agreement.
1.06 PUBLICITY
(a) Nothing in this Agreement shall be construed as conferring upon
either Party or its RELATED COMPANIES any right to include in advertising,
packaging or other commercial activities related to a LICENSED PRODUCT, any
reference to the other Party (or any of its RELATED COMPANIES), its trade names,
trademarks or service marks in a manner which would be likely to cause confusion
or to indicate that such LICENSED PRODUCT is in any way certified by the other
Party hereto or its RELATED COMPANIES.
(b) Both Parties agree to keep the terms and conditions of this Agreement
confidential, except either Party may acknowledge the existence of this
Agreement. Both Parties shall have the right to make disclosure of the terms and
conditions of this Agreement if required by law or if such disclosure is in
response to an order of a court or an order or regulation of another
governmental body provided, however, that either Party prior to such disclosure
pursuant to such law, order or regulation shall first have promptly informed the
other Party of such law, order or regulation and made reasonable efforts to
obtain a protective order and/or appropriate confidentiality provisions
requiring that such information to be disclosed be used only for the purpose for
which such law, order or regulation was issued.
(c) The Parties shall not issue any press releases relating to this
Agreement unless there is a mutual written agreement by both of the Parties.
ARTICLE II
ROYALTY AND PAYMENTS
2.01 ROYALTY CALCULATION & INITIAL FEE
(a) In payment for the licenses, rights, and releases granted hereunder
to Active Voice and its RELATED COMPANIES by LUCENT GRL, ACTIVE VOICE shall pay
to LUCENT GRL at the address specified in Section 4.03(b), in aggregate, the
following nonrefundable lump sums totaling Three Million U.S. dollars (U.S.
$3,000,000.00), within five (5) days of execution of this Agreement by both
Parties:
5
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
(i) For the releases granted in Section 4.09(a), the total amount
of [*] U.S. dollars ($[*]); and
(ii) For the licenses and rights granted under Sections 1.01 and
1.03 by LUCENT GRL, total royalties in the amount of
[*] U.S. dollars (U.S.$[*]).
(b) The payment in Section 2.01(a) shall not be creditable with respect
to any additional payments due under Section 2.02 and in no event shall such fee
or any portion thereof be refunded to ACTIVE VOICE.
2.02 RUNNING ROYALTY ON EXCESS NET GROSS REVENUES
(a) The provisions of this Section 2.02 shall apply if and only if ACTIVE
VOICE is acquired or merged into a third party and remains as a separately
identifiable business. Retention of the name ACTIVE VOICE after such merger or
acquisition is not a requirement for being separately identifiable.
(b) If, but only if, ACTIVE VOICE is acquired by or merged into a third
party and exists as a separately identifiable business, then a royalty shall be
payable to LUCENT by the acquired, separately identifiable business and/or
acquiring company for the period following acquisition/merger until the end of
the LIMITED PERIOD or for so long as the separately identifiable business
continues to exist, whichever is shorter. This royalty shall be paid for each
annual period ending on an anniversary of the end of the SEMIANNUAL PERIOD that
precedes and ends closest to the acquisition/merger date. The amount of annual
royalty shall be determined by multiplying a royalty rate of [*] percent ([*]%)
to the excess of the NET GROSS REVENUES of the separately identifiable business
for each annual period over a threshold NET GROSS REVENUES for that annual
period. The threshold NET GROSS REVENUES for the first annual period shall be
equal to the NET GROSS REVENUES for the full two (2) SEMIANNUAL PERIODS
immediately preceding the date of acquisition/merger multiplied by [*].
Thereafter, each annual period after the first shall have a threshold NET GROSS
REVENUES equal to the NET GROSS REVENUES for the immediately preceding annual
period times [*]. The royalty payable for the first annual period ending after
the LIMITED PERIOD shall be pro-rated to the end of the LIMITED PERIOD. In
effect, therefore, there shall be no royalty payable under this Section so long
as the NET GROSS REVENUES after acquisition/merger is less than [*] percent
([*]%) annual growth compounded annually. NET GROSS REVENUES and threshold NET
GROSS REVENUES shall be calculated for the separately identifiable, acquired
business including all of its RELATED COMPANIES.
