Exhibit 2.3
MASTER TECHNOLOGY OWNERSHIP AND
LICENSE AGREEMENT
between
HEWLETT-PACKARD COMPANY
and
AGILENT TECHNOLOGIES, INC.
Effective as of ___________, 1999
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
Page
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ARTICLE I DEFINITIONS..................................................... 1
1.1 AFFILIATED COMPANY.............................................. 1
1.2 AGILENT BUSINESS................................................ 1
1.3 AGILENT OWNED TECHNOLOGY........................................ 2
1.4 AGILENT PRODUCTS................................................ 2
1.5 AGILENT PRODUCTS DATABASE....................................... 2
1.6 COPYRIGHTS...................................................... 2
1.7 DATABASE RIGHTS................................................. 2
1.8 HP PRODUCTS..................................................... 2
1.9 IMPROVEMENTS.................................................... 2
1.10 INVENTION DISCLOSURE............................................ 3
1.11 LICENSED AGILENT TECHNOLOGY..................................... 3
1.12 LICENSED HP TECHNOLOGY.......................................... 3
1.13 MASK WORK RIGHTS................................................ 3
1.14 MASTER SEPARATION AGREEMENT..................................... 3
1.15 PATENTS......................................................... 3
1.16 PERSON.......................................................... 4
1.17 SELL............................................................ 4
1.18 SEPARATION DATE................................................. 4
1.19 SUBSIDIARY...................................................... 4
1.20 TECHNOLOGY...................................................... 4
1.21 THIRD PARTY..................................................... 5
ARTICLE II ALLOCATION OF OWNERSHIP........................................ 5
2.1 ASSIGNMENT...................................................... 5
2.2 PRIOR GRANTS.................................................... 5
2.3 ASSIGNMENT DISCLAIMER........................................... 5
2.4 COPIES IN ITS POSSESSION........................................ 5
ARTICLE III LICENSE GRANTS................................................ 6
3.1 LICENSE TO HP................................................... 6
3.2 LICENSE TO AGILENT.............................................. 9
3.3 HAVE MADE RIGHTS................................................ 11
3.4 IMPROVEMENTS.................................................... 12
3.5 DURATION OF SUBLICENSES TO SUBSIDIARIES AND AFFILIATED
COMPANIES....................................................... 12
3.6 NO PATENT LICENSES.............................................. 12
3.7 THIRD PARTY TECHNOLOGY.......................................... 12
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TABLE OF CONTENTS
(continued)
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ARTICLE IV CONFIDENTIALITY............................................... 12
ARTICLE V TERMINATION.................................................... 13
5.1 VOLUNTARY TERMINATION.......................................... 13
5.2 SURVIVAL....................................................... 13
5.3 NO OTHER TERMINATION........................................... 13
ARTICLE VI DISPUTE RESOLUTION............................................ 13
6.1 NEGOTIATION.................................................... 13
6.2 NONBINDING MEDIATION........................................... 13
6.3 PROCEEDINGS.................................................... 14
ARTICLE VII LIMITATION OF LIABILITY...................................... 14
ARTICLE VIII MISCELLANEOUS PROVISIONS.................................... 14
8.1 DISCLAIMER..................................................... 14
8.2 NO IMPLIED LICENSES............................................ 15
8.3 INFRINGEMENT SUITS............................................. 15
8.4 NO OTHER OBLIGATIONS........................................... 15
8.5 ENTIRE AGREEMENT............................................... 15
8.6 GOVERNING LAW.................................................. 16
8.7 DESCRIPTIVE HEADINGS........................................... 16
8.8 NOTICES........................................................ 16
8.9 NONASSIGNABILITY............................................... 16
8.10 SEVERABILITY................................................... 17
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE.......... 17
8.12 AMENDMENT...................................................... 17
8.13 COUNTERPARTS................................................... 17
EXHIBIT A: AFFILIATED COMPANIES
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MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the "Agreement") is
effective as of __________, 1999 (the "Effective Date"), between Hewlett-Packard
Company, a Delaware corporation ("HP"), having an office at 3000 Hanover Street,
Palo Alto, California 94304, and Agilent Technologies, Inc., a Delaware
corporation ("Agilent"), having an office at 3000 Hanover Street, Palo Alto,
California 94304.
WHEREAS, the Board of Directors of HP has determined that it is in the best
interest of HP and its stockholders to separate HP's existing businesses into
two independent businesses;
WHEREAS, as part of the foregoing, HP and Agilent have entered into a
Master Separation Agreement (as defined below), which provides, among other
things, for the separation of certain Agilent assets and Agilent liabilities,
the initial public offering of Agilent stock, the distribution of such stock and
the execution and delivery of certain other agreements in order to facilitate
and provide for the foregoing;
WHEREAS, also as part of the foregoing, HP desires to assign to Agilent
ownership of certain technology and each party desires to license to the other
party certain of its technology; and
WHEREAS, also as part of the foregoing, the parties have also entered into
an ICBD Technology Ownership and License Agreement (the "ICBD Technology
Agreement") which provides for the ownership and licensing of certain integrated
circuit technology.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article I and shall have the meaning specified herein:
1.1 AFFILIATED COMPANY. "Affiliated Company" means, with respect to HP,
any entity in which HP holds a 50% or less ownership interest and that is listed
on Exhibit A hereto and, with respect to Agilent, any entity in which Agilent
holds a 50% or less ownership interest and that is listed on Exhibit A hereto;
provided, however, that any such entity listed in Exhibit A shall be considered
to be an Affiliated Company under this Agreement only if it agrees in writing to
be bound by the terms and conditions of this Agreement. Exhibit A may be amended
from time to time after the date hereof upon mutual consent of the parties.
