EXHIBIT 10.45
LICENSE AGREEMENT
This Agreement effective as of the last signature below between ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, a corporation duly organized and exiting under the laws of the
Commonwealth of Massachusetts, and having its principal office and place of
business at ▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ (hereinafter "EMC"), and
MYLEX CORPORATION ("MYLEX"), a corporation duly organized and existing under
the laws of the State of Delaware, and having its principal office and place
of business at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇.
WHEREAS, EMC has rights in certain patents and pending patent
applications identified herein;
WHEREAS, MYLEX has rights in certain patents and pending patent
applications identified herein, and also has certain nonpatent rights in
technology identified herein;
WHEREAS, each of the parties expects to obtain rights in additional
patents and patent applications in the future;
WHEREAS, each of the parties is desirous of obtaining a nonexclusive
license under certain current and future patents of the other party, and EMC
is desirous of obtaining certain nonpatent rights in identified MYLEX
technology, and each party has the authority and is willing to grant such
licenses under the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the premises and of other good and
valuable consideration, and in further consideration of the covenants
hereinafter contained to be kept and performed by the parties hereto, it is
agreed as follows:
SECTION I - DEFINITIONS
1.1 "EMC Licensed Patents" means any and all issued patents listed in
Exhibits A and B hereto, and any and all patents issuing from patent
applications listed in Exhibits A and B, as well as EMC owned and controlled
continuations, continuations-in-part, divisions, and foreign counterparts
thereof, and original, reissue and re-examination patents issuing from any of
the above.
1.2 "MYLEX Licensed Patents" means all patents, throughout the world,
issued or issuing on patent applications entitled to an effective United
States filing date prior to the third anniversary of the date of execution of
this Agreement, under which patents or the applications thereof MYLEX now
has, or hereafter obtains, the right to grant licenses to EMC.
1.3 "MYLEX Technology" means the items identified in Exhibit C.
1.4 "Host" or "Client" means any external data source, including a
computer, server or other device, which is intended to transmit I/O requests
to store data to or retrieve data from a Subsystem.
1.5 "Subsystem" means a data storage subsystem including one or more
arrays of physical mass storage devices, and one or more Array Controllers
associated therewith.
1.6 "Array Controller" means a single or multi-processor device or
group of functionally inter-related devices operable to physically and/or
logically configure a plurality of physical mass storage devices as one or
more independently accessible arrays, and to control the communication of
data between the array(s) and one or more Hosts or Clients in a predetermined
format or formats.
1.7 "Licensed Subsystem" means a Subsystem which, but for the license
granted herein, the manufacture, use, or sale of which would constitute an
infringement of one or more claims of EMC Licensed Patents. In the United
States, infringement includes direct infringement, inducement to infringe,
and contributory infringement as enacted in 35 USC 271(a)-(c), respectively,
and also infringement under the Doctrine of Equivalents.
1.8 "Licensed Controller" means an Array Controller which, but for the
license granted herein, the manufacture, use, or sale of which would
constitute an infringement of one or more claims of EMC Licensed Patents. In
the United States, infringement includes direct infringement, inducement to
infringe, and contributory infringement as enacted in 35 USC 271(a)-(c),
respectively, and also infringement under the Doctrine of Equivalents.
1.9 "MYLEX Licensed Products" shall mean Licensed Subsystems and
Licensed Array Controllers, either individually or collectively. A
particular MYLEX Licensed Product is licensed under an EMC Licensed Patent
when and only when MYLEX accrues or pays the royalty amount as provided in
Section 4.1.
1.10 "EMC Licensed Product " means an EMC product which, but for the
license granted herein, the manufacture, use, or sale of which would
constitute an infringement of one or more claims of MYLEX Licensed Patents.
In the United States, infringement includes direct infringement, inducement
to infringe, and contributory infringement as enacted in 35 USC 271(a)-(c),
respectively, and also infringement under the Doctrine of Equivalents.
1.11 "Licensed Products" means Mylex Licensed Products and EMC Licensed
Products.
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1.12 "Licensed Territory", in the case of a grant by EMC, means the
United States of America, its territories and possessions, and any other
country in which EMC has or obtains one or more EMC Licensed Patents, and, in
the case of a grant by MYLEX, means the United States of America, its
territories and possessions, and any other country in which MYLEX has or
obtains one or more MYLEX Licensed Patents.