* Confidential Treatment Requested
6
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
2.03 ACCRUAL
(a) Royalty shall accrue and become payable under Section 2.02 upon the
receipt of revenues for products and/or services in excess of [*] percent
([*]%) pursuant to Section 2.02(b). Obligations to pay royalties under Section
2.02 for time periods prior to any termination of licenses and rights pursuant
to Article III shall survive such termination and the expiration of any patent.
(b) Royalties which have accrued under Section 2.02 but have not been
paid for any company which is a RELATED COMPANY of the acquired, separately
identifiable business and then ceases to be the same, shall become payable with
the next scheduled royalty payment under Section 2.02.
(c) Notwithstanding any other provisions hereunder, royalty shall accrue
and be payable only to the extent that enforcement of the obligation to pay such
royalty would not be prohibited by applicable law.
2.04 RECORDS AND ADJUSTMENTS
(a) Any entity potentially obligated to pay royalties under Section 2.02,
hereinafter referred to as "the Entity", shall keep full, clear and accurate
records so as to enable LUCENT GRL to ascertain the proper royalty due
thereunder. The Entity shall retain such records with respect to each product
for at least five (5) years from the sale, lease or putting into use of such
product. LUCENT GRL shall have the right through an independent, nationally
recognized accounting firm (hereinafter "auditors") to make an examination,
during normal business hours, but upon at least fourteen (14) calendar days
notice, of all records and accounts bearing upon the amount of royalty payable
to it under Section 2.02. LUCENT GRL's right to have auditors inspect the
Entity's records and accounts shall be limited to one audit per calendar year,
unless the immediately previous audit revealed an underpayment by the Entity of
at least ten percent (10%) for the audited period. Prompt adjustment shall be
made to compensate for any errors or omissions disclosed by such examination.
(b) Independent of any such examination, LUCENT GRL will credit the
Entity against future royalty payments, provided there are any, the amount of
any overpayment of royalties made in error which is identified and fully
explained in a written notice to LUCENT GRL delivered within one (1) year after
the due date of the payment which included such alleged overpayment, provided
that LUCENT GRL is able to verify, to its own satisfaction, the existence and
extent of the overpayment.
(c) No refund, credit or other adjustment of royalty payments shall be
made by LUCENT GRL except as provided in this Section 2.04. Rights conferred by
this
* Confidential Treatment Requested
7
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
Section 2.04 shall not be affected by any statement appearing on any check or
other document, except to the extent that any such right is expressly waived or
surrendered by a party having such right and signing such statement.
2.05 REPORTS AND PAYMENTS
(a) The provisions of Section 2.05 shall apply if and only if ACTIVE
VOICE is acquired or merged into a third party and remains as a separately
identifiable business.
(b) Within sixty (60) days after each anniversary date of the end of the
SEMIANNUAL PERIOD that precedes and ends closest to the acquisition/merger date
and continuing on each such anniversary date thereafter up to and including the
first anniversary date that ends after the LIMITED PERIOD, the separately
identifiable, acquired business or acquiring business shall furnish to LUCENT
GRL, at the address specified in Section 4.03, a statement certified by a
responsible official of the business furnishing the statement showing in a
manner acceptable to LUCENT GRL:
(i) all revenues on products and services for the twelve-month
period preceding the anniversary date for the separately
identifiable, acquired business and all of its RELATED
COMPANIES;
(ii) the amount of all returns and warranty claims on products
and services during the twelve-month period in (i) for the
separately identifiable, acquired business and all of its
RELATED COMPANIES;
(iii) the threshold NET GROSS REVENUES for the twelve-month period
in (i) for the separately identifiable, acquired business
and all of its RELATED COMPANIES; and
(iv) the amount of royalty, if any, payable for the twelve-month
period in (i).
If there are no NET GROSS REVENUES for the twelve-month period, the statement
shall show that fact.
(c) Within such sixty (60) days the acquired, separately identifiable
business or the acquiring company shall pay in United States dollars to LUCENT
GRL at the address specified in Section 4.03 the royalties payable in accordance
with such statement. Any conversion to United States dollars shall be at the
prevailing rate for bank cable transfers as quoted for the last day of such
semiannual period by leading United States banks in New York City dealing in the
foreign exchange market.
