EXHIBIT 10.2
Corning License No. L03273
NOTE: Information in this document marked with an "[*]" has been omitted and
filed separately with the Commission. Confidential treatment has been requested
with respect to the omitted portions.
INTELLECTUAL PROPERTY RIGHTS AGREEMENT BETWEEN CORNING
INCORPORATED AND AVANEX CORPORATION RELATING TO PHOTONICS
This Intellectual Property Rights Agreement ("IP Agreement") is agreed to and
entered into by and between Corning Incorporated, a New York corporation having
a principal place of business at One Riverfront Plaza, Corning, NY 14831
("Corning") and Avanex Corporation, a Delaware corporation having a principal
place of business at 40919 Encyclopedia Circle, Fremont, CA 94538 ("Avanex").
Hereinafter, these two corporations may be referred to individually as a "Party"
and collectively as "Parties", as the context requires.
The Parties, along with Alcatel Alstrom ("Alcatel"), are parties to a Purchase
Agreement (as defined hereinafter) pursuant to which, among other things, Avanex
is purchasing or otherwise acquiring rights in or to certain assets of Corning
related to business operations of Corning and/or its Subsidiaries, and products
related to those business operations. This IP Agreement is meant to definitively
establish Avanex's and Corning's respective rights regarding the intellectual
property which is included among the assets being purchased or otherwise
acquired.
Therefore, in consideration of the mutual premises recited in this IP Agreement
as well as the associated payments and other consideration recited in the
Purchase Agreement, the Parties agree as follows, to become effective only upon
the Asset Purchase Closing (as defined hereinafter):
1. DEFINITIONS.
1.1 "ASSET PURCHASE CLOSING" is as defined in the Purchase Agreement.
1.2 "CORNING ASSIGNED COPYRIGHTS" shall mean (i) those registered
Copyrights and applications for registration of Copyright owned by
Corning or its Subsidiaries as of the Asset Purchase Closing and which
are used exclusively in connection with the Corning OCM Products, and
(ii) unregistered copyrights in the following material owned by Corning
or its Subsidiaries as of the Asset Purchase Closing and which are used
exclusively in connection with the Corning OCM Products: product
schematics, product descriptions, manufacturing instructions, written
specifications, laboratory notebooks, computer programs and software
tools, drawings and manuals.
1.3 "CORNING ASSIGNED IP" shall mean collectively the Corning Assigned
Patents, the Corning Assigned Copyrights and the Corning Assigned
Trademarks.
1.4 "CORNING ASSIGNED PATENTS" shall mean (a) the Patents listed in Exhibit
1.4 attached hereto and (b) any Patents owned by Corning or its
Subsidiaries (but excluding Corning Cable Systems and Technical
Materials and their respective Subsidiaries) that primarily relate to
the design, development, assembly, manufacture, production, testing,
storage,
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Corning License No. L03273
transportation or delivery of Corning OCM Products and are filed after
the date of the signing of the Purchase Agreement until one hundred
eighty (180) days after the Asset Purchase Closing; provided, however,
that this clause (b) shall not include (i) any Patents which relate to
[*], (iii) any Patent acquired from a third party after the Asset
Purchase Closing, or (iv) any Patents owned by Corning Cable Systems.
1.5 "CORNING ASSIGNED TRADEMARKS" shall mean those trademarks and service
marks, registered and unregistered, applications and renewals therefor,
trade names, logos, company names and domain names owned by Corning or
its Subsidiaries as of the Asset Purchase Closing listed in Exhibit 1.5
attached hereto.
1.6 "CORNING CABLE SYSTEMS" shall mean the Subsidiary of Corning known as
Corning Cable Systems LLC and its Subsidiaries which is involved in the
design, development, assembly, manufacture, production, testing,
storage, transportation and delivery of (a) products described in the
definition of Hardware and Equipment, and (b) Cable Products, i.e., (i)
optical, electrical and composite optical-electrical cables, (ii) cable
components, (iii) cable installations including, without limitation,
inside or outside plant or premises networks installations, and (d)
marine or submarine cables.
1.7 "CORNING COMMERCIALIZED OCM PRODUCTS" shall mean those specific Corning
OCM Products listed in Exhibit 1.7 attached hereto, which had been
marketed and sold to the general public as of the Asset Purchase
Closing.
1.8 "CORNING LICENSED COPYRIGHTS" shall mean those Copyrights and
copyrightable works, registered and unregistered, and applications for
registration thereof that are either owned by Corning or its
Subsidiaries (excluding Corning Cable Systems) or to which Corning or
its Subsidiaries (excluding Corning Cable Systems) have sublicensing
rights, and which have been used, but not exclusively, in connection
with the design, development, assembly, manufacture, production,
testing, storage, transportation or delivery of Corning OCM Products.
Notwithstanding the foregoing, Corning Licensed Copyrights shall not
include any system simulation software.
1.9 "CORNING LICENSED KNOW-HOW" shall mean the proprietary non-patented
information, inventions and technology that are either owned by Corning
or its Subsidiaries or to which Corning or its Subsidiaries have
sublicensing rights (but in each case excluding Corning Cable Systems
and Technical Materials and their respective Subsidiaries) which as of
the Asset Purchase Closing was necessary for or used in the design,
development, assembly, manufacture, production, testing, storage,
transportation or delivery of Corning OCM Products and was in the
possession of the employees of either Corning or its Subsidiaries,
including the contents of invention disclosures or laboratory
notebooks, computer programs and software tools, drawings, manuals,
data, trade secrets, manufacturing processes, formulas, testing
methodologies, designs and samples.
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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Corning License No. L03273
Notwithstanding the foregoing, Corning Licensed Know-How shall not
include technical information (a) owned by Corning Cable Systems or
Technical Materials or their respective Subsidiaries, or (b) related to
optical fiber, switching, MEMS (micromechanical systems), VCSEL's
(vertical cavity surface emitting lasers), [*]. It is understood and
acknowledged, however, that Corning Licensed Know-How shall include any
proprietary non-patented information, inventions and technology which,
as of the Asset Purchase Closing, was necessary for or used in the
design, development, assembly, manufacture, production, testing,
storage, transportation or delivery of the Corning Commercialized OCM
Products and which is delivered to Avanex pursuant to this IP Agreement
or the Purchase Agreement, that would otherwise be excluded from
Corning Licensed Know-How by the preceding sentence, unless, to
Avanex's knowledge or the knowledge of any former Corning employee who
becomes employed by Avanex subsequent to the Asset Purchase Closing, it
falls within the exclusions of the preceding sentence.
1.10 "CORNING NON-EXCLUSIVE LICENSED PATENTS" shall mean (a) those Patents
listed in Exhibit 1.10 attached hereto, (b) all Patents owned by
Corning or its Subsidiaries (excluding Corning Cable Systems) or to
which Corning or its Subsidiaries (excluding Corning Cable Systems)
have sublicensing rights: (i) that are entitled to an effective filing
date in the period beginning on the signing date of the Purchase
Agreement and terminating one hundred eighty (180) days after the Asset
Purchase Closing, and (ii) for which the named inventors were employed
in the Technical Materials business at the time the invention was
conceived or first reduced to practice.
