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EXHIBIT 2.8
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
MRV COMMUNICATIONS, INC.
AND
LUMINENT, INC.
EFFECTIVE AS OF _____, 2000
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TABLE OF CONTENTS
PAGE
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ARTICLE 1 DEFINITIONS.......................................................................1
Section 1.1 ALLOCATED PATENT ASSETS SCHEDULE...........................................1
Section 1.2 ASSIGNED PATENTS...........................................................1
Section 1.3 BLUETOOTH..................................................................2
Section 1.4 CURRENT LUMINENT PRODUCTS..................................................2
Section 1.5 CURRENT MRV PRODUCTS.......................................................2
Section 1.6 DISTRIBUTION DATE..........................................................2
Section 1.7 FIRST EFFECTIVE FILING DATE................................................2
Section 1.8 INVENTION DISCLOSURE.......................................................3
Section 1.9 MASTER SEPARATION AND DISTRIBUTION AGREEMENT...............................3
Section 1.10 LUMINENT PATENTS...........................................................3
Section 1.11 LUMINENT PRODUCTS..........................................................3
Section 1.12 PATENTS....................................................................3
Section 1.13 PERSON.....................................................................3
Section 1.14 SEPARATION DATE............................................................3
Section 1.15 SUBSIDIARY.................................................................3
Section 1.16 THIRD PARTY................................................................4
Section 1.17 THIRD PARTY PATENTS........................................................4
Section 1.18 MRV PATENTS................................................................4
Section 1.19 "MRV Patents" means:.......................................................4
Section 1.20 MRV PRODUCTS...............................................................4
ARTICLE 2 OWNERSHIP.........................................................................4
Section 2.1 OWNERSHIP OF PATENTS.......................................................4
Section 2.2 ASSIGNMENT DISCLAIMER......................................................5
ARTICLE 3 LICENSES AND COVENANTS NOT TO ▇▇▇.................................................5
Section 3.1 LICENSE GRANTS TO LUMINENT WITH RESPECT TO CERTAIN LUMINENT
PATENTS....................................................................5
Section 3.2 RESTRICTION ON MRV LICENSING OF CERTAIN LUMINENT PATENTS...................6
Section 3.3 RESTRICTION ON LUMINENT'S "HAVE MADE" RIGHTS TO CERTAIN
LUMINENT PATENTS...........................................................6
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Section 3.4 COMBINATION EXCLUSION......................................................6
Section 3.5 LUMINENT'S SUBLICENSE RIGHTS WITH RESPECT TO CERTAIN LUMINENT
PATENTS....................................................................6
Section 3.6 DURATION...................................................................6
Section 3.7 ACQUISITION OF LUMINENT OR TRANSFER OF A BUSINESS OR
SUBSIDIARY RELATED TO CERTAIN LUMINENT PATENTS.............................7
Section 3.8 COPIES OF PATENT APPLICATIONS AND INVENTION DISCLOSURES....................8
Section 3.9 THIRD PARTY PATENTS........................................................8
Section 3.10 MRV COVENANT NOT TO ▇▇▇....................................................8
Section 3.11 LUMINENT COVENANT NOT TO ▇▇▇...............................................9
ARTICLE 4 ADDITIONAL OBLIGATIONS...........................................................11
Section 4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS....................11
Section 4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO CERTAIN LUMINENT
PATENTS...................................................................12
Section 4.3 STANDARDS BODIES..........................................................12
Section 4.4 ASSIGNMENT OF PATENTS.....................................................13
Section 4.5 RECORDATION OF LICENSES...................................................13
ARTICLE 5 CONFIDENTIALITY..................................................................13
ARTICLE 6 TERMINATION......................................................................13
Section 6.1 VOLUNTARY TERMINATION.....................................................13
Section 6.2 SURVIVAL..................................................................13
Section 6.3 NO OTHER TERMINATION......................................................14
ARTICLE 7 DISPUTE RESOLUTION...............................................................14
Section 7.1 MEDIATION.................................................................14
Section 7.2 ARBITRATION...............................................................14
Section 7.3 COURT ACTION..............................................................14
Section 7.4 CONTINUITY OF SERVICE AND PERFORMANCE.....................................15
ARTICLE 8 LIMITATION OF LIABILITY..........................................................15
ARTICLE 9 MISCELLANEOUS PROVISIONS.........................................................15
Section 9.1 DISCLAIMER................................................................15
Section 9.2 NO IMPLIED LICENSES.......................................................16
Section 9.3 INFRINGEMENT SUITS........................................................16
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Section 9.4 NO OTHER OBLIGATIONS......................................................16
Section 9.5 ENTIRE AGREEMENT..........................................................16
Section 9.6 GOVERNING LAW.............................................................16
Section 9.7 DESCRIPTIVE HEADINGS......................................................16
Section 9.8 NOTICES...................................................................17
Section 9.9 NONASSIGNABILITY..........................................................17
Section 9.10 SEVERABILITY..............................................................17
Section 9.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE.....................18
Section 9.12 AMENDMENT.................................................................18
Section 9.13 COUNTERPARTS..............................................................18
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MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
This Master Patent Ownership and License Agreement (the "Agreement") is
effective as of ________, 2000 (the "Effective Date"), between MRV
Communications, Inc., 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;
WHEREAS, also as part of the foregoing, MRV and Luminent desire to
confirm Luminent's ownership of all patents, patent applications and invention
disclosures invented by or for Luminent and to record in Luminent's name any
such patents and patent applications that are recorded in MRV's name;
WHEREAS, Luminent and MRV desire to confirm MRV's ownership of certain
jointly developed technology and Luminent desires to receive and MRV is willing
to grant to Luminent certain licenses and rights under patents, patent
applications and invention disclosures covering such technology; and
WHEREAS, Luminent and MRV further desire to enter into reciprocal
covenants not to ▇▇▇ for patent infringement.