8
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
(d) If payment for a semiannual period is overdue, such payment shall be
subject to a late payment charge calculated at an annual rate of three
percentage points (3%) over the prime rate or successive prime rates quoted for
the last day of such semiannual period by leading U.S. banks in New York City
during delinquency. If the amount of such charge exceeds the maximum permitted
by law, such charge shall be reduced to such maximum.
ARTICLE III
TERMINATION
3.01 BREACH
(a) In the event of a breach of this Agreement by either Party, the other
Party may, in addition to any other remedies that it may have, at any time
terminate all licenses and rights granted by it hereunder by not less than two
(2) months written notice specifying such breach, unless within the period of
such notice all breaches specified therein shall have been remedied.
3.02 VOLUNTARY TERMINATION
By written notice to the other Party, either Party may voluntarily terminate all
or a specified portion of the licenses and rights granted to it hereunder. Such
notice shall specify the effective date (not more than six (6) months prior to
the giving of said notice) of such termination and shall clearly specify any
affected patent, invention or product.
3.03 SURVIVAL
(a) If a company ceases to be a RELATED COMPANY of a Party, licenses and
rights granted hereunder with respect to patents of such company on inventions
made prior to the date of such cessation, shall not be affected by such
cessation.
(b) Any termination of licenses and rights of a Party under the
provisions of this Article III shall not affect such Party's licenses, rights
and obligations with respect to any LICENSED PRODUCT made prior to such
termination, and shall not affect the other Party's licenses and rights (and
obligations related thereto) hereunder.
9
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.01 DISCLAIMER
NEITHER PARTY NOR ANY OF ITS RELATED COMPANIES MAKES ANY REPRESENTATIONS,
EXTENDS ANY WARRANTIES OF ANY KIND, ASSUMES ANY RESPONSIBILITY OR OBLIGATIONS
WHATEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR OTHERWISE, OTHER THAN
THE LICENSES, RIGHTS AND WARRANTIES HEREIN EXPRESSLY GRANTED.
4.02 LIMITED ASSIGNABILITY; MERGERS AND ACQUISITIONS
(a) LUCENT GRL has entered into this Agreement in contemplation of
personal performance by ACTIVE VOICE and it is LUCENT GRL's intention that a
transfer of ACTIVE VOICE's licenses or rights not occur without LUCENT GRL's
express written consent, except as otherwise permitted in Section 4.02(d).
(b) Neither this Agreement nor any licenses or rights hereunder, in whole
or in part, shall be assignable or transferable by ACTIVE VOICE (by operation of
law or otherwise) without LUCENT GRL's express written consent, except as
otherwise permitted in Section 4.02(d).
(c) All of LUCENT GRL's rights, title and interest in this Agreement and
licenses and rights granted to it hereunder may be assigned to any direct or
indirect successor to the business of LUCENT GRL, as the result of any
reorganization, which successor shall thereafter be deemed substituted for
LUCENT GRL as a party hereto, effective upon such assignment. Additionally,
LUCENT GRL may assign its rights, licenses, title and interest in this Agreement
and any licenses and rights granted to it hereunder, to any RELATED COMPANY
without ACTIVE VOICE's consent. If any such assignment occurs, however, the
licenses granted herein and any obligations shall remain the same and be
enforceable by either Party to this Agreement.
