EXHIBIT 99.2
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INTELLECTUAL PROPERTY AGREEMENT
BY AND BETWEEN
AGERE SYSTEMS INC.
AND
PROXIM CORPORATION
DATED AS OF AUGUST 5, 2002
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TABLE OF CONTENTS
Article I Definitions
Article II Assignment Of Software
Article III Software Licenses
Article IV Assignment Of Information
Article V Licenses To Information
Article VI Assignment Of Trademarks
Article VII Export Control
Article VIII Term And Termination
Article IX Assignability
Article X Licenses To Related Companies And Improvements
Article XI Rights and Obligations
Article XII Warranties And Covenants
Article XIII General Provisions
Article XIV Notices
Appendix A Definitions Appendix
Appendix B Assigned Software
Appendix C Licensed Software
Appendix D Assigned Technical Information
Appendix E Licensed Technical Information
Appendix F Trademark Assignment
Schedule A -- U.S. Registrations
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INTELLECTUAL PROPERTY AGREEMENT
THIS INTELLECTUAL PROPERTY AGREEMENT (this "Agreement") is made as of
August 5, 2002 by and between AGERE SYSTEMS INC., a Delaware corporation
("Agere"or "Seller") and PROXIM CORPORATION, a Delaware corporation ("Buyer").
Seller and Buyer are sometimes referred to herein individually as a "Party" and
collectively as the "Parties".
RECITALS
A. WHEREAS, this Agreement is provided as Exhibit B-1 to a certain Asset
Purchase Agreement dated as of June 14, 2002 (the "Purchase Agreement") entered
into by and between Agere and Buyer pursuant to which Agere is selling and Buyer
is acquiring certain Purchased Assets, as that term is defined in the Purchase
Agreement. This Agreement is executed upon the signing by all Parties and shall
become effective concurrent with and on the Closing Date of the Purchase
Agreement (the "Effective Date");
B. WHEREAS, this Agreement is intended by the parties to address, among
other things, the Intellectual Property rights and Information either included
in the Purchased Assets or licensed to Buyer; and
C. WHEREAS, in connection with the sale and purchase of the ORiNOCO
Business, Seller agrees to assign certain intellectual property rights to Buyer
and to license certain intellectual property rights to Buyer, in each case in
accordance with the terms hereof.
NOW, THEREFORE, in consideration of the mutual agreements and covenants
herein contained and intending to be legally bound thereby, the Parties agree as
follows:
ARTICLE I
DEFINITIONS
1.01 Unless otherwise defined in Appendix A attached hereto, as used in
this Agreement any term in initial capital letters shall have the meaning
ascribed thereto in the Purchase Agreement.
ARTICLE II
ASSIGNMENT OF SOFTWARE
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2.01 Seller hereby transfers and assigns, subject to Section 2.02, to
Buyer all of its worldwide right, title and interest in the Assigned Software,
including all copyrights and other intellectual property rights therein, as well
as the right to bring actions, at law or in equity for the infringement or other
impairment thereof prior to the Closing Date, including the right to receive all
proceeds or damages therefrom. Such transfer does not include a transfer of, or
license under, any patents; any such license under any such patent being
specifically set forth in Exhibit B-2 to the Asset Purchase Agreement. The
transfer of the Assigned Software shall be subject to all prior written
agreements (or replacement agreements thereof) between Seller, its predecessors
(including AT&T Corp. and its Subsidiaries and Lucent Technologies Inc. and its
Subsidiaries) or its Related Companies, and one or more third parties that have
an effective date prior to the Effective Date of this Agreement, none of which
will have a material adverse affect on Buyer's use of the Assigned Software in
operation of the ORiNOCO Business as it existed as of the Closing Date.
2.02 Buyer grants to Seller, in consideration for the transfer and
assignment of the Assigned Software by Seller to Buyer pursuant to Section 2.01,
a personal, nonexclusive, non-transferable (except as provided in Article IX),
irrevocable (subject to Article VIII), worldwide, royalty-free license to use,
copy and distribute the Assigned Software, and create, use, copy and distribute
Derivative Works from the Assigned Software with respect to any products or
services of the businesses in which Seller or any of its Related Companies is
now or hereafter engaged for any Permitted Use.