1.11 "CORNING SOLELY LICENSED PATENTS" shall mean (a) those Patents (other
than those listed in Exhibit 1.10) owned by Corning or its
Subsidiaries, or to which Corning or its Subsidiaries have sublicensing
rights, as of the date of signing of the Purchase Agreement that,
although having use for the design, development, assembly, manufacture,
production, testing, storage, transportation or delivery of Corning OCM
Products, are usable with, or have application to, other products,
fields or businesses, and (b) those Patents owned by Corning or its
Subsidiaries as of the Asset Purchase Closing that relate primarily to
[*], as well as, in each case, any such Patents (other than those
included in subsection (b) of Section 1.10 above) that are entitled to
an effective filing date in the period beginning on the signing date of
the Purchase Agreement and terminating one hundred eighty (180) days
after the Asset Purchase Closing. However, this definition shall not
include any Patents which are: (i) related to [*], (iv) any of the
Patents listed in Exhibit 1.11a, attached hereto; (v) any Patents
acquired from a third party after the Asset Purchase Closing, (vi) any
Patents owned by Corning Cable Systems other than those listed in
Exhibit 1.11b, or (vii) any Patents for which Corning Cable Systems
alone has a right to grant sublicensing rights.
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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Corning License No. L03273
1.12 "CORNING OCM PRODUCTS" shall mean the products of Corning or its
Subsidiaries that are within the product categories set forth in
Exhibit 1.12 attached hereto, including any such products under
development.
1.13 "CORNING THIRD PARTY IP" shall mean the Intellectual Property licensed
to Corning or its Subsidiaries under a Corning Third Party IP Contract.
1.14 "CORNING TRANSFERRED THIRD PARTY IP CONTRACTS" shall mean all contracts
set forth in Exhibit 1.14 attached hereto.
1.15 "DIAMOND TURNING" means the business unit of Corning that deals with
the use of diamond tools, air bearings, stable platforms and precision
feedback mechanisms to achieve optical quality finishes on various
materials, including, but not limited to, aluminum, electroless nickel,
brass, copper and IR (infrared) crystals.
1.16 "DISPERSION COMPENSATION MODULE" means a device, separate from a coated
or cabled optical fiber and packaged within its own container, intended
to compensate for the chromatic degradation of an optical signal
propagating in the optical fiber over a distance greater than 10 km;
provided, however, that although a Dispersion Compensation Module
includes dispersion-compensating optical fiber, a
dispersion-compensating optical fiber by itself shall not be considered
to be a Dispersion Compensation Module.
1.17 "FIBER SUPPLY AGREEMENT" means that certain Fiber Supply Agreement
entered into by Corning and Avanex under which Avanex has certain
obligations to purchase dispersion-compensating optical fiber from
Corning.
1.18 "HARDWARE & EQUIPMENT" means the business unit of Corning that deals
with: (a) fiber optic hardware including without limitation fiber optic
connectors, adapters, the purchase and resale of variable attenuators,
fixed attenuators, fiber optic cable assemblies, joint wrappers/covers,
splitters and taps (fused fiber), and filters; (b) cable installations
including without limitation inside or outside plant, or premises
networks installations, data, CATV, or telephone network electrical or
fiber optic joints or terminations including without limitation
electrical circuit connection or protection, distribution frames and
components, digital subscriber lines and splitters, housings, network
interface devices, measurement devices (i.e., OTDRs, hand-held optical
meters for testing optical circuits such as for wavelength and power
measurement and optical traffic and throughput and traffic indication,
fault locators), testers and test units; (c) aerial network
transmission products including without limitation lashing, fastening,
jointing, terminating or insulating; (d) splicing equipment including
without limitation optical fusion splicing equipment; and (e) fiber
optic hardware and equipment for marine or submarine networks.
1.19 "INTELLECTUAL PROPERTY" shall mean any or all of the following and all
rights in, arising out of, or associated therewith: (i) Patents, (ii)
all inventions (whether patentable or not), invention disclosures,
improvements, trade secrets, proprietary information, know how,
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Corning License No. L03273
technology, technical data, and all documentation relating to any of
the foregoing ("KNOW-HOW"), (iii) all copyrights, copyrights
registrations and applications for registration thereof ("COPYRIGHTS"),
(iv) all industrial designs and any registrations and applications
therefor throughout the world, and (v) all databases and data
collections and all rights therein throughout the world, and (vi) all
equivalent rights under the laws of any jurisdiction.
1.20 "PATENT" shall mean any and all forms of patents issued or granted
anywhere in the world, reissued and reexamined patents, continuations,
continuations-in-part, divisions and extensions thereof, applications
therefor and any patents which may issue on such applications, in each
case which have not been abandoned or expired.
1.21 "PURCHASE AGREEMENT" means that certain Share Acquisition and Asset
Purchase Agreement, among Avanex, Corning and Alcatel that establishes
the underlying transaction related to the purchase or acquisition of
Corning's assets as contemplated by the Parties.
1.22 "AVANEX COMPETITOR" means the entities listed in Exhibit 1.22 and any
successor to the entities. [*] within every [*] period after the Asset
Purchase Closing, Avanex may substitute [*] new entities for those
currently on the list by providing written notice to Corning.
1.23 "SUBSIDIARY" shall mean, when used with respect to any party, any
corporation or other organization, whether incorporated or
unincorporated, at least a majority of the securities or other
interests of which having by their terms ordinary voting power to elect
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 party or by any one
or more of its subsidiaries, or by such party and one or more of its
subsidiaries.
1.24 "TECHNICAL MATERIALS" means the business unit of Corning (including the
business unit called Photonic Materials) that deals with various
micromaterials and microlenses suitable for a variety of optical
components including, but not limited to, lensed fibers, GRIN (gradient
index) lenses, glass polarizers, optical element-holding devices (i.e.,
devices for holding, positioning and aligning micromaterials and
microlenses), fiber arrays, collimator arrays (i.e., functional arrays
made by combining various holding, positioning and aligning devices and
lensing technologies included within this definition) and lens arrays.
2. ASSIGNMENT OF CORNING ASSIGNED PATENTS.
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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Corning License No. L03273
2.1 At the Asset Purchase Closing, subject to the terms and conditions set
forth in this IP Agreement, Corning or the applicable Subsidiary shall
sell, convey, transfer and assign all of Corning's or its Subsidiary's
right, title and interest in and to the Corning Assigned Patents to
Avanex or one or more of its designated Subsidiaries, and Avanex or one
or more of its designated Subsidiaries shall purchase from Corning such
right, title and interest.
2.2 If, due to the fact that either (a) any Corning Assigned Patent claims
priority from any Patent retained by Corning or its Subsidiaries or (b)
any Patent retained by Corning or its Subsidiaries claims priority to
any Corning Assigned Patent, either Party is impeded in its ability
either to license a third party under a particular Patent or to assert
a particular Patent against a third party, the Parties will cooperate
in good faith with each other to resolve such issue, including one of
the Parties extending to the other Party a reasonable offer to sell or
license such Patents needed to resolve such issue. The determination as
to whether or not any Patent will be sold or licensed and, if so, which
Party's Patent will be sold or licensed, shall be based on a good faith
consideration of the relative impact on each Party's respective
business interests likely to be caused by the transfer of rights in any
such Patent. In the event that the decision is made to sell, rather
than to license, a Patent, the selling Party shall retain a license
under such Patent of appropriate scope, in order to permit the selling
Party to continue its business operations; provided, however, that such
scope shall, unless otherwise agreed to by the Parties, be equivalent
to the rights each Party had in such Patent under this IP Agreement
prior to the sale.