(d) If during the LIMITED PERIOD, a third party acquires ACTIVE VOICE
and ACTIVE VOICE continues to remain a separately, identifiable business
continuing to make and sell INTERACTIVE MESSAGING AND RESPONSE PRODUCTS, as
defined herein, under LUCENT GRL's PATENTS, the third party shall acquire
ACTIVE VOICE's licenses and rights under LUCENT GRL's
10
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
PATENTS for INTERACTIVE MESSAGING AND RESPONSE PRODUCTS, (unless the third
party is involved in patent litigation with LUCENT GRL or any of its RELATED
COMPANIES for the term of such litigation and the third party is listed in
Appendix A, in which case neither this Agreement nor any licenses or rights
granted hereunder is assignable or transferable, in whole or in part),
subject to the following:
(i) for the LIMITED PERIOD the licenses will continue to
apply to INTERACTIVE MESSAGING AND RESPONSE PRODUCTS
of the separate identifiable business (including all
enhancements, improvements, new releases, and new
versions to or of such INTERACTIVE MESSAGING AND
RESPONSE PRODUCTS sold by ACTIVE VOICE and its
RELATED COMPANIES at the time such acquisition is
publicly announced) and will not extend to any other
products of the third party (acquirer/assignee);
(ii) the third party notifies LUCENT GRL that it agrees to
be bound by the terms and conditions of this
Agreement without any restrictions;
(iii) the third party shall pay royalties and report, as
set forth in Sections 2.02 through 2.05, only if,
annual growth of such separately identifiable
business and its RELATED COMPANIES exceed the
specified growth rate as described in Section 2.02;
and
(iv) ACTIVE VOICE (or the named entity agreeing to be
substituted for ACTIVE VOICE in accordance with
Section 4.02(d)(ii)) shall be deemed a "separately
identifiable business" for so long as the third party
maintains separate books and records for such
business, and does not, after the acquisition,
commingle designs of products in existence prior to
such acquisition being publicly announced.
(e) Any purported assignment or transfer of this Agreement or licenses or
rights hereunder by ACTIVE VOICE without LUCENT GRL's necessary consent shall be
void (without affecting any other licenses or rights hereunder).
4.03 ADDRESSES
(a) Any notice or other communication hereunder shall be sufficiently
given to ACTIVE VOICE when sent by certified mail addressed to ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
11
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, or to LUCENT GRL when sent by certified mail addressed
to Contract Administrator, Intellectual Property Business, LUCENT Technologies
GRL Corporation, at the address specified in the first paragraph of this
Agreement. Changes in such addresses may be specified by written notice.
(b) Payments by ACTIVE VOICE shall be made to Lucent Technologies GRL
Corporation, Chase Manhattan Bank, N.A., General Post Office, ▇.▇. ▇▇▇ ▇▇▇▇, ▇▇▇
▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, ▇▇▇. Alternatively, payments to LUCENT GRL may be
made by bank wire transfers to LUCENT Technologies GRL Corporation, at Chase
Manhattan Bank, Account Number ▇▇▇▇▇▇▇▇▇, ABA code: ▇▇▇▇▇▇▇▇▇, Swift Code:
▇▇▇▇▇▇▇▇. Changes in such address or account may be specified by written notice.
4.04 TAXES
ACTIVE VOICE shall pay any tax, duty, levy, customs fee, or similar charge
("taxes"), including interest and penalties thereon, however designated, imposed
as a result of the operation or existence of this Agreement, including taxes
which ACTIVE VOICE is required to withhold or deduct from payments to LUCENT
GRL, except (i) net income taxes imposed upon LUCENT GRL by any governmental
entity within the United States (the fifty (50) states and the District of
Columbia), and (ii) net income taxes imposed upon LUCENT GRL by jurisdictions
outside the United States which are allowable as a credit against the United
States Federal income tax of LUCENT GRL or any of its RELATED COMPANIES. In
order for the exception in (ii) to be effective, ACTIVE VOICE must furnish to
LUCENT GRL evidence sufficient to satisfy the United States taxing authorities
that such taxes have been paid. Such evidence must be furnished to LUCENT GRL
within thirty (30) days of issuance by the local taxing authority.
4.05 CHOICE OF LAW
The Parties are familiar with the principles of New York commercial law, and
agree that the law of New York exclusive of its conflict of laws provisions
shall apply in any dispute arising with respect to this Agreement.
4.06 INTEGRATION
This Agreement sets forth the entire agreement and understanding between the
Parties as to the subject matter hereof and merges all prior discussions between
them. Neither of the Parties shall be bound by any warranties, understandings or
representations with respect to such subject matter other than as expressly
provided herein or in a writing signed with or subsequent to execution hereof by
an authorized representative of the Party to be bound thereby.
