1
EXHIBIT 2.3
MASTER TECHNOLOGY OWNERSHIP AND
LICENSE AGREEMENT
BETWEEN
MRV COMMUNICATIONS, INC.
AND
LUMINENT, INC.
EFFECTIVE AS OF ________, 2000
2
TABLE OF CONTENTS
PAGE
ARTICLE 1 DEFINITIONS............................................................................................1
Section 1.1 ANCILLARY AGREEMENTS...................................................................1
Section 1.2 COPYRIGHTS.............................................................................1
Section 1.4 DISTRIBUTION DATE......................................................................2
Section 1.5 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT............................................2
Section 1.6 INVENTION DISCLOSURE...................................................................2
Section 1.7 IPO REGISTRATION STATEMENT.............................................................2
Section 1.8 MASK WORK RIGHTS.......................................................................2
Section 1.9 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT...............................................2
Section 1.10 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT.......................................2
Section 1.11 MASTER SEPARATION AND DISTRIBUTION AGREEMENT...........................................2
Section 1.12 LUMINENT BUSINESS......................................................................2
Section 1.13 LUMINENT PRODUCTS SCHEDULE.............................................................2
Section 1.14 LUMINENT TECHNOLOGY....................................................................2
Section 1.15 LUMINENT TECHNOLOGY SCHEDULE...........................................................3
Section 1.16 PATENTS................................................................................3
Section 1.17 PERSON.................................................................................3
Section 1.18 SELL...................................................................................3
Section 1.19 SEPARATION DATE........................................................................3
Section 1.20 SUBSIDIARY.............................................................................3
Section 1.21 TECHNOLOGY.............................................................................3
Section 1.22 THIRD PARTY............................................................................4
ARTICLE 2 OWNERSHIP..............................................................................................4
i
3
Section 2.1 OWNERSHIP OF LUMINENT TECHNOLOGY.......................................................4
Section 2.2 PRIOR GRANTS...........................................................................4
Section 2.3 ASSIGNMENT DISCLAIMER..................................................................5
ARTICLE 3 LICENSES AND RIGHTS....................................................................................5
Section 3.1 LUMINENT LICENSE TO MRV................................................................5
Section 3.2 NO PATENT LICENSES.....................................................................5
ii
4
TABLE OF CONTENTS (CONT'D)
PAGE
Section 3.3 THIRD PARTY TECHNOLOGY.................................................................5
ARTICLE 4 CONFIDENTIALITY........................................................................................6
ARTICLE 5 NO TERMINATION.........................................................................................6
ARTICLE 6 DISPUTE RESOLUTION.....................................................................................6
Section 6.1 MEDIATION..............................................................................6
Section 6.2 ARBITRATION............................................................................6
Section 6.3 COURT ACTION...........................................................................7
Section 6.4 CONTINUITY OF SERVICE AND PERFORMANCE..................................................7
ARTICLE 7 LIMITATION OF LIABILITY................................................................................7
ARTICLE 8 MISCELLANEOUS PROVISIONS...............................................................................8
Section 8.1 DISCLAIMER.............................................................................8
Section 8.2 NO IMPLIED LICENSES....................................................................8
Section 8.3 INFRINGEMENT SUITS.....................................................................8
Section 8.4 NO OTHER OBLIGATIONS...................................................................8
Section 8.5 ENTIRE AGREEMENT.......................................................................8
Section 8.6 GOVERNING LAW..........................................................................9
Section 8.7 DESCRIPTIVE HEADINGS...................................................................9
Section 8.8 NOTICES................................................................................9
Section 8.9 NONASSIGNABILITY......................................................................10
Section 8.10 SEVERABILITY..........................................................................10
Section 8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE.................................11
Section 8.12 AMENDMENT.............................................................................11
Section 8.13 COUNTERPARTS..........................................................................11
iii
5
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the
"Agreement") is effective as of ________, 2000 (the "Effective Date"), between
MRV Corporation, a Delaware corporation ("MRV"), having an office at ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇., ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ and Luminent, Inc., a Delaware
corporation ("Luminent"), having an office at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇., ▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇.