1.2 AGILENT BUSINESS. "Agilent Business" means (a) the business and
operations of the following business entities of HP, as described in the IPO
Registration Statement (as defined in
the Master Separation Agreement): (i) the Test and Measurement Organization,
(ii) the Semiconductor Products Group, (iii) the Chemical Analysis Group, (iv)
the Healthcare Solutions Group and (v) any related infrastructure organizations
and (b) except as otherwise expressly provided herein, any terminated, divested
or discontinued businesses or operations that at the time of termination,
divestiture or discontinuation primarily related to the Agilent Business as then
conducted.
1.3 AGILENT OWNED TECHNOLOGY. "Agilent Owned Technology" means (i) all
Technology associated with the development, design, testing, manufacture,
maintenance, support, debugging, quality control, repair, use, marketing and
sale of the products listed in the Agilent Products Database and the products
developed or being developed primarily by the Agilent Business as of the
Separation Date, (ii) all Technology developed or being developed primarily by
the Agilent Business as of the Separation Date and (iii) all other Technology
used exclusively by the Agilent Business.
1.4 AGILENT PRODUCTS. "Agilent Products" means any and all products and
services of the businesses in which Agilent or any of its Subsidiaries or
Affiliated Companies is now or hereafter engaged (including the business of
making (but not having made) Third Party products for Third Parties when
Agilent, its Subsidiaries or Affiliated Companies is acting as a contract
manufacturer or foundry for such Third Parties).
1.5 AGILENT PRODUCTS DATABASE. "Agilent Products Database" means the
Agilent Products Database, as it may be updated by the parties upon mutual
agreement to add products as of the Separation Date.
1.6 COPYRIGHTS. "Copyrights" mean (i) any copyright in any original works
of authorship fixed in any tangible medium of expression as set forth in 17
U.S.C. Section 101 et. seq., whether registered or unregistered, including any
applications for registration thereof, (ii) any corresponding foreign copyrights
under the laws of any jurisdiction, in each case, whether registered or
unregistered, and any applications for registration thereof, and (iii) moral
rights under the laws of any jurisdiction.
1.7 DATABASE RIGHTS. "Database Rights" means any rights in databases
under the laws of the United States or any other jurisdiction, whether
registered or unregistered, and any applications for registration thereof.
1.8 HP PRODUCTS. "HP Products" means any and all products and services of
the businesses in which HP or any of its Subsidiaries or Affiliated Companies is
now or hereafter engaged (including the business of making (but not having made)
Third Party products for Third Parties when HP, its Subsidiaries or Affiliated
Companies is acting as a contract manufacturer or foundry for such Third
Parties).
1.9 IMPROVEMENTS. "Improvements" to Technology means (i) with respect to
Copyrights, any modifications, derivative works, and translations of works of
authorship, (ii) with respect to Database Rights, any database that is created
by extraction or re-utilization of another
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database, and (iii) with respect to Mask Work Rights, trade secrets and other
intellectual property rights included within the definition of Technology and
not covered by Sections 1.9(i) - (ii) above, any improvements of Technology. For
the purposes of clarification, an item of Technology will be deemed to be an
Improvement of another item of Technology only if it is actually derived from
such other item of Technology and not merely because it may have the same or
similar functionality or use as such other item of Technology.
1.10 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of
an invention (i) written for the purpose of allowing legal and business people
to determine whether to file a Patent application with respect to such invention
and (ii) recorded with a control number in the owning party's records.
1.11 LICENSED AGILENT TECHNOLOGY. "Licensed Agilent Technology" means any
Technology:
(a) which, as of the Separation Date, Agilent or any Subsidiary or
Affiliated Company of Agilent (i) owns or controls or (ii) otherwise has the
right to grant any licenses of the type and on the terms herein granted to HP
without the obligation to pay royalties or other consideration to Third Parties;
and
(b) which is known to or in the possession of HP or its Subsidiaries
or Affiliated Companies as of the Separation Date.
1.12 LICENSED HP TECHNOLOGY. "Licensed HP Technology" means any
Technology:
(a) which, as of the Separation Date, HP or any Subsidiary or
Affiliated Company of HP (i) owns or controls or (ii) otherwise has the right to
grant any licenses of the type and on the terms herein granted to Agilent
without the obligation to pay royalties or other consideration to Third Parties;
and
(b) which is known to or in the possession of Agilent, its
Subsidiaries or Affiliated Companies as of the Separation Date.
1.13 MASK WORK RIGHTS. "Mask Work Rights" means (i) any rights in mask
works, as defined in 17 U.S.C. Section 901, whether registered or unregistered,
including applications for registration thereof, and (ii) any foreign rights in
semiconductor topologies under the laws of any jurisdiction, whether registered
or unregistered, including applications for registration thereof.
1.14 MASTER SEPARATION AGREEMENT. "Master Separation Agreement" means the
Master Separation and Distribution Agreement between the parties.
1.15 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions
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or industrial designs anywhere in the world and all reissues, renewals, re-
examinations and extensions of any of the foregoing.
1.16 PERSON. "Person" means an individual, a partnership, a corporation,
a limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
1.17 SELL. To "Sell" a product means to sell, transfer, lease or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
1.18 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
November 1, 1999 or such other date as may be fixed by the Board of Directors of
HP.
