EXHIBIT 2.4
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
Between
HEWLETT-PACKARD COMPANY
AND
AGILENT TECHNOLOGIES, INC.
Effective as of __________, 1999
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
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ARTICLE I DEFINITIONS.................................................................... 1
1.1 AFFILIATED COMPANY..................................................... 1
1.2 AGILENT PATENTS........................................................ 2
1.3 AGILENT PRODUCTS....................................................... 2
1.4 ALLOCATED PATENT ASSETS DATABASE....................................... 2
1.5 ASSIGNED PATENTS....................................................... 2
1.6 CAPTURE PERIOD......................................................... 3
1.7 DISTRIBUTION DATE...................................................... 3
1.8 FIRST EFFECTIVE FILING DATE............................................ 3
1.9 HP PATENTS............................................................. 3
1.10 HP PRODUCTS............................................................ 4
1.11 INVENTION DISCLOSURE................................................... 4
1.12 JOINT PATENTS.......................................................... 4
1.13 LICENSED PATENTS....................................................... 5
1.14 MASTER SEPARATION AGREEMENT............................................ 5
1.15 PATENT FIELD DEFINITION DATABASE....................................... 5
1.16 PATENTS................................................................ 5
1.17 PERSON................................................................. 5
1.18 SEPARATION DATE........................................................ 5
1.19 SUBSIDIARY............................................................. 5
1.20 THIRD PARTY............................................................ 6
ARTICLE II ASSIGNMENTS................................................................... 6
2.1 ASSIGNED PATENTS....................................................... 6
2.2 JOINT PATENTS.......................................................... 6
2.3 PRIOR GRANTS........................................................... 6
2.4 ASSIGNMENT DISCLAIMER.................................................. 7
ARTICLE III LICENSES AND RIGHTS.......................................................... 7
3.1 LICENSE GRANTS TO HP................................................... 7
3.2 LICENSE GRANTS TO AGILENT.............................................. 7
3.3 SUBLICENSE RIGHTS...................................................... 7
3.4 HAVE MADE RIGHTS....................................................... 8
3.5 DURATION............................................................... 8
3.6 SALE OF A BUSINESS, SUBSIDIARY OR AFFILIATED COMPANY................... 9
3.7 SALE OF A PARTY OR ALL ASSETS OF A PARTY............................... 11
3.8 RIGHTS TO JOINT PATENTS................................................ 11
3.9 PATENT APPLICATIONS AND INVENTION DISCLOSURES.......................... 12
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TABLE OF CONTENTS
(Continued)
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3.10 TURBO COOLER PATENTS................................................... 12
3.11 DISPLAY PATENTS........................................................ 12
ARTICLE IV ADDITIONAL OBLIGATIONS........................................................ 13
4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS................. 13
4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO HP PATENTS....................... 13
4.3 ADDITIONAL OBLIGATIONS WITH REGARD TO JOINT PATENTS.................... 14
4.4 DEFENSIVE PROTECTION MEASURES.......................................... 15
4.5 STANDARDS BODIES....................................................... 15
4.6 ASSIGNMENT OF PATENTS.................................................. 15
4.7 RESPONSE TO REQUESTS................................................... 15
4.8 RECORDATION OF LICENSES................................................ 15
ARTICLE V CONFIDENTIALITY................................................................ 16
ARTICLE VI TERMINATION................................................................... 16
6.1 VOLUNTARY TERMINATION.................................................. 16
6.2 SURVIVAL............................................................... 16
6.3 NO OTHER TERMINATION................................................... 16
ARTICLE VII DISPUTE RESOLUTION........................................................... 17
7.1 NEGOTIATION............................................................ 17
7.2 NONBINDING MEDIATION................................................... 17
7.3 PROCEEDINGS............................................................ 17
ARTICLE VIII LIMITATION OF LIABILITY..................................................... 18
ARTICLE IX MISCELLANEOUS PROVISIONS...................................................... 18
9.1 DISCLAIMER............................................................. 18
9.2 NO IMPLIED LICENSES.................................................... 18
9.3 INFRINGEMENT SUITS..................................................... 18
9.4 NO OTHER OBLIGATIONS................................................... 19
9.5 ENTIRE AGREEMENT....................................................... 19
9.6 GOVERNING LAW.......................................................... 19
9.7 DESCRIPTIVE HEADINGS................................................... 19
9.8 NOTICES................................................................ 19
9.9 NONASSIGNABILITY....................................................... 20
9.10 SEVERABILITY........................................................... 20
9.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE.................. 20
9.12 AMENDMENT.............................................................. 20
9.13 COUNTERPARTS........................................................... 21
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TABLE OF CONTENTS
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EXHIBIT A: AFFILIATED COMPANIES
EXHIBIT B: HP FIELD RESTRICTIONS
EXHIBIT C: AGILENT FIELD RESTRICTIONS
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MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
This Master Patent 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
certain patents, patent applications and invention disclosures that are owned or
controlled by HP prior to the Effective Date;
WHEREAS, the parties desire to facilitate such transaction by exchanging
licenses under certain of the patents and patent applications owned or
controlled by them;
WHEREAS, HP desires to receive and Agilent is willing to grant to HP
certain licenses and rights under patents and patent applications owned by
Agilent; and
WHEREAS, Agilent desires to receive and HP is willing to grant to Agilent
certain licenses and rights under patents and patent applications owned by HP.