12
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
4.07 OUTSIDE THE UNITED STATES
(a) There are countries in which the owner of an invention is entitled to
compensation, damages or other monetary award for another's unlicensed
manufacture, sale, lease, use or importation involving such invention prior to
the date of issuance of a patent for such invention but on or after a certain
earlier date, hereinafter referred to as the invention's "protection
commencement date" (e.g., the date of publication of allowed claims or the date
of publication or "laying open" of the filed patent application). In some
instances, other conditions precedent must also be fulfilled (e.g., knowledge or
actual notification of the filed patent application). The Parties agree that (i)
an invention which has a protection commencement date in any such country may be
used in such country pursuant to the terms of this Agreement on and after any
such date, and (ii) all such conditions precedent are deemed satisfied by this
Agreement.
(b) There may be countries in which a Party hereto may have, as a
consequence of this Agreement, rights against infringers of the other Party's
patents licensed hereunder. Each Party hereby waives any such right it may have
by reason of any third Party's infringement or alleged infringement of any such
patents.
(c) ACTIVE VOICE hereby agrees to register or cause to be registered, to
the extent required by applicable law, and without expense to LUCENT GRL or any
of its RELATED COMPANIES, any agreements wherein sublicenses are granted by it
under LUCENT GRL's PATENTS. ACTIVE VOICE hereby waives any and all claims or
defenses, arising by virtue of the absence of such registration, that might
otherwise limit or affect its obligations to LUCENT GRL.
4.08 DISPUTE RESOLUTION
(a) If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the Parties agree to submit the dispute
to a sole mediator selected by the Parties or, at any time at the option of a
Party, to mediation by the American Arbitration Association ("AAA"). If not thus
resolved, it shall be referred to a sole arbitrator selected by the Parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United States Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for or
against a Party and affording such remedy as is deemed equitable, just and
within the scope of the agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or infringement) or a
statement of the reasoning on which the award rests; (iii) may in appropriate
circumstances (other
13
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
than patent disputes) include injunctive relief; (iv) shall be made within four
(4) months of the appointment of the arbitrator; and (v) may be entered in any
court.
(c) The requirement for mediation and arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the arbitrator is
not empowered to act or make any award other than based solely on the rights and
obligations of the Parties prior to any such termination.
(d) The arbitrator shall be knowledgeable in the legal and technical
aspects of this Agreement and shall determine issues of arbitrability but may
not limit, expand or otherwise modify the terms of the agreement.
(e) The place of mediation and arbitration shall be Chicago, Illinois.
(f) Each Party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne equally.
(g) A request by a Party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive or other
damages in excess of compensatory damages and each Party irrevocably waives any
claim thereto.
(i) The Parties, their representatives, other participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
4.09 RELEASES
(a) In consideration of the sum of [*] United States dollars ($U.S. [*]),
and other good and valuable consideration paid by ACTIVE VOICE to LUCENT
GRL in accordance with Section 2.01 of this Agreement, and subject to the
receipt thereof and to Section 4.09(c), LUCENT GRL, for itself and for its
present RELATED COMPANIES, hereby releases ACTIVE VOICE, its present RELATED
COMPANIES, as of the Effective Date, from all claims, demands and rights of
action which LUCENT GRL or any of its present RELATED COMPANIES may have on
account of any infringement or alleged infringement of any patent in any
country of the world by reason of the manufacture or any past or future use,
lease, offer for sale, sale or importation of any products of the kind
licensed herein which, prior to the Effective Date hereof, were used or
furnished by ACTIVE VOICE or any of its present RELATED COMPANIES.
* Confidential Treatment Requested
14
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
(b) Subject to Section 4.09(c), ACTIVE VOICE, for itself and for its
present RELATED COMPANIES, hereby releases LUCENT GRL, and its present RELATED
COMPANIES (for the purposes of this Section 4.09(b) the RELATED COMPANY, "Lucent
Technologies Inc." ("Lucent"), means Lucent as it presently exists and as it
formerly existed as the equipment/manufacturing entity of AT&T Corp.), from all
claims, demands and rights of action which ACTIVE VOICE or any of its present
RELATED COMPANIES may have on account of any infringement or alleged
infringement of any patent in any country of the world by reason of the
manufacture or any past or future use, lease, offer for sale, sale or
importation of any products of the kind licensed hereunder which, prior to the
Effective Date hereof, were manufactured by or for, or used, furnished or
imported by, LUCENT GRL or any of its present RELATED COMPANIES including such
activities conducted by those business units of AT&T Corp. which ceased to be
part of AT&T and became part of Lucent.