1.19 SUBSIDIARY. "Subsidiary" means with respect to any specified Person,
any corporation, any limited liability company, any partnership or other legal
entity of which such Person owns, directly or indirectly, more than 50% of the
stock or other equity interest entitled to vote on the election of the members
of the board of directors or similar governing body. Unless the context
otherwise requires, reference to HP and its Subsidiaries shall not include the
subsidiaries of HP that will be transferred to Agilent after giving effect to
the Separation (as defined in the Master Separation Agreement), including the
actions taken pursuant to the Non-US Plan (as defined in the Master Separation
Agreement). For example, if HP owns 70% of the stock of another corporation, and
that corporation owns 60% of the equity interest of a limited liability company,
then that corporation is a Subsidiary of HP but that limited liability company
is not. However, if such corporation owns 90% of the equity interest of a
limited liability company, then that limited liability company is a Subsidiary
of HP. For the avoidance of doubt, this definition of Subsidiary is different
from the definition of Subsidiary in the Master Separation Agreement.
1.20 TECHNOLOGY. "Technology" means technological models, algorithms,
manufacturing processes, design processes, behavioral models, logic diagrams,
schematics, test vectors, know-how, computer and electronic data processing and
other apparatus programs and software (object code and source code), optical,
hydraulic and fluidic apparatus and processes, medical chemical, biochemical,
biological, macro-molecular and genetic compounds, processes, cell lines,
detection and analytical devices, databases and documentation thereof, trade
secrets, technical information, specifications, drawings, records,
documentation, works of authorship or other creative works, websites, ideas,
knowledge, data or the like. The term Technology includes Copyrights, Database
Rights, Mask Work Rights, trade secrets and any other intellectual property
right, but expressly does not include (i) any trademark, trade name, trade dress
or service mark, or applications for registration thereof or (ii) any Patents or
applications therefor, including any of the foregoing that may be based on
Invention Disclosures that are covered by the Master Patent Ownership and
Assignment Agreement between the parties, but does include trade secret rights
in and to inventions disclosed in such Patent applications and Invention
Disclosures. Notwithstanding the generality of the foregoing provisions of this
Section 1.20, however, the term "Technology" does not include ICBD Technology as
such term is defined in the ICBD Technology Agreement.
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1.21 THIRD PARTY. "Third Party" means a Person other than HP and its
Subsidiaries and Affiliated Companies and Agilent and its Subsidiaries and
Affiliated Companies.
ARTICLE II
ALLOCATION OF OWNERSHIP
2.1 ASSIGNMENT. Subject to Sections 2.2 and 2.3 below, HP hereby grants,
conveys and assigns (and agrees to cause its appropriate Subsidiaries to grant,
convey and assign) to Agilent, by execution hereof (or, where appropriate or
required, by execution of separate instruments of assignment), all its (and
their) right, title and interest in and to the Agilent Owned Technology, to be
held and enjoyed by Agilent, its successors and assigns. HP further grants,
conveys and assigns (and agrees to cause its appropriate Subsidiaries to grant,
convey and assign) to Agilent all its (and their) right, title and interest in
and to any and all causes of action and rights of recovery for past infringement
of Copyrights, Database Rights and Mask Work Rights in and to the Agilent Owned
Technology, and for past misappropriation of trade secrets in and to the Agilent
Owned Technology. HP further covenants that HP will, without demanding any
further consideration therefor, at the request and expense of Agilent (except
for the value of the time of HP employees), do (and cause its Subsidiaries to
do) all lawful and just acts that may be or become necessary for evidencing,
maintaining, recording and perfecting Agilent's rights to such Agilent Owned
Technology consistent with HP's general business practice as of the Separation
Date, including but not limited to, execution and acknowledgement of (and
causing its Subsidiaries to execute and acknowledge) assignments and other
instruments in a form reasonably required by Agilent for each Copyright, Mask
Work Right or Database Right jurisdiction.
2.2 PRIOR GRANTS. Agilent acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have been
granted by HP or its Subsidiaries with respect to the Agilent Owned Technology
prior to the Separation Date. HP shall respond to reasonable inquiries from
Agilent regarding any such prior grants.
2.3 ASSIGNMENT DISCLAIMER. AGILENT ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT NEITHER
HP NOR ANY SUBSIDIARY OR AFFILIATED COMPANY OF HP HAS MADE OR WILL MAKE ANY
WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION
ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
2.4 COPIES IN ITS POSSESSION. Notwithstanding the allocation of ownership
in this Article II, each party has the right to retain copies of any Technology
that it has in its possession as of the Separation Date.