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 PATENTS. "Agilent Patents" means:
(a) the Assigned Patents; except for design patents and design
registrations (other than typeface design patents and typeface design
registrations) with a First Effective Filing Date after the Separation Date; and
(b) every Non-Design Patent to the extent entitled to a First
Effective Filing Date prior to the expiration of the Capture Period, provided
that, at any time after the First Effective Filing Date of any such Non-Design
Patent and prior to the expiration of the Capture Period, Agilent (or any
Subsidiary or Affiliated Company of Agilent):
(i) has ownership or control of any such Non-Design Patent, or
(ii) otherwise has the right under such Non-Design Patent to
grant any licenses of the type and on the terms herein granted by Agilent
without the obligation to pay royalties or other consideration to Third Parties;
and
(c) applications for the foregoing Non-Design Patents described in
Section 1.2(b), including without limitation any continuations, continuations-
in-part, divisions and substitutions; but
(d) excluding from any Non-Design Patent or Non-Design Patent
application described in Sections 1.2(b) and (c) any claim (i) directed to
subject matter that does not appear in any Non-Design Patent application having
a First Effective Filing Date prior to the expiration of the Capture Period and
(ii) of which neither Agilent nor any person having a legal duty to assign
his/her interest therein to Agilent is entitled to be named as an inventor.
1.3 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
is acting as a contract manufacturer or foundry for such Third Parties).
1.4 ALLOCATED PATENT ASSETS DATABASE. "Allocated Patent Assets Database"
means the Allocated Patent Assets Database, as it may be updated by the parties
upon mutual agreement to add Patents, Patent applications and Invention
Disclosures as of the Separation Date.
1.5 ASSIGNED PATENTS. "Assigned Patents" means only those
(a) Patents, Patent applications and Invention Disclosures allocated
to Agilent in the Allocated Patent Assets Database;
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(b) Patent applications filed on the foregoing Invention Disclosures
described in Section 1.5(a);
(c) continuations, continuations-in-part, divisions and substitutions
of any of the foregoing Patent applications described in Sections 1.5(a) and
(b);
(d) Patents which may issue on any of the foregoing Patent
applications described in Sections 1.5(a)-(c);
(e) renewals, reissues, reexaminations and extensions of the foregoing
Patents described in Sections 1.5(a) and (d); and
(f) foreign Patent applications and Patents that are counterparts of
any of the foregoing Patent applications or Patents described in Sections
1.5(a)-(e), including any Patent application or Patent to the extent that it
claims priority from any of the foregoing Patent applications or Patents
described in Sections 1.5(a)-(e); but
(g) excluding from any Patent or Patent application described in
Sections 1.5(c)-(f) any claim (i) directed to subject matter that does not
appear in any Patent application having a First Effective Filing Date prior to
the Separation Date and (ii) of which neither Agilent nor any person having a
legal duty to assign his/her interest therein to Agilent is entitled to be named
as an inventor.
1.6 CAPTURE PERIOD. "Capture Period" means the period ending five (5)
years from the Separation Date.
1.7 DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in
the Master Separation Agreement.
1.8 FIRST EFFECTIVE FILING DATE. "First Effective Filing Date" means the
earliest effective filing date in the particular country for any Patent or any
application for any Patent. By way of example, it is understood that the First
Effective Filing Date for a United States Patent is the earlier of (i) the
actual filing date of the United States Patent application which issued into
such Patent, (ii) the priority date under 35 U.S.C. (S) 119 for such Patent, or
(iii) the priority date under 35 U.S.C. (S) 120 for such Patent.
1.9 HP PATENTS. "HP Patents" means:
(a) every Non-Design Patent to the extent entitled to a First
Effective Filing Date prior to the expiration of the Capture Period, provided
that, at any time after the First Effective Filing Date of any such Non-Design
Patent and prior to the expiration of the Capture Period, HP (or any Subsidiary
or Affiliated Company of HP):
(i) has ownership or control of any such Non-Design Patent, or
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(ii) otherwise has the right under such Non-Design Patent to
grant any licenses of the type and on the terms herein granted by HP without the
obligation to pay royalties or other consideration to Third Parties; and
(b) applications for the foregoing Non-Design Patents described in
Section 1.9(a), including without limitation any continuations, continuations-
in-part, divisions and substitutions; but
(c) excluding from any Non-Design Patent or Non-Design Patent
application described in Sections 1.9(a) and (b) any claim (i) directed to
subject matter that does not appear in any Patent application having a First
Effective Filing Date prior to the expiration of the Capture Period and (ii) of
which neither HP nor any person having a legal duty to assign his/her interest
therein to HP is entitled to be named as an inventor.