2.03 Seller agrees to deliver to Buyer copies of all Code of whatever
kind in whatever medium that embody the Assigned Software within 30 days of
Closing. To Seller's knowledge, all of the Assigned Software will, at closing,
be included in the Principal Equipment transferred to the Buyer or otherwise in
the possession of the Transferred Employees. However, Seller agrees to take all
steps reasonably requested by Buyer in connection with delivering to Buyer any
missing parts of the Assigned Software to the extent such Assigned Software
exists within Seller. Buyer agrees that the previous sentence provides Buyer's
sole remedy for Seller's failure to deliver the Assigned Software.
ARTICLE III
SOFTWARE LICENSES
3.01 Seller hereby grants to Buyer a fully paid-up, royalty-free
worldwide, irrevocable (subject to Article VIII), non-transferable (except as
provided in Article IX) and nonexclusive license to use, copy, sublicense and
distribute the Licensed Software, and create, use, copy, sublicense and
distribute Derivative Works from the Licensed Software in connection with the
conduct or operation of the Wireless Networking Business, under any and all
copyright, trade secret and other intellectual property rights (other than
patent rights which are specifically granted in Exhibit B-2 to the Asset
Purchase Agreement) in the Licensed Software owned by Seller or its Related
Companies or in which Seller or its Related Companies have a right to license as
of the Effective Date including, without
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limitation, the right (i) to reproduce the Code of and Documentation for such
Licensed Software; (ii) to sell, lease, sublicense (but only to the extent that
Seller has a right to authorize Buyer to grant such a sublicense and provided
that Seller shall not be obligated to pay any consideration for such sublicense
authorization) or otherwise transfer copies of the Licensed Software and
Derivative Works therefrom, in whole or in part for use within the scope of the
Wireless Networking Business; and (iii) to combine the Licensed Software and
Derivative Works therefrom with other software or hardware within the scope of
the Wireless Networking Business.
3.02 Seller agrees to deliver to Buyer, within 30 days of Closing,
complete and useable copies of the Licensed Software and any related
documentation. To Seller's knowledge, all of the Licensed Software will, at
Closing, be included in the Principal Equipment transferred to Buyer or
otherwise in the possession of the Transferred Employees. Notwithstanding the
foregoing, Seller agrees to take all steps reasonably requested by Buyer in
connection with promptly delivering to Buyer any copies of any components of the
Licensed Software or documentation not delivered to Buyer at Closing. Buyer
agrees that the previous sentence provides Buyer's sole remedy for Seller's
failure to deliver the Licensed Software.
3.03 The Parties recognize that the best or only available copy of
certain Assigned Software and Licensed Software may reside, after the Closing
Date, within the ORiNOCO Business or in the possession of the ORiNOCO Business,
and that Seller may require certain access to or copies of the Assigned Software
and Licensed Software for purposes consistent with this Agreement, which,
because of inadvertence or oversight, a copy was not retained by or made
available to Seller prior to the Closing Date. To that end, Buyer agrees, upon
receiving a written request from Seller, to provide, within a commercially
reasonable amount of time after receipt of Seller's written request, copies of
any portion of the Assigned Software and Licensed Software necessary for Seller
or one of its Related Companies to exercise its rights in accordance with this
Agreement. Any reasonable costs associated with the assembling, copying and
delivering of such requested Assigned Software and Licensed Software shall be
borne by Seller.