(c) LUCENT GRL, for itself and its present RELATED COMPANIES, hereby
releases customers (purchasers and users) of products of the kind licensed
herein sold to such customers by ACTIVE VOICE and its present RELATED COMPANIES
from all claims, demands and rights of action which LUCENT GRL or any of its
present RELATED COMPANIES may have as of the effective date hereof on account of
infringement or alleged infringement of any LUCENT GRL PATENT, other than for
contributory or induced infringement, issued in any country of the world by
reason of the use, lease, offer for sale, sale or importation of any such
products. ACTIVE VOICE, for itself and its present RELATED COMPANIES, hereby
releases customers (purchasers and users) of products of the kind licensed
herein sold to such customers by LUCENT GRL and its present RELATED COMPANIES
from all claims, demands and rights of action which ACTIVE VOICE or any of its
present RELATED COMPANIES may have as of the effective date hereof on account of
infringement or alleged infringement other than for contributory or induced
infringement, of any ACTIVE VOICE PATENT, issued in any country of the world by
reason of the use, lease, offer for sale, sale or importation of any such
products. Such releases do not extend to any claim of any patent which is
directed to (1) a combination of such products (as sold or leased) with any
other product, (2) a method or process which is other than the inherent use of
such products itself (as sold or leased), or (3) a method or process involving
the use of such products to manufacture (including associated testing) any other
product.
(d) Notwithstanding Sections 4.09(a), (b) and (c), LUCENT GRL, does not
release ACTIVE VOICE under any of its obligations, under any prior agreements
between ACTIVE VOICE and LUCENT GRL and/or any of its RELATED COMPANIES
including ACTIVE VOICE's obligations under two Patent License Agreements between
VMX, Inc. and ACTIVE VOICE both dated October 27, 1993, entitled: (1) AUTOMATED
ATTENDANT PATENT AGREEMENT and (2)
15
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
VOICE MAIL PATENT LICENSE AGREEMENT; and any settlement of disputes under such
agreements.
4.10 COUNTERPARTS
This Patent License Agreement may be executed by the Parties in identical
counterparts, all of which together shall constitute the final agreement.
Executed counterparts may be exchanged by facsimile transmission.
16
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed
in duplicate originals by its duly authorized representatives on the respective
dates entered below.
LUCENT TECHNOLOGIES GRL CORPORATION
By: /s/ ▇. ▇. ▇▇▇▇▇▇▇
-------------------------------------------------------------------
▇. ▇. ▇▇▇▇▇▇▇
Chairman of the Board
Date: October 1, 1999
-----------------------------------------------------------------
ACTIVE VOICE CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
-------------------------------------------------------------------
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman of the Board
Date: September 30, 1999
-----------------------------------------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF BOTH PARTIES.
17
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
DEFINITIONS APPENDIX
GENERAL DEFINITIONS:
ACTIVE VOICE'S PATENTS means all worldwide patents (including utility models but
excluding design patents and design registrations) claiming a COMMUNICATIONS
PRODUCT, issuing on or claiming priority from a patent application filed in any
country of the world prior to the end of the LIMITED PERIOD, which is owned or
controlled by ACTIVE VOICE or any of its RELATED COMPANIES at any time during
the term of this Agreement, and with respect to which and to the extent ACTIVE
VOICE or any of its RELATED COMPANIES has the right to grant the licenses
specified herein.
COMMUNICATIONS PRODUCTS means any, instrumentality or aggregate of
instrumentalities (including software) of a design primarily adapted to compute,
classify, process, transmit, receive, retrieve, originate, switch, store,
display, service, manifest, measure, detect, record, reproduce or handle any
form of information, intelligence or data. The term includes products associated
with the administration, maintenance or use of any such COMMUNICATIONS PRODUCT
and materials used in the manufacture of any such instrumentality or aggregate
thereof. The term further includes all services relating to any such products
and components therefor.