(d) Notwithstanding the foregoing, the term "HP Patents" does not
include Agilent Patents.
1.10 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 is acting as a contract
manufacturer or foundry for such Third Parties).
1.11 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of an
invention (i) written for the purpose of allowing legal and business people to
determine whether to file a Patent application with respect to such invention
and (ii) recorded with a control number in the owning party's records) with a
First Effective Filing Date after the Separation Date.
1.12 JOINT PATENTS. "Joint Patents" means:
(a) Patents, Patent applications and Invention Disclosures allocated
to the parties jointly in the Allocated Patent Assets Database;
(b) Patent applications filed on the foregoing Invention Disclosures
described in Section 1.12 (a);
(c) continuations, continuations-in-part, divisions and substitutions
of any of the foregoing Patent applications described in Sections 1.12 (a) and
(b);
(d) Patents which may issue on any of the foregoing Patent
applications described in Sections 1.12 (a)-(c);
(e) renewals, reissues and extensions of the foregoing Patents
described in Sections 1.12(a) and (d); and
(f) foreign Patent applications and Patents that are counterparts of
any of the foregoing Patent applications or Patents described in Sections 1.12
(a)-(e), including any Patent
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application or Patent that takes priority from any of the foregoing Patent
applications or Patents described in Sections 1.12 (a)-(e); but
(g) excluding from any Patent or Patent application described in
Sections 1.12 (c)-(f) any claim (i) directed to subject matter that does not
appear in any Patent application having a First Effective Filing Date prior to
the Separation Date and (ii) of which there is no joint inventorship including
at least one Agilent employee and at least one HP employee.
1.13 NON-DESIGN PATENTS. "Non-Design Patents" means Patents except for
design patents (other than typeface design patents and typeface design
registrations) to the extent that such design patents have a First Effective
Filing Date after the Separation Date.
1.14 MASTER SEPARATION AGREEMENT. "Master Separation Agreement" means the
Master Separation and Distribution Agreement between the parties.
1.15 PATENT FIELD DEFINITION DATABASE. "Patent Field Definition Database"
means the Patent Field Definition Database, as it may be updated by the parties
as of the Separation Date.
1.16 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions or industrial designs anywhere in the world and
all reissues, renewals, re-examinations and extensions of any of the foregoing.
1.17 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.
1.18 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.
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1.20 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
ASSIGNMENTS
2.1 ASSIGNED PATENTS. Subject to Sections 2.3 and 2.4 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 Assigned Patents, 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 the
Assigned Patents and the right to claim priority from the Assigned Patents. 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 prosecuting, sustaining, obtaining continuations of, or reissuing
said Assigned Patents and for evidencing, maintaining, recording and perfecting
Agilent's rights to said Assigned Patents, 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 Patent jurisdiction.
2.2 JOINT PATENTS. Subject to Sections 2.3, 2.4, 3.8 and 4.3 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), an undivided one-half interest in and to the Joint Patents, 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 an undivided one-half interest in and to any and
all causes of action and rights of recovery for past infringement of the Joint
Patents and the right to claim priority from the Joint Patents. 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 said
Joint Patents 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 Patent
jurisdiction.
2.3 PRIOR GRANTS. Agilent acknowledges and agrees that the foregoing
assignments are subject to any and all licenses or other rights that may have
been granted by HP or its Subsidiaries with respect to the Assigned Patents and
the Joint Patents prior to the Separation Date. HP shall respond to reasonable
inquiries from Agilent regarding any such prior grants.
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2.4 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, NON-INFRINGEMENT, OR VALIDITY OF PATENT CLAIMS (ISSUED OR
PENDING).
ARTICLE III
LICENSES AND RIGHTS
3.1 LICENSE GRANTS TO HP. Agilent grants (and agrees to cause its
appropriate Subsidiaries or Affiliated Companies to grant) to HP, under the
Agilent Patents, a personal, irrevocable, nonexclusive, worldwide, fully-paid,
royalty-free and non-transferable (except as set forth in Section 9.9) license
to make (including the right to practice methods, processes and procedures),
have made, use, lease, sell, offer for sale and import HP Products in all fields
of use except in the fields of use set forth on Exhibit B. In addition, the
foregoing license grants are subject to the special contract terms, if any, set
forth in the Allocated Patent Assets Database.
3.2 LICENSE GRANTS TO AGILENT. HP grants (and agrees to cause its
appropriate Subsidiaries or Affiliated Companies to grant) to Agilent, under the
HP Patents, a personal, irrevocable, nonexclusive, worldwide, fully-paid,
royalty-free and non-transferable (except as set forth in Section 9.9) license
to make (including the right to practice methods, processes and procedures),
have made, use, lease, sell, offer for sale and import Agilent Products in all
fields of use except in the fields of use set forth on Exhibit C. In addition,
the foregoing license grants are subject to the special contract terms, if any,
set forth in the Allocated Patent Assets Database.