If Avanex is a party to a lawsuit pertaining to a Corning Assigned
Patent and does not request that Corning participate in the management
and control of such suit, and as the result of litigation against a
third party for the infringement of such Patent, Avanex obtains a
recovery (through settlement, order, or judgment) against such third
party, and a portion of such recovery pertains to acts of infringement
occurring prior to the execution of this IP Agreement, Avanex shall
deduct from such recovery Avanex's litigation costs, and shall remit to
Corning a pro rata share of the remainder of the recovery, based on the
ratio of the portion of the recovery attributable to such prior acts of
infringement divided by the total recovery. In any such litigation,
Corning shall, at the request of Avanex, cooperate in the manner
outlined in Section 14.1(i).
If Avanex requests that Corning participate in the management and
control of the litigation against a third party for the infringement of
any Corning Assigned Patent and Corning agrees to participate, the
Parties shall equally share in all external expenses associated with
the litigation except with respect to any expenses associated with any
claims in the suit which are ancillary to the Corning Assigned Patent.
For such expenses, the Party associated with such ancillary claim shall
bear all those expenses. In such litigations, Corning's consent with
respect to all matters of management, control, settlement, consent
judgment, or voluntary final disposition of the litigation will be
required. Each Party must obtain the other Party's consent to grant to
the third party alleged infringer or any of its affiliates any license
or sublicense to the Corning Assigned Patents in suit while such
litigation is pending. Any recovery attributable to acts of
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Corning License No. L03273
infringement prior to the Asset Purchase Closing shall be remitted to
Corning. If at any time either Party does not wish to incur expenses in
the litigation with respect to seeking damages for infringement, that
Party may cease paying expenses and the other Party may continue to
pursue the litigation at its expense, will receive any and all recovery
from the litigation, and will retain sole management and control of
the litigation. The other Party shall continue to cooperate in the
litigation, however. Avanex or any applicable Subsidiary shall be
obligated to maintain the Corning Assigned Patents in suit in force
pending such litigation.
3. LICENSING OF CORNING ASSIGNED PATENTS.
3.1 Avanex hereby grants to Corning and its Subsidiaries (but only for so
long as each Subsidiary remains a Subsidiary), a non-exclusive,
perpetual, worldwide, irrevocable, royalty-free license under the
Corning Assigned Patents, with the right to sublicense (subject to
Section 3.2 below), to make, have made, import, use, offer to sell,
sell, and otherwise dispose of any and all products and services, and
to practice any method, process or procedure claimed in such Corning
Assigned Patents, for all purposes, except for the commercial
manufacture or sale of Corning OCM Products. Such license shall also
permit Corning and its Subsidiaries to perform research and development
activities that may relate to the Corning OCM Products and to develop,
produce, market and sell products other than Corning OCM Products in
the field of optical communications. Avanex shall not hold Corning
liable for any claims of direct, indirect or contributory infringement
of the Corning Assigned Patents arising out of Corning's manufacture or
sale of products outside the scope of Corning OCM Products.
3.2 (a) Corning shall have the right to grant sublicenses of the right
to use under the Corning Assigned Patents to Corning's or any
of its Subsidiaries' customers of products manufactured by or
on behalf of Corning or any of its Subsidiaries and sold by
Corning or any of its Subsidiaries.
(b) Corning shall have the right to grant sublicenses under
Corning Assigned Patents only in connection with the grant of
a license by Corning to make, have made, use, sell, offer for
sale or import products (or products based on Corning's or any
of its Subsidiaries' products) resulting from meaningful
development activities by Corning or its Subsidiaries, or to
practice a method, process or procedure claimed in such
Corning Assigned Patents in connection with such products,
within the scope of the license granted in Section 3.1 above,
under a license agreement with a third party (including, but
not limited to, a joint venture formed with a third party, or
to establish a contract manufacturer, or to provide contingent
manufacturing rights to a customer), but not, for the sake of
clarification, in connection with a sale of a business or
product line by Corning, which is addressed in Section 15.10.
Except as provided in the next paragraph, Corning shall have
no right to grant sublicenses under the Corning Assigned
Patents as part of (i) Patent portfolio license, (ii) a Patent
cross-license, or (iii) any license
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Corning License No. L03273
that grants no other rights than those under Patents, or
otherwise in any manner except as specifically set forth
above.
(c) Notwithstanding the previous paragraph, Corning shall be
permitted to sublicense a maximum of fifteen (15) families of
Corning Assigned Patents, selected at Corning's sole
discretion, without the restrictions of subsections 3.2(b)(i)
through (iii).
(d) Corning may sublicense a Avanex Competitor under Sections
3.2(b) and (c) only if the Patent being sublicensed is being
sublicensed outside the field of optical fiber communications.
3.3 Notwithstanding the provisions of Section 3.1 and the noncompetition
provisions set forth in the Purchase Agreement, Corning and its
Subsidiaries shall not be precluded in any way from making, having
made, importing, using, offering to sell, selling or otherwise
disposing of sub-components, i.e., devices not by themselves capable of
performing the functional attributes of Corning OCM Products but
otherwise usable, even exclusively, with Corning OCM Products or
capable of being combined to form Corning OCM Products, provided that
such sub-components are not provided to third parties in a kit or other
form where they could be combined into and sold as Corning OCM Products
without material design and manufacturing effort by such third parties.
3.4 Neither Avanex nor any of its Subsidiaries shall be required under this
IP Agreement to maintain any Corning Assigned Patents in force, except
as provided in Section 2.3.
4. LICENSING OF CORNING SOLELY LICENSED PATENTS AND CORNING NON-EXCLUSIVE
LICENSED PATENTS.
4.1 Subject to the provisions of Section 11.1, Corning, for itself and on
behalf of any applicable Subsidiary, hereby grants to Avanex and its
Subsidiaries, as sole licensee (but sole only with respect to the
Corning OCM Products), a perpetual, worldwide, irrevocable,
royalty-free license under the Corning Solely Licensed Patents, with
the right to sublicense (but only with respect to the Corning OCM
Products), to make, have made, import, use, offer to sell, sell, and
otherwise dispose of Corning OCM Products and to practice any method,
process or procedure claimed in the Corning Solely Licensed Patents in
order to make and have made Corning OCM Products; provided, however,
that such sole license is subject to any rights or licenses granted to
third parties prior to the date of signing of the Purchase Agreement,
and subject to restrictions by operation of law with respect to any
such Patents which are co-owned with a third party (and to the extent a
co-owner's consent is necessary for such a license, Corning shall make
good faith efforts, if requested, to procure such rights, but at
Avanex's expense if any is required). With respect to [*], such license
shall [*]. With respect to [*], such license [*].