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 ALLOCATED PATENT ASSETS SCHEDULE. "Allocated Patent Assets
Schedule" means the mutually agreed Allocated Patent Assets Schedule as of the
Separation Date, as it may be updated by the parties upon mutual agreement to
add Patents, Patent applications and Invention Disclosures as of the Separation
Date.
Section 1.2 ASSIGNED PATENTS. "Assigned Patents" means only those
(a) Patents, Patent applications and Invention Disclosures that are
recorded in MRV's name and are allocated to Luminent in the Allocated Patent
Assets Schedule;
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(b) Patent applications filed on the foregoing Invention Disclosures
described in Section 1.2(a);
(c) continuations, continuations-in-part, divisions and substitutions of
any of the foregoing Patent applications described in Sections 1.2(a) and (b);
(d) Patents which may issue on any of the foregoing Patent applications
described in Sections 1.2(a)-(c);
(e) renewals, reissues, reexaminations and extensions of the foregoing
Patents described in Sections 1.2(a) and (d); and
(f) foreign Patent applications and Patents that are counterparts of any
of the foregoing Patent applications or Patents described in Sections
1.2(a)-(e), including any Patent application or Patent to the extent that it
claims priority from any of the foregoing Patent applications or Patents
described in Sections 1.2(a)-(e); but
(g) excluding from any Patent or Patent application described in
Sections 1.2(c)-(f) any claim (i) directed to subject matter that does not
appear in any Patent application having a First Effective Filing Date prior to
the Separation Date and (ii) of which neither Luminent nor any person having a
legal duty to assign his/her interest therein to Luminent is entitled to be
named as an inventor.
Section 1.3 BLUETOOTH. "Bluetooth" means the short range wireless standard
currently being promulgated by the Bluetooth Special Interest Group, of which
MRV is an adopter.
Section 1.4 CURRENT LUMINENT PRODUCTS. "Current Luminent Products" means
Luminent Products of the businesses in which Luminent or any of its Subsidiaries
is engaged as of the Separation Date, including any Luminent Products under
development as set forth in MRV's planning materials or forecasts for Fiscal
Year 2000 or as otherwise agreed by the parties, as well as future versions of
such Luminent Products, but only to the extent that they use the same designs
and/or technology as such Luminent Products.
Section 1.5 CURRENT MRV PRODUCTS. "Current MRV Products" means MRV Products of
the businesses in which MRV or any of its Subsidiaries is engaged as of the
Separation Date, including any MRV's Products under development as set forth in
MRV's planning materials or forecasts for Fiscal Year 2000 or as otherwise
agreed by the parties, as well as future versions of such MRV Products, but only
to the extent that they use the same designs and/or technology as such MRV
Products.
Section 1.6 DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in
the Master Separation and Distribution Agreement.
Section 1.7 FIRST EFFECTIVE FILING DATE. "First Effective Filing Date" means the
earliest effective filing date in the particular country for any Patent or any
application for any Patent. By way of example, it is understood that the First
Effective Filing Date for a United States Patent is the earlier of (i) the
actual filing date of the United States Patent application which issued into
such Patent, (ii) the priority date under 35 U.S.C. (S) 119 for such Patent, or
(iii) the priority date under 35 U.S.C. (S) 120 for such Patent.
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Section 1.8 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) with a
First Effective Filing Date before the Separation Date.
Section 1.9 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation and
Distribution Agreement" means the Master Separation and Distribution Agreement
between the parties.
Section 1.10 LUMINENT PATENTS. "Luminent Patents" means:
(a) the Assigned Patents;
(b) every Patent to the extent entitled to a First Effective Filing Date
prior to the Separation Date provided that, at any time after the First
Effective Filing Date of any such Patent and prior to the Separation Date,
Luminent (or any Subsidiary of Luminent) has ownership or control of any such
Patent; and
(c) applications for the foregoing Patents described in Section 1.10(b),
including without limitation any continuations, continuations-in-part, divisions
and substitutions.