3.3 SUBLICENSE RIGHTS.
(a) Subject to Sections 3.5 and 3.6, each party may grant sublicenses
to its respective Subsidiaries within the scope of its respective license
hereunder (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 Sections 3.3(e) and (f) below).
(b) Subject to Sections 3.5 and 3.6, each party may grant sublicenses
to its respective Affiliated Companies within the scope of its respective
license hereunder (with no right to grant further sublicenses other than, in the
case of a sublicensed Affiliated Company, to such Affiliated Company's wholly-
owned subsidiaries and as described in Sections 3.3(e) and (f) below).
(c) Any sublicense under Section 3.3(a) or 3.3(b) may be made
effective retroactively, but not prior to the sublicensee's becoming a
Subsidiary or Affiliated Company of the granting party.
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(d) Each party may grant sublicenses to Third Parties within the scope
of their respective licenses hereunder with respect to the Patents identified as
sublicensable in the Allocated Patent Assets Database, subject to prior written
approval by the other party. Such sublicense shall be deemed approved if not
disapproved in writing within thirty (30) days of written request to such other
party. Such sublicense shall be subject to any special contract terms applicable
to Third Party sublicenses set forth in the Allocated Patent Assets Database.
The sublicense agreement between the sublicensor and the Third Party sublicensee
shall provide that the owner of the sublicensed Patent may terminate the
sublicense for breach upon written notice to the sublicensee, subject to a cure
period of not less than thirty (30) days, and may seek immediate injunctive
relief in the event of any breach.
(e) Any licenses granted by HP to its distributors, resellers, OEM
customers, VAR customers, VAD customers, systems integrators and other channels
of distribution and to its end user customers with respect to any HP Product in
the form of software, may include a sublicense under the Agilent Patents within
the scope of HP's license hereunder, provided that the scope of such sublicense
is limited to the exercise of the rights granted by HP with respect to the HP
Product.
(f) Any licenses granted by Agilent to its distributors, resellers,
OEM customers, VAR customers, VAD customers, systems integrators and other
channels of distribution and to its end user customers with respect to any
Agilent Product in the form of software may include a sublicense under the HP
Patents within the scope of Agilent's license hereunder, provided that the scope
of such sublicense is limited to the exercise of the rights granted by Agilent
with respect to the Agilent Product.
3.4 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 3.3(a) and
(b), 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.
3.5 DURATION.
(a) All licenses granted herein with respect to each Patent shall
expire upon the expiration of the term of such Patent; provided, however, that
licenses for Patents falling within Section 1.2(b)(ii) or Section 1.9(a)(ii)
shall expire upon the expiration of the term of the grantor's license under such
Patent.
(b) All sublicenses granted pursuant to this Agreement to a particular
Subsidiary or Affiliated Company of a party hereto shall terminate the date
that, in the case of a Subsidiary of a party, the 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 the foregoing shall not affect
the other party's obligations under Section 3.6 below. The licenses granted to
such other party hereunder with respect
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to Patents and Patent applications of such Subsidiary or Affiliated Company with
a First Effective Filing Date prior to the date of such cessation shall remain
in effect notwithstanding such cessation.
3.6 SALE OF A BUSINESS, SUBSIDIARY OR AFFILIATED COMPANY.
(a) If either party (the "Transferring Party"), after the Separation
Date, transfers a going business (but not all or substantially all of its
business or assets), and 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 (i) an asset
sale to any Third Party, (ii) a sale of shares or securities in a Subsidiary or
Affiliated Company to a Third Party such that (A) in the case of a Subsidiary,
the Subsidiary ceases to be a Subsidiary, or in the case of an Affiliated
Company, the Transferring Party ceases to hold at least a thirty percent (30%)
of the outstanding shares or securities in such Affiliated Company and (B) 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 (iii) a sale of shares or securities in a Subsidiary or
Affiliated Company such that (A) in the case of a Subsidiary, the Subsidiary
ceases to be a Subsidiary, or in the case of an Affiliated Company, the
Transferring Party ceases to hold at least thirty percent (30%) of the
outstanding shares or securities in such Affiliated Company and (B) 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;
(b) then, upon written request to the other party (the "Non-
Transferring Party") jointly by the Transferring Party and the Transferee (as
defined below) within sixty (60) days following the transfer, the Non-
Transferring Party shall grant a royalty-free license to the Transferee under
the same terms as the license granted to the Transferring Party under this
Agreement subject to the following:
(i) the effective date of such license shall be the effective
date of such transfer,
(ii) the products, services and processes of the Transferee that
are subject to such license shall be limited to the products, services and
processes of the Subsidiary or Affiliated Company or the products, services and
processes in the transferred business that are commercially released or for
which substantial steps have been taken to commercialization and for new
versions that have merely minor incremental differences from such products,
services and processes,
(iii) the Patents of the Non-Transferring Party that are subject
to such license shall be limited to HP Patents or Agilent Patents, as the case
may be, that are entitled to a First Effective Filing Date on or before the date