WHEREAS, the Board of Directors of MRV has determined that it is in the
best interest of MRV and its stockholders to separate MRV's existing businesses
into two independent businesses;
WHEREAS, as part of the foregoing, MRV and Luminent have entered into a
Master Separation and Distribution Agreement (as defined below), which provides,
among other things, for the separation of certain Luminent assets and Luminent
liabilities, the initial public offering of Luminent stock, the distribution of
such stock and the execution and delivery of certain other agreements in order
to facilitate and provide for the foregoing; and
WHEREAS, also as part of the foregoing, the parties desire to confirm
Luminent's ownership of certain technology.
NOW, THEREFORE, in consideration of the mutual promises of the parties,
and of good and valuable consideration, it is agreed by and between the parties
as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
Section 1.1 ANCILLARY AGREEMENTS. "Ancillary Agreements" shall have the meaning
set forth in the Master Separation and Distribution Agreement.
Section 1.2 COPYRIGHTS. "Copyrights" mean (i) any copyright in any original
works of authorship fixed in any tangible medium of expression as set forth in
17 U.S.C. Section 101 et. seq., whether registered or unregistered, including
any applications for registration thereof, (ii) any corresponding foreign
copyrights under the laws of any jurisdiction, in each case, whether registered
or unregistered, and any applications for registration thereof, and (iii) moral
rights under the laws of any jurisdiction.
Section 1.3 DISTRIBUTION DATE. "Distribution Date" shall have the meaning set
forth in the Master Separation and Distribution Agreement.
1
6
Section 1.4 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT. "General Assignment and
Assumption Agreement" means the General Assignment and Assumption Agreement
between the parties.
Section 1.5 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of
an invention (i) written for the purpose of allowing legal and business people
to determine whether to file a Patent application with respect to such invention
and (ii) recorded with a control number in the owning party's records.
Section 1.6 IPO REGISTRATION STATEMENT. "IPO Registration Statement" means the
registration statement on Form S-1 pursuant to the Securities Act of 1933, as
amended, filed with the Securities and Exchange Commission registering the
shares of common stock of Luminent to be issued in the initial public offering,
together with all amendments thereto.
Section 1.7 MASK WORK RIGHTS. "Mask Work Rights" means (i) any rights in mask
works, as defined in 17 U.S.C. Section 901, whether registered or unregistered,
including applications for registration thereof, and (ii) any foreign rights in
semiconductor topologies under the laws of any jurisdiction, whether registered
or unregistered, including applications for registration thereof.
Section 1.8 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT. "Master Confidential
Disclosure Agreement" means the Master Confidential Disclosure Agreement between
MRV and Luminent.
Section 1.9 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT. "Master Patent
Ownership and Assignment Agreement" means the Master Patent Ownership and
Assignment Agreement between MRV and Luminent.
Section 1.10 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation
and Distribution Agreement" means the Master Separation and Distribution
Agreement between MRV and Luminent.
Section 1.11 LUMINENT BUSINESS. "Luminent Business" means the business and
operations of Luminent as described in the IPO Registration Statement.
Section 1.12 LUMINENT PRODUCTS SCHEDULE. "Luminent Products Schedule" means the
mutually agreed Luminent Products Schedule, attached hereto as Schedule 1.12, as
it may be updated by the parties upon mutual agreement (signed by authorized
officers) of the parties to add Luminent products as of the Separation Date.
Section 1.13 LUMINENT TECHNOLOGY. "Luminent Technology" means (i) all Technology
developed solely by Luminent or Subsidiaries of Luminent or by its
subcontractors for Luminent or its Subsidiaries, (ii) all Technology for which
the direct costs were solely paid for by Luminent, and (iii) Technology that has
been jointly developed by the parties prior to the Separation Date that is
incorporated into Current Luminent Products (as defined in the Master Patent
Ownership and Assignment Agreement.
Section 1.14 LUMINENT TECHNOLOGY SCHEDULE. "Luminent Technology Schedule" means
the mutually agreed Luminent Technology Schedule attached hereto as Schedule
1.14, as it may be updated by the parties upon mutual agreement (signed by
authorized officers) of the parties to add Luminent Technology as of the
Separation Date.