Section 1.11 LUMINENT PRODUCTS. "Luminent Products" means any and all products
and services of the businesses in which Luminent or any of its Subsidiaries is
engaged now or in the future, in all cases which products are designed or
created primarily by Luminent (or by any sublicensed Subsidiary) and/or by a
subcontractor for Luminent (or for any sublicensed Subsidiary).
Section 1.12 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, reexaminations and extensions of any of the foregoing.
Section 1.13 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 1.14 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
________________, or such other date as may be fixed by the Board of Directors
of MRV.
Section 1.15 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 the purposes of this Agreement, Luminent shall be
deemed not to be a Subsidiary of MRV.
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Section 1.16 THIRD PARTY. "Third Party" means a Person other than MRV and its
Subsidiaries and Luminent and its Subsidiaries.
Section 1.17 THIRD PARTY PATENTS. "Third Party Patents" means all Third Party
Patents licensed by MRV or any Subsidiary of MRV that, as of the Effective Date,
may be sublicensed to Luminent (e.g., because Luminent is a Subsidiary of MRV)
under the terms of this Agreement without the requirement to pay a royalty or
other consideration to a Third Party (unless MRV has the right to grant such a
sublicense to Luminent on payment of a royalty and Luminent agrees to pay such
royalty to such Third Party).
Section 1.18 MRV PATENTS Section 1.19 "MRV Patents" means:
(a) every Patent to the extent entitled to a First Effective Filing Date
prior to the Separation Date provided that, at any time after the First
Effective Filing Date of any such Patent and prior to the Separation Date, MRV
(or any Subsidiary of MRV) has ownership or control of any such Patent; and
(b) applications for the foregoing Patents described in Section 1.18(a),
including without limitation any continuations, continuations-in-part, divisions
and substitutions.
Section 1.20 MRV PRODUCTS. "MRV Products" means any and all products and
services of the businesses in which MRV or any of its Subsidiaries is engaged
now or in the future, in all cases which products are designed or created
primarily by MRV (or by any sublicensed Subsidiary) and/or by a subcontractor
for MRV (or for any sublicensed Subsidiary), as well as future versions of such
MRV Products.
ARTICLE 2
OWNERSHIP
Section 2.1 OWNERSHIP OF PATENTS.
(a) LUMINENT PATENTS. The parties agree that Luminent hereby retains
ownership of all right, title and interest in and to all Luminent Patents.
(b) ASSIGNED PATENTS. Subject to Sections 2.2 and 2.3 below, 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 Assigned Patents, 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 the Assigned Patents and the right to claim priority from the Assigned
Patents. MRV will, without demanding any further consideration therefore, 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 prosecuting, sustaining, obtaining continuations
of, or reissuing said Assigned Patents and for evidencing, maintaining,
recording and perfecting Luminent's rights to said Assigned Patents, 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
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execute and acknowledge) assignments and other instruments in a form reasonably
required by Luminent for each Patent jurisdiction.
(c) Patents for Certain Luminent Projects. Subject to Sections 2.2 and
2.3 below, Luminent hereby grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to MRV, 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
Patents for certain Luminent Projects listed on the attached Schedule 2.1(c)
(the "Certain Luminent Projects"), to be held and enjoyed by MRV, its successors
and assigns. Luminent further grants, conveys and assigns (and agrees to cause
its appropriate Subsidiaries to grant, convey and assign) to MRV 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 the Patents for Certain Luminent
Projects and the right to claim priority from the Patents for Certain Luminent
Projects. Luminent will, without demanding any further consideration therefore,
at the request and expense of MRV (except for the value of the time of Luminent
employees), do (and cause its Subsidiaries to do) all lawful and just acts, that
may be or become necessary for prosecuting, sustaining, obtaining continuations
of, or reissuing said Patents for Certain Luminent Projects and for evidencing,
maintaining, recording and perfecting MRV's rights to said Certain Luminent
Patents, consistent with Luminent'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 MRV for each Patent jurisdiction.
(d) PRIOR GRANTS. Luminent acknowledges and agrees that the foregoing
assignments are subject to any and all licenses or other rights that may have
been granted by MRV or its Subsidiaries with respect to the Assigned Patents
prior to the Separation Date. MRV shall respond to reasonable inquiries from
Luminent regarding any such prior grants.
Section 2.2 ASSIGNMENT DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS-IS," QUITCLAIM BASIS AND THAT NEITHER
PARTY NOR ANY SUBSIDIARY OF SUCH 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, NON-INFRINGEMENT, OR VALIDITY OF PATENT CLAIMS (ISSUED OR
PENDING).
ARTICLE 3
LICENSES AND COVENANTS NOT TO ▇▇▇
Section 3.1 LICENSE GRANTS TO LUMINENT WITH RESPECT TO CERTAIN LUMINENT PATENTS.