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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4.2 Subject to the provisions of Section 11.1, Corning, for itself and on
behalf of any applicable Subsidiary, hereby grants to Avanex and its
Subsidiaries, a perpetual, worldwide, non-exclusive, irrevocable,
royalty-free license under Corning Non-Exclusive Licensed Patents, to
make (but not have made), import, use, offer to sell, sell, and
otherwise dispose of Corning OCM Products and to practice any method,
process or procedure claimed in the Corning Non-Exclusive Licensed
Patents in order to make Corning OCM Products; provided however, that
such license is subject to any rights or licenses granted to third
parties prior to the date of signing of the Purchase Agreement, and
subject to restrictions by operation of law with respect to any such
Patents which are co-owned with a third party (and to the extent a
co-owner's consent is necessary for such a license, Corning shall make
good faith efforts, if requested, to procure such rights, but at
Avanex's expense if any is required). In the event that Avanex has a
third party make, on Avanex's behalf, a product within the scope of any
Corning Non-Exclusive Licensed Patents, Corning agrees not to sue
Avanex or its customers under such Corning Non-Exclusive Licensed
Patents. However, this agreement not to sue shall not waive Corning's
rights to bring an infringement action against such third party under
such Corning Non-Exclusive Licensed Patents.
4.3 Notwithstanding the limitation of certain Corning OCM Products to
applications for transmitting signals in optical fiber [*], Corning,
for itself any applicable Subsidiary, hereby grants to Avanex and its
Subsidiaries a perpetual, worldwide, non-exclusive, irrevocable,
royalty-free license under the Corning Solely Licensed Patents and
Corning Non-Exclusive Licensed Patents, to make, have made, import,
use, offer to sell, sell and otherwise dispose of products designed as
Corning OCM Products for use in transmission in optical fiber for [*],
and to practice any method, process or procedure claimed in the Corning
Solely Licensed Patents or the Corning Non-Exclusive Licensed Patents
in order to make and have made such Corning OCM Products; provided,
however, that such license is subject to any rights or licenses granted
to third parties prior to the date of signing of the Purchase
Agreement, and subject to restrictions by operation of law with respect
to any such Patents which are co-owned with a third party (and to the
extent a co-owner's consent is necessary for such a license, Corning
shall make good faith efforts, if requested, to procure such rights,
but at Avanex's expense if any is required). Such license shall extend
to Avanex's customers regardless of whether the customer uses the
product for optical transmission [*]. Such license shall [*].
4.4 If Avanex learns of the substantial infringement of any Corning Solely
Licensed Patent in the field that has been solely licensed to Avanex,
Avanex shall notify Corning in writing of this infringement, and shall
provide Corning with reasonable evidence of the infringement. Neither
Party will notify the infringer of the infringement without first
obtaining the consent of the other Party which consent shall not be
unreasonably withheld or delayed. Both Parties must use commercially
reasonable efforts, in cooperation with
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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Corning License No. L03273
each other, to resolve such infringement without litigation. Subject to
the above, Corning hereby grants to Avanex, to the extent permitted by
law, the exclusive right to prosecute any substantial infringement of
the Corning Solely Licensed Patents with respect to the manufacture,
sale or use of a product within the field of Corning OCM Products,
including acts of infringement occurring prior to the execution of this
IP Agreement, or defend any declaratory judgment action with respect
thereto (for the purposes of this Section 4.4, an "ENFORCEMENT
ACTION"), at its own expense, provided that Avanex shall consult with
Corning and obtain Corning's approval before taking any action
(including entering any settlement, consent judgment or other voluntary
final disposition of any Enforcement Action) that could adversely
affect any Corning Solely Licensed Patents. If necessary, Corning will
join such Enforcement Action as a party. Avanex shall retain all of any
recovery obtained in an Enforcement Action, unless such recovery
pertains to acts of infringement occurring prior to the execution of
this IP Agreement. In such a case, Avanex shall deduct from such
recovery Avanex's litigation costs, and shall remit to Corning a pro
rata share of the remainder of the recovery (through settlement, order,
or judgment), based on the ratio of the portion of the recovery
attributable to such prior acts of infringement divided by the total
recovery. In any Enforcement Action, Corning shall, at the request of
Avanex and subject to reimbursement of costs set forth below, cooperate
in all reasonable respects; make available relevant records, papers,
information, and the like; and, to the extent reasonably possible, have
its employees testify when requested. To the extent that Avanex elects
to prosecute or defend an Enforcement Action, Avanex shall pay all
Corning's expenses including, but not limited to, attorneys fees and
court costs for Corning's involvement as a subpoenaed third party or as
a necessary joined party in any court, alternative dispute resolution,
or administrative body proceedings, as well as compensation for the
value of the time of Corning's employees as reasonably required in
connection with the Enforcement Action.
4.5 After Corning presents evidence of infringement to Avanex sufficient to
bring a claim for patent infringement, Corning may request, in writing,
that Avanex initiate an Enforcement Action against the infringement or
threatened infringement of the Corning Solely Licensed Patents within
the field of Corning OCM Products. If, within [*] days following
receipt of such request, Avanex has not initiated an Enforcement Action
directed at such infringement or threatened infringement, Corning shall
have the right to initiate an enforcement suit on its own account, and
at its own expense, and shall retain all of any recovery obtained by
such suit unless such recovery pertains to acts of infringement
occurring after the execution of this IP Agreement. In such a case,
Corning shall deduct from such recovery Corning's litigation costs, and
shall remit to Avanex a pro rata share of the remainder of the
recovery, based on the ratio of the portion of the recovery
attributable to such after-occurring acts of infringement divided by
the total recovery. Avanex must obtain Corning's consent to grant a
license to any such infringer with regard to the asserted Patents, once
Corning has notified the alleged infringer and until any subsequent
litigation is over.
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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4.6 In the event that Avanex wishes to expand the foregoing licenses, the
Parties will discuss such an expansion and the terms of such an
expansion; provided that nothing herein will require Corning to agree.
4.7 Neither Corning nor any of its Subsidiaries shall be required under
this IP Agreement to maintain any Corning Solely Licensed Patents in
force.
5. LICENSING OF CORNING LICENSED KNOW-HOW.
5.1 Subject to the provisions of Section 11.1, Corning, for itself and on
behalf of any applicable Subsidiary, hereby grants Avanex and its
Subsidiaries (a) as sole licensee (but sole only with respect to the
Corning OCM Products), a perpetual, worldwide, irrevocable,
royalty-free license, with the right to sublicense (subject to Section
5.2 below), to use the Corning Licensed Know-How to design, develop,
manufacture, have manufactured, assemble, have assembled, test, store,
transport, deliver, market, sell, support and provide professional
services with respect to Corning OCM Products and (b) a nonexclusive,
perpetual, worldwide, irrevocable, royalty-free license, with the right
to sublicense (subject to Section 5.2 below), to use the Corning
Licensed Know-How for other purposes; provided, however, that such
licenses are subject to any rights or licenses granted to third parties
prior to the date of signing of the Purchase Agreement.