of such transfer,
(iv) the Transferee shall have no right to grant sublicenses
(except as set forth in Sections 3.3(e) and (f) above) except that the
Transferee shall have the right to grant sublicenses to any Person 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
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indirectly, owned by the Transferee ("Transferee Subsidiaries"), only for so
long as such ownership exists, and
(v) this Section 3.6 shall be excluded from such license in
any event;
(c) provided, further, that the Transferee shall grant to the Non-
Transferring Party a royalty-free license under the same terms as the license
granted to the Non-Transferring Party by the Transferring Party under this
Agreement, subject to the following:
(i) the effective date of such license shall be the effective
date of the transfer,
(ii) the products, services and processes of the Non-
Transferring Party that are subject to such license shall be all the products,
services and processes that are subject to the license from the Transferring
Party to the Non-Transferring Party as of the effective date of the transfer,
and
(iii) the Patents of the Transferee that are subject to such
license shall be limited to all the Non-Design Patents that are entitled to a
First Effective Filing Date on or before the date of such transfer and under
which, at any time commencing with the date of the transfer, the Transferee or
any of the Transferee Subsidiaries has ownership or control or otherwise has the
right to grant such license without the obligation to pay royalties or other
consideration to Third Parties; and
(d) provided, further, that in the event that the Non-Transferring
Party and the Transferee are engaged in litigation, arbitration or other formal
dispute resolution proceedings covering Patent infringement (pending in any
court, tribunal, or administrative agency or before any appointed or agreed upon
arbitrator in any jurisdiction worldwide), then the Non-Transferring Party shall
have no obligation to enter into a license with the Transferee under this
Section 3.6.
(e) Each party may exercise its rights as the Transferring Party under
this Section 3.6 no more than eight (8) times unless otherwise agreed to in
writing by the other party. Notwithstanding the foregoing limitation, however,
in any license granted by a Non-Transferring Party to a Transferee under this
Section 3.6, the Transferring Party may elect to relinquish its license under
this Agreement in the field of use covered by the license, and such license
shall not count toward the limit. In making such election, the Transferring
Party promptly shall notify the Non-Transferring Party. All notices of transfer
and all consents by HP and Agilent shall be effective only if provided to or by
the Director of Intellectual Property of the applicable party.
(f) As used above in this Section 3.6, "Transferee" in the case of
Sections 3.6(a)(i) and (ii) means the Third Party acquiring the going business
or eighty percent (80%) of the Subsidiary or Affiliated Company and in the case
of Section 3.6(a)(iii) means the ex-Subsidiary or ex-Affiliated Company only.
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3.7 SALE OF A PARTY OR ALL ASSETS OF A PARTY.
(a) Each party (or its permitted successive assignees or transferees
hereunder) may assign or transfer this Agreement as a whole without consent in
connection with a corporate reorganization which leaves such party substantially
equivalent in terms of business, assets and ownership as before the
reorganization (e.g., a reincorporation in another state).
(b) Each party (or its permitted successive assignees or transferees
hereunder) (the "Acquired Party") 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 (the "Acquiring Party"); provided, however,
that in the event of any assignment or transfer under this Section 3.7(b) that
is not covered by Section 3.7(a) above:
(i) the Acquired Party promptly shall give notice of such
acquisition to the other party (the "Non-Acquired Party"),
(ii) the license granted to the Acquired Party by the Non-
Acquired Party pursuant to this Agreement, and any sublicenses granted by the
Acquired Party to its Subsidiaries and Affiliated Companies, shall automatically
become limited to the products, processes and services of the Acquired Party or
its Subsidiaries or Affiliated Companies that are commercially released or for
which substantial steps have been taken to commercialization as of the effective
date of the acquisition and for new versions that have merely minor incremental
differences from such products, processes and services and shall not in any
event include any products, processes or services of the Acquiring Party, and
the Capture Period for Patents under such license shall expire as of the
effective date of the acquisition; provided, however, that in any event such
license shall be terminable at will by the Non-Acquired Party if the Non-
Acquired Party and the Acquiring Party are engaged in litigation, arbitration or
other formal dispute resolution proceedings covering Patent infringement
(pending in any court, tribunal, or administrative agency or before any
appointed or agreed upon arbitrator in any jurisdiction worldwide) at the time
that the acquisition agreement is entered into, or if such proceedings are
initiated by the Acquiring Party within one hundred twenty-one days (121) days
after the date that the acquisition agreement is entered into, and
(iii) the license granted by the Acquired Party to the Non-
Acquired Party pursuant to this Agreement shall remain in place unchanged except
that the Capture Period for Patents under such license shall expire as of the
effective date of the acquisition.
3.8 RIGHTS TO JOINT PATENTS.
(a) Subject to the further restrictions in this Section 3.8(a), each
party has the right to practice the Joint Patents without restriction and
without the consent of the other party. Certain Joint Patents are subject to
the restriction that each party may not practice such Joint Patents, in certain
fields of use as indicated in the Allocated Patent Assets Database.