MRV grants (and agrees to cause its appropriate Subsidiaries to grant) to
Luminent, under the Certain Luminent Patents, an irrevocable, nonexclusive,
worldwide, fully-paid, royalty- free and non-transferable (except as set forth
in Section 9.9) license to make (including the right to practice methods,
processes and procedures), have made (except as restricted in Section 3.3
below), use, lease, sell, offer for sale and import Luminent Products.
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Section 3.2 RESTRICTION ON MRV LICENSING OF CERTAIN LUMINENT PATENTS. MRV agrees
that it will not license any of the Certain Luminent Patents to any Third Party;
provided, however, that MRV retains the right to license the Certain Luminent
Patents to Third Parties for use for defensive purposes (i.e., to resolve a
claim of patent infringement brought against MRV by a Third Party).
Section 3.3 RESTRICTION ON LUMINENT'S "HAVE MADE" RIGHTS TO CERTAIN LUMINENT
PATENTS. The license granted in Section 3.1 to have Luminent Products made by a
Third Party shall (i) only apply when the portion of the "have made" Luminent
Product covered by the Certain Luminent Patents has been designed or created by
Luminent and/or one of Luminent's subcontractors (not such Third Party) who is
not a direct competitor of MRV in the field of the Luminent Product being
designed or created and (ii) shall not apply to (A) any methods used, or (B) any
Luminent Products or portions thereof that have been manufactured or marketed,
by a Third Party prior to Luminent furnishing the designs or creations to such
Third Party.
Section 3.4 COMBINATION EXCLUSION. Except as expressly provided herein, no
license or immunity is granted under this Agreement by MRV, either directly or
by implication, estoppel or otherwise to any third parties acquiring Luminent
Products from Luminent for the combination of such Luminent Products with other
items or for the use of such combination. Notwithstanding the previous sentence,
MRV grants to the direct and indirect customers of Luminent, an immunity from
suit under Certain Luminent Patents for the combination of any such Luminent
Products with other Luminent Products and their use in such combination where
the Luminent Products have no other substantial noninfringing use aside from the
combination with other Luminent Products sold or otherwise transferred by
Luminent directly or indirectly to such customer.
Section 3.5 LUMINENT'S SUBLICENSE RIGHTS WITH RESPECT TO CERTAIN LUMINENT
PATENTS.
(a) Luminent may grant sublicenses to its Subsidiaries under the license
grant set forth in Section 3.1 within the scope of Luminent's license hereunder
(with no right to grant further sublicenses other than, in the case of a
sublicensed Subsidiary, to another Subsidiary of Luminent and as described in
Section 3.5(c) below).
(b) Any sublicense under Section 3.5(a) may be made effective
retroactively, but not prior to the sublicensee's becoming a Subsidiary of
Luminent.
(c) Any Luminent Product for which a software license is granted by
Luminent (or any sublicensed Subsidiary) to its distributors, resellers, OEM
customers, VAR customers, VAD customers, systems integrators and other channels
of distribution and to its end user customers (including, but not limited to,
the Luminent operating system) shall be considered to be covered under the
license grant set forth in Section 3.1 within the scope of Luminent's license
hereunder, but only to the extent that the Luminent Product incorporates the
technology covered by the claims of Certain Luminent Patents.
(d) Luminent shall have no rights to grant sublicenses to the Certain
Luminent Patents, except as expressly provided in Section 3.5 (a), (b) and (c)
above.
Section 3.6 DURATION.
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(a) All licenses granted herein with respect to each Patent shall expire
upon the expiration of the term of such Patent.
(b) All sublicenses granted pursuant to this Agreement to a particular
Subsidiary of Luminent shall terminate the date that the Subsidiary ceases to be
a Subsidiary of Luminent.
Section 3.7 ACQUISITION OF LUMINENT OR TRANSFER OF A BUSINESS OR SUBSIDIARY
RELATED TO CERTAIN LUMINENT PATENTS.