2
7
Section 1.15 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions or industrial designs anywhere in the world and
all reissues, renewals, re-examinations and extensions of any of the foregoing.
Section 1.16 PERSON. "Person" means an individual, a partnership, a corporation,
a limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
Section 1.17 SELL. To "Sell" a product means to sell, transfer, lease or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
Section 1.18 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
______________, 2000, or such other date as may be fixed by the Board of
Directors of MRV.
Section 1.19 SUBSIDIARY. "Subsidiary" of any Person means a corporation or other
organization, whether incorporated or unincorporated, of which at least a
majority of the securities or interests having by the terms thereof ordinary
voting power to elect at least a majority of the board of directors or others
performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by such Person or by
any one or more of its Subsidiaries, or by such Person and one or more of its
Subsidiaries; provided, however, that no Person that is not directly or
indirectly wholly-owned by any other Person shall be a Subsidiary of such other
Person unless such other Person controls, or has the right, power or ability to
control, that Person. For purposes of this Agreement, Luminent shall be deemed
not to be a subsidiary of MRV.
Section 1.20 TECHNOLOGY. "Technology" means technological models, algorithms,
manufacturing processes, design processes, behavioral models, logic diagrams,
schematics, test vectors, know-how, computer and electronic data processing and
other apparatus programs and software (object code and source code), databases
and documentation thereof, trade secrets, technical information, specifications,
drawings, records, documentation, works of authorship or other creative works,
websites, ideas, knowledge, data or the like. The term Technology includes
Copyrights and Mask Work Rights, trade secrets and any other intellectual
property right, but expressly does not include (i) any trademark, trade name,
trade dress or service ▇▇▇▇, or applications for registration thereof or (ii)
any Patents or applications therefor, including any of the foregoing that may be
based on Invention Disclosures that are covered by the Master Patent Ownership
and License Agreement between the parties, but does include trade secret rights
in and to inventions disclosed in such Patent applications and Invention
Disclosures.
Section 1.21 THIRD PARTY. "Third Party" means a Person other than MRV and its
Subsidiaries and Luminent and its Subsidiaries.
ARTICLE 2
OWNERSHIP
Section 2.1 OWNERSHIP OF LUMINENT TECHNOLOGY. The parties hereby confirm that
Luminent owns all right, title and interest in and to the Luminent Technology.
Subject to Sections 2.2 and 2.3 below, to the extent that MRV has any ownership
rights in and to the
3
8
Luminent Technology, MRV hereby grants, conveys and assigns (and agrees to cause
its appropriate Subsidiaries to grant, convey and assign) to Luminent, by
execution hereof (or, where appropriate or required, by execution of separate
instruments of assignment), all its (and their) right, title and interest in and
to the Luminent Technology, to be held and enjoyed by Luminent, its successors
and assigns. MRV further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Luminent all its (and
their) right, title and interest in and to any and all causes of action and
rights of recovery for past infringement of Copyrights and Mask Work Rights in
and to the Luminent Technology, and for past misappropriation of trade secrets
in and to the Luminent Technology. MRV further covenants that MRV will, without
demanding any further consideration therefor, at the request and expense of
Luminent (except for the value of the time of MRV employees), do (and cause its
Subsidiaries to do) all lawful and just acts that may be or become necessary for
evidencing, maintaining, recording and perfecting Luminent's rights to such
Luminent Technology consistent with MRV's general business practice as of the
Separation Date, including but not limited to, execution and acknowledgement of
(and causing its Subsidiaries to execute and acknowledge) assignments and other
instruments in a form reasonably required by Luminent for each Copyright or Mask
Work Right jurisdiction.
Section 2.2 PRIOR GRANTS.
(a) Luminent acknowledges and agrees that the foregoing assignment is
subject to any and all licenses or other rights that may have been granted by or
to MRV or its Subsidiaries with respect to the Luminent Technology prior to the
Separation Date. MRV shall respond to reasonable inquiries from Luminent
regarding any such prior grants.
(b) MRV acknowledges and agrees that the foregoing assignment is subject to
any and all licenses or other rights that may have been granted by or to
Luminent or its Subsidiaries with respect to the MRV Technology prior to the
Separation Date. Luminent shall respond to reasonable inquiries from MRV
regarding any such prior grants.