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(b) Each party may license the Joint Patents only with the prior
written consent of the other party, which consent will not be unreasonably
withheld. Such consent shall be deemed given if not withheld in writing within
thirty (30) days of written request to such other party.
(c) In the event that either party (the "Transferring Party") desires
to transfer its ownership interest in any or all Joint Patents to any Third
Party, it shall first give the other party (the "Non-Transferring Party") notice
and the opportunity to acquire any such Joint Patents for the same consideration
as that offered to the Third Party. The Non-Transferring Party shall have
fifteen (15) Business Days (as such term is defined in Section 9.8 below) to
determine whether to acquire such Joint Patents for the same consideration as
that offered to the Third Party. In the event that the Non-Transferring Party
fails to respond within such fifteen (15) Business Day period or declines to
accept such offer, then the Transferring Party may transfer its interest in such
Joint Patents to the Third Party on the same terms offered to the Non-
Transferring Party. If the Transferring Party desires to offer more favorable
terms to such Third Party or to any other Third Party, then the process set
forth in this Section 3.8(c) shall be repeated.
3.9 PATENT APPLICATIONS AND INVENTION DISCLOSURES. Each party agrees, at
its own expense, to provide to the other party copies of any Patents, Patent
applications and Invention Disclosures that are listed in the Allocated Patent
Assets Database in the form that such Patents, Patent applications and Invention
Disclosures exist as of the Separation Date. Neither party has any obligation
to disclose or provide copies to the other party any other Patents, Patent
applications or Invention Disclosures. The licenses granted under this
Agreement cover only statutory rights under Patents and statutory rights (if
any) under Patent applications. Trade secret and other non-Patent licenses with
respect to inventions described in Invention Disclosures and Patent applications
shall be solely as set forth in the Master Technology Ownership and License
Agreement or the ICBD Technology Ownership and License Agreement between the
parties, as applicable.
3.10 TURBO COOLER PATENTS. Certain Patents related to turbo coolers, as
identified in the Allocated Patent Assets Database, are subject to additional
terms as set forth in a separate written agreement between the parties.
3.11 DISPLAY PATENTS. In the event that either party (the "Transferring
Party") desires to transfer to any Third Party its ownership interest in any
Patents that are specifically identified as "Display Patents" in the Allocated
Patent Assets Database ("Display Patents"), it shall first give the other party
(the "Non-Transferring Party") notice and the opportunity to acquire those
Display Patents for the same consideration as that offered to the Third Party.
The Non-Transferring Party shall have fifteen (15) Business Days (as such term
is defined in Section 9.8 below) to determine whether to acquire such Display
Patents for the same consideration as that offered to the Third Party. In the
event that the Non-Transferring Party fails to respond within such fifteen (15)
Business Day period or declines to accept such offer, then the Transferring
Party may transfer its interest in those Display Patents to the Third Party on
the same terms offered to the Non-Transferring Party. If the Transferring Party
desires to offer more favorable terms to such Third Party or to any other Third
Party, then the process set forth in this Section 3.11 shall be repeated.
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ARTICLE IV
ADDITIONAL OBLIGATIONS
4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS.
(a) The parties will cooperate to effect a smooth transfer of the
responsibility for prosecution, maintenance and enforcement of the Assigned
Patents from HP to Agilent. Until such transfer has been effected, HP agrees to
continue the prosecution and maintenance of, and ongoing litigation (if any)
with respect to, the Assigned Patents (including payment of maintenance fees),
and to maintain its files and records relating to the Assigned Patents using the
same standard of care and diligence that it uses with respect to the HP Patents.
Agilent will reimburse HP for all actual and reasonable expenses (excluding the
value of the time of HP employees) to continue to prosecute and maintain the
Assigned Patents after the Separation Date until the transfer of responsibility
for the Assigned Patents has been completed and to continue any such ongoing
litigation. The parties shall agree on a case by case basis on compensation, if
any, of HP for the value of time of HP's employees as reasonably required in
connection with any such litigation. HP will provide Agilent with the originals
or copies of its files relating to the Assigned Patents upon such transfer or at
such earlier time as the parties may agree.
(b) HP shall provide continuing reasonable support to Agilent with
respect to the Assigned Patents, including by way of example the following:
(i) executing all documents prepared by Agilent necessary for
prosecution, maintenance, and litigation of the Assigned Patents,
(ii) making available to Agilent or its counsel, inventors and
other persons employed by HP for interviews and/or testimony to assist in good
faith in further prosecution, maintenance or litigation of the Assigned Patents,
including the signing of documents related thereto,
(iii) forwarding copies of all correspondence sent and received
concerning the Assigned Patents within a reasonable period of time after receipt
by HP, and
(iv) making all relevant documents in the possession or control
of HP and corresponding to the Assigned Patents, or any licenses thereunder,
available to Agilent or its counsel.