ARTICLE IV
ASSIGNMENT OF INFORMATION
4.01 Seller hereby transfers and assigns, subject to Section 4.02, to
Buyer all of its worldwide right, title and interest in and to the Assigned
Technical Information including all copyright, trade secret and intellectual
property rights therein, as well as the right to bring actions at law or in
equity for the infringement or other impairment thereof prior to the Closing,
including the right to receive all proceeds or damages therefrom. Such transfer
does not include a transfer of, or license under, any patents; any such license
under any such patent being specifically set forth in Exhibit B-2 to the Asset
Purchase Agreement. The transfer of such Assigned Technical Information shall be
subject to all prior written agreements (or replacement agreements thereof)
between Seller, its predecessors (including
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AT&T Corp. and its Subsidiaries and Lucent Technologies Inc. and its
Subsidiaries) or its Related Companies, and one or more third parties that have
an effective date prior to the Effective Date of this Agreement, none of which
will have a material adverse affect on Buyer's use of the Assigned Technical
Information in operation of the ORiNOCO Business as it existed as of the Closing
Date.
4.02 In consideration for the transfer and assignment of the Assigned
Technical Information by Seller to Buyer pursuant to Section 4.01, Buyer grants
to Seller a personal, nonexclusive, non-transferable (except as provided in
Article IX), irrevocable (subject to Article VIII), worldwide, royalty-free
license to use, copy and distribute the Assigned Technical Information, and
create, use, copy and distribute Derivative Works from the Assigned Technical
Information with respect to any products or services of the businesses in which
Seller or any of its Related Companies is now or hereafter engaged for any
Permitted Use.
4.03 Seller agrees to deliver to Buyer, within 30 days of Closing,
copies of all documents of whatever kind in whatever medium that embody the
Assigned Technical Information. To Seller's knowledge, all of the Assigned
Technical Information will, at Closing, be included in the Business Records
transferred to Buyer or otherwise in possession of the Transferred Employees.
Notwithstanding the foregoing, Seller agrees to take all steps reasonably
requested by Buyer in connection with delivering to Buyer any documents that
embody the Assigned Technical Information not delivered to Buyer at Closing.
Buyer agrees that the previous sentence provides Buyer's sole remedy for
Seller's failure to deliver the Assigned Technical Information.
4.04 The Parties recognize that the best or only available copy of
certain Assigned Technical Information may reside, after the Closing Date,
within the ORiNOCO Business or in the possession of the ORiNOCO Business, and
that Seller may require certain access to or copies of the Assigned Technical
Information for purposes consistent with this Agreement, which, because of
inadvertence or oversight, a copy was not retained by or made available to
Seller prior to the Closing Date. To that end, Buyer agrees, upon receiving a
written request from Seller, to provide, within a commercially reasonable amount
of time after receipt of Seller's written request, copies of any portion of the
Assigned Technical Information necessary for Seller or one of its Related
Companies to exercise its rights in accordance with this Agreement. Any
reasonable costs associated with the assembling, copying and delivering of such
requested Assigned Technical Information shall be borne by Seller.
ARTICLE V
LICENSES TO INFORMATION
5.01 Seller grants to Buyer a fully paid-up, royalty-free worldwide,
irrevocable (subject to Article VIII), non-transferable (except as provided in
Article IX) and nonexclusive license to use, copy, sublicense and distribute
Licensed Technical Information, and create, use, copy, sublicense and distribute
Derivative Works from the Licensed Technical Information, in connection with the
conduct and operation of the Wireless Networking Business under any and all
copyright, trade secret and other intellectual property rights in such Licensed
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Technical Information (other than patent rights which are specifically granted
in Exhibit B-2 to the Asset Purchase Agreement) owned by Seller as of the
Effective Date.
5.02 Seller grants to Buyer a personal, non-transferable (except as
provided in Article IX) and nonexclusive right, as an attribute of the right to
use the Licensed Technical Information in Section 5.01, to communicate (subject
to confidentiality provisions as least as restrictive as those in Section 12.03)
portions of and grant nonexclusive sublicenses (of the same scope as the
licenses granted to Buyer under Section 5.01) to such Licensed Technical
Information to third party suppliers or manufacturers for the procurement by
Buyer of materials, manufacturing facilities, parts and/or components reasonably
necessary for use by Buyer in the manufacture and assembly of products of the
ORiNOCO Business in accordance with this Agreement.
5.03 Seller agrees to deliver to Buyer, within 30 days of Closing,
copies of all documents of whatever kind in whatever medium that embody the
Licensed Technical Information. To Seller's knowledge, all of the Licensed
Technical Information will, at Closing, be included in the Business Records
transferred to Buyer or otherwise in possession of the Transferred Employees.
Notwithstanding the foregoing, Seller agrees to take all steps reasonably
requested by Buyer in connection with delivering to Buyer any documents that
embody the Licensed Technical Information not delivered to Buyer at Closing.
Buyer agrees that the previous sentence provides Buyer's sole remedy for
Seller's failure to deliver the Licensed Technical Information.
5.04 The Parties recognize that the best or only available copy of
certain Licensed Technical Information may reside, after the Closing Date,
within the ORiNOCO Business or in the possession of the ORiNOCO Business, and
Seller may require certain access to or copies of the Licensed Technical
Information for purposes consistent with this Agreement, which because of
inadvertence or oversight, a copy was not retained by or made available to
Seller prior to the Closing Date. To that end, Buyer agrees, upon receiving a
written request from Seller, to provide, within a commercially reasonable amount
of time after receipt of Seller's written request, copies of any portion of the
Licensed Technical Information necessary for Seller or one of its Related
Companies to exercise its rights in accordance with this Agreement. Any
reasonable costs associated with the assembling, copying and delivering of such
requested Licensed Technical Information shall be borne by Seller.
ARTICLE VI
ASSIGNMENT OF TRADEMARKS
6.01 Seller agrees to transfer and assign, pursuant to the Trademark
Assignment
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attached as Appendix F hereto, to Buyer all of its worldwide right, title and
interest in and to the Assigned Marks and good will associated therewith as well
as all rights, privileges and priorities of Seller, together with all income,
royalties or payments due or payable as of the Closing, as well as the right to
▇▇▇ at law or in equity in respect of past, present and future infringement of
any of such Assigned Marks, including the right to receive all proceeds or
damages therefrom. Such assignment shall be subject to all agreements entered
into between Seller, its predecessors (including AT&T Corp. and its
Subsidiaries, and Lucent Technologies and its Subsidiaries) or its Related
Companies, and one or more third parties prior to the Effective Date of this
Agreement, none of which will have a material adverse affect on Buyer's use of
the Assigned Marks in operation of the ORiNOCO Business as it existed as of the
Closing Date.
6.02 Buyer shall bear any and all administrative and similar costs
external to Seller related to the recordation or transfer of title of Assigned
Marks from Seller to Buyer pursuant to Section 6.01 above. Seller shall execute
all documents and perform all acts as required to give effect to the assignment
and recording of the transfer of Assigned Marks to Buyer under this Agreement.
ARTICLE VII
EXPORT CONTROL
7.01 (a) The Parties acknowledge that any information and software
(including, but not limited to, services and training) provided under this
Agreement are subject to U.S. export laws and regulations and any use or
transfer of such information and software must be authorized under those
regulations. Each party hereby assures the other party that it will comply with
all applicable export laws of the U.S. as may be in effect at the time any
export of such information or software is made.
ARTICLE VIII
TERM AND TERMINATION
8.01 This Agreement shall be effective during the term commencing on the
Effective Date hereof and shall continue unless terminated by mutual agreement
between the Parties.
8.02 The rights and obligations of Buyer and Seller which by their
nature would continue beyond termination of this Agreement shall survive and
continue after any termination of this Agreement.
ARTICLE IX
ASSIGNABILITY
9.01 The Parties hereto have entered into this Agreement in
contemplation of
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personal performance, each by the other, and intend that the licenses and rights
granted hereunder to a Party not be extended to entities other than such Party's
Related Companies without the other Party's express written consent.
9.02 Notwithstanding the foregoing, all of a Party's rights, title and
interest in this Agreement and any licenses and rights granted to it hereunder
may be assigned to any of its Related Companies or any direct or indirect
successor to all or a portion of the business of the Party, which successor
shall thereafter be deemed substituted as the Party hereto, effective upon such
assignment subject to written acceptance of such assignment by such successor.
Notwithstanding any such assignment to a successor, any licenses assigned herein
to the successor do not include any past or future licenses to products which
are sold or otherwise distributed, directly or indirectly, by such successor
prior to any assignment.
ARTICLE X
LICENSES TO RELATED COMPANIES AND IMPROVEMENTS
10.01 The grant of each license hereunder includes the right to grant
sublicenses within the scope of such license to a Party's Related Companies for
so long as they remain its Related Companies. Any and all licenses or
sublicenses granted to Related Companies pursuant to this Agreement may be made
effective retroactively, but not prior to the Effective Date hereof, nor, unless
otherwise authorized pursuant to another provision of this Agreement, prior to
the sublicensee's becoming a Related Company of such Party.
10.02 Unless otherwise specifically expressed in this Agreement, the
Asset Purchase Agreement or the Collateral Agreements, no license to, or right
of a Party, under any patent, copyright, trademark, trade secret, or any other
intellectual property right, is either granted or implied by conveying any
information to such Party.
10.03 Except as otherwise expressly provided for herein or the Purchase
Agreement or the Collateral Agreements, no rights are granted to a Party under
any improvements or derivative works of the Software or the Technical
Information to the extent made by the other Party after the Effective Date.
10.04 The grant of each license hereunder also includes the right of a
Party to sublicense (within the scope of its own license) any business which is
divested by that Party or any of its Related Companies provided that the
sublicense is granted within 60 (60) days of divestiture, provided that any such
sublicense shall not include any past or future licenses to products which are
sold or otherwise distributed, directly or indirectly, by an acquiror of such
business prior to the date of acquisition even if they are of the same kind or
similar to those of the divested business.
ARTICLE XI
RIGHTS AND OBLIGATIONS
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11.01 For any license provided from one party to the other, the licensee
shall, at its sole expense, comply at all times with all applicable laws and
regulations in connection with the use of the rights licensed to it hereunder,
and obtain all appropriate permits and approvals, as applicable.
11.02 The licenses granted herein by Seller or Buyer, as the case may
be, shall be deemed to be, for purposes of Section 365(n) of the U.S. Bankruptcy
Code, to the fullest extent permitted by law, licenses to rights in
"intellectual property" as defined in Section 101 of the Bankruptcy Code. The
parties agree that the licensee to any such licenses, as the case may be, shall
retain and may fully exercise all of its rights and elections under the
Bankruptcy Code. In the event that a bankruptcy proceeding under the Bankruptcy
Code is commenced by or against the licensor of any such licenses, the licensee
shall be entitled to retain all of its rights under this Agreement (including
without limitation all rights and licenses granted herein) pursuant to Section
365(n) of the U.S. Bankruptcy Code.
ARTICLE XII
WARRANTIES AND COVENANTS
12.01 Except as expressly provided herein, all warranties and
representations are exclusively set forth in the Purchase Agreement.
12.02 (a) EXCEPT AS EXPRESSLY PROVIDED HEREIN OR IN THE PURCHASE
AGREEMENT, THE TECHNICAL INFORMATION, SOFTWARE OR OTHER INFORMATION ASSIGNED OR
LICENSED UNDER THIS AGREEMENT IS ASSIGNED OR LICENSED "AS IS" WITH ALL FAULTS,
LATENT AND PATENT AND WITHOUT ANY WARRANTY OF ANY TYPE. SELLER AND ITS RELATED
COMPANIES MAKE NO REPRESENTATIONS OR WARRANTIES, EXPRESSED OR IMPLIED. BY WAY OF
EXAMPLE, BUT NOT OF LIMITATION, SELLER AND ITS RELATED COMPANIES MAKE NO
REPRESENTATIONS OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR THAT
THE USE OF THE TECHNICAL INFORMATION, SOFTWARE OR OTHER INFORMATION WILL NOT
INFRINGE ANY PATENT OR OTHER INTELLECTUAL PROPERTY RIGHT OF ANY THIRD PARTY AND
IT SHALL BE THE SOLE RESPONSIBILITY OF BUYER TO MAKE SUCH DETERMINATION AS IS
NECESSARY WITH RESPECT TO THE ACQUISITION OF LICENSES UNDER PATENTS OR OTHER
INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
(b) EXCEPT AS EXPRESSLY PROVIDED HEREIN OR IN THE PURCHASE
AGREEMENT, SELLER AND ITS RELATED COMPANIES SHALL NOT BE HELD TO ANY LIABILITY
WITH RESPECT TO ANY PATENT INFRINGEMENT OR ANY OTHER CLAIM MADE BY BUYER OR ANY
THIRD PARTY ON ACCOUNT OF, OR ARISING FROM THE USE OF, THE TECHNICAL
INFORMATION,
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SOFTWARE OR OTHER INFORMATION ASSIGNED OR LICENSED HEREUNDER.
12.03 Each party agrees:
(a) that it will not, without the other party's express written
permission or as provided herein or in the Purchase Agreement, or as otherwise
agreed to in writing, (i) use in advertising, publicity, or otherwise any trade
name, trademark, trade device, service ▇▇▇▇, symbol or any other identification
or any abbreviation, contraction or simulation thereof owned or used by the
other party or any of its Related Companies, or (ii) represent, directly or
indirectly, that any product or service produced in whole or in part with the
use of any of the Software or Technical Information is a product or service of
the other party or any of its Related Companies; and
(b) that except as otherwise expressly provided for in this
Agreement, it will hold in confidence for the other party all private or
confidential information of the other party, including any Software or Technical
Information licensed hereunder that such party's personnel may unavoidably
receive or have access to during the performance of this Agreement. Such party
further agrees that all such information shall remain the property of the other
party and that such party shall not make any disclosure of such information to
anyone, except to employees of such party to whom such disclosure is necessary
to the use for which rights are granted hereunder. Such party shall
appropriately notify all employees to whom any such disclosure is made that such
disclosure is made in confidence and shall be kept in confidence by them.
(c) The restrictions under this Section 12.03 on the use or
disclosure of such information shall not apply to such information:
(i) which is independently developed by such party or is
lawfully received free of restriction from another source having the right to so
furnish such information; or
(ii) after it has become generally available to the public
by acts not attributable to such party or its employees, agents or contractors;
or
(iii) which at the time of disclosure to such party was
known to such party free of restriction and evidenced by documentation in such
party's possession; or
(iv) which the other party agrees in writing is free of
such restrictions; or
(v) which is requested pursuant to a judicial or
governmental request, requirement or order under law, provided that such party
provides the other party with sufficient prior notice in order to contest such
request, requirement or order or seek protective measures.
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12.04 In the event of any conflict between the representations and
warranties in this Agreement and the representations and warranties in the
Purchase Agreement, the representations and warranties in the Purchase Agreement
shall prevail.
ARTICLE XIII
GENERAL PROVISIONS
13.01 Consideration. The consideration for the transfers, assignments
and grant of rights and licenses under this Agreement by Seller to Buyer is
provided in the Purchase Agreement and no further payment of royalties will be
due under this Agreement.
13.02 Agreement Prevails. This Agreement shall prevail in the event of
any conflicting terms or legends, which may appear on documents, the Software,
the Documentation or the Technical Information transferred or licensed
hereunder.
13.03 Relationship Between Parties. Neither Party to this Agreement
shall have the power to bind the other by any guarantee or representation that
it may give, or to incur any debts or liabilities in the name of or on behalf of
the other Party. The Parties acknowledge and agree that nothing contained in
this Agreement shall be deemed or construed to constitute or create between the
Parties hereto a partnership, association, joint venture or other agency.
13.04 Entire Agreement. This Agreement, the Purchase Agreement and
Collateral Agreements set forth the entire agreement and understanding between
the Parties as to the subject matter hereof and merge all prior discussions
between them, and none of the Parties shall be bound by any conditions,
definitions, warranties, modifications, understandings or representations with
respect to such subject matter other than as expressly provided herein or
therein set forth on or subsequent to the Effective Date hereof in writing and
signed by a proper and duly authorized representative of the Party to be bound
thereby.
13.05 Headings. Section and subsection headings contained in this
Agreement are inserted for convenience of reference only, shall not be deemed to
be a part of this Agreement for any purpose, and shall not in any way define or
affect the meaning, construction or scope of any of the provisions hereof.
13.06 Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
13.07 Governing Law. The Parties agree that this Agreement shall be
governed by and construed and interpreted in accordance with the laws of the
State of New York, excluding the choice of law rules thereof.
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13.08 Force Majeure. Neither Party shall lose any rights hereunder or be
liable to the other Party for damages or losses on account of failure of
performance by the defaulting Party if the failure is occasioned by government
action, war, acts of terrorism, fire, explosion, flood, strike, lockout,
embargo, act of God, or other cause beyond the reasonable control of the
defaulting Party, provided that the Party claiming force majeure has exerted
commercially reasonable efforts to avoid or remedy such force majeure.
13.09 Waiver. Except as specifically provided for herein, the waiver
from time to time by either of the Parties of any of their rights or their
failure to exercise any remedy shall not operate or be construed as a continuing
waiver of the same or of any other of such Party's rights or remedies provided
in this Agreement.
13.10 Severability. If any term, covenant or condition of this Agreement
or the application thereof to any Party or circumstances shall, to any extent,
be held to be invalid or unenforceable, then the remainder of this Agreement, or
the application of such term, covenant or condition to parties or circumstances
other than those as to which it is held invalid or unenforceable, shall not be
affected thereby and each term, covenant or condition of this Agreement shall be
valid and be enforced to the fullest extent permitted by law.
13.11 Except as otherwise agreed in this Agreement, in the Purchase
Agreement, or in a Collateral Agreement, Seller and Buyer shall have no right or
interest whatsoever in any product of the other Party whether such product is
conceived or developed by the other Party, during or after the course of
performance of this Agreement, the Purchase Agreement or any Collateral
Agreement. Nothing in this Agreement shall be construed to obligate Buyer or
Seller to a specified level of effort in its promotion and marketing of any
product.
13.12 Execution in Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
ARTICLE XIV
NOTICES
14.01 Until further notice in writing, any notice or other communication
hereunder shall be deemed to be sufficiently given to the addressee and any
delivery hereunder deemed made when sent by certified mail to the addresses set
out below.
For Agere: Agere Systems
Intellectual Property
Attn: Contract Administrator
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
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With a copy to: Agere Systems Inc.
Attn: Vice President - Law
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
For Buyer: Proxim Corporation
Attn: Chief Financial Officer
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to: Simpson, Thacher & ▇▇▇▇▇▇▇▇
Attn: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Esq.
▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
Los Angeles, California 91608
United States of America
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
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IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed by its duly authorized representative on the respective dates entered
below.
AGERE SYSTEMS INC.
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Vice President -- Intellectual Property
Date: August 5, 2002
PROXIM CORPORATION
By: /s/ ▇▇▇▇▇ ▇▇▇▇
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Name: ▇▇▇▇▇ ▇▇▇▇
Title: President
Date: August 5, 2002
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES
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APPENDIX A
DEFINITIONS APPENDIX
"Assigned Marks" means the trademarks, service marks, trade names, logos, trade
dress and all elements thereof specifically set forth in Schedule A in Appendix
F together with any registrations or applications therefore, all common law
rights thereto and the goodwill appurtenant thereto and/or symbolized thereby.
"Assigned Software" means the Code and associated Documentation owned by Seller
and currently used primarily for the purpose of operating the ORiNOCO Business
as of the Effective Date, as identified in Appendix B to this Agreement.
"Assigned Technical Information" means Information owned by Seller and used
primarily for the purpose of operating the ORiNOCO Business, as of the Closing
Date, as identified in Appendix D hereto.
"Code" shall mean Object Code and Source Code, collectively.
"Derivative Work(s)" shall mean any work of authorship that is based, in whole
or in part, upon one or more pre-existing works, such as a revision,
modification, translation, abridgment, condensation, expansion or any other form
in which such pre-existing works may be recast, transformed or adopted and
which, if prepared without authorization of the owner of the copyright in such
pre-existing work, would constitute a copyright infringement. For purposes of
this Agreement, a Derivative Work shall also include any compilation that
incorporates such a pre-existing work.
"Documentation" shall mean all information in human and/or machine-readable
form, relating to Code, including but not limited to user manuals and materials
useful for design (for example, logic manuals, flow charts, and principles of
operation).
"Effective Date" has the meaning assigned in Recital A hereof.
"Information" shall mean any and all documented and undocumented information
(excluding patents and patent applications), including without limitation Code,
Documentation, technical information, trade secrets and other confidential
information, data and drawings of whatever kind in whatever medium,
specifications, techniques, know-how, formulae, compositions, processes,
designs, sketches, photographs, graphs, drawings, samples, non-patented
inventions, discoveries, developments and ideas, past and current manufacturing
and distribution methods and processes, current and anticipated customer
requirements, price lists, part lists, customer lists, market studies, business
plans, database technologies, systems, structures, architectures, improvements,
devices, concepts, methods and information, however documented, and any and all
notes, analysis, compilations, studies, summaries, and other material containing
or based, in whole or in part, on any
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information included in the foregoing. Information does not include any
intellectual property embodied in an integrated circuit chip or chipset, or any
method of manufacturing an integrated circuit.
"Licensed Software" means Code and associated Documentation owned by Seller as
of the Effective Date, other than the Assigned Software that, aside from
currently being used in the operation of the ORiNOCO Business or in products of
the ORiNOCO Business, has application in other business units or areas within
Seller or its Related Companies, and/or applications external to Seller prior to
the Effective Date as identified herein in Appendix C.
"Licensed Technical Information" means Information owned by Seller as of the
Effective Date other than the Assigned Technical Information that, aside from
currently being used in the operation of the ORiNOCO Business or in products of
the ORiNOCO Business, has application in other business units or areas within
Seller or its Related Companies, and/or applications external to Seller prior to
the Effective Date as identified herein in Appendix E.
"Object Code" shall mean code in machine-readable form generated by compilation,
assembly or other translation of Source Code and contained in a medium which
permits it to be loaded into and operated on by a computer.
"Permitted Use" means i) for any Assigned Software or Assigned Technical
Information below layer 3 (i.e., layer 1, layer 2, etc.), for any use, and ii)
for any Assigned Software or Assigned Technical Information at layer 3 and
above, for any use other than sale or license to third parties for incorporation
into wireless networking infrastructure products.
"Purchase Agreement" has the meaning assigned in Recital A hereof.
"Related Companies" means with respect to Buyer and Agere, its Subsidiaries.
"Software" means Assigned Software and Licensed Software, collectively.
"Source Code" shall mean code in any programming language contained in any
format, including human and machine-readable formats, such code including all
comments and procedural code plus all related development documents such as, but
not limited to, flow charts, schematics, statements of principles of operations
or any other specifications.
"Subsidiary" of a company means a corporation or other legal entity (i) more
than fifty percent (50%) of whose shares or other securities entitled to vote
for election of directors (or other managing authority) is now or hereafter
controlled by such company either directly or indirectly; or (ii) which does not
have outstanding shares or securities but more than fifty percent (50%) 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 an Subsidiary of such company only as long as such control or
ownership and control
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exists.
"Technical Information" means Assigned Technical Information and Licensed
Technical Information, collectively.
"Trademarks" means the Assigned Marks.
"Wireless Networking Business" means any business, including without limitation
the ORiNOCO Business, related to the design, engineering, manufacturing,
marketing, sale and distribution of wireless networking products.
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