5.2 Avanex shall have the right to grant sublicenses under the Corning
Licensed Know-How only in connection with the grant of a license by
Avanex to make, have made, use, sell, offer for sale or import Avanex's
or any of its Subsidiaries' products or products based on Avanex's or
any of its Subsidiaries' products within the scope of the license
granted in Section 5.1 above, in connection with a license agreement
with a third party (including, but not limited to, a joint venture
formed with a third party, to establish a contract manufacturer, and to
provide contingent manufacturing rights to a customer). Avanex shall
have no right, however, to grant sublicenses under the Corning Licensed
Know-How to a third party as a bare Know-How license for a new
application for which Avanex has not had meaningful product development
activities, or otherwise in any manner except as specifically set forth
above. Furthermore, Avanex shall not be permitted to sublicense Corning
Licensed Know-How embodied in and associated with those computer
programs or software tools listed in Exhibit 5.2.
5.3
(a) The following items of Corning Licensed Know-How shall be
considered delivered upon the Asset Purchase Closing:
(i) Corning Licensed Know-How embodied in tangible and
electronic form contained within the facilities to be
occupied by Avanex;
(ii) those items of Corning Licensed Know-How within the
knowledge of those employees of Corning who become
employees of Avanex at the Asset
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Corning License No. L03273
Purchase Closing and any items constituting or
containing Corning Licensed Know-How, in tangible or
electronic form, which they bring with them. In
connection with the transition of such employees from
Corning to Avanex, and consistent with such
employees' continuing confidentiality obligations to
Corning, Corning shall direct such employees to
identify and accumulate such items of Corning
Licensed Know-How during the period prior to Asset
Purchase Closing.
(b) Avanex may, within [*] of Asset Purchase Closing, request in
writing the delivery of additional specific tangible or electronic
items of Corning Licensed Know-How that have not already been delivered
in the manner set forth in Section 5.2(a) and which have been used by
Corning's employees in connection with Corning OCM Products within [*]
prior to the Asset Purchase Closing. Corning will copy and deliver such
requested items, and deliver a copy in tangible or electronic form only
if i) the requested item already exists within Corning's possession in
tangible or electronic form; ii) no services other than clerical
copying or electronic download services are necessary to produce the
deliverable form of the requested item; iii) the requested item is not
subject to third party copyright which would restrict Corning's right
to provide a copy to Avanex for Avanex's use while retaining a copy
with Corning for Corning's use; and iv) Avanex shall reimburse Corning
for out-of-pocket copying, electronic download, and delivery expenses.
(c) Corning shall have no further obligation under this IP
Agreement to deliver any specific items of Corning Licensed Know-How to
Avanex. Furthermore, neither Corning nor its Subsidiaries shall be
obligated under any provision of this IP Agreement to provide the
services of any employees or to expend any resources for the purpose of
transferring any items of Corning Licensed Know-How to Avanex,
including, but not limited to (a) reducing to tangible form any Corning
Licensed Know-How not previously available in tangible form, (b)
providing any oral transfer of Corning Licensed Know-How or (c)
providing any technical support, consultation, instruction or training
of Avanex's personnel in how to understand, use or implement such
Corning Licensed Know-How.
5.4 Each Party agrees, for itself and on behalf of its Subsidiaries, to
maintain any Corning Licensed Know-How in confidence in accordance with
the provisions of the confidentiality agreement in Exhibit 5.4,
attached hereto.
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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Corning License No. L03273
6. ASSIGNMENT OF CORNING ASSIGNED TRADEMARKS
6.1 At the Asset Purchase Closing, subject to the terms and conditions set
forth in this IP Agreement, Corning or its applicable Subsidiary shall
sell, convey, transfer and assign all of Corning's or its Subsidiary's
right, title and interest in and to the Corning Assigned Trademarks,
together with all goodwill of the business associated with or
symbolized by the Corning Assigned Trademarks, to Avanex or one or more
of its designated Subsidiaries, and Avanex or one or more of its
designated Subsidiaries shall purchase from Corning such right, title
and interest.
7. LICENSING OF CORNING TRADEMARKS
7.1 In order for the Avanex to be able to market, promote, sell or
distribute any finished goods inventory of the Corning OCM Products
acquired under the Purchase Agreement, Corning agrees to grant and
hereby grants, effective as of the Asset Purchase Closing and extending
not longer than the respective periods of time specified in Sections
7.6 and 7.7, a non-exclusive, non-transferable, non-sublicensable,
royalty-free license to use certain trademarks of the Corning or its
Subsidiaries, solely on, or in connection with, the Corning OCM
Products. Such trademarks include (a) all trademarks containing the
name "CORNING" or any variation of the name "CORNING" and (b) the
"CORNING FLAME" logo (collectively, the "Corning Trademarks").
7.2 The license granted in Section 7.1 shall be limited to the use of the
Corning Trademarks in the manner in which, and to the extent to which,
they were in use by Corning as of the Asset Purchase Closing, and shall
not permit Avanex to expand the use thereof.
7.3 Subject to Section 11.2, Corning agrees to grant and hereby grants,
effective as of the Asset Purchase Closing, an exclusive,
non-transferable, non-sublicensable, royalty-free license to use
Corning's trademark "DCM" solely on, or in connection with, Dispersion
Compensation Modules.
7.4 Avanex agrees, on behalf of itself and its Subsidiaries (a) to conform
with all applicable quality standards and usage guidelines established
by Corning and/or its respective Subsidiaries and provided by Corning
to Avanex regarding the Corning Trademarks and the DCM trademark and
the use thereof in connection with the Corning OCM Products or
Dispersion Compensation Modules, which standards and guidelines shall
be consistent with those followed by Corning prior to the Asset
Purchase Closing (b) not to engage in any activities that would
adversely affect the goodwill associated with the Corning Trademarks or
the DCM trademark and (c) to permit Corning to monitor and control the
nature and quality of any products or services provided by Avanex or
its Subsidiaries under or in connection with the Corning Trademarks or
the DCM trademark. The form and manner in which the DCM Trademark shall
be used upon or in connection with Dispersion Compensation Modules, or
labels, containers, or advertisements therefor shall be consistent with
the use made by Corning prior to the Asset Purchase Closing.
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Corning License No. L03273
7.5 Except to the extent, if at all, that Corning is obligated to indemnify
Avanex under the Purchase Agreement, Avanex agrees to defend, indemnify
and hold harmless Corning and its applicable Subsidiaries and their
respective officers, directors, employees and agents from any and all
liability and costs arising from third party claims, demands, causes of
action and judgments, including attorneys' fees and court costs,
resulting from Avanex's or its Subsidiary's (a) production,
manufacture, distribution or shipment of Corning OCM Products bearing
the Corning Trademarks and Dispersion Compensation Modules bearing the
DCM trademark, (b) use of the Corning Trademarks or the DCM trademark
for the marketing, promotion, sale or distribution of products other
than the Corning OCM Products (or Dispersion Compensation Modules, in
the case of the DCM trademark), or (c) use of the Corning Trademarks or
the DCM trademark not otherwise in accordance with the license and
rights granted herein.
7.6 Notwithstanding the license granted in Section 7.1, Avanex shall, as
soon as is practicable but not more than twelve (12) months after the
Asset Purchase Closing, modify all Corning OCM Products and associated
packaging, labeling, labels, brochures and sales aids which bear or
contain any Corning Trademarks, by use of stickers or other appropriate
means, which are reasonably calculated to show customers and
prospective customers of the Corning OCM Products that the ownership
thereof and responsibility therefor has transferred to Avanex.