Any actual and reasonable out-of-pocket expenses associated with any such
assistance shall be borne by Agilent, expressly excluding the value of the time
of such HP employees; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of HP for the value of the time of HP's employees as reasonably required in
connection with such litigation.
4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO HP PATENTS. Agilent
acknowledges that its employees and contractors who are former HP employees and
contractors
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have a continuing duty to assist HP with the prosecution of HP Patent
applications and, accordingly, Agilent agrees to make available, to HP or its
counsel, inventors and other persons employed by Agilent for interviews and/or
testimony to assist in good faith in further prosecution, maintenance or
litigation of the HP Patents, including the signing of documents related
thereto. Any actual and reasonable out-of-pocket expenses associated with such
assistance shall be borne by HP, expressly excluding the value of the time of
such Agilent personnel; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of Agilent for the value of the time of Agilent's employees as reasonably
required in connection with such litigation.
4.3 ADDITIONAL OBLIGATIONS WITH REGARD TO JOINT PATENTS.
(a) The parties shall agree, through their respective Directors of
Intellectual Property or delegates thereof, from time to time on which party
shall be responsible for filing, prosecuting and maintaining any Joint Patents
and such party shall conduct such prosecution by generally accepted good Patent
filing and prosecution practices. The parties shall share equally any actual
and reasonable out-of-pocket expenses (expressly excluding the value of the time
of either party's employees) incurred in connection with such prosecution and
maintenance. From time to time, upon the request of the party responsible for
prosecuting and maintaining a particular Joint Patent application or Joint
Patent, the other party will provide the responsible party with copies of all
relevant filings and correspondence and will respond to reasonable inquiries
with respect thereto. The party not responsible for prosecuting and maintaining
a particular Joint Patent shall provide the following additional assistance to
the responsible party:
(i) executing all documents prepared by the responsible party
necessary for prosecution and maintenance of the Joint Patent,
(ii) making available to the responsible party or its counsel,
inventors and other persons employed by the other party for interviews and/or
testimony to assist in good faith in further prosecution or maintenance of the
Joint Patent, including the signing of documents related thereto,
(iii) forwarding copies of all correspondence sent and received
concerning the Joint Patent within a reasonable period of time after receipt,
and
(iv) making all relevant documents in the possession or control
of such other party and corresponding to the Joint Patent, or any licenses
thereunder, available to the responsible party or its counsel.
(b) Subject to Section 3.8(b), each party or any of its Subsidiaries
may, at its own expense, in good faith enforce any Joint Patents against any
Third Party infringer (including but not limited to past infringements) only
with the prior written consent of the other party, which consent will not be
unreasonably withheld. Such consent shall be deemed given if not withheld in
writing within thirty (30) days of written request. The parties shall agree on a
case by case basis on compensation, if any, of the other party for the value of
the time of such other party's employees as
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reasonably required in connection with the action. If the enforcing party or any
of its Subsidiaries recovers any damages or compensation for any action which
the enforcing party or any of the Subsidiaries of the enforcing party solely
takes hereunder, including any settlement, the enforcing party or the
Subsidiaries of the enforcing party shall retain one hundred percent (100%) of
such damages or compensation. If the parties cooperate in any such enforcement
action, then any recovery of damages or compensation shall be allocated pursuant
to mutual written agreement.
4.4 DEFENSIVE PROTECTION MEASURES. For a period of five (5) years from
the Separation Date, the parties shall cooperate reasonably and in good faith to
the extent consistent with each party's own business objectives in the event
that either party is involved in Patent litigation or controversies in which it
would be helped in some way by the other party's Patents or relevant knowledge.
Such cooperation may include, by way of example, (i) cooperation with respect to
knowledge of prior art (whether the other party's or a Third Party's), (ii)
consent to the granting of licenses to such other party's Patents, and (iii)
assignment to such party of such other party's Patents for the purpose of
bringing a counterclaim against a Third Party. The party requesting such
cooperation shall bear the actual and reasonable out-of-pocket expenses of the
cooperating party (except for the value of the time of the cooperating party's
employees).
4.5 STANDARDS BODIES. For a period of five (5) years from the Separation
Date, the parties agree to cooperate reasonably and in good faith with each
other with respect to the licensing of each party's Patents in the context of
standards bodies, to the extent consistent with each party's own business
objectives.
4.6 ASSIGNMENT OF PATENTS. HP shall not assign or grant any rights under
any of the HP Patents unless such assignment or grant is made subject to the
licenses granted in this Agreement. Agilent shall not assign or grant any
rights under any of the Agilent Patents unless such assignment or grant is made
subject to the licenses granted in this Agreement.
4.7 RESPONSE TO REQUESTS. Each party shall, upon a request from the other
party sufficiently identifying any Patent or Patent application, inform the
other party as to the extent to which said Patent or Patent application is
subject to the licenses and other rights granted hereunder. If such licenses or
other rights under said Patent or Patent application are restricted in scope,
copies of all pertinent provisions of any contract or other arrangement creating
such restrictions shall, upon request, be furnished to the party making such
request, unless such disclosure is prevented by such contract or other
arrangement, and in such event, a statement of the nature of such restriction
shall be provided.