SECTION 2.3 ASSIGNMENT DISCLAIMER. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT NEITHER
PARTY NOR ANY SUBSIDIARY OF EITHER PARTY HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. FURTHER, THE PARTIES ACKNOWLEDGE AND AGREE
THAT NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER PARTY SHALL HAVE ANY OBLIGATION
UNDER THIS AGREEMENT TO MAINTAIN OR SUPPORT ANY OF THE TECHNOLOGY ASSIGNED UNDER
THIS AGREEMENT OR TO PROVIDE ANY UPGRADES OR ENHANCEMENTS THERETO TO THE OTHER
PARTY.
4
9
ARTICLE 3
LICENSES AND RIGHTS
Section 3.1 LUMINENT LICENSE TO MRV. In recognition of the fact that MRV and
Luminent were affiliated entities prior to the Separation Date, Luminent agrees
to grant separate licenses to MRV with respect to certain technologies and
products on favorable terms. The parties agree to negotiate such licensing
agreement(s) reasonably and in good faith as promptly as they can reasonably
accomplish, but in no event later than the Distribution Date.
Section 3.2 NO PATENT LICENSES. Nothing contained in this Agreement shall be
construed as conferring to either party by implication, estoppel or otherwise
any license or right under any Patent or applications therefor, whether or not
the exercise of any right herein granted necessarily employs an invention of any
existing or later issued Patent. The applicable licenses granted by MRV to
Luminent with respect to Patents are set forth in a separate Master Patent
Ownership and License Agreement.
Section 3.3 THIRD PARTY TECHNOLOGY. The assignment of any applicable license
agreements with respect to Third Party Technology are set forth in the General
Assignment and Assumption Agreement.
ARTICLE 4
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
ARTICLE 5
NO TERMINATION
Each party acknowledges and agrees that its remedy for breach by the
other party of any provision hereof shall be, subject to the requirements of
Article 6, to bring a claim to recover damages subject to the limits set forth
in this Agreement and to seek any other appropriate equitable relief, other than
termination of this Agreement. For the avoidance of doubt, the parties intend
that this Agreement continue in perpetuity.
ARTICLE 6
DISPUTE RESOLUTION
Section 6.1 MEDIATION. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement appropriate senior
5
10
executives of each party who shall have the authority to resolve the matter
shall meet to attempt in good faith to negotiate a resolution of the Dispute
prior to pursuing other available remedies. The initial meeting between the
appropriate senior executives shall be referred to herein as the "Dispute
Resolution Commencement Date." Discussions and correspondence relating to trying
to resolve such Dispute shall be treated as Confidential Information developed
for the purpose of settlement and shall be exempt from discovery or production
and shall not be admissible. If the senior executives are unable to resolve the
Dispute within thirty (30) days from the Dispute Resolution Commencement Date,
and either party wishes to pursue its rights relating to such Dispute, then the
Dispute will be mediated by a mutually acceptable mediator appointed pursuant to
the mediation rules of JAMS/Endispute within thirty (30) days after written
notice by one party to the other demanding non-binding mediation. Neither party
may unreasonably withhold consent to the selection of a mediator or the location
of the mediation. Both parties will share the costs of the mediation equally,
except that each party shall bear its own costs and expenses, including
attorneys' fees, witness fees, travel expenses, and preparation costs. The
parties may also agree to replace mediation with some other form of non-binding
or binding alternate dispute resolution ("ADR").
Section 6.2 ARBITRATION. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days of the Dispute Resolution Commencement Date,
unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), by three (3) arbitrators in Los Angeles County,
California. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall be
entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior negotiation or mediation). The decision
of the arbitrator shall be final and non-appealable and may be enforced in any
court of competent jurisdiction. The use of any ADR procedures will not be
construed under the doctrine of laches, waiver or estoppel to adversely affect
the rights of either party.
Section 6.3 COURT ACTION. Any Dispute regarding the following is not required to
be negotiated, mediated or arbitrated prior to seeking relief from a court of
competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute shall make a good faith effort to negotiate and mediate such
Dispute, according to the above procedures, while such court action is pending.