1.13 "Sales Price" for sale of a MYLEX Licensed Product on the open
market means MYLEX's gross invoice price for the MYLEX Licensed Product (or
the total of the gross invoice prices for all components of the MYLEX
Licensed Product if the components are shipped, delivered, and/or invoiced
separately) less discounts and shipping.
"Sales Price" as applied to leases, installment sales, and other
executory cash dispositions means the total gross amount of all payments to
be made without any adjustment to present value.
"Sales Price" for sales to any company in which MYLEX holds, or has
held, an equity interest, or control, or other affiliation past or present,
or where MYLEX Licensed Products are bartered or exchanged for goods or
services, or are otherwise disposed of for value other than cash, means the
sales price at which the same or the most nearly comparable MYLEX Licensed
Product has been or would currently be sold on the open market in the
ordinary course of business and in an arm's length transaction. However,
MYLEX Licensed Products used internally by MYLEX and samples for which no
consideration is paid to MYLEX shall not be considered sales and no royalties
shall be due on such products.
1.14 "Subsidiary" of a company means a corporation or other legal entity
(a) 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 (b) 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.
SECTION II - GRANT
2.1 EMC LICENSE GRANT. Subject to the terms and conditions provided in
this Agreement, EMC hereby grants MYLEX a non-exclusive, indivisible,
non-transferable license (except as otherwise provided) under EMC Licensed
Patents to make, have made pursuant to MYLEX's own specifications, use, sell,
lease or otherwise dispose of MYLEX Licensed Products within the Licensed
Territory during the term of this
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Agreement. The license granted under this Agreement and the covenant set
forth below in Section 2.4 shall be transferable by MYLEX upon the sale or
other transfer of its entire assets relating to the Licensed Products.
2.1.1 LIMITATIONS ON LICENSE. It is expressly understood and agreed
that the scope of the license granted herein by EMC to MYLEX is commensurate
with and not greater than the payment received from MYLEX in accordance with
Section 4.1. Specifically, the license is not intended to and shall not
confer upon any third party who purchases or otherwise receives a Licensed
Controller which is not sold, leased or otherwise disposed of as part of a
Licensed Subsystem any license to combine or otherwise incorporate such
Licensed Controller with other products or components to form a combination
which is covered by claims of EMC Licensed Patents applicable to Subsystems.
Particularly, the aforesaid license grant applicable to a Licensed Controller
shall not expressly or impliedly constitute a grant of a license under claims
of EMC Licensed Patents applicable to Subsystems, whether or not such
Subsystems incorporate a Licensed Controller.
2.1.1.1 MYLEX agrees to notify each purchaser of a Licensed Controller
in its purchase order acknowledgment of the foregoing license limitations by
including in a prominent manner and location on the purchase order
acknowledgement, a notice in substantially the following form:
MYLEX is licensed under patents owned by EMC to sell, lease, or
otherwise dispose of Controllers. However, the purchase of a Controller
does not expressly nor impliedly license the purchaser to combine or use
the Controller in combination with any other products or components
which combination would be covered by EMC patent claims applicable to
Subsystems. As used herein, Controllers means a single or
multi-processor device or group of functionally interrelated devices
operable to physically and/or logically configure a plurality of
physical mass storage devices as one or more independently accessible
arrays, and to control the communication of data between the array(s)
and Host(s) or Client(s) in a predetermined format or formats. Subsystem
means a data storage subsystem including one or more arrays of physical
mass storage devices, and one or more Controllers associated therewith.
2.2 DEDUCTION FOR LICENSED PURCHASERS. EMC agrees that if a purchaser
of a Licensed Controller from MYLEX has entered into or enters into a license
agreement with EMC and is licensed to manufacture a Subsystem which includes
one or more of such Licensed Controllers, MYLEX need not pay a royalty for
Licensed Controllers sold to such licensed purchaser. MYLEX may inform
prospective purchaser of this provision.
2.3 WAIVER OF INDUCEMENT AND CONTRIBUTORY INFRINGEMENT CLAIMS.
Subject to payment of the required royalty, EMC waives any and all claims
against MYLEX for induced or contributory infringement of EMC Licensed
Patents applicable to Subsystems for MYLEX's sales of Licensed Controllers.