INTERACTIVE MESSAGING AND RESPONSE PRODUCTS means all messaging and response
type products and services or software therefor, which automate the processing
of telecommunication transactions under customer-specific application control
(which may include a system designed to be modified for the specific customer or
otherwise, to achieve customer-specific application control) and the operations
in support thereof (collectively, "Telecommunications Transactions"). Such
systems may include subsystems under application control which, without
limitation, gather, generate, manipulate, route, switch, store, communicate or
reproduce calls or data. Such subsystems may also include, without limitation,
automatic speech understanding (meaning the ability to recognize spoken words
based on prompted questions by the system), automated attendant, message
notification capabilities, and text message summarization audio-to text and text
to speech conversion. Telecommunication Transactions may contain, without
limitation, audio, video, images, facsimile, other media and other types of
information (and any combination thereof) communicated over any public or
private networks, including, but not restricted to, paging systems, internet or
intranet networks, whether with delay, such as by e-mail, or without delay, such
as by telephone.
18
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
LICENSED PRODUCT means, as to any grantee, any product listed for such grantee
in Section 1.01.
LIMITED PERIOD means the period commencing on the Effective Date of this
Agreement and having a duration of five (5) years.
LUCENT GRL'S PATENTS means all worldwide patents (including utility models but
excluding design patents and design registrations) claiming an INTERACTIVE
MESSAGING AND RESPONSE PRODUCT, issuing on or claiming priority from a patent
application filed in any country of the world prior to the end of the LIMITED
PERIOD, which is owned or controlled by LUCENT GRL or any of its RELATED
COMPANIES at any time during the term of this Agreement, and with respect to
which and to the extent LUCENT GRL or any of its RELATED COMPANIES has the right
to grant the licenses specified herein. Any patents licensed under two Patent
License Agreements between VMX, Inc. and ACTIVE VOICE both dated October 27,
1993, entitled: (1) Automated Attendant Patent Agreement and (2) Voice Mail
Patent License Agreement (the "Patent Agreements"), are excluded from the
definition of LUCENT GRL's PATENTS.
NET GROSS REVENUES means all revenues on all LICENSED PRODUCTS, as well as all
services related to those LICENSED PRODUCTS, less revenues refunded to customers
due to returns and/or warranty claims. It is expected that NET GROSS REVENUES
will typically be equal to a party's total net reported revenues, excluding
investment income (i.e., interest, dividends and other returns on financial
investments). In calculating NET GROSS REVENUES, in no event will any lease,
transfer, sale or disposition of LICENSED PRODUCTS be valued at less than the
fair market value of such LICENSED PRODUCTS. "Fair market value" means with
respect to any LICENSED PRODUCT transferred, sold, leased or put into use, the
greater of (i) the selling price which a seller would realize from an
unaffiliated buyer in an arm's length sale of an identical product in the same
quantity and at the same time and place as such sale, lease or putting into use;
or (ii) the selling price actually obtained for such LICENSED PRODUCT in the
form in which it is sold, whether or not assembled (and without excluding
therefrom any components or subassemblies thereof which are included in such
selling price.)
RELATED COMPANIES of LUCENT GRL are Lucent Technologies Inc., SUBSIDIARIES of
Lucent Technologies Inc. (other than LUCENT GRL), and any other company so
designated in writing signed by LUCENT GRL and ACTIVE VOICE.
RELATED COMPANIES of ACTIVE VOICE are SUBSIDIARIES of ACTIVE VOICE and any other
company so designated in writing signed by LUCENT GRL and ACTIVE VOICE.
19
ACTIVE VOICE-BILAT-PLA-RRA - 9/30/99
LUCENT GRL PROPRIETARY & CONFIDENTIAL
SEMIANNUAL PERIOD of any year means an interval of two consecutive calendar
quarters.
SUBSIDIARY of a company means a corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a SUBSIDIARY of such
company only as long as such control or ownership and control exists.
20