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ARTICLE III
LICENSE GRANTS
3.1 LICENSE TO HP.
(a) Agilent grants (and agrees to cause its appropriate Subsidiaries
or Affiliated Companies to grant) to HP the following personal, irrevocable,
nonexclusive, worldwide, fully paid, royalty-free and non-transferable (except
as specified in Section 8.9 below) licenses:
(i) under its and their Copyrights in and to the Licensed
Agilent Technology, (A) to reproduce and have reproduced the works of authorship
included in the Licensed Agilent Technology and Improvements thereof prepared by
or for HP, in whole or in part, as part of HP Products, (B) to prepare
Improvements or have Improvements prepared for it based upon the works of
authorship included in the Licensed Agilent Technology in order to create HP
Products, (C) to distribute (by any means and using any technology, whether now
known or unknown, including without limitation electronic transmission) copies
of the works of authorship included in the Licensed Agilent Technology and
Improvements thereof prepared by or for HP to the public by sale or other
transfer of ownership or by rental, lease or lending, as part of HP Products,
and (D) to perform (by any means and using any technology, whether now known or
unknown, including without limitation electronic transmission) and display the
works of authorship included in the Licensed Agilent Technology and Improvements
thereof prepared by or for HP, as part of HP Products;
(ii) under its and their Database Rights in and to the Licensed
Agilent Technology, to extract data from the databases included in the Licensed
Agilent Technology and to re-utilize such data to design, develop, manufacture
and have manufactured HP Products and to Sell such HP Products that incorporate
such data, databases and Improvements thereof prepared by or for HP;
(iii) under its and their Mask Work Rights in and to the
Licensed Agilent Technology, (A) to reproduce and have reproduced mask works and
semiconductor topologies included in the Licensed Agilent Technology and
embodied in HP Products by optical, electronic or any other means, (B) to import
or distribute a product in which any such mask work or semiconductor topology is
embodied, and (C) to induce or knowingly to cause a Third Party to do any of the
acts described in Sections 3.1(a)(iii)(A) and (B) above; and
(iv) under its and their trade secrets and other intellectual
property rights in and to the Licensed Agilent Technology (except the
intellectual property rights excluded from the definition of Technology), to use
the Licensed Agilent Technology and Improvements thereof prepared by or for HP
to design, develop, manufacture and have manufactured HP Products and to Sell
such HP Products.
(b) Without limiting the generality of the foregoing licenses granted
in Section 3.1(a) above, with respect to software included within the Licensed
Agilent Technology,
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such licenses include the right to use, modify, and reproduce such software and
Improvements thereof made by or for HP to create HP Products, in source code and
object code form, and to Sell such software and Improvements thereof made by or
for HP, in source code and object code form, as part of HP Products; provided,
however, that,
(i) with respect to Agilent's software products that are
commercially released as of the Separation Date, HP shall be limited to using no
more than ten percent (10%) of the lines of code of any such commercially
released software product in any HP Product Sold by HP to a Third Party. Any
other rights of HP to Sell such commercially released software products of
Agilent shall be solely as set forth in a separate written agreement. For
purposes of this Section 3.1(b), a "commercially released" product shall mean a
product that has been placed on an Agilent corporate price list or released by
Agilent to Third Parties for beta testing; and
(ii) with respect to Agilent software that is only used
internally, HP recognizes that such software was not designed for use in
products that are Sold to Third Parties and that Agilent has no obligation
whatsoever to support such software. Accordingly, HP agrees to use reasonable
care in selecting any such software for use in HP Products, taking into account
that such software will be difficult to support.
(c) The foregoing licenses in this Section 3.1 include the right to
have contract manufacturers and foundries manufacture HP Products for HP.
(d) HP may grant sublicenses within the scope of the licenses granted
under Sections 3.1(a) and (b) above as follows:
(i) HP may grant sublicenses to its Subsidiaries for so long as
they remain its Subsidiaries, with no right to grant further sublicenses other
than, in the case of a sublicensed Subsidiary, to another Subsidiary of such
party and as described in Section 3.1(d)(iii) below; provided that any such
sublicense may be made effective retroactively but not prior to the
sublicensee's becoming a Subsidiary;
(ii) HP may grant sublicenses to its Affiliated Companies for so
long as HP holds at least thirty percent (30%) ownership interest in the
Affiliated Companies, with no right to grant further sublicenses other than, in
the case of a sublicensed Affiliated Company, to the Affiliated Company's wholly
owned subsidiaries and as described in Section 3.1(d)(iii) below; provided that
any such sublicense may be made effective retroactively but not prior to the
sublicensee's becoming an Affiliated Company;
(iii) HP may grant sublicenses with respect to HP Products in the
form of software, in object code and source code form, to its distributors,
resellers, OEM customers, VAR customers, VAD customers, systems integrators and
other channels of distribution and to its end user customers; and
(iv) HP may grant sublicenses with respect to the relevant
Licensed Agilent Technology to the Transferee (as defined below), in the event
that HP transfers, after the
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Separation Date, a going business (but not all or substantially all of its
business or assets), provided that such transfer includes at least one
marketable product and tangible assets having a net value of at least ten
million U.S. Dollars ($10,000,000.00), regardless of whether such transfer is
part of (A) an asset sale to any Third Party, (B) a sale of shares or securities
in a Subsidiary or Affiliated Company to a Third Party such that (x) in the case
of a Subsidiary, the Subsidiary ceases to be a Subsidiary, or in the case of an
Affiliated Company, HP ceases to hold at least thirty percent (30%) of the
outstanding shares or securities in such Affiliated Company and (y) the Third
Party owns at least eighty percent (80%) of the outstanding shares or securities
representing the right to vote for the election of directors or other managing
authority, or (C) a sale of shares or securities in a Subsidiary or Affiliated
Company to a Third Party such that (x) in the case of a Subsidiary, the
Subsidiary ceases to be a Subsidiary, or in the case of an Affiliated Company,
Agilent ceases to hold at least thirty percent (30%) of the outstanding shares
or securities in such Affiliated Company and (y) no single Third Party owns at
least eighty percent (80%) of the outstanding shares or securities representing
the right to vote for the election of directors or other managing authority of
such ex-Subsidiary or ex-Affiliated Company; provided that:
(1) the Transferee shall have no right to grant further
sublicenses except as described in Section 3.1(d)(iii) above and except that the
Transferee shall have the right to grant sublicenses to any Third Party at least
eighty percent (80%) of whose outstanding shares or securities representing the
right to vote for the election of directors or other managing authority are,
directly or indirectly, owned by the Transferee, only for so long as such
ownership exists;
(2) such sublicenses shall not come into effect unless and until
such Transferee agrees in writing for the benefit of Agilent to be bound by the
terms of this Agreement, including but not limited to the confidentiality
obligations under Article IV;
(3) this Section 3.1(d)(iv) shall be excluded from such
sublicense in any event; and
(4) HP shall give Agilent prompt written notice of any such
sublicense and a copy of the portions of the relevant agreement between HP and
such Transferee containing the sublicense terms.