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2.4 EMC COVENANT NOT TO ▇▇▇ ▇▇▇▇▇. EMC hereby grants MYLEX a covenant
not to ▇▇▇ on all RAID patents other than Licensed Patents, throughout the
world, issued or issuing on patent applications entitled to an effective
United States filing date prior to the third anniversary of the date of
execution of this Agreement, under which patents or the applications thereof
EMC now has, or hereafter obtains, the right to grant such covenant not to
▇▇▇ to MYLEX. No royalties shall accrue under such covenant not to ▇▇▇.
Such covenant not to ▇▇▇ shall also extend to any customer of MYLEX who
purchases or otherwise receives an Array Controller from MYLEX, but only to
the same extent as Licensed Controllers as limited in Section 2.1.1 above.
2.5 MYLEX LICENSE GRANT. Subject to the terms and conditions provided
in this Agreement, MYLEX hereby grants EMC a non-exclusive, indivisible,
non-transferable license under the MYLEX Licensed Patents to make, have made
pursuant to EMC's own specifications, use, sell, lease or otherwise dispose
of EMC Licensed Products within the Licensed Territory during the term of
this Agreement.
2.6 MYLEX TECHNOLOGY GRANT. MYLEX grants EMC a non-exclusive,
indivisible, non-transferable license to use MYLEX Technology including, but
not limited to, copyrights, trade secrets, and know how. This grant is
strictly limited to the technology set forth in Exhibit C.
2.7 SUBLICENSES. EMC and MYLEX shall each have the right to grant
sublicenses within the scope of the respective licenses granted herein to its
Subsidiaries but to no other person, company or legal entity. A sublicense
may be granted to a Subsidiary at any time during the term of this Agreement.
Any sublicense granted hereunder to a Subsidiary shall terminate
automatically if and when such Subsidiary no longer qualifies as a Subsidiary
as defined herein. A sublicense granted to a Subsidiary gives the Subsidiary
no right to grant any additional sublicense without the written consent of
the other party. If a sublicense has been granted to a Subsidiary, the term
EMC or MYLEX, as applicable, shall include Subsidiary for all purposes. If
MYLEX has MYLEX Licensed Products made for it pursuant to MYLEX's own
specifications, such MYLEX Licensed Products shall be sold only by MYLEX
through MYLEX's normal sales channels, and MYLEX's right to have MYLEX
Licensed Products made for it shall not be construed as a right to grant
sublicenses under the licenses granted herein.
SECTION III - LIMITATIONS ON RIGHTS AND RELATIONSHIPS
3.1 NO IMPLIED LICENSE. It is expressly understood that no license or
right is hereby granted, by implication, estoppel, or otherwise:
3.1.1 with respect to any patent, patent right, or other intellectual
property or property right not specifically identified herein;
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3.1.2 to any third party that makes Licensed Products for EMC or MYLEX;
3.1.3 with respect to any product other than a MYLEX Licensed Product
notwithstanding that such other product may incorporate a MYLEX Licensed
Product; or
3.1.4 to parties acquiring any Licensed Controller from MYLEX for the
combination of the Licensed Controller with any other product, including
additional products provided by MYLEX, or for the use of any such combination
even if such other or additional product has no substantial use other than as
part of such combination.
3.1.5 in no event shall MYLEX be required to pay more than one royalty
on any of the Licensed Controllers or Licensed Subsystems.
3.2 NO JOINT VENTURE. Nothing herein is intended to nor shall be
construed as creating any joint venture, agency, partnership or relationship
other than licensor-licensee between EMC and MYLEX.