(a) If Luminent, after the Separation Date, transfers all or
substantially all of its business or assets, or all or substantially all of the
business or assets to which the Certain Luminent Patents relate, then regardless
of whether such transfer is part of (i) an asset sale to any Third Party, or
(ii) a sale of shares or securities in Luminent or a Subsidiary to a Third Party
(in each case, any such Third Party shall be referred to herein as a
"Transferee"), then upon written request by Luminent and the Transferee to MRV
within sixty (60) days following the transfer, MRV shall grant a royalty-free
license to the Transferee with respect to the Certain Luminent Patents under the
same terms of the license granted to Luminent under this Agreement subject to
the following:
(i) the effective date of such license shall be the effective
date of transfer; and
(ii) the products and services of the Transferee that are
subject to such license shall be limited to the specific Luminent Products in
the transferred business that are (A) commercially released as of the date of
transfer or which, prior to the transfer, (B) were planned for release within
three (3) months from the date of transfer and actually are commercially
released within three (3) months from the date of transfer and (C) for new
versions of such specific Luminent Products covered by clauses (A) and (B) above
that have merely minor differences from such Luminent Products with no
additional features; and
(iii) the Certain Luminent Patents that are subject to such
license shall be limited to the Certain Luminent Patents that are entitled to a
First Effective Filing Date before the date of such transfer; and
(iv) the Transferee shall have no right to grant sublicenses
(except as set forth in Section 3.5(c) above); and
(v) this Section 3.7 shall be excluded from such license in any
event and therefore MRV shall have no obligation to grant a license to a
subsequent transferee;
(b) provided, that MRV shall have no obligation to grant such license
unless the Transferee grants to MRV a royalty-free license under a comparable
license grant as the license granted to Luminent under this Agreement, subject
to the following:
(i) the effective date of such license shall be the effective
date of the transfer; and
(ii) the products and services of MRV that are subject to such
license shall be all the MRV Products; and
(iii) the Patents of the Transferee that are subject to such
license shall be the Patents owned or controlled by the Transferee claiming
inventions in the wireless field that are entitled to a First Effective Filing
Date on or before the date of such transfer and applications for
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such patents (including without limitation any continuations,
continuations-in-part, divisions and substitutions); and
(c) provided, further, that in the event that MRV and the
Transferee are engaged in litigation, arbitration or other formal dispute
resolution proceedings covering Patent infringement (pending in any court,
tribunal, or administrative agency or before any appointed or agreed upon
arbitrator in any jurisdiction worldwide), then MRV shall have no obligation to
grant such license to the Transferee under this Section 3.7.
Section 3.8 COPIES OF PATENT APPLICATIONS AND INVENTION DISCLOSURES MRV agrees,
at its own expense from time to time upon Luminent's request, to provide to
Luminent copies of (i) the Assigned Patents and (ii) the Certain Luminent
Patents.
Section 3.9 THIRD PARTY PATENTS. MRV confirms that it has granted, and hereby
grants (and agrees to cause its appropriate Subsidiaries to grant) to Luminent,
under the Third Party Patents, a nonexclusive, worldwide sublicense to make
(including the right to practice methods, processes and procedures), have made,
use, lease, sell, offer for sale and import any products and services subject to
any and all terms and conditions set forth in the applicable agreement between
MRV and the Third Party Patent owner, but only to the extent and for the period
of time MRV has the legal right to grant such a sublicense. MRV shall respond to
reasonable inquires from Luminent regarding any Third Party Patents.
Section 3.10 MRV COVENANT NOT TO ▇▇▇.
(a) MRV irrevocably grants, on behalf of itself and its Subsidiaries, at
no charge, an immunity from suit to Luminent and its Subsidiaries, and its or
their direct or indirect customers and Third Party manufacturers (subject to the
restrictions set forth in the next sentence) for infringement of any MRV Patent
by any Current Luminent Product. The foregoing covenant with respect to Third
Party manufacturers (i) shall apply only when the portion of the "have made"
Current Luminent Product covered by the MRV Patents has been designed or created
by Luminent and/or one of Luminent's subcontractors (not the Third Party
manufacturer) who is not a direct competitor of MRV in the field of the Current
Luminent Product being designed or created and (ii) shall not apply to (A) any
methods used, or (B) any products or portions thereof that have been
manufactured or marketed, by any Third Party prior to Luminent furnishing the
designs or creations to such Third Party. No immunity is granted under the
foregoing covenant by MRV, either directly or by implication, estoppel or
otherwise to any Third Parties acquiring Current Luminent Products from Luminent
for the combination of such Current Luminent Products with other items or for
the use of such combination; provided, however, that the foregoing covenant
shall apply to the direct and indirect customers of Luminent for the combination
of any such acquired Current Luminent Products with other Luminent Products and
their use in such combination where the acquired Current Luminent Products have
no other substantial noninfringing use aside from the combination with other
Luminent Products sold or otherwise transferred by Luminent directly or
indirectly to such customer.
(b) The foregoing covenant shall continue with respect to each MRV
Patent for the term of such MRV Patent.