(5) As used in this Section 3.1(d)(iv), "Transferee" in the case
of Sections 3.1(d)(iv)(A) and (B) means the Third Party acquiring the going
business or eighty percent (80%) of the Subsidiary or Affiliated Company and in
the case of Section 3.1(d)(iv)(C) means the ex-Subsidiary or ex-Affiliated
Company only.
(6) The licenses granted above to the Licensed Agilent
Technology shall continue in perpetuity (or, in the case of Copyrights, Database
Rights and Mask Work Rights, until the expiration of the term thereof).
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3.2 LICENSE TO AGILENT.
(a) HP grants (and agrees to cause its appropriate Subsidiaries or
Affiliated Companies to grant) to Agilent the following personal, irrevocable,
nonexclusive, worldwide, fully paid, royalty-free and non-transferable (except
as specified in Section 8.9 below) licenses:
(i) under its and their Copyrights in and to the Licensed HP
Technology, (A) to reproduce and have reproduced the works of authorship
included in the Licensed HP Technology and Improvements thereof prepared by or
for Agilent, in whole or in part, as part of Agilent Products, (B) to prepare
Improvements or have Improvements prepared for it based upon the works of
authorship included in the Licensed HP Technology in order to create Agilent
Products, (C) to distribute (by any means and using any technology, whether now
known or unknown, including without limitation electronic transmission) copies
of the works of authorship included in the Licensed HP Technology and
Improvements thereof prepared by or for Agilent to the public by sale or other
transfer of ownership or by rental, lease or lending, as part of Agilent
Products, and (D) to perform (by any means and using any technology, whether now
known or unknown, including without limitation electronic transmission) and
display the works of authorship included in the Licensed HP Technology and
Improvements thereof prepared by or for Agilent, as part of Agilent Products;
(ii) under its and their Database Rights in and to the Licensed
HP Technology, to extract data from the databases included in the Licensed HP
Technology and to re-utilize such data to design, develop, manufacture and have
manufactured Agilent Products and to Sell such Agilent Products that incorporate
such data, databases and Improvements thereof prepared by or for Agilent;
(iii) under its and their Mask Work Rights in and to the Licensed
HP Technology, (A) to reproduce and have reproduced mask works and semiconductor
topologies included in the Licensed HP Technology and embodied in Agilent
Products by optical, electronic or any other means, (B) to import or distribute
a product in which any such mask work or semiconductor topology is embodied, and
(C) to induce or knowingly to cause a Third Party to do any of the acts
described in Sections 3.2(a)(iii)(A) and (B) above; and
(iv) under its and their trade secrets and other intellectual
property rights in and to the Licensed HP Technology (except the intellectual
property rights excluded from the definition of Technology), to use the Licensed
HP Technology and Improvements thereof prepared by or for Agilent to design,
develop, manufacture and have manufactured Agilent Products and to Sell such
Agilent Products.
(b) Without limiting the generality of the foregoing licenses granted
in Section 3.2(a) above, with respect to software included within the Licensed
HP Technology, such licenses include the right to use, modify, and reproduce
such software and Improvements thereof made by or for Agilent to create Agilent
Products, in source code and object code form, and to Sell such software and
Improvements thereof made by or for Agilent, in source code and object code
form, as part of Agilent Products; provided, however, that,
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(i) with respect to HP's software products that are commercially
released as of the Separation Date, Agilent shall be limited to using no more
than ten percent (10%) of the lines of code of any such commercially released
software product in any Agilent Product Sold by Agilent to a Third Party. Any
other rights of Agilent to Sell such commercially released software products of
HP shall be solely as set forth in a separate written agreement. For purposes of
this Section 3.2(b), a "commercially released" product shall mean a product that
has been placed on an HP corporate price list or released by HP to Third Parties
for beta testing; and
(ii) with respect to HP software that is only used internally,
Agilent recognizes that such software was not designed for use in products that
are Sold to Third Parties and that HP has no obligation whatsoever to support
such software. Accordingly, Agilent agrees to use reasonable care in selecting
any such software for use in Agilent Products, taking into account that such
software will be difficult to support.
(c) The foregoing licenses in this Section 3.2 include the right to
have contract manufacturers and foundries manufacture Agilent Products for
Agilent.