Section 6.4 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement during the course of dispute resolution
pursuant to the provisions of this Article 6 with respect to all matters not
subject to such dispute, controversy or claim.
6
11
ARTICLE 7
LIMITATION OF LIABILITY.
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY THEORY
OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT,
WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S
OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE MASTER SEPARATION AND
DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES
SHALL APPLY IN ANY EVENT.
ARTICLE 8
MISCELLANEOUS PROVISIONS
SECTION 8.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY
AND ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER IS PROVIDED ON AN "AS
IS" BASIS, AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKES ANY
REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
foregoing, neither party nor any of its Subsidiaries makes any warranty or
representation that any manufacture, use, importation, offer for sale or sale of
any product or service will be free from infringement of any Patent or other
intellectual property right of any Third Party.
Section 8.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Luminent Technology. Neither party is required
hereunder to furnish or disclose to the other any technical or other
information, except as specifically provided herein.
Section 8.3 INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Copyrights or Mask Work Rights or misappropriation of any trade secret
rights in or to any Technology licensed to the other party hereunder, or to
defend any action or suit brought by a Third Party which challenges or concerns
the validity of any of such rights or which claims that any Technology assigned
or licensed to the other party hereunder infringes any Patent, Copyright, Mask
Work Right or other intellectual property right of any Third Party or
constitutes a misappropriated trade
7
12
secret of any Third Party. MRV shall not have any right to institute any action
or suit against Third Parties for infringement of any of the Copyrights or Mask
Work Rights in or to the Luminent Technology.
SECTION 8.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated under this Agreement to provide any
technical assistance.
Section 8.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements and the Exhibits and
Schedules referenced or attached hereto and thereto constitute the entire
agreement between the parties with respect to the subject matter hereof and
thereof and shall supersede all prior written and oral and all contemporaneous
oral agreements and understandings with respect to the subject matter hereof and
thereof. This Agreement shall prevail in the event of any conflicting terms or
legends which may appear on any portion of the Luminent Technology. To the
extent there is a conflict between this Agreement and the Master Assignment and
Assumption Agreement between the parties, the terms of this Agreement shall
govern. To the extent that the parties enter into specific agreements regarding
specific projects, such agreements shall supersede this Agreement with respect
to any common subject matter.
Section 8.6 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Los Angeles County and/or the United States District Court for the Southern
District of California shall have jurisdiction and venue over all Disputes
between the parties that are permitted to be brought in a court of law pursuant
to Article 6 above.
Section 8.7 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in
any Exhibit or Schedule hereto and in the table of contents to this Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
Section 8.8 NOTICES. Notices, offers, requests or other communications required
or permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
8
13
if to MRV:
MRV Corporation
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇, Chief Executive Officer
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
if to Luminent:
Luminent, Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance or renewal shall be sent by hand delivery, recognized
overnight courier or, within the United States, may also be sent via certified
mail, return receipt requested. All other notices may also be sent by fax,
confirmed by first class mail. All notices shall be deemed to have been given
and received on the earlier of actual delivery or three (3) days from the date
of postmark.
Section 8.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its successive assignees or transferees hereunder)
may, without such consent, assign this Agreement to an entity that succeeds to
all or substantially all of the business or assets of such party as long as such
Person agrees to accept all of the terms set forth herein; provided, however,
that the rights and obligations set forth in Section 3.1 may not be assigned or
transferred in any event (except in the case of a reincorporation of such party
in another state). Without limiting the foregoing, this Agreement will be
binding upon and inure to the benefit of the parties and their permitted
successors and assigns.
Section 8.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
9
14
Section 8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure
or delay on the part of either party hereto in the exercise of any right
hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
Section 8.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
Section 8.13 COUNTERPARTS. This Agreement, including the Ancillary Agreements
and the Exhibits and Schedules hereto and thereto and the other documents
referred to herein or therein, may be executed in counterparts, each of which
shall be deemed to be an original but all of which shall constitute one and the
same agreement.
10
15
WHEREFORE, the parties have signed this Master Technology Ownership and
License Agreement effective as of the date first set forth above.
MRV COMMUNICATIONS, INC.