(c) If Luminent, after the Separation Date, transfers all or
substantially all of its business or assets, or transfers a Subsidiary or
business unit, then regardless of whether such transfer is part of (i) an asset
sale to any Third Party, or (ii) a sale of shares or securities in
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Luminent or a Subsidiary to a Third Party (in each case, any such Third Party
shall be referred to herein as a "Transferee"), then upon written request by
Luminent and the Transferee to MRV within sixty (60) days following the
transfer, MRV shall grant an immunity from suit to the Transferee under the same
terms as the covenant set forth in Section 3.10 (a) and (b) above subject to the
following:
(i) the effective date of such covenant shall be the effective
date of transfer; and
(ii) the products and services of the Transferee that are
subject to such covenant shall be limited to the specific Current Luminent
Products in the transferred business that are (A) commercially released as of
the date of transfer or which, prior to the transfer, (B) were planned for
release within three (3) months from the date of transfer and actually are
commercially released within three (3) months from the date of transfer and (C)
for new versions of such specific Current Luminent Products covered by Clauses
(i) or (ii) above that have merely minor differences from such Current Luminent
Products with no additional features; and
(iii) MRV Patents that are subject to such covenant shall be
limited to the MRV Patents that are entitled to a First Effective Filing Date
before the date of such transfer and, in the event that the transfer is a
transfer of a Subsidiary or business unit and not all or substantially all of
Luminent's business or assets, then the MRV Patents that are subject to such
covenant shall be limited to the MRV Patents in the field of use of the
transferred Subsidiary or business; and
(iv) this Section 3.10(c) shall be excluded from such covenant
in any event and therefore MRV shall have no obligation to grant a covenant not
to ▇▇▇ to any subsequent transferee;
(v) provided, however, that MRV shall have no obligation to
grant such covenant unless the Transferee grants to MRV and its customers and
suppliers a covenant not to ▇▇▇ at no charge on the following terms:
(1) the effective date of such covenant shall be the
effective date of the transfer; and
(2) the products and services of MRV that are subject to
such covenant shall be the MRV Products; and
(3) the Patents of the Transferee that are subject to
such covenant shall be all the Patents owned or controlled by the Transferee
that are entitled to a First Effective Filing Date before the date of such
transfer and applications for such Patents (including without limitation any
continuations, continuations-in-part, divisions and substitutions); and
(vi) provided, further, that in the event that MRV and any such
Transferee are engaged in litigation, arbitration or other formal dispute
resolution proceedings covering Patent infringement (pending in any court,
tribunal, or administrative agency or before any appointed or agreed upon
arbitrator in any jurisdiction worldwide), then MRV shall have no obligation to
grant such covenant under this Section 3.10(c).
Section 3.11 LUMINENT COVENANT NOT TO ▇▇▇
14
(a) Luminent irrevocably grants, on behalf of itself and its
Subsidiaries, at no charge, an immunity from suit to MRV and its Subsidiaries,
and its or their direct or indirect customers and manufacturers (subject to the
restrictions set forth in the next sentence) for infringement of any Luminent
Patent by any Current MRV Product. The foregoing covenant with respect to Third
Party manufacturers (i) shall apply only when the portion of the "have made"
Current MRV Product covered by the Luminent Patents has been designed or created
by MRV and/or one of MRV's subcontractors (not the Third Party manufacturer) who
is not a direct competitor of Luminent in the field of the Current MRV Product
being designed or created and (ii) shall not apply to (A) any methods used, or
(B) any products or portions thereof that have been manufactured or marketed by
any Third Party prior to MRV furnishing the designs or creations to such Third
Party. No immunity is granted under the foregoing covenant by Luminent, either
directly or by implication, estoppel or otherwise to any Third Parties acquiring
Current MRV Products from MRV for the combination of such Current MRV Products
with other items or for the use of such combination; provided, however, that the
foregoing covenant shall apply to the direct and indirect customers of MRV for
the combination of any such acquired Current MRV Products with other MRV
Products and their use in such combination where the acquired Current MRV
Products have no other substantial noninfringing use aside from the combination
with other MRV Products sold or otherwise transferred by MRV directly or
indirectly to such customer.
(b) The foregoing covenant shall continue with respect to each Luminent
Patent, for the term of such Luminent Patent.
(c) If MRV, after the Separation Date, transfers all or substantially
all of its business or assets, or transfers a Subsidiary or business unit, then
regardless of whether such transfer is part of (i) an asset sale to any Third
Party, or (ii) a sale of shares or securities in MRV or a Subsidiary to a Third
Party (in each case, any such Third Party shall be referred to herein as a
"Transferee"), then upon written request by MRV and the Transferee to Luminent
within sixty (60) days following the transfer, Luminent shall grant an immunity
from suit to the Transferee under the same terms as the covenant set forth in
Section 3.11(a) and (b) above subject to the following:
(i) the effective date of such covenant shall be the effective
date of transfer; and
(ii) the products and services of the Transferee that are
subject to such covenant shall be limited to the specific Current MRV Products
in the transferred business that are (A) commercially released as of the date of
transfer or which, prior to the transfer, (B) were planned for release within
three (3) months from the date of transfer and actually are commercially
released within three (3) months from the date of transfer and (C) for new
versions of such specific Current MRV Products covered by clauses (i) or (ii)
above, that have merely minor differences from such Current MRV Products with no
additional features; and
(iii) the Luminent Patents that are subject to such covenant
shall be limited to the Luminent Patents that are entitled to a First Effective
Filing Date before the date of such transfer and, in the event that the transfer
is a transfer of a Subsidiary or business unit and not all or substantially all
of MRV's business or assets, then the Luminent Patents that are subject to
15
such covenant shall be limited to the Luminent Patents in the field of use of
the transferred Subsidiary or business; and
(iv) this Section 3.11(c) shall be excluded from such covenant
in any event and therefore, Luminent shall have no obligation to grant a
covenant not to ▇▇▇ to any subsequent transferee;
(v) provided, however, that Luminent shall have no such
obligation to grant such covenant unless the Transferee grants to Luminent and
its customers and suppliers a covenant not to ▇▇▇ at no charge on the following
terms:
(1) the effective date of such covenant shall be the
effective date of the transfer; and
(2) the products and services of Luminent that are
subject to such covenant shall be the Luminent Products; and
(3) the Patents of the Transferee that are subject to
such covenant shall be all the Patents owned or controlled by the Transferee
that are entitled to a First Effective Filing Date before the date of such
transfer and applications for such Patents including without limitation any
continuations, continuations-in-part, divisions and substitutions; and
(vi) provided, further, that in the event that Luminent and any
such Transferee are engaged in litigation, arbitration or other formal dispute
resolution proceedings covering Patent infringement (pending in any court,
tribunal, or administrative agency or before any appointed or agreed upon
arbitrator in any jurisdiction worldwide), then Luminent shall have no
obligation to grant such covenant under this Section 3.11(c).