7.7 Notwithstanding the license granted in Section 7.1, Avanex shall, as
soon as is practicable but not more than three (3) months after the
Asset Purchase Closing, terminate the use of any existing inventories
of (a) any letterhead stationery, envelopes, business cards, checks,
invoices, purchase orders, and similar printed materials, and (b)
signage in or on buildings or vehicles which bear or contain any
Corning Trademarks.
7.8 Notwithstanding Section 15.10, the licenses of Sections 7.1 and 7.3
shall not be assignable by Avanex without the express written consent
of Corning.
8. ASSIGNMENT OF CORNING ASSIGNED COPYRIGHTS
8.1 At the Asset Purchase Closing, subject to the terms and conditions set
forth in this IP Agreement, Corning or its applicable Subsidiary (but
not including Corning Cable Systems or Technical Materials) shall sell,
convey, transfer and assign all of Corning's, or such Subsidiary's,
right, title and interest in and to the Corning Assigned Copyrights to
Avanex or one or more of its designated Subsidiaries, and Avanex or one
or more of its designated Subsidiaries shall purchase from Corning such
right, title and interest. Avanex shall ensure that Corning's name
(including the name in Corning's copyright notice) and trademarks shall
be deleted from any copies of materials within the scope of the Corning
Assigned Copyrights provided to third parties, except as may be
otherwise explicitly permitted under this IP Agreement.
8.2 Avanex hereby grants to Corning, including its Subsidiaries, a
non-exclusive, perpetual, worldwide, irrevocable, royalty-free license
under the Corning Assigned Copyrights to
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Corning License No. L03273
copy, modify, make derivative works of, and distribute any printed
materials in Corning's or its Subsidiaries' possession after the Asset
Purchase Closing and covered by any Corning Assigned Copyrights, solely
for purposes other than related to the Corning OCM Products.
9. LICENSING OF CORNING LICENSED COPYRIGHTS.
9.1 Corning, for itself and on behalf of any applicable Subsidiary, hereby
grants Avanex and its Subsidiaries (a) as sole licensee (but sole only
with respect to Corning OCM Products), a perpetual, worldwide,
irrevocable, royalty-free license (but subject to any royalties owed to
third parties, which shall be the responsibility of Avanex), under the
Corning Licensed Copyrights, with the right to sublicense (subject to
Section 9.2 below), to copy, modify, make derivative works of, and
distribute any copyrightable materials covered by a Corning Licensed
Copyright and derivative works thereof made by or for Avanex, and (b) a
nonexclusive, worldwide, royalty-free, irrevocable, perpetual license,
under the Corning Licensed Copyrights, with the right to sublicense
(subject to Section 9.2 below), to copy, modify, make derivative works
of, and distribute any copyrightable materials covered by a Corning
Licensed Copyright and derivative works thereof made by or for Avanex,
for purposes other than those related to the Corning OCM Products. Such
licenses shall be limited to Corning Licensed Copyrights which
rightfully come into the possession of Avanex as of the Asset Purchase
Closing pursuant to the Purchase Agreement.
9.2 Avanex shall have the right to grant sublicenses under the Corning
Licensed Copyrights only in connection with the grant of a license by
Avanex to make, have made, use, sell, offer for sale or import Avanex's
or any of its Subsidiaries' products or products based on those
products within the scope of the license granted in Section 9.1 above,
in connection with a license agreement with a third party (including,
but not limited to, a joint venture formed with a third party, to
establish a contract manufacturer, and to provide contingent
manufacturing rights to a customer). Avanex shall have no right,
however, to grant sublicenses under the Corning Licensed Copyrights to
a third party as a bare Copyright license for a new application for
which Avanex has not had meaningful product development activities or
otherwise in any manner except as specifically set forth above.
Furthermore, Avanex shall not be permitted to sublicense Corning
Licensed Copyrights embodied in or associated with those computer
programs or software tools listed in Exhibit 5.2.
10. RIGHTS REGARDING CORNING TRANSFERRED THIRD PARTY IP CONTRACTS.
10.1 At the Asset Purchase Closing, subject to the terms and conditions set
forth in this IP Agreement, Corning or its applicable Subsidiary shall
sell, convey, transfer and assign all of Corning's or its Subsidiary's
right, title and interest in and to the Corning Transferred Third Party
IP Contracts, along with all of Corning's (or its Subsidiary's, as the
case may be) attendant rights and obligations thereunder, to Avanex or
one or more of its designated Subsidiaries, and Avanex or one or more
of its designated Subsidiaries shall purchase from Corning such right,
title and interest. Avanex, for itself and on behalf of
15
Corning License No. L03273
any applicable Subsidiary, agrees to perform all obligations under any
Corning Transferred Third Party Contract so assigned or transferred,
and to execute all documents necessary to effect such assignment or
transfer. Any third party consents received by Corning from the party
or parties to any Corning Transferred Third Party IP Contracts shall be
delivered to Avanex.
10.2 Notwithstanding the various assignments of Corning Transferred Third
Party IP Contracts to Avanex hereunder, none of the rights thereby
acquired by Avanex shall in any way preclude Corning or its
Subsidiaries from designing, producing, using or selling optical fiber.
To the extent necessary to effectuate this provision, Avanex hereby
sublicenses and covenants not to sue Corning, its Subsidiaries or any
of their respective customers under any Corning Third Party IP acquired
by Avanex pursuant to such assigned Corning Transferred Third Party IP
Contracts that would otherwise prevent Corning or its Subsidiaries from
making, having made, importing, using, offering to sell, selling, or
otherwise disposing of optical fiber.
10.3 Notwithstanding the various assignments of Corning Transferred Third
Party IP Contracts to Avanex hereunder, such assignments are subject to
any rights or licenses to the applicable Corning Third Party IP granted
to third parties prior to the date of signing of the Purchase
Agreement.
10.4 [*]
11. RIGHTS REGARDING DISPERSION COMPENSATION MODULES
11.1 With respect to Dispersion Compensation Modules, the licenses of
Sections 4.1, 4.2 and 5.1 are limited to (a) the assembly of Dispersion
Compensation Modules and (b) the packaging of optical fiber(s) therein,
but shall not apply in any way to the making, using or selling of
dispersion-compensating optical fiber alone. Furthermore, Corning
agrees not to license third parties with respect to Dispersion
Compensation Modules under the Corning Solely Licensed Patents (per
Article 4) or the Corning Licensed Know-How (per Article 5), provided,
however, that such obligation not to license third parties shall
terminate in the event that Avanex breaches the quality-related and
customer satisfaction-related milestones specified in Exhibit 11.1 (i)-
(iii) attached hereto and fails to cure such breach within ninety (90)
days of receipt from Corning of notice of such breach, breaches its
purchase obligations under the Fiber Supply Agreement and fails to cure
such breach in the manner provided therein, or the Fiber Supply
Agreement expires or is terminated for any reason other than Corning's
breach. In the event that the Fiber Supply Agreement is terminated due
to Corning's breach, Corning's obligation not to license third parties
shall terminate four years after the Asset Purchase Closing.