SECTION IV - PAYMENTS AND ROYALTIES
4.1 ROYALTY PAYMENTS BY MYLEX. As additional consideration for the
license, immunities, and other rights granted to MYLEX herein, MYLEX shall
pay to EMC an initial lump sum payment of $XXXX due and payable upon
execution of this agreement. Such initial payment may be credited against
quarterly per controller royalties due up to a maximum of fifty percent (50%)
of each such quarterly controller royalties. MYLEX agrees to pay EMC a
royalty rate for each Licensed Controller made, sold, leased, or otherwise
disposed of separately from a Licensed Subsystem by MYLEX equal to XXX
percent (XXX%) of the Sales Price of the Licensed Controller for the first
XXX dollars ($XXX) of sales of royalty bearing Licensed Controllers and
thereafter the royalty rate for each Licensed Controller will be reduced to
XXX percent (XXX%) of the Sales Price of the Licensed Controller for those
Licensed Products that are covered by more than one of the EMC Licensed
Patents. After the first $XXXXX of sales of royalty bearing Licensed
Controllers, in the case of a Licensed Controller which, but for the license
granted herein, the manufacture, use, or sale of which would constitute an
infringement of only one of the EMC Licensed Patents, the royalty rate for
each such Licensed Controller shall be reduced to equal XXX percent (XXX%) of
the Sales Price of the Licensed Controller. In such event, MYLEX shall
certify that, in its opinion, only one of the EMC Licensed Patents is
infringed, and shall identify that patent in the written report of Section
4.3. Further, MYLEX agrees to pay EMC a royalty for each Licensed Subsystem
made, sold, leased, or otherwise disposed of by MYLEX equal to XXXX percent
(XXXX%) of the Sales Price of the Licensed Subsystem. The parties have
agreed that at least seventy five percent (75%) of the royalties paid under
this Agreement are attributable to the patents of Exhibit B.
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4.1.1 MYLEX shall not be obligated to pay a royalty for any Licensed
Product returned to MYLEX for which MYLEX issues a credit in the amount of
the Sales Price. MYLEX shall not be obligated to pay a separate royalty for
a Licensed Controller sold, leased or otherwise transferred or disposed of by
MYLEX as a part of a Licensed Subsystem, provided MYLEX has paid the required
royalty for the Licensed Subsystem.
4.1.2 No part of any payment by MYLEX to EMC hereunder shall be
refundable for any reason whatsoever.
4.1.3 All royalties specified in Section 4.1 shall be payable in lawful
money of the United States of America.
4.2 ACCOUNTING. MYLEX agrees to make and retain true and accurate
records showing the sales, leases and other transfers or dispositions of
MYLEX Licensed Products in sufficient detail to enable the royalties payable
hereunder to be determined and shall not destroy such records for at least
five (5) years from the date of creation. MYLEX further agrees to permit its
books and records to be examined from time to time to the extent necessary to
verify the payment of royalties in the proper amounts, provided such
examinations shall take place upon reasonable notice to MYLEX and no more
frequently than once per year. Such examinations shall be made at the expense
of EMC by any auditor appointed by EMC who shall be acceptable to MYLEX,
which acceptance shall not be unreasonably withheld by MYLEX. Further, MYLEX
shall furnish whatever additional information EMC may reasonably request from
time to time to enable EMC to verify the calculation of royalties due
pursuant to this Agreement.
4.3 REPORTING. MYLEX agrees to make written reports to EMC quarterly.
MYLEX shall use its best efforts to report to EMC within forty-five (45) days
after the first day of each January, April, July, and October during the term
of this Agreement. Each report shall include the number, identification or
designation, description and aggregate Selling Price of each type of MYLEX
Licensed Product sold, leased, transferred or otherwise disposed of during
the preceding three (3) calendar months and the aggregate royalties payable
for each type of MYLEX Licensed Product as provided in Section 4.1. Each
report shall be certified by an officer of MYLEX. The first such report shall
include the above-specified information for all MYLEX Licensed Products sold,
leased, transferred or otherwise disposed of between the Effective Date of
this Agreement and the date of such report. MYLEX also agrees to make a
written report to EMC within thirty (30) days after the date of any
termination of this Agreement, including in such report the above-specified
information for all MYLEX Licensed Products sold, leased, transferred or
otherwise disposed of and not previously reported to EMC. EMC shall treat
such reports as confidential and shall not use the information contained
therein except for accounting purposes under this Agreement.
4.4 PAYMENTS. Concurrently with the making of each report as provided
for in Section 4.3, MYLEX shall remit to EMC the royalties provided for in
Section 4.1.
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Payment shall be made by draft payable to ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ and shall be sent
to EMC as provided in Section 10.5.