(d) Agilent may grant sublicenses within the scope of the licenses
granted under Sections 3.2(a) and (b) above as follows:
(i) Agilent may grant sublicenses to its Subsidiaries for so
long as they remain its Subsidiaries, with no right to grant further sublicenses
other than, in the case of a sublicensed Subsidiary, to another Subsidiary of
such party and as described in Section 3.2(d)(iii) below; provided that any such
sublicense may be made effective retroactively but not prior to the
sublicensee's becoming a Subsidiary;
(ii) Agilent may grant sublicenses to its Affiliated Companies
for so long as Agilent holds at least thirty percent (30%) ownership interest in
the Affiliated Companies with no right to grant further sublicenses other than,
in the case of a sublicensed Affiliated Company, to the Affiliated Company's
wholly owned subsidiaries and as described in Section 3.2(d)(iii) below;
provided that any such sublicense may be made effective retroactively but not
prior to the sublicensee's becoming an Affiliated Company;
(iii) Agilent may grant sublicenses with respect to Agilent
Products in the form of software, in object code and source code form, to its
distributors, resellers, OEM customers, VAR customers, VAD customers, systems
integrators and other channels of distribution and to its end user customers;
and
(iv) Agilent may grant sublicenses with respect to the relevant
Licensed HP Technology to the Transferee (as defined below), in the event that
Agilent transfers, after the Separation Date, a going business (but not all or
substantially all of its business or assets), provided that such transfer
includes at least one marketable product and tangible assets having a net value
of at least ten million U.S. Dollars ($10,000,000.00), regardless of whether
such transfer is part of (A) an asset sale to any Third Party, (B) a sale of
shares or securities in a Subsidiary or Affiliated Company to a Third Party such
that (x) in the case of a Subsidiary, the Subsidiary ceases to be a
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Subsidiary, or in the case of an Affiliated Company, Agilent ceases to hold at
least thirty percent (30%) of the outstanding shares or securities in such
Affiliated Company and (y) the Third Party owns at least eighty percent
(80%) of the outstanding shares or securities representing the right to vote for
the election of directors or other managing authority, or (C) a sale of shares
or securities in a Subsidiary or Affiliated Company to a Third Party such that
(x) in the case of a Subsidiary, the Subsidiary ceases to be a Subsidiary, or in
the case of an Affiliated Company, Agilent ceases to hold at least thirty
percent (30%) of the outstanding shares or securities in such Affiliated Company
and (y) no single Third Party owns at least eighty percent (80%) of the
outstanding shares or securities representing the right to vote for the election
of directors or other managing authority of such ex-Subsidiary or ex-Affiliated
Company; provided that:
(1) the Transferee shall have no right to grant further
sublicenses except as described in Section 3.2(d)(iii) above and except that the
Transferee shall have the right to grant sublicenses to any Third Party at least
eighty percent (80%) of whose outstanding shares or securities representing the
right to vote for the election of directors or other managing authority are,
directly or indirectly, owned by the Transferee, only for so long as such
ownership exists;
(2) such sublicenses shall not come into effect unless and
until such Transferee agrees in writing for the benefit of HP to be bound by the
terms of this Agreement including but not limited to the confidentiality
obligations under Article IV;
(3) this Section 3.2(d)(iv) shall be excluded from such
sublicense in any event; and
(4) Agilent shall give HP prompt written notice of any such
sublicense and a copy of the portions of the relevant agreement between Agilent
and such Transferee containing the sublicense terms.
(5) As used in this Section 3.2(d)(iv), "Transferee" in the
case of Sections 3.2(d)(iv)(A) and (B) means the Third Party acquiring the going
business or eighty percent (80%) of the Subsidiary or Affiliated Company and in
the case of Section 3.2(d)(iv)(C) means the ex-Subsidiary or ex-Affiliated
Company only.
(e) The licenses granted above to the Licensed HP Technology shall
continue in perpetuity (or, in the case of Copyrights, Database Rights and Mask
Work Rights, until the expiration of the term thereof).
3.3 HAVE MADE RIGHTS. Each party understands and acknowledges that the
"have made" rights granted to it in Section 3.1 or 3.2, as applicable, and the
sublicenses of such "have made" rights granted pursuant to Sections 3.1(d)(i)
and (ii) and 3.2(d)(i) and (ii), as applicable, are intended to cover only the
products of such party, its Subsidiaries and Affiliated Companies (including
private label or OEM versions of such products), and are not intended to cover
foundry or contract manufacturing activities that such party may undertake
through Third Parties for Third Parties.
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3.4 IMPROVEMENTS. As between the parties, after the Separation Date,
Agilent hereby retains all right, title and interest, including all intellectual
property rights, in and to any Improvements to Licensed HP Technology made by or
for Agilent in the exercise of the licenses granted to it hereunder, subject
only to the ownership of HP in the underlying Licensed HP Technology, and HP
hereby retains all right, title and interest, including all intellectual
property rights, in and to any Improvements to Licensed Agilent Technology made
by or for HP in the exercise of the licenses granted to it hereunder, subject
only to the ownership of Agilent in the underlying Licensed Agilent Technology.
Neither party shall have any obligation under this Agreement to notify the other
party of any Improvements made by or for it or to disclose or license any such
Improvements to the other party.
3.5 DURATION OF SUBLICENSES TO SUBSIDIARIES AND AFFILIATED COMPANIES. A
sublicense to a particular Subsidiary or Affiliated Company of a party hereto
granted pursuant to Section 3.1(d)(i) or (ii) or 3.2(d)(i) or (ii) shall
terminate upon the date that, in the case of a Subsidiary of a party, such
Subsidiary ceases to be a Subsidiary of such party, or, in the case of an
Affiliated Company of a party, such party ceases to hold at least a thirty
percent (30%) ownership interest in such Affiliated Company; provided, however,
that such cessation shall not affect such party's rights to grant further
sublicenses to such terminated Subsidiary or Affiliated Company as set forth in
Section 3.1(d)(iv) or 3.2(d)(iv) above. In the event that, at the time of such
cessation, such Subsidiary or Affiliated Company owns any Technology to which
the other party is licensed, such license shall continue for the term thereof.