ARTICLE 4
ADDITIONAL OBLIGATIONS
Section 4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS.
(a) The parties will cooperate to effect a smooth transfer of the
responsibility for prosecution, maintenance and enforcement of the Assigned
Patents from MRV to Luminent. Until such transfer has been effected, MRV agrees
to continue the prosecution and maintenance of, and ongoing litigation (if any)
with respect to, the Assigned Patents (including payment of maintenance fees),
and to maintain its files and records relating to the Assigned Patents using the
same standard of care and diligence that it uses with respect to MRV's Patents.
Luminent will reimburse MRV for all actual and reasonable expenses (excluding
the value of the time of MRV employees) to continue to prosecute and maintain
the Assigned Patents after the Separation Date until the transfer of
responsibility for the Assigned Patents has been completed and to continue any
such ongoing litigation. The parties shall agree on a case by case basis on
compensation, if any, of MRV for the value of time of MRV's employees as
reasonably required in connection with any such litigation. MRV will provide
Luminent with the originals or copies of its files relating to the Assigned
Patents upon such transfer or at such earlier time as the parties may agree.
(b) MRV shall provide continuing reasonable support to Luminent with
respect to the Assigned Patents, including by way of example the following:
16
(i) executing all documents prepared by Luminent necessary for
prosecution, maintenance, and litigation of the Assigned Patents,
(ii) making available to Luminent or its counsel, inventors and
other persons employed by MRV for interviews and/or testimony to assist in good
faith in further prosecution, maintenance or litigation of the Assigned Patents,
including the signing of documents related thereto,
(iii) forwarding copies of all correspondence sent and received
concerning the Assigned Patents within a reasonable period of time after receipt
by MRV, and
(iv) making all relevant documents in the possession or control
of MRV and corresponding to the Assigned Patents, or any licenses thereunder,
available to Luminent or its counsel.
Any actual and reasonable out-of-pocket expenses associated with any such
assistance shall be borne by Luminent, expressly excluding the value of the time
of such MRV employees; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of MRV for the value of the time of MRV's employees as reasonably required
in connection with such litigation.
Section 4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO CERTAIN LUMINENT PATENTS.
Luminent shall provide continuing reasonable support to MRV with respect
to the Certain Luminent Patents, including by way of example the following:
(a) executing all documents prepared by MRV necessary for prosecution,
maintenance, and litigation of the Certain Luminent Patents,
(b) making available to MRV or its counsel, inventors and other persons
employed by Luminent for interviews and/or testimony to assist in good faith in
further prosecution, maintenance or litigation of the Certain Luminent Patents,
including the signing of documents related thereto,
(c) forwarding copies of all correspondence sent and received concerning
the Certain Luminent Patents within a reasonable period of time after receipt by
Luminent, and
(d) making all relevant documents in the possession or control of
Luminent and corresponding to the Certain Luminent Patents, or any licenses
thereunder, available to MRV or its counsel.
Any actual and reasonable out-of-pocket expenses associated with such
assistance shall be borne by MRV, expressly excluding the value of the time of
such Luminent personnel; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of Luminent for the value of the time of Luminent's employees as reasonably
required in connection with such litigation.
Section 4.3 STANDARDS BODIES.
For a period of five (5) years from the Separation Date, the parties
agree to cooperate reasonably and in good faith with each other with respect to
the licensing of each party's Patents in the context of Bluetooth related
standards bodies, to the extent consistent with each party's own business
objectives.
17
Section 4.4 ASSIGNMENT OF PATENTS.
MRV shall not assign or grant any rights under any of the Certain
Luminent Patents unless such assignment or grant is made subject to the licenses
granted in this Agreement.
Section 4.5 RECORDATION OF LICENSES.
(a) For any country, now or in the future, that requires 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:
(i) each party shall give such consent, or shall obtain such
consent from its employees, its Subsidiaries or employees of any of its
Subsidiaries, as required to make full and effective any such licenses and
rights respecting any joint invention granted to a grantee hereunder by such
party; and
(ii) each party shall take steps that 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 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.