4.5 INTEREST. MYLEX shall pay interest to EMC from the payment due
date to the actual date of payment upon any and all amounts of royalty or
payment that are overdue and payable hereunder at the rate of 125% of the
prime interest rate of Citibank of New York published in The Wall Street
Journal on the date the amount became due and owing. Said interest rate
shall, in no event, exceed the applicable usury law limitation.
4.6
SECTION V - MARKING LICENSED PRODUCTS
5.1 MARKING. Where commercially practicable, each of the parties shall
place appropriate patent markings upon an exposed surface of all of its own
Licensed Products. The content, form, location and language used in such
markings shall be in accordance with the laws and practices of the Licensed
Territory and shall be approved by the other party in writing before use.
5.2 LABELS. Upon request by either party and where commercially
practicable, the other party shall provide the requesting party with labels
for use in complying with Section 5.1. The requesting party may specify the
dimensions of the area in which the label must fit, consistent with the
requirements of 35 U.S.C. 287 where commercially practicable.
SECTION VI - INDEMNIFICATION
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6.1 INDEMNIFICATION. Each party as licensee agrees to hold the other
party as licensor harmless against all liabilities, demands, damages,
expenses or losses arising out of the manufacture, use, sale or other
disposition by the licensee party or its vendees or other transferees of
Licensed Products.
SECTION VII - REPRESENTATIONS AND WARRANTIES
7.1 OWNERSHIP AND AUTHORITY TO GRANT LICENSE. Each party warrants and
represents that to the best of its knowledge it has the authority to grant
the licenses granted hereinabove.
7.2 NO WARRANTY OF NON-INFRINGEMENT. Neither party makes any warranty
that the manufacture, use, sale, lease, transfer or other disposition of
Licensed Products by the other party as licensee will not infringe patents or
other intellectual property rights of any third parties. It is agreed that
neither party has any obligation to indemnify or defend the other party with
respect to any claim, demand or cause of action for infringement or alleged
infringement of any patent or other intellectual property right arising out
of or connected with the manufacture, use, sale, lease or other transfer or
disposition of operation of Licensed Products.
7.3 DISCLAIMER. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED HEREIN, NEITHER
PARTY MAKES ANY REPRESENTATIONS, EXTENDS ANY WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE, AND ASSUMES ANY RESPONSIBILITIES WHATEVER, INCLUDING
ANY RESPONSIBILITIES OF INDEMNIFICATION, WITH RESPECT TO THE USE, SALE OR
OTHER DISPOSITION BY THE OTHER PARTY, ITS VENDEES OR OTHER TRANSFEREES OF
PRODUCTS INCORPORATING OR OPERATING IN ACCORDANCE WITH THE EMC OR MYLEX
LICENSED PATENTS.
SECTION VIII - TERM AND TERMINATION
8.1 EFFECTIVE DATE. This Agreement is effective as of the last
signature below.
8.2 TERMINATION. Unless earlier terminated in accordance with the
terms and provisions of this Agreement, this Agreement and the licenses and
rights granted hereunder shall remain in force and effect until the last to
expire of EMC or MYLEX Licensed Patents.
8.3 SURVIVAL OF RIGHTS AND OBLIGATIONS. Notwithstanding the provisions of
Section 8.2, the following rights and obligations shall survive any termination
of this Agreement:
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(a) MYLEX's obligation to supply the final report provided for in
Section 4.3;
(b) EMC's right to receive or recover, and MYLEX's obligation to
pay royalties accrued or accruable for payment as of the time of any
termination as provided for in Section 4.1;
(c) MYLEX's obligation to maintain records and EMC's right to
conduct a final audit as provided in Section 4.2;
(d) licenses running in favor of vendees of MYLEX with respect to
MYLEX Licensed Products sold, leased, transferred or otherwise disposed of
by MYLEX prior to any termination and on which applicable royalties shall
have been paid as provided in Section 4.1;
(e) any cause of action or claim of either party accrued or to
accrue, because of any breach or default by the other party; and
(f) in the event of termination of this Agreement by one party as
a result of circumstances provided for in Sections 8.4, 8.5 or 8.6, the
patent licenses and other rights granted to or for the benefit of the
terminating party hereto by the other party, provided however, the licenses
and rights granted to or for the benefit of the other party, including all
sublicenses granted by the other party to Subsidiaries, shall terminate.