[*] Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
16
Corning License No. L03273
11.2 The license to the DCM trademark under Section 7.3 shall terminate if
Avanex breaches (a) the quality-related and customer
satisfaction-related milestones (i)-(iii) specified in Exhibit 11.1,
(b) its purchase obligations under the Fiber Supply Agreement, or (c)
the quality obligations set forth in Section 7.4 and fails to cure the
breaches of subsections (a) or (c) within ninety (90) days of receipt
from Corning of notice of such breach or fails to cure the breach of
subsection (b) in the manner provided in the Fiber Supply Agreement.
Avanex shall immediately terminate its use of the DCM trademark upon
termination of the license for any reason. In the event that Avanex
fails to satisfy milestone (iv) in Exhibit 11.1, or the Fiber Supply
Agreement expires or is terminated for reasons other than Avanex's
breach, then Avanex's license shall become a non-exclusive license in
the DCM trademark, still subject to the quality obligations set forth
above.
12. LIMITATION ON LICENSES.
12.1 Neither Party grants any other licenses, express or implied, to any
Intellectual Property, except as explicitly stated in this IP
Agreement.
13. NO TERMINATION.
13.1 Each Party acknowledges and agrees that the licenses granted under this
IP Agreement, except where specified otherwise, are perpetual and
irrevocable, and that its remedy for breach by the other Party of the
licenses granted to it hereunder or of any other provision hereof,
shall be to bring a claim to recover damages and to seek appropriate
equitable relief, other than termination of the licenses granted by it
in this IP Agreement.
14. TRANSITION SERVICES.
14.1 (a) As soon as reasonably practicable after the Asset Purchase
Closing,Corning and Avanex shall establish a schedule and a process for
the transfer of files for the Corning Assigned Patents and Corning
Assigned Trademarks to Avanex. In accordance with the schedule, Corning
shall transfer to Avanex patent prosecution files, docketing and
annuity payment schedules in Corning's possession for the Corning
Assigned Patents and Corning Assigned Trademarks.
(b) Corning shall provide the services listed below (hereinafter
"the Services") to Avanex after Asset Purchase Closing as may be
reasonably required to effectively transition the management of the
prosecution and maintenance of the Corning Assigned Patents and Corning
Assigned Trademarks to Avanex. The Services are:
(i) docketing official actions from patent and
trademark offices and informing Avanex of
such actions;
(ii) preparing responses to official actions
(either by in-house attorneys or through
outside counsel under the direction of
in-house attorneys) in connection with
patent and trademark applications;
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Corning License No. L03273
(iii) filing responses and formal papers in patent
and trademark offices (either by in-house
attorneys or through outside counsel under
the direction of in-house attorneys) in
connection with patent and trademark
applications;
(iv) paying maintenance fees on Corning Assigned
Patents and Corning Assigned Trademarks per
direction from Avanex;
(v) maintaining files; and
(vi) physically transferring files to Avanex.
(c) In no event will Corning be obligated to provide the Services
to Avanex for longer than three (3) months from the Asset Purchase
Closing. In no event will Corning be obligated to expend more than
eighty (80) hours per month of in-house attorney time for provision of
the Services. In the event that the Services require more than eighty
(80) hours per month of in-house attorney time, Corning will apprise
Avanex of this fact and if necessary ensure that such Services are
provided through outside counsel, at Avanex's expense. Promptly upon
the request of Avanex after the Asset Purchase Closing, Corning shall
provide Avanex with an estimate of Avanex's payments for the Services,
which estimate is not binding on Corning and is for budgeting purposes
only.
(d) Corning shall use the same standard of care in provision of
the Services that it uses in connection with patents and applications
owned by Corning.
(e) Avanex shall promptly reimburse Corning for all expenses and
costs (including outside counsel fees and expenses) incurred to provide
the Services and assistance. Avanex also shall pay Corning for the
value of the time expended by Corning's in-house attorneys and patent
agents in providing the Services and assistance. The amount to be paid
for in-house attorneys' time shall be one hundred ninety dollars ($190)
per hour.
(f) In no event will Corning be liable for any incidental or
consequential damages in connection with the Services or assistance
provided, or for any damages other than damages resulting from
intentional breach, gross negligence or willful misconduct.
(g) Avanex agrees to waive any attorney conflict of interest that
may result from Corning's attorneys' provision of the Services or
assistance in connection with the performance of Corning's obligations
hereunder.
(h) Corning shall make available to Avanex inventors employed by
Corning for interviews, to assist in good faith in further prosecution
of the Corning Assigned Patents, including the signing of documents
related thereto. Avanex shall reimburse Corning for the time expended
by such inventors.
(i) Corning agrees to cooperate in good faith in responding to and
assisting with reasonable discovery requests from Avanex should Corning
be a party in a litigation and to reasonable third party subpoenas from
Avanex concerning a litigation asserting Corning Assigned Patents or
Corning Solely Licensed Patents. Such cooperation shall
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Corning License No. L03273
include assistance from all Corning employees having information
pertinent to the Patents at issue for the purposes of fact discovery by
providing documents, and deposition and trial testimony. Corning may,
but shall not be obligated to, provide expert witness assistance.
Avanex agrees to compensate Corning for all such assistance.
14.2 Notwithstanding the above, the Parties acknowledge and agree that,
prior to the signing of the Purchase Agreement, Corning and its
Subsidiaries had continued to administer the Corning Assigned Patents
in the ordinary course of business, and that, due to the size of the
portfolio, many actions with respect to Corning Assigned Patents have
been put into motion (including actions that may result in the
termination of one or more of the Corning Assigned Patents) and that it
is both imprudent and impractical to try to alter such actions. Corning
agrees not to set into motion any new action with respect to any of the
Corning Assigned Patents after the signing date of the Purchase
Agreement which would affirmatively abandon any cases without
consultation with the Avanex. At the Asset Purchase Closing, Corning
shall update the list of Corning Assigned Patents in Exhibit 1.4 to
account for any actions taken in this regard.
14.3 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 (a)
the assignment of the Corning Assigned Patents and Corning Assigned
Trademarks and (b) the licensing relationships between the Parties
created by this IP Agreement.
14.4 On a regular basis during the period from the signing of the Purchase
Agreement until one hundred eighty (180) days after the Asset Purchase
Closing, Corning shall provide Avanex with any new invention
disclosures that are primarily related to Corning OCM Products and
which are submitted during that period. Promptly after the completion
of one hundred eighty (180) days after the Asset Purchase Closing,
Corning shall provide Avanex with a list of Corning Assigned Patents
which have been newly filed during the period from the signing of the
Purchase Agreement until one hundred eighty (180) days after the Asset
Purchase Closing. Within a reasonable time after the completion of such
one hundred eighty (180) day period, Corning also shall provide Avanex
with patent prosecution files, docketing and annuity payment schedules
in Corning's possession for such Corning Assigned Patents. Corning will
monitor such files, dockets, and annuity payment schedules until such
files are transferred to Avanex.
15. MISCELLANEOUS.
15.1 No failure by a Party to exercise, or to delay to exercise, any right,
power, or remedy under this IP Agreement shall operate as a waiver
thereof, nor shall any single or partial exercise of such right, power,
or remedy by such Party preclude any other or further exercise thereof
or of any other right.