4.8 RECORDATION OF LICENSES.
(a) For any country, now or in the future, that requires the express
consent of all inventors or their assignees to the grant of licenses or rights
under Patents issued in such countries for joint inventions:
(i) each party shall give such consent, or shall obtain such
consent from its employees, its Subsidiaries or employees of any of its
Subsidiaries, as required to make full and
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effective any such licenses and rights respecting any joint invention granted to
a grantee hereunder by such party; and
(ii) each party shall take steps that are reasonable under the
circumstances to obtain from Third Parties whatever other consents are necessary
to make full and effective such licenses and rights respecting any joint
invention purported to be granted by it hereunder. If, in spite of such
reasonable steps, such party is unable to obtain the requisite consents from
such Third Parties, the resulting inability of such party to make full and
effective its purported grant of such licenses and rights shall not be
considered to be a breach of this Agreement.
(b) Each party agrees, without demanding any further consideration, to
execute (and to cause its Subsidiaries or Affiliated Companies to execute) all
documents reasonably requested by the other party to effect recordation of the
license relationship between the parties created by this Agreement.
ARTICLE V
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
ARTICLE VI
TERMINATION
6.1 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
Patent, Patent application, Invention Disclosure, product or service.
6.2 SURVIVAL. Any voluntary termination of licenses and rights of a party
under Section 6.1 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.
6.3 NO OTHER TERMINATION. Each party acknowledges and agrees that its
remedy for breach by the other party of the licenses granted to it hereunder or
of any other provision hereof, shall be, subject to the requirements of Article
VII, 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.
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ARTICLE VII
DISPUTE RESOLUTION
7.1 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 7.1,
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.
7.2 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 7.1, the parties will attempt in good faith 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 7.3, 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.
7.3 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 7.3, the parties agree to continue to attempt to resolve any
dispute according to the terms of Sections 7.1 and 7.2 during the course of such
litigation proceedings under this Section 7.3.
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ARTICLE VIII
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, 3.2 OR 3.8(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 IX
MISCELLANEOUS PROVISIONS
9.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL PATENTS AND
ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE LICENSED
OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES OR AFFILIATED COMPANIES MAKES ANY REPRESENTATIONS OR EXTENDS ANY
WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO
INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without
limiting the generality of the foregoing, neither party nor any of its
Subsidiaries or Affiliated Companies makes any warranty or representation as to
the validity and/or scope of any Patent licensed by it to the other party
hereunder or any warranty or representation that any manufacture, use,
importation, offer 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.
9.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Agilent Patents and the HP Patents. Neither party
is required hereunder to furnish or disclose to the other any technical or other
information (including copies of the Agilent Patents and the HP Patents, Patent
applications or Invention Disclosures) except as specifically provided herein.
9.3 INFRINGEMENT SUITS. Neither party shall have any obligation hereunder
to institute any action or suit against Third Parties for infringement of any of
the Agilent Patents or the HP Patents or to defend any action or suit brought by
a Third Party which challenges or concerns the
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validity of any of the Agilent Patents or the HP Patents. Unless the parties
otherwise agree pursuant to Section 4.4, HP shall not have any right to
institute any action or suit against Third Parties for infringement of any of
the Agilent Patents, and Agilent shall not have any right to institute any
action or suit against Third Parties for infringement of any of the HP Patents.
9.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries or Affiliated Companies is obligated to (i) file any
Patent application, or to secure any Patent or Patent rights, (ii) to maintain
any Patent in force, or (iii) provide any technical assistance, except for the
obligations expressly assumed in this Agreement.
9.5 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. 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.
9.6 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.
9.7 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.
9.8 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
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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 9.8, "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.
9.9 NONASSIGNABILITY. Except as set forth in Section 3.7, neither party
may, directly or indirectly, in whole or in part, whether by operation of law or
otherwise, assign or transfer this Agreement, without the other party's prior
written consent, and any attempted assignment, transfer or delegation without
such prior written consent shall be voidable at the sole option of such other
party. Without limiting the foregoing, this Agreement will be binding upon and
inure to the benefit of the parties and their permitted successors and assigns.
9.10 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.
9.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
9.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
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9.13 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.
-21-
WHEREFORE, the parties have signed this Master Patent 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:____________________________________
EXHIBIT A
TO MASTER PATENT 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
EXHIBIT B
TO MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
HP FIELD RESTRICTIONS
1. Biological and Chemical Deposition (as such terms are defined in the Patent
Field Definition Database)
2. Health Care (as such term is defined in the Patent Field Definition
Database)
EXHIBIT C
TO MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
AGILANT FIELD RESTRICTIONS
1. Printing Devices, Printer Supplies, Components and Accessories and Document
Scanners (as such terms are defined in the Patent Field Definition
Database)
2. Computing Devices (as such term is defined in the Patent Field Definition
Database)