(b) Each party agrees, without demanding any further consideration, to
execute (and to cause its Subsidiaries to execute) all documents reasonably
requested by the other party to effect recordation of the license relationship
between the parties created by this Agreement.
ARTICLE 5
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 6
TERMINATION
Section 6.1 VOLUNTARY TERMINATION. By written notice to MRV, Luminent may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by MRV. Such notice shall specify the effective date of
such termination and shall clearly specify any affected Patent, Patent
application, Invention Disclosure, product or service.
Section 6.2 SURVIVAL. Any voluntary termination of licenses and rights of
Luminent under Section 6.1 shall not affect Luminent's licenses and rights with
respect to any licensed product made or service furnished prior to such
termination, and shall not affect the licenses and rights granted to MRV
hereunder.
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Section 6.3 NO OTHER TERMINATION. Each party acknowledges and agrees that its
remedy for breach by the other party of the licenses granted to it hereunder or
of any other provision hereof, shall be, subject to the requirements of Article
7, 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 the licenses or covenants not to ▇▇▇ granted by it in this
Agreement.
ARTICLE 7
DISPUTE RESOLUTION
Section 7.1 MEDIATION. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement, or the grounds for the termination hereof, appropriate senior
executives (e.g. director or V.P. level) of each party who shall have the
authority to resolve the matter shall meet to attempt in good faith to negotiate
a resolution of the Dispute prior to pursuing other available remedies. The
initial meeting between the appropriate senior executives shall be referred to
herein as the "Dispute Resolution Commencement Date." Discussions and
correspondence relating to trying to resolve such Dispute shall be treated as
confidential information developed for the purpose of settlement and shall be
exempt from discovery or production and shall not be admissible. If the senior
executives are unable to resolve the Dispute within thirty (30) days from the
Dispute Resolution Commencement Date, and either party wishes to pursue its
rights relating to such Dispute, then the Dispute will be mediated by a mutually
acceptable mediator appointed pursuant to the mediation rules of JAMS/Endispute
within thirty (30) days after written notice by one party to the other demanding
non-binding mediation. Neither party may unreasonably withhold consent to the
selection of a mediator or the location of the mediation. Both parties will
share the costs of the mediation equally, except that each party shall bear its
own costs and expenses, including attorney's 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 ADR.
Section 7.2 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 7.3 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:
19
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 7.4 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 7 with respect to all matters not
subject to such dispute, controversy or claim.
ARTICLE 8
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 DAMAGES FOR
INFRINGEMENT AVAILABLE TO EITHER PARTY UNDER APPLICABLE LAW IN THE EVENT OF
BREACH BY THE OTHER PARTY OF SECTIONS 3.1, 3.2, 3.3 OR 3.5(a) OR FOR
INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS NOT LICENSED OR COVENANTED
HEREIN AND 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 9
MISCELLANEOUS PROVISIONS
Section 9.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL PATENTS AND
ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE LICENSED
OR 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 as to the validity and/or scope of any Patent licensed by it to
the other party hereunder or any warranty or representation that any
manufacture, use, importation, offer
20
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 9.2 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 Certain Luminent Patents and Assigned Patents.
Neither party is required hereunder to furnish or disclose to the other any
technical or other information except as specifically provided herein.
Section 9.3 INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Patent or to defend any action or suit brought by a Third Party which
challenges or concerns the validity of any Patent. Unless the parties otherwise
agree in writing, neither party shall have any right to institute any action or
suit against Third Parties for infringement of any Patent owned by the other
party.
Section 9.4 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 to (i) file any Patent application, or
to secure any Patent or Patent rights, (ii) to maintain any Patent in force, or
(iii) provide any technical assistance, except for the obligations expressly
assumed in this Agreement.
Section 9.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements (as defined in the
Master Separation and Distribution Agreement) 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. 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.
Section 9.6 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 7 above.
Section 9.7 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.
21
Section 9.8 NOTICES. Notices, offers, requests or other communications required
or permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to MRV:
MRV Communications, Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇, Chief Executive Officer
if to Luminent:
Luminent, Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Chief Executive Officer
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
Section 9.9 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 or transfer this Agreement, to a Person that
succeeds to all or substantially all of its 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 licenses and covenants not to ▇▇▇ set forth in
Article 3 may not be assigned or transferred in any event (except in the case of
a reincorporation of such party in another state); and provided, further, that
the prohibition on assignment or transfer of the licenses and covenants not to
▇▇▇ set forth in Article 3 shall not limit MRV's or Luminent's obligations in
Sections 3.7, 3.10(c) and 3.11(c) to grant licenses and/or covenants not to ▇▇▇
to a Transferee. 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 9.10 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
22
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.
Section 9.11 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 9.12 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 9.13 COUNTERPARTS. This Agreement, including the Ancillary Agreement 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.
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WHEREFORE, the parties have signed this Master Patent 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