15.2 Nothing herein shall be deemed to create an agency, joint venture or
partnership relation between the Parties.
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Corning License No. L03273
15.3 This IP Agreement and the Purchase Agreement constitutes the entire
agreement and understanding of the Parties with regard to the transfer
of intellectual property rights and of licensing rights between the
Parties as contemplated under the Purchase Agreement, and supersedes
all prior and contemporaneous discussions, negotiations, understandings
and agreements, whether oral or written, between the Parties concerning
such subject matter. Each Party disclaims all representations and
warranties except those expressly set forth herein or in the Purchase
Agreement. No party shall be bound by any definition, condition,
warranty, right, duty or covenant other than as expressly stated
herein. Each Party expressly waives any implied right or obligation
regarding the subject matter hereof. This IP Agreement may be amended
only by a written document signed by authorized representatives of the
Parties.
15.4 This IP Agreement shall be interpreted and construed, and the legal
relations created herein shall be determined, in accordance with the
laws of the State of New York (excluding conflict of laws which would
require the application of any other law) and the United States.
15.5 Each Party shall execute, acknowledge and deliver all such further
instruments and do all such further acts as may be reasonably necessary
or desirable to carry out the intent and purposes of this Agreement and
the consummation of the transactions contemplated hereby.
15.6 The headings contained in this IP Agreement are for reference purposes
only and shall not affect in any way the meaning or interpretation of
this IP Agreement.
15.7 Should any part or provision of this IP Agreement or the application
thereof be declared by a court of competent jurisdiction to be illegal,
void or unenforceable, the remaining parts or provisions shall continue
in full force and effect. If a part or provision of this IP Agreement
is held illegal, void or unenforceable, the remaining provisions of
this Agreement shall be construed as if such illegal, void or
unenforceable provision were omitted, and the Parties shall negotiate
in good faith an amendment to such part or provision in a manner
consistent with the intention of the parties with respect to this IP
Agreement.
15.8 No party shall be responsible or liable to another Party for
nonperformance or delay in performance of any terms or conditions of
this IP Agreement due to acts or occurrences beyond the reasonable
control of the nonperforming or delayed party, including but not
limited to, acts of God, acts of government, wars, riots, strikes or
other labor disputes, shortages of labor or materials, fires and
floods, provided the nonperforming or delayed Party provides to the
other Party written notice of the existence and the reason for such
nonperformance or delay.
15.9 Any and all notices or other communications required or permitted by
this Agreement or by law to be served on or given to a Party by another
Party shall be in writing and delivered or sent to:
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Corning License No. L03273
CORNING:
Corning Incorporated
One Riverfront Plaza
Corning, NY 14831
Attn: Company Secretary
cc: Licensing Coordinator
Corning Incorporated
Intellectual Property Department
SP-TI-3-1
Corning, NY 14831
AVANEX:
Avanex Corporation
40919 Encyclopedia Circle
Fremont, CA 94538
Attn: CEO
A Party may change its address for purposes of this Agreement by
written notice to the other Party.
All notices and other communications hereunder shall be in writing and
shall be deemed duly given (i) on the date of delivery if delivered
personally, (ii) on the date of confirmation of receipt (or, the first
business day following such receipt if the date is not a business day)
of transmission by telecopy or telefacsimile or (iii) on the date of
confirmation of receipt (or, the first business day following such
receipt if the date is not a business day) if delivered by a nationally
recognized courier service.
15.10 (a) This IP Agreement shall be binding upon and inure to the benefit of
the Parties and their respective successors and permitted assigns.
Nothing in this IP Agreement shall be deemed to have created any third
party beneficiary rights in any person.
(b) Neither Party shall be permitted to assign or transfer this IP
Agreement in its entirety (by operation of law or otherwise) without
the prior written consent of the other Party, and any such attempted
assignment or transfer shall be void; provided, however that either
Party may assign or transfer this Agreement in its entirety (except as
excluded under Section 7.8), in connection with the sale of all or
substantially all of the assets to which this IP Agreement relates, and
any and all of its associated rights and obligations, provided the
assigning or transferring Party remains primarily liable for all
obligations under this IP Agreement, and the assignee or transferee
agrees in writing to comply with all of such obligations.
(c) In addition, in the event that Corning assigns or transfers a
technology for a specific field of use that includes at least one
product under development or a commercially released product to a third
party (a "TRANSFEREE"), Corning shall be
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Corning License No. L03273
permitted to assign or transfer all of the license rights granted to
Corning by Avanex under this IP Agreement solely in such field of use
(a "TRANSFERRED FIELD"), provided that:
(i) Corning provides Avanex with prompt notice of such
assignment or transfer and copies of the portions of
the agreement relevant to such assignment or
transfer;
(ii) Transferee agrees in writing to comply with all other
terms and conditions of this Agreement as it applies
to the assigned or transferred license rights and the
Transferred Field;
(iii) all of the license rights granted to Corning by
Avanex under this IP Agreement shall terminate with
respect to the Transferred Field; and
(iv) Transferee shall not be a Avanex Competitor.
(d) Notwithstanding Section 15.10(b), Avanex may assign or
transfer the Corning Licensed Know-How and Corning Licensed
Copyrights listed in Exhibit 5.2 in connection with the sale
of all or substantially all of the assets to which this IP
Agreement relates, but such Corning Licensed Know-How and
Corning Licensed Copyrights may not be used in connection with
any businesses other than those that existed at the time of
the transfer or assignment, i.e., the transferee or assignee
may not use for other applications.
15.11 Avanex acknowledges that any present or former employees of Corning (or
its Subsidiaries) who become employed by Avanex, either directly or
indirectly as a result of the transactions contemplated under the
Purchase Agreement, will be bound by obligations of confidentiality to
Corning (and/or its respective Subsidiary) with respect to proprietary
information related to matters other than the Corning OCM Products and
the Corning Licensed Know-How. Avanex agrees not to (a) induce such
employees to breach such obligations, or (b) use, copy or disclose any
information that may be disclosed by such employees and which Avanex
knows, or has reason to know, constitutes Corning's proprietary
information.
15.12 Each Party shall comply with (a) applicable export laws and regulations
of any agency of the U.S. Government; and (b) any other current,
applicable laws, regulations and other legal requirements in its
exercise of its rights under this IP Agreement.
15.13 Each Party acknowledges that its breach of its obligations hereunder
may cause irreparable damage to the other Party for which such Party
will not have an adequate remedy at law. Therefore, each Party agrees
that the other Party shall be entitled to seek equitable relief with
respect to the first Party's obligations hereunder.
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Corning License No. L03273
15.14 This IP Agreement may be executed by each Party in counterparts, each
of which shall be deemed an original, but all such counterparts shall
constitute only one and the same instrument.
IN WITNESS WHEREOF, the Parties have executed this Agreement in duplicate on the
signature page hereof.
CORNING INCORPORATED AVANEX CORPORATION
By: /s/ MARK W. LAUROESCH By: /s/ ANTHONY A. FLORENCE
----------------------- ----------------------------------------
Name: Mark W. Lauroesch Name: Anthony A. Florence
Title: Assistant Secretary Title: Sr. Vice President, Corporate Affairs
Date: July 31, 2003 Date: July 31, 2003
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