3.6 NO PATENT LICENSES. Nothing contained in this Agreement shall be
construed as conferring to either party by implication, estoppel or otherwise
any license or right under any Patent or applications therefor, whether or not
the exercise of any right herein granted necessarily employs an invention of any
existing or later issued Patent. The applicable licenses granted between HP and
Agilent with respect to Patents are set forth in a separate Master Patent
Ownership and License Agreement.
3.7 THIRD PARTY TECHNOLOGY. The assignment of any applicable license
agreements with respect to Third Party Technology are set forth in a separate
General Assignment and Assumption Agreement between the parties.
ARTICLE IV
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
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ARTICLE V
TERMINATION
5.1 VOLUNTARY TERMINATION. By written notice to the other party, each
party may voluntarily terminate all or a specified portion of the licenses and
rights granted to it hereunder by such other party. Such notice shall specify
the effective date of such termination and shall clearly specify any affected
Technology, product or service.
5.2 SURVIVAL. Any voluntary termination of licenses and rights of a party
under Section 5.1 shall not affect such party's licenses and rights with respect
to any licensed product made or service furnished prior to such termination, and
shall not affect the licenses and rights granted to the other party hereunder.
5.3 NO OTHER TERMINATION. Each party acknowledges and agrees that its
remedy for breach by the other party of the licenses granted to it hereunder or
of any other provision hereof shall be, subject to the requirements of Article
VI, to bring a claim to recover damages subject to the limits set forth in this
Agreement and to seek any other appropriate equitable relief, other than
termination of the licenses granted by it in this Agreement.
ARTICLE VI
DISPUTE RESOLUTION
6.1 NEGOTIATION. The parties shall make a good faith attempt to resolve
any dispute or claim arising out of or related to this Agreement through
negotiation. Within thirty (30) days after notice of a dispute or claim is given
by either party to the other party, the parties' first tier negotiating teams
(as determined by each party's Director of Intellectual Property or his or her
delegate) shall meet and make a good faith attempt to resolve such dispute or
claim and shall continue to negotiate in good faith in an effort to resolve the
dispute or claim or renegotiate the applicable section or provision without the
necessity of any formal proceedings. If the first tier negotiating teams are
unable to agree within thirty (30) days of their first meeting, then the
parties' second tier negotiating teams (as determined by each party's Director
of Intellectual Property or his or her delegate) shall meet within thirty (30)
days after the end of the first thirty (30) day negotiating period to attempt to
resolve the matter. During the course of negotiations under this Section 6.1,
all reasonable requests made by one party to the other for information,
including requests for copies of relevant documents, will be honored. The
specific format for such negotiations will be left to the discretion of the
designated negotiating teams but may include the preparation of agreed upon
statements of fact or written statements of position furnished to the other
party.
6.2 NONBINDING MEDIATION. In the event that any dispute or claim arising
out of or related to this Agreement is not settled by the parties within fifteen
(15) days after the first meeting of the second tier negotiating teams under
Section 6.1, the parties will attempt in good faith
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to resolve such dispute or claim by nonbinding mediation in accordance with the
American Arbitration Association Commercial Mediation Rules. The mediation shall
be held within thirty (30) days of the end of such fifteen (15) day negotiation
period of the second tier negotiating teams. Except as provided below in Section
6.3, no litigation for the resolution of such dispute may be commenced until the
parties try in good faith to settle the dispute by such mediation in accordance
with such rules and either party has concluded in good faith that amicable
resolution through continued mediation of the matter does not appear likely. The
costs of mediation shall be shared equally by the parties to the mediation. Any
settlement reached by mediation shall be recorded in writing, signed by the
parties, and shall be binding on them.
6.3 PROCEEDINGS. Nothing herein, however, shall prohibit either party
from initiating litigation or other judicial or administrative proceedings if
such party would be substantially harmed by a failure to act during the time
that such good faith efforts are being made to resolve the dispute or claim
through negotiation or mediation. In the event that litigation is commenced
under this Section 6.3, the parties agree to continue to attempt to resolve any
dispute or claim according to the terms of Sections 6.1 and 6.2 during the
course of such litigation proceedings under this Section 6.3.
ARTICLE VII
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES OR AFFILIATED COMPANIES
BE LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES OR AFFILIATED COMPANIES FOR ANY
SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST
PROFITS, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE)
ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES; PROVIDED, HOWEVER, THAT THE
FOREGOING LIMITATIONS SHALL NOT LIMIT DAMAGES FOR INFRINGEMENT AVAILABLE TO
EITHER PARTY UNDER APPLICABLE LAW IN THE EVENT OF BREACH BY THE OTHER PARTY OF
SECTIONS 3.1(a) OR 3.2(a) AND SHALL NOT LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY
ASSUMED IN EXHIBIT K OF THE MASTER SEPARATION AGREEMENT; PROVIDED FURTHER THAT
THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
8.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY
AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER IS
LICENSED OR PROVIDED ON AN "AS IS" BASIS, AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES OR AFFILIATED COMPANIES MAKES ANY REPRESENTATIONS OR EXTENDS ANY
WARRANTIES WHATSOEVER, EXPRESS,
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IMPLIED OR STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
foregoing, neither party nor any of its Subsidiaries or Affiliated Companies
makes any warranty or representation that any manufacture, use, importation,
offer for sale or sale of any product or service will be free from infringement
of any Patent or other intellectual property right of any Third Party.
8.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Licensed Agilent Technology and the Licensed HP
Technology. Neither party is required hereunder to furnish or disclose to the
other any technical or other information (including copies of the Licensed
Agilent Technology and the Licensed HP Technology), except as specifically
provided herein.