8.4 TERMINATION ON BREACH. In the event of a material breach of a term
or condition of this Agreement by a party, the other party shall have the
right to terminate this Agreement forthwith by notice in writing identifying
and describing the breach. This Agreement will terminate thirty (30) days
following the sending of such notice, unless the breach is cured within that
time. The right to terminate shall be in addition to all other rights and
remedies which a party may have in law or equity to enforce this contract or
to seek damages for breach thereof.
8.5 TERMINATION ON ATTEMPTED TRANSFER. Any assignment, transfer or
sublicense or attempted assignment, transfer or sublicense of this Agreement
or of any license or other rights granted hereunder in violation of the terms
and conditions hereof shall be null and void ab initio, shall constitute a
material breach of this Agreement, and shall entitle the aggrieved party to
immediately terminate this Agreement on written notice without any
requirement to provide advance notice as provided in Section 8.4.
8.6 TERMINATION ON BANKRUPTCY. In any of the following events, EMC
shall have the right to terminate this Agreement at any time if :
(a) MYLEX files a voluntary petition in bankruptcy; or
(b) an involuntary petition in bankruptcy is filed naming MYLEX; or
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(c) MYLEX makes an assignment of assets for the benefit of creditors;
or
(d) a receiver or trustee of MYLEX's assets shall be appointed; or
(e) MYLEX shall cease or discontinue conducting business in the
ordinary course.
8.7 NO WAIVER. The waiver by either party of a breach or default in or
of any provision of this Agreement by the other party shall not act or be
construed as a waiver by such party of any other or succeeding breach of the
same or other provision(s), nor shall any delay or omission on the part of
either party to exercise or avail itself of any right, power or privilege
that it has or may have hereunder, operate as a waiver of any right, power or
privilege by such party.
SECTION IX - TRANSFERABILITY
9.1 NON-TRANSFERABLE. This Agreement shall inure to the benefit of the
parties hereto and, insofar as expressly provided for herein, to their
respective Subsidiaries. Neither party shall assign or transfer, or attempt
to assign or transfer, either this Agreement or any portion of its license or
rights under the other party's Licensed Patents to any third party, whether
by contract, by acquisition of a controlling interest, by merger, by
consolidation or by operation of law without the prior written consent of the
other party except as provided above in Section 2.1.
SECTION X - MISCELLANEOUS
10.1 COMPLETE AGREEMENT. This instrument embodies the complete and
only agreement between the parties and supersedes and cancels any and all
previous understandings, agreement, negotiations, commitments and any other
writings or communications pertaining to its subject matter.
10.2 MODIFICATION AND WAIVER. This Agreement may not be modified or
amended, nor may any right or obligation set forth herein be waived, except
in a writing signed by the parties with at least the same formalities as are
observed herein. A waiver as to any particular term shall not operate as a
waiver as to any other terms.
10.3 SEVERABILITY. In the event any provision of this Agreement shall
be held to be invalid or unenforceable in any respect or for any reason, such
holding shall not impair the validity and enforceability of the remaining
provisions of this Agreement, which shall continue to be given full force and
effect, except that the Parties agree to make such other and further
agreements as may be necessary to provide the full intended economic benefit,
if any, associated with any provisions held invalid or unenforceable.
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10.4 CONFIDENTIALITY. The Parties agree that the terms of this
Agreement shall be kept confidential, except that the Parties may disclose
the following aspects of this Agreement to the following persons and under
the following conditions:
(a) any aspect may be disclosed to anyone with the express written
consent of the other party obtained in advance of the disclosure;
(b) any aspect may be disclosed to a party or person subject to an
obligation to maintain the confidentiality of this Agreement, when ordered or
directed to disclose this Agreement by a court of competent jurisdiction in
connection with a lawsuit or administrative proceeding;
(c) any aspect may be disclosed to those persons with a "need to
know" in order to provide the parties with corporate, financial, legal,
contract, insurance, loan, investment, audit, or similar business related
information and services, and who also agree to treat such information as
confidential;
(d) any aspect may be disclosed publicly if necessary to correct
or respond to material misinformation regarding the substance of this
Agreement made by one of the Parties to this Agreement, but only after the
Parties have consulted and attempted in good faith to resolve any concerns
privately;
(e) the existence of license rights under this Agreement may be
disclosed in connection with further licensing efforts;
(f) EMC may disclose the terms of this Agreement in connection
with future licensing efforts;
(g) an announcement of this Agreement and the existence of license
rights thereunder may be disclosed publicly in a joint press release, the
language of which shall be agreed upon by the Parties, following execution of
this Agreement.
