CONFIDENTIAL TREATMENT REQUESTED
AGREEMENT BETWEEN OVERLAND DATA AND TANDBERG DATA CONCERNING
MLR AND VR(2) TECHNOLOGY
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This Agreement is effective March 30, 1998, (hereinafter the "Effective
Date") between Overland Data, Inc. of 8975 Balboa Ave, San Diego, California,
USA ("Overland"), and Tandberg Data ASA, PO Box 134, Kjelsas, 0411 Oslo, Norway
("Tandberg").
WHEREAS, Tandberg intends to include VR(2) Technology developed by Overland
into its MLR Drives and future tape drives based upon MLR technology and other
future tape drives developed by Tandberg to manufacture, market and sell
worldwide such competitive tape drive systems for the market;
WHEREAS, Overland intends to become a second source manufacturer of MLR
Drives and MLR VR(2) Drives developed by Tandberg and is prepared to commit
to become a second source manufacturer of such Drives, and wishes to be a
second source manufacturer of other future tape drives incorporating VR(2)
Technology developed by Tandberg;
WHEREAS, to achieve this, the parties intend to leverage their
respective resources, technologies, and capabilities to implement VR(2)
Technology quickly and efficiently into MLR Drives;
WHEREAS, Overland intends, in stages, to OEM, assemble and test and
thereafter enter into full manufacturing of MLR Drives and/or MLR VR(2)
Drives and to sell as stand alone drives and/or incorporate the same as a
part of their own Libraries and/or Loaders; and
WHEREAS, Tandberg wishes to have the right to OEM and offer solutions
incorporating tape drives and automated tape Libraries and/or Loaders
manufactured by Overland to its customers world wide;
NOW, THEREFORE, the parties agree as follows:
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ARTICLE 1 -- DEFINITIONS
1.1 "Affiliate" means, with respect to a party, any corporation,
firm, partnership, individual or other form of business organisation which
controls, is controlled by, or is under common control with such party. A
corporation shall be regarded as in control of another corporation if it owns
or directly or indirectly controls at least fifty percent (50%) of the voting
stock of the other corporation, or in the absence of ownership of at least
fifty (50%) of the voting stock of a corporation, if it possesses, directly
or indirectly, the power to direct or cause the direction of the management
and policies of the corporation.
1.2 "Confidential Information" is any information, data or know-how
of either party (including such party's parent, subsidiaries and Affiliates),
written or verbal that is specifically identified by the disclosing party as
confidential at the time of disclosure including reports, drawings,
documents, test results, schematics, specifications, hardware, software,
procedures, supplied electronically, by fax or e-mail, or by hard copy
format, including the verbal dialogue that takes place including the
explanation or clarification of the supplied and disclosed information;
provided, however, that when disclosed orally, information will only be
considered to be "Confidential Information" if summarized by the disclosing
party in writing to the other party within thirty (30) days after such
disclosure.
1.3 "Copyrights" are exclusive of Project Rights and means those
rights granted under the law of one or more jurisdictions that protect the
expression of an idea, and may be applied to software code and documentation
and which exist prior to the Effective Date hereof.
1.4 "Development Period" means the period commencing with the
Effective Date hereof and ending at that point in time when the first MLR
Drive employing VR(2) Technology reaches "general availability" or the first
general availability shipment from a Tandberg OEM customer or *** from the
Effective Date hereof whichever comes first.
1.5 "Effective Date" means the date first above written.
1.6 "Library" means a tape system including multiple tape drives and
multiple cartridges and robotic means to load one or another of said
cartridges into any of said tape drives as desired by an operator.
1.7 "Loader" means a tape system including a single tape drive and
multiple
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cartridges and robotic means to load one or another of said cartridges into
said tape drive as desired by an operator.
1.8 "Media" means both magnetic recording tape and the cartridge
system containing one or two reels and other apparatus for containing such
recording tape.
1.9 "MLR" is a trademark of Tandberg which is utilized on tape drives
and Media incorporating certain Tandberg technology.
1.10 "MLR Drives" means standard tape drives utilising 1/4" tape
cartridge technology (including either 1/4" and/or 8 mm Media) incorporating
MLR Format and Technology Patents, including SLR and HLR drives, and
improvements thereon. The definition of MLR Drives will be defined by
Tandberg exclusively, provided that the definition of such MLR Drives will
always utilise 1/4" tape cartridge technology including 1/4" and/or 8 mm
Media.
1.11 "MLR Format and Technology Patents" means present and future
Tandberg patents and patent applications owned by Tandberg relating to the
MLR technology and necessary to produce a commercially feasible MLR Drive.
1.12 "MLR VR(2) Development Program" means the joint development
program to implement VR(2) Technology into MLR Drives as described in EXHIBIT
B and as modified by the parties by mutual agreement from time to time.
1.13 "MLR VR(2) Drives" means MLR Drives and improvements thereon
which are based on the existing Tandberg MLR technology and which incorporate
the Overland VR(2) Technology as described in EXHIBIT A, and as modified by
Tandberg from time to time.
1.14 "MLR and MLR VR(2) Loader Development Program" means the
development program to be performed by Overland to make its Loaders suitable
for use with MLR Drives and MLR VR(2) Drives and corresponding Media.
1.15 "OEM-Agreement MLR" means the OEM terms described in EXHIBIT C.
1.16 "Parent" is a person or entity that owns, legally or
beneficially, more than 50% of the equity of Tandberg or Overland, as
applicable.
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1.17 "Patent Rights" are exclusive of Project Rights, and means all
patent applications and patents of either party having a priority date prior
to the Termination Date of this Agreement, including any continuations,
continuations-in-part, divisions, reissues, reexamined patents, foreign
counterparts, and other equivalents and extensions thereof owned or
controlled by a party.
1.18 "Project Rights" means all intellectual property rights (which
include, by way of example, invention rights, patents, patent applications,
know-how, trade secrets, copyrights, and confidential information) relating
to VR(2) Technology conceived by either party, either solely or jointly,
during the term of the Development Period and directly resulting from work
conducted in accordance with the MLR VR(2) Development Program.
1.19 In addition to the definitions in the preamble hereof, "Tandberg"
also includes Tandberg's Affiliates and "Overland" also includes Overland's
Affiliates.
1.20 "VR(2)" is a trademark of Overland.
1.21 "VR(2) Format and Technology Patents" means present and future
Overland patents and patent applications owned by Overland relating to the
VR(2) Technology and necessary to produce and use a commercially feasible
tape drive incorporating VR(2) technology.
1.22 "VR(2) Technology" means the technology described in EXHIBIT A or
covered by the claims of patents and/or pending applications for patent of
Overland (including but not limited to US Patent 5,712,863 ***) existing as
of the Effective date hereof as well as improvements thereon.
ARTICLE 2 -- SCOPE
2.1 The parties intend to work cooperatively to adapt Overland's
VR(2) Technology so that it can be successfully implemented in Tandberg's MLR
Drive, all for the purpose of increasing the storage capacity and data
throughput rates of the MLR Drive.
2.2 Overland commits, as of the Effective Date hereof, to become a
second source manufacturer of MLR Drives.
2.3 If Imation shall not provide Tandberg with the necessary rights
to sublicense
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the final assembly or full manufacturing of all MLR Drives covered by this
Agreement, then Tandberg shall not be obliged to grant assembly or
manufacturing licenses to Overland as provided herein but in such
circumstances, the parties shall not be bound by any of the exclusivities of
Article 10 but Overland shall remain obliged to grant Tandberg the rights to
VR(2) Technology provided in this Agreement, subject to the price increases
in EXHIBIT D. Tandberg shall make every reasonable effort to obtain the
necessary release or grant from Imation within three months from the
Effective Date hereof but within said three month term, each of the parties
shall be bound by the remaining terms of this Agreement.
ARTICLE 3 -- LICENSES AND KNOW-HOW TRANSFER
3.1 It is agreed that upon completion of the adaptation of VR(2)
Technology in the first product, Tandberg shall have the right, subject to
Section 7.9, to develop necessary improvements in and manufacture and market
MLR VR(2) Drives, as well as improvements thereon, and future tape drives
developed and manufactured by Tandberg employing VR(2) Technology.
3.2 Effective ***, Tandberg grants to Overland a worldwide,
non-transferrable, non-exclusive license without the right to grant sub
licenses, under all of its MLR Format and Technology Patents, and other
patents, Copyrights and maskworks which are technically and commercially
required in order to assemble, test, offer for sale, sell, and otherwise
dispose of only MLR Drives and MLR VR(2) Drives but without the right to
fully manufacture or perform any development or make changes to such drives
and with a royalty payment as specified in EXHIBIT D. Tandberg shall in
accordance with EXHIBIT G transmit to Overland by ***, Tandberg's know-how
sufficient to assemble and test said MLR Drives. Within *** after the
completion of the development of each of the MLR VR(2) Drives described in
Exhibit B, Tandberg shall transmit to Overland Tandberg's know-how sufficient
to assemble and test each of said MLR VR(2) Drives. This grant does not
include the right to fully manufacture MLR Drives and it is given with the
understanding that the principle component parts thereof shall be of
Tandberg's manufacture or any third party making such parts on behalf of
Tandberg.
3.3 Effective as of the date that Overland's sales of MLR Drives
(with or without a VR(2) Technology enhancement and whether based on its own
assembly or sale of drives as an OEM, excluding SLR5) ***, Tandberg grants to
Overland a worldwide, non-transferrable, non-exclusive right and license
without the right to grant sub licenses, under
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all of its MLR Format and Technology Patents (including any improvements made
by Tandberg to VR(2) Technology), and other patents, Copyrights and maskworks
to make, have made, use, and sell, and otherwise dispose of MLR Drives and
MLR VR(2) Drives according to the Tandberg designs and specifications and
using only Tandberg approved parts, with a royalty payment as specified in
EXHIBIT D. Upon reaching such average sales volume, Overland shall commence
the full manufacture of MLR Drives and MLR VR(2) Drives and Tandberg shall,
in accordance with EXHIBIT G, start to transmit to Overland at such time, the
necessary manufacturing know-how to fully manufacture and test said MLR
Drives and MLR VR(2) Drives. "Full manufacture" as used herein shall exclude
the manufacture of the actuator mechanism which will be provided by Tandberg.
Overland agrees to establish its MLR manufacturing to be consistent with
Tandberg's MLR manufacturing, and adapt to the changes specified from time to
time by Tandberg.
3.4 Each of the parties hereto grants to the other a worldwide,
non-transferrable, non-exclusive right and license under all of its Project
Rights to make, have made, use, and sell, and otherwise dispose of MLR Drives
and any drives incorporating VR(2) Technology. This grant shall include the
right of Tandberg to grant manufacturing sublicenses, subject to SECTION
7.10. Tandberg will pay to Overland the royalties specified in EXHIBIT D for
all MLR VR(2) Drives and future tape drives developed by Tandberg
incorporating VR(2) Technology sold by Overland, Tandberg and Tandberg's
sublicensees.
3.5 Overland grants Tandberg a worldwide, non-exclusive license under
all of its VR(2) Format and Technology Patents as well as all of its other
patents, Copyrights and maskworks which are technically and commercially
required in order to make, use, offer for sale, sell, and otherwise dispose
of drives covered by this Agreement with a royalty payment according to
EXHIBIT D and with the rights to sublicense the VR(2) Technology, subject to
SECTION 7.10, as incorporated in drives covered by this Agreement and
improvements thereon.
3.6 The license defined in SECTION 3.4 does not include the right of
Overland to sublicense.
3.7 Overland grants to Tandberg a worldwide, non-exclusive license to
utilize Overland's VR(2) Technology in Tandberg's own ASICs and to make, have
made, use, and sell, and otherwise dispose of drives including Tandberg ASICs
incorporating such VR(2) Technology for a royalty as set forth in EXHIBIT D
attached hereto.
3.8 Overland shall transfer all requisite know-how and trade secrets
concerning
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the VR(2) Technology as set forth in EXHIBIT H at the conclusion of the
Development Period. Tandberg shall protect this know-how and trade secret
information as it protects its own know-how and trade secret information and
shall not disclose it to any third party. If the MLR VR(2) Development
Program is not finalized successfully after *** from the Effective Date
hereof, but if the parties agree it is commercially reasonable to finalize
such program, then Overland shall grant to Tandberg the necessary resources
to finalize the MLR VR(2) Development Program even if Tandberg has received
the necessary know how for VR(2) Technology.
3.9 The parties agree that while Overland may at any time during the
term of this Agreement (if they are available from Tandberg) acquire from
Tandberg the currently existing SLR5 drives, Overland shall not have the
right to fully manufacture or assemble the SLR5 drives and that Tandberg
shall therefore not be required to pass on to Overland the necessary know-how
regarding manufacture and assembly of the SLR5 drives (this is because the
SLR5 is a significantly different drive than its successors and because the
manufacturing line for such drives is significantly different than for
current model MLR Drives).
3.10 Tandberg shall have the right to utilize Overland's VR(2)
Technology for any purpose in any drive manufactured by Tandberg. If it does
so by utilizing an application specific integrated circuit ("ASIC") supplied
by Overland pursuant to the terms of EXHIBIT E, Tandberg shall pay royalties
as set forth in EXHIBIT D. If Tandberg utilizes Overland's VR(2) Technology
in an ASIC made by Tandberg, then, subject to the terms of SECTION 3.4,
Tandberg shall pay to Overland the royalties specified in EXHIBIT D.
Tandberg shall have the right to sublicense the VR(2) Technology included in
all drives covered by this Agreement subject to the provisions of SECTION
7.10 hereof.
3.11 Tandberg hereby grants to Overland a non-exclusive license under
Tandberg's rights in the MLR trademark to use the MLR trademark in connection
with the making and selling of MLR Drives or MLR VR(2) Drives or Libraries
having MLR Drives or MLR VR(2) Drives, provided that such use shall be in
accordance with the requirements set forth in EXHIBIT K. Overland shall use
the MLR trademark on such MLR Drives or MLR VR(2) Drives consistent with
Tandberg's use.
3.12 Overland hereby grants to Tandberg a non-exclusive license under
Overland's rights in the VR(2) trademark to use the VR(2) trademark in
connection with the making and selling of products incorporating VR(2)
Technology, provided that such use shall be in accordance with the
requirements set forth in EXHIBIT K. Tandberg shall use the VR(2)
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trademark in marketing materials pertaining to products employing VR(2)
Technology and shall have the right to use the VR(2) trademark on all
products employing VR(2) Technology.
3.13 The intellectual property grants and transfers of know how from
Tandberg to Overland set forth in this Agreement are intended to relate only
to MLR Drives (with or without VR(2) Technology enhancements) and are not
given or transferred for any other purpose.
3.14 To the extent that Tandberg is requested to and does supply
manufacturing support to Overland, it shall be limited to providing the
necessary software, tooling and know-how to operate the line. It is
specifically not to include know-how regarding source code for the software
or know how concerning the building of the tooling.
3.15 Tandberg will supply reasonable manufacturing support and
training in accordance with the provisions of EXHIBIT G.
3.16 In the event Tandberg should commence manufacturing of other
drives than MLR or MLR VR(2) Drives, which include VR(2) Technology, Overland
has expressed an interest to manufacture and OEM such drives. Tandberg will
look favorably upon such request from Overland, and will be willing to
discuss the possibility to manufacture and OEM such drives and consider
allowing Overland to obtain such rights given that this is within the spirit
of cooperation of the Agreement and provided that it is commercially viable
to Tandberg.
3.17 It is further agreed that either party's on-going obligation to
pay royalties to the other based on the use of know-how or trade secret
information received from such other (exclusive of patent rights) shall not
continue beyond *** from the date such know-how or trade secret information
was first transmitted to the know-how/trade secret licensee party.
3.18 Overland shall grant to Tandberg for use in the manufacture of
non-MLR VR(2) Drives a non-exclusive, world-wide, royalty-free license solely
for those portions of Overland's VR(2) Format and Technology Patents which
relate to the manufacturing processes used by Tandberg in its own production
lines for the manufacture of MLR VR(2) Drives. Tandberg may also sublicense
third parties without accounting to Overland to use such manufacturing
process know-how and/or patent rights in such third parties' drive
manufacturing processes.
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ARTICLE 4 -- SUPPLY
4.1 Subject to the provisions of Sections 12.3 and 12.4, throughout
the term of this Agreement, Tandberg agrees to supply Overland with current
and future MLR Drives and MLR VR(2) Drives according to the OEM-Agreement MLR
as specified in EXHIBIT C, and Overland may sell these drives as single stand
alone units and/or incorporate these drives as part of its own Libraries and
Loaders worldwide. Tandberg agrees to begin supplying these drives at a
favorable OEM price to Overland sufficiently early, if Overland so requests,
that Overland can begin to offer these MLR Drives no later than Q3/98. ***
For all other sales of Loaders or Libraries incorporating an MLR or MLR VR(2)
Drive or as a standalone drive sale, Overland shall be charged ***. In the
event that Overland continues to OEM MLR or MLR VR(2) Drives for a period
longer than approximately *** before the start of full manufacturing of said
drives, then the price shall be ***.
4.2 Subject to the provisions of Sections 12.3 and 12.4, commencing
***, Tandberg agrees to supply Overland upon request with assemblies and
components for any MLR Drives or MLR VR(2) Drives which Overland wishes to
assemble and test a complete standard MLR Drive or MLR VR(2) Drive. Tandberg
will supply these assemblies and components (if available) according to the
principles and terms set forth in EXHIBIT E.
4.3 When Overland commences full manufacturing of MLR Drives in
accordance with Section 3.3, Overland will, unless otherwise mutually agreed,
place all orders for assemblies and components through Tandberg in accordance
with the principles and terms of Exhibit E so that Tandberg can get best prices