By:
-----------------------------
▇▇▇▇ ▇▇▇▇▇
Chief Executive Officer
LUMINENT, INC.
By:
-----------------------------
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇,
Chief Executive Officer
11
16
SCHEDULE 1.12
LUMINENT PRODUCTS SCHEDULE
12
17
SCHEDULE 1.14
LUMINENT TECHNOLOGY SCHEDULE
OPTICS:
Coupling method of light into SM Fiber:
1. Use Ball lens
2. Use GRIN Selfoc Lens Use Aspheric Lenses
3. Use ball lens with angled housing instead of angled fiber for
reducing reflection
4. Use Split sleeve versus regular ceramic to achieve reproducible
coupling with different connectors
5. Use of Epoxy to hold the component in place after alignment
6. Use of isolators integrated in the optics housing to provide good
linearity performance.
DUPLEXER (OR BiDi BI-DIRECTIONAL MODULES):
To reduce reflection:
1. Angle cleave extended fiber
2. Coat fiber end (wide band coating for low reflection while the laser
changes over temperature)
3. Paint the tip of the ferrule black to reduce reflection
4. Use glass ferrule to reduce reflection
5. Provide optical trap across from beam splitter to absorb light
reflected from the laser
6. Paint inside of housing black to eliminate reflections
Use of an optical beam splitter with different functionality such as
10/90, 30/70, and 50/50 (%pass/%reflect) and WDM functionality such
as 1310 pass 1550 nm reflect (or 1550 pass and 1310nm reflect).
TRIPLEXER (OR TriDi TRIDIRECTIONAL MODULES):
Use of two beam splitters, one for WDM and one for fixed ratio
RETURN PATH LASERS:
Return Path lasers for CATV residential access data return linear lasers with
optically isolated housings and automatic testing for the return path project.
ELECTRONICS DIGITAL:
Electronics design for the high-speed modulation of laser diodes using laser
drivers that take PECL or TTL signals and convert them to optical signals.
Incorporation of a back facet monitor to control the output power and the
extinction ratio with the setting of potentiometers on the electronics boards.
Electronics design for the high-speed detection of light with receiver chip and
post amplifiers to convert the signals to PECL or TTL outputs.
ELECTRONICS ANALOG:
Electronics design for our Duplexers and Triplexers.
We have CATV and DBS receivers with amplifiers in the same module or subsystem.
These systems have Digital automatic gain control based on optical input level.
Developed dual band optical receiver/amplifiers for the DBS and CATV channels.
Electronics design for the Data and Voice transmitter.
Electronics design for the Date and Voice receiver.
LASERS:
Two fabrication labs for laser (Chatsworth, California and Taiwan).
Method of making laser diodes.
Method of characterizing laser diodes.
Method of mounting and Laser to TO can for optimum.
Optimization of TO can performance for high speed applications.
OTHER ACTIVE COMPONENTS:
Other components include VCSELs, SLEDs, ELEDs and detectors that support many
needs in the market.
RECEIVERS:
Use of modulation while closing the detector.
Use of detector and Transimpedance amplifier on the same TO can.
AUTOMATIC TEST STATIONS:
Use of Ovens (test all parameters over temperature), computer, optical switch,
electrical switch, electrical spectrum analyzers, and optical spectrum
analyzers.
RF test and measurement (Second order, third order, noise to power ratio).
Optical test and measurement (Tracking error, cross talk, output power,
backfacet monitor current).
COARSE WDM MODULES:
Widely spaced WDM channels for the purpose of using uncooled transceivers with
the wide band optical multiplexing and demultiplexing technologies.
DWDM MODULES:
Active components.
Cooled transmitters.
Receivers.
Passive components.
Multiplexers.
Demultiplexers.
PASSIVE TECHNOLOGIES:
Many years of experience in micro-optic for passive technologies. We collimate
the light and then act on it with an element to achieve functionality.
Fiber technology ranges from fused biconical couplers to fiber gratings.
Waveguide technology is currently focused on high-speed modulation of light in
lithium niobate wafers, and DWDM functionality on silicon wafers. Also, this
technology is used for planar light wave circuits and silicon bench components.
Advanced thin film coatings use over a hundred layers to achieve critical DWDM
and CWDM performance.
13