10.5 NOTICES. Any notice, request, report, or remittance required or
permitted to be given under or in connection with this Agreement or the
subject matter hereof, shall be deemed to have been sufficiently given when
addressed as follows and sent by Certified Mail, postage prepaid, or (except
for remittance of royalties) by facsimile.
TO EMC: ▇▇. ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Esq.
Intellectual Property Counsel
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Telephone: (▇▇▇)-▇▇▇-▇▇▇▇ (ext. 77225)
Facsimile: (▇▇▇)-▇▇▇-▇▇▇▇
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TO : Ms. ▇▇▇▇▇▇▇ ▇▇▇▇
Chief Financial Officer
Mylex Corporation
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
The date of receipt of any such notice or request shall be deemed
to be the date of actual receipt by the addressee thereof, but in any case
not later than fourteen (14) days after the date of dispatch thereof. Either
party may give written notice of change of address to the other and, after
such notice has been received, any notice or request required to be given to
such party shall be given at such changed address, in the manner provided
above.
10.6 CHOICE OF LAW AND VENUE. This Agreement shall be construed and
interpreted with the laws of the Commonwealth of Massachusetts. In the event
suit is filed by either party involving a dispute concerning the
construction, interpretation, enforcement, or breach of this Agreement, or
the enforcement of any intellectual property rights which are the subject
hereof, the parties agree to submit to personal jurisdiction and venue of any
Massachusetts State or Federal Court located within Massachusetts having
appropriate subject matter jurisdiction.
10.7 ATTORNEY FEES. In the event a party hereto initiates any legal
action to interpret any provision or term of this Agreement or to enforce any
right or obligation thereunder, the prevailing party shall be entitled, in
addition to any other relief or award granted, to an award of reasonable
attorney's fees.
10.8 REPRESENTATIONS OF AUTHORITY. Each of the Parties warrants and
represents to the other that it has the power to enter into this Agreement
and that the person executing this Agreement on its behalf has been
authorized to do so by any and all appropriate corporate bodies.
10.9 RELEASE OF CLAIMS. Upon execution of this Agreement, EMC releases
all claims for profits, damages, or royalties otherwise collectable under
applicable laws by EMC from MYLEX by reason of past infringement.
10.10 COUNTERPARTS. This Agreement may be executed in two (2)
counterparts, all of which, taken together, shall be regarded as one and the
same instrument.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to
be executed below by its duly authorized officer or representative:
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ MYLEX CORPORATION
By: /s/ ▇▇▇▇ ▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇
------------------------ -------------------------
Executive Vice
Title: President Title: VP Finance & CEO
--------------------- ----------------------
Date: Dec 22, 1998 Date: Dec 24, 1998
--------------------- ----------------------
ATTACHMENT A
U.S. PATENT NO. TITLE
--------------- -----
5,023,891 Method and Circuit for Decoding a Manchester Code Signal
5,146,574 Method and Circuit for Programmable Selecting a Variable Sequence of Element Using
Write-Back
5,349,686 Method and Circuit for Programmable Selecting a Variable Sequence of Elements Using
Write-Back
5,315,708 A Method and Apparatus for Transferring Data through a Staging Memory
5,134,619 Failure-Tolerant Mass Storage System
5,285,451 Failure-Tolerant Mass Storage System
5,233,692 Enhanced Interface Permitting Multiple-Byte Parallel Transfers of Control Information
and Data on a Small Computer System Interface
5,454,085 Method and Apparatus for an Enhanced Computer System Interface
5,185,876 Buffering System for Dynamically Providing Data to Multiple Storage Elements
5,386,548 A Method for Storing Data from an External Processor in Storage Devices through Buffer