8.3 INFRINGEMENT SUITS. Neither party shall have any obligation hereunder
to institute any action or suit against Third Parties for infringement of any
Copyrights, Database Rights or Mask Work Rights or misappropriation of any trade
secret rights in or to any Technology licensed to the other party hereunder, or
to defend any action or suit brought by a Third Party which challenges or
concerns the validity of any of such rights or which claims that any Technology
assigned or licensed to the other party hereunder infringes any Patent,
Copyright, Database Right, Mask Work Right or other intellectual property right
of any Third Party or constitutes a misappropriated trade secret of any Third
Party. HP shall not have any right to institute any action or suit against Third
Parties for infringement of any of the Copyrights, Database Rights or Mask Work
Rights in or to the Licensed Agilent Technology and Agilent shall not have any
right to institute any action or suit against Third Parties for infringement of
any of the Copyrights, Database Rights or Mask Work Rights in or to the Licensed
HP Technology.
8.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries or Affiliated Companies, is obligated to provide any
technical assistance.
8.5 ENTIRE AGREEMENT. This Agreement, the Master Separation Agreement and
the other Ancillary Agreements (as defined in the Master Separation Agreement)
constitute the entire agreement between the parties with respect to the subject
matter hereof and shall supersede all prior written and oral and all
contemporaneous oral agreements and understandings with respect to the subject
matter hereof. This Agreement shall prevail in the event of any conflicting
terms or legends which may appear on any portion of the Agilent Owned
Technology, Licensed Agilent Technology or Licensed HP Technology. To the extent
there is a conflict between this Agreement and the Master Assignment and
Assumption Agreement between the parties, the terms of this Agreement shall
govern.
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8.6 GOVERNING LAW. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of Delaware as to all matters
regardless of the laws that might otherwise govern under principles of conflicts
of laws applicable thereto.
8.7 DESCRIPTIVE HEADINGS. The descriptive headings herein are inserted
for convenience of reference only and are not intended to be part of or to
affect the meaning or interpretation of this Agreement.
8.8 NOTICES. All notices and other communications hereunder shall be in
writing and shall be deemed to have been duly given when delivered in person, by
telecopy with answer back, by express or overnight mail delivered by a
nationally recognized air courier (delivery charges prepaid), by registered or
certified mail (postage prepaid, return receipt requested) or by e-mail with
receipt confirmed by return e-mail to the respective parties as follows:
if to HP:
c/o Hewlett-Packard Company
3000 Hanover Street
Palo Alto, CA 94304
Attention: Associate General Counsel and
Director of Intellectual Property
Telecopy: (650) 852-8194
if to Agilent:
c/o Agilent Technologies, Inc.
3000 Hanover Street
Palo Alto, CA 94304
Attention: Assistant General Counsel and
Director of Intellectual Property
Telecopy: (650) 813-3095
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing in the manner set forth above. Any
notice or communication delivered in person shall be deemed effective on
delivery. Any notice or communication sent by e-mail, telecopy or by air courier
shall be deemed effective on the first Business Day following the day on which
such notice or communication was sent. Any notice or communication sent by
registered or certified mail shall be deemed effective on the third Business Day
following the day on which such notice or communication was mailed. As used in
this Section 8.8, "Business Day" means any day other than a Saturday, a Sunday
or a day on which banking institutions located in the State of California are
authorized or obligated by law or executive order to close.
8.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in whole
or in part, whether by operation of law or otherwise, assign or transfer this
Agreement, without the other party's prior written consent, and any attempted
assignment, transfer or delegation without such
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prior written consent shall be voidable at the sole option of such other party.
Notwithstanding the foregoing, each party (or its permitted successive assignees
or transferees hereunder) may assign or transfer this Agreement as a whole
without consent to a Person that succeeds to all or substantially all of the
business or assets of such party. Without limiting the foregoing, this Agreement
will be binding upon and inure to the benefit of the parties and their permitted
successors and assigns.
8.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a nonappealable decision of a court, administrative agency or
arbitrator to be invalid, illegal or incapable of being enforced by any rule of
law or public policy, all other conditions and provisions of this Agreement
shall nevertheless remain in full force and effect so long as the economic or
legal substance of the transactions contemplated hereby is not affected in any
manner materially adverse to either party. Upon such determination that any term
or other provision is invalid, illegal or incapable of being enforced, the
parties hereto shall negotiate in good faith to modify this Agreement so as to
effect the original intent of the parties as closely as possible in an
acceptable manner to the end that the transactions contemplated hereby are
fulfilled to the fullest extent possible.
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
8.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
8.13 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, all of which, taken together, shall be considered to be one and
the same instrument.
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WHEREFORE, the parties have signed this Master Technology Ownership and
License Agreement effective as of the date first set forth above.
HEWLETT-PACKARD COMPANY AGILENT TECHNOLOGIES, INC.
By:_______________________________ By:_____________________________________
Name:_____________________________ Name:___________________________________
Title:____________________________ Title:__________________________________
18
EXHIBIT A
TO MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
AFFILIATED COMPANIES
1. HP Affiliated Companies
-----------------------
ImagineCard
Idea LLC
Intria-HP
Intria-HP Potomac
Ericsson-HP Telecom (Sweden)
Ericsson-HP Telecom (France)
Hua-Pua
Putial Ome
PT Berka Services
Liquidity Management Group
Hugin Expert
Syc
Sopura Systems
2. Agilent Affiliated Companies
----------------------------
Chartered Semiconductor Partners Singapore
LumiLEDS
19