INTELLECTUAL PROPERTY LICENSE AGREEMENT
between
STANDARD MICROSYSTEMS CORPORATION
and
AJJA INC.
Dated October 7, 1997
TABLE OF CONTENTS
ARTICLE 1. SMSC INTELLECTUAL PROPERTY 1
1.01 SMSC IP License to Company. 1
1.02 SMSC 100BaseT4 License to Company. 1
1.03 Form of Use. 2
1.04 Infringement Proceedings. 2
ARTICLE 2. TERM 2
ARTICLE 3. [Intentionally Omitted.] 2
ARTICLE 4. TERMINATION. 2
ARTICLE 5. [Intentionally Omitted.] 3
ARTICLE 6. MISCELLANEOUS PROVISIONS. 3
6.01 Assignment 3
6.02 Counterparts. 3
6.03 Notices. 3
6.04 Headings. 4
6.05 Severability. 4
6.06 Waiver, Remedies Cumulative 5
6.07 Entire Agreement. 5
6.08 Amendments. 5
6.09 Survival. 5
6.10 Governing Law. 5
6.11 References and Construction. 5
LIST OF SCHEDULES
Schedule 1.01
Schedule 1.0
THIS INTELLECTUAL PROPERTY LICENSE AGREEMENT (this
"Agreement") is entered into this 7th day of October, 1997 (the "Effective
Date"), by and between STANDARD MICROSYSTEMS CORPORATION, a Delaware corporation
("SMSC"), and AJJA INC., a Delaware corporation (the "Company").
W I T N E S S E T H:
WHEREAS, SMSC, certain subsidiaries of SMSC, the Company,
Global Business Investments (B.V.I.) Corp, a British Virgin Islands corporation
and Accton Technology Corporation ("Accton") are parties to the Stock Purchase
Agreement dated as of September 30, 1997 (the "Stock Purchase Agreement";
capitalized terms not defined herein shall have the meaning ascribed to them in
the Stock Purchase Agreement);
WHEREAS, as contemplated by the Stock Purchase Agreement and
pursuant to this Agreement, the Company shall obtain from SMSC, and SMSC shall
grant to the Company, a non-exclusive, royalty-free, worldwide license to use
certain of SMSC's patents as set forth herein;
NOW, THEREFORE, for and in consideration of the mutual
covenants contained herein and in the Stock Purchase Agreement and other Related
Agreements and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, SMSC and the Company agree as
follows:
ARTICLE 1. SMSC INTELLECTUAL PROPERTY.
1.01 SMSC IP License to Company. SMSC hereby grants to the
Company, without the right to sublicense, a non-exclusive, royalty-free,
worldwide license, under the patents identified on Schedule 1.01 ("The SMSC
Patents") to make, use, and sell (a) the current product line of the Business,
(b) the EPIC chip, and (c) any expansions, improvements, or derivatives of (a)
or (b) that Company may develop.
1.02 SMSC 100BaseT4 License to Company. SMSC hereby grants to
Company, without the right to sublicense, a non-exclusive, royalty-free,
worldwide license, under the patents identified on Schedule 1.02 (the "100BaseT4
Patents") to make, use, and sell LAN products. SMSC and Company acknowledge that
SMSC has received highly valuable consideration for the foregoing license of the
100BaseT4 Patents, and that the consideration being received by SMSC hereunder
and under the Stock Purchase Agreement would have differed significantly had
SMSC failed to grant the foregoing license.
1.03 Form of Use. The Company shall use the SMSC Patents in
the form and manner, and with appropriate legends, as reasonably prescribed from
time to time by SMSC. The Company shall mark all products that conform
substantially to IEEE Standard 802.3u (100BaseT4) and that, when made or sold by
the Company would, but for the license granted hereunder, infringe any of the
100BaseT4 Patents, with all applicable patent numbers of the 100BaseT4 Patents,
sufficient to meet the marking requirements of the United States patent laws.
1.04 Infringement Proceedings. The Company shall promptly
notify SMSC of any unauthorized use of the SMSC Patents or the 100BaseT4 Patents
by others, as such use comes to the Company's attention. SMSC shall have the
sole right to bring infringement or unfair competition proceedings involving the
SMSC Intellectual Property.
ARTICLE 2. TERM.
The term of this Agreement shall commence on the Effective
Date and shall continue until such time as this Agreement is terminated pursuant
to Article 4.
ARTICLE 3. [Intentionally Omitted.].
ARTICLE 4. TERMINATION.
This license is perpetual, except that if either party
defaults in the performance of any of its material obligations under this
Agreement, the Stock Purchase Agreement or the Stockholders' Agreement and does
not cure such default within 30 days of receipt of a notice of default, then the
non-defaulting party may, by giving notice to the defaulting party, terminate
this Agreement as of the termination date specified in the notice.
ARTICLE 5. [Intentionally Omitted.]
ARTICLE 6. MISCELLANEOUS PROVISIONS.
6.01 Assignment. This Agreement shall bind and inure to the
benefit of the parties named herein and their respective heirs, successors and
permitted assigns. The Company may not assign any of its rights or obligations
under this Agreement without the prior written consent of SMSC. Notwithstanding
the foregoing, the Company may assign without consent all or any portion of its
rights and obligations pursuant to this Agreement to (a) the purchaser of
substantially all of the assets and properties of such party provided that such
purchaser assumes all of the obligations of such party under this Agreement or
(b) the surviving corporation of a merger or consolidation in which such party
is a constituent corporation.
6.02 Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original, but all of
which together will constitute one and the same instrument.
6.03 Notices. Except as otherwise specified in this Agreement,
all notices, requests and other communications hereunder must be in writing and
will be deemed to have been duly given only if delivered personally or by
facsimile transmission or mailed (first class postage prepaid) to the parties at
the following addresses or facsimile numbers:
If to SMSC:
Standard Microsystems Corporation
80 Arkay Drive
Hauppauge, NY 11788
Attention: Paul Richman, Chairman
Facsimile No.: 516-273-5550
With copies to:
George W. Houseweart
Sr. Vice President - Law and
Intellectual Property
80 Arkay Drive
Hauppauge, NY 11788
Loeb & Loeb LLP
345 Park Avenue
New York, New York 10154-0037
Attention: David C. Fischer, Esq.
Facsimile No.: 212-407-4990
If to the Company:
AJJA, Inc.
Lance Murrah
President and General Manager
350 Kennedy Drive
Hauppage, NY 11788
Facsimile No.: 516-273-7935
With a copy to:
Milbank, Tweed, Hadley & McCloy
One Chase Manhattan Plaza
New York, New York 10005
Attention: John T. O'Connor, Esq.
Facsimile No.: 212-530-5219
All such notices, requests and other communications will (i) if delivered
personally to the address as provided in this Section, be deemed given upon
delivery, (ii) if delivered by facsimile transmission to the facsimile number
provided in this Section, be deemed given upon receipt, and (iii) if delivered
by mail in the manner described above to the address as provided in this
Section, be deemed given upon receipt (in each case regardless of whether such
notice, request or other communication is received by any other Person to whom a
copy of such notice, request or other communication is to be delivered pursuant
to this Section). Any party from time to time may change its address, facsimile
number or other information for the purpose of notices to that party by giving
notice specifying such change to the other parties hereto.
6.04 Headings. The headings used in this Agreement have been
inserted for convenience of reference only and do not define, limit or otherwise
in any way affect the provisions hereof.
6.05 Severability. If any provision of this Agreement is held
to be illegal, invalid or unenforceable under any present or future Law, and if
the rights or obligations of any party hereto under this Agreement will not be
materially and adversely affected thereby, (a) such provision will be fully
severable, (b) this Agreement will be construed and enforced as if such illegal,
invalid or unenforceable provision had never comprised a part hereof and (c) the
remaining provisions of this Agreement will remain in full force and effect and
will not be affected by the illegal, invalid or unenforceable provision or by
its severance herefrom.
6.06 Waiver, Remedies Cumulative. Any term or condition of
this Agreement may be waived at any time by the party that is entitled to the
benefit thereof, but no such waiver shall be effective unless set forth in a
written instrument duly executed by or on behalf of the party waiving such term
or condition. No waiver by any party of any term or condition of this Agreement,
in any one or more instances, shall be deemed to be or construed as a waiver of
the same or any other term or condition of this Agreement on any future
occasion. All remedies, either under this Agreement or by Law or otherwise
afforded, will be cumulative and not alternative.
6.07 Entire Agreement. This Agreement and the Schedules to
this Agreement represent the entire agreement between the parties with respect
to its subject matter, and there are no other representations, understandings or
agreements between the parties relative to such subject matter.
6.08 Amendments. This Agreement may be amended, supplemented
or modified only by a written instrument duly executed by or on behalf of each
party hereto.
6.09 Survival. The terms of Section 6.06, this Section 6.09
and Section 6.10 shall survive the expiration of this Agreement or termination
of this Agreement for any reason.
6.10 Governing Law. Except as required by local law in any
jurisdiction outside of the United States, this Agreement and the rights and
obligations of the parties hereunder shall be governed by and construed in
accordance with the laws of the State of New York, without giving effect to the
principles thereof relating to the conflicts of laws.
6.11 References and Construction. The
Schedules to this Agreement shall be incorporated into
and deemed part of this Agreement and all references to
this Agreement shall include the Schedules hereto. In
this Agreement:
(1) references to any law, legislative act, rule or regulation shall mean
references to such law, legislative act, rule or regulation in changed or
supplemented form or to a newly adopted law, legislative act, rule or regulation
replacing a previous law, legislative act, rule or regulation; and
(2) references to and mentions of the word "including"
or the phrase "e.g." shall mean "including, without
limitation."
IN WITNESS WHEREOF, each of SMSC and the Company has caused
this Agreement to be signed and delivered by its duly authorized representative.
STANDARD MICROSYSTEMS
CORPORATION
By:_____________________________
- --
Name: Paul Richman
Title: Chairman and CEO
AJJA INC.
By:_____________________________
- --------
Name: Lance Murrah
Title: President and
General Manager
Schedule 1.02
U.S. Patent No. 5,544,323
HIGH BIT RATE CSMA/CD USING MULTIPLE PAIRS
Inventors: Robert Heaton
Nariman Yousefi
Khosrow Sadeghi
David Fischer
U.S. Patent No. 5,664,108
RECONFIGURABLE SWITCH MATRIX FOR LOCAL AREA NETWORK
Inventors: Ashraf Dahod
Eric Diaz
Camillo Iadevaia
Ronald Sulyma
Colin Taddonio