Devices
5,195,100 Non-Volatile Memory Storage of Write Operation Identifier in Data Storage Device
5,475,697 Non-Volatile Memory Storage of Write Operation Identifier in Data Storage Device
5,758,054 Non-Volatile Memory Storage of Write Operation Identifier in Data Storage Device
5,233,618 Data Correcting Applicable to Redundant Array of Independent Disks
5,469,453 Data Corrections Applicable to Redundant Array of Independent Disks
U.S. PATENT NO. TITLE
--------------- -----
5,166,939 Data Storage Apparatus and Method
5,461,723 Dual Channel Data Block Transfer Bus
5,485,147 Method and Apparatus for Scheduling Access to a CSMA Communication Medium
5,175,537 Method and Apparatus for Scheduling Access to a CSMA Communication Medium
5,361,063 Method and Apparatus for Scheduling Access to a CSMA Communication Medium
5,359,320 Method and Apparatus for Scheduling Access to a CSMA Communication Medium
5,325,497 Method and Apparatus for Assigning Signatures to Identify Members of a Set of Mass
Storage Devices
5,214,778 Resource Management in a Multiple Resource System
5,361,347 Resource Management in a Multiple Resource System where Each Resource Includes an
Availability State Stored in a Memory of the Resource
5,388,243 A Multi-Port Mass Storage Device Announcing its Active Paths without Deactivating its
Ports in a Network Architecture
5,212,785 Apparatus and Method for Controlling Data Flow between a Computer and Memory Devices
5,202,856 Method and Apparatus for Simultaneous, Interleaved Access of Multiple Memories by
Multiple Ports
5,226,010 Method and Apparatus for Simultaneous, Interleaved Access of Multiple Memories by
Multiple Ports
5,414,818 Controlled Bus Reselection and Method
5,715,406 Controlled Bus Reselection and Method
5,140,592 Disk Array System
5,274,645 Disk Array System
ATTACHMENT B
U.S. PATENT NO. TITLE
--------------- -----
5,148,432 Arrayed Disk Drive System and Method
316,850 Arrayed Disk Drive System
5,235,601 On-Line Restoration of Redundancy Information in a Redundant Array System
5,613,059 On-Line Restoration of Redundancy Information in a Redundant Array System
5,708,769 Logical Partitioning of a Redundant Array Storage System
5,519,844 Logical Partitioning of a Redundant Array Storage System
5,274,799 Storage Device Array Architecture with Copyback Cache
5,526,482 Storage Device Array Architecture with Copyback Cache
5,617,530 Storage Device Array Architecture with Copyback Cache
5,499,337 Storage Device Array Architecture with Solid-State Redundancy
5,208,813 On-Line Reconstruction of a Failed Redundant Array System
5,390,187 On-Line Reconstruction of a Failed Redundant Array System
5,636,358 Dual Port Buffer Memory for Data Storage System
5,398,253 Storage-Unit Generation of Redundancy Information
5,517,613 Environment Sensing/Control Circuit
5,675,726 Flexible Parity Generation Circuit
5,469,566 Flexible Parity Generation Circuit
5,546,535 Multiple Controller Sharing in a Redundant Storage Array
5,590,276 Method for Synchronizing Reserved Areas in a Redundant Storage Array
U.S. PATENT NO. TITLE
--------------- -----
5,689,678 Distributed Disk Array
5,787,459 Distributed Disk Array Architecture
PATENT APPLICATION TITLE
NO.
------------------ -----
08/551,928 Address Protection Circuit
09/004,671 Logical Partitioning of A Redundant Array Storage System
08/825,625 Storage Device Array Architecture with Copyback Cache
08/579,552 Storage Device Array Architecture with Solid-State Redundancy
08/832,050 Flexible Parity Generation Circuit
08/579,314 Method for Synchronizing Reserved Areas in a Redundant Storage Array
09/093,242 Method for Synchronizing Reserved Areas in a Redundant Storage Array
09/123,176 Distributed Disk Array
EXHIBIT C
MYLEX Technology:
----------------
- Pegasus Hardware Specification, revision 0.2, 12/12/95
- RAID Data Path Controller (RDC), revision 0.5, Preliminary Specification
of 12/12/95
- Fibre Channel Topologies for RAID Controllers, White Paper
- New Backup Strategies for the DAC960SX and DAC96OSF RAID Controllers,
Document of 11/18/97
- N-Way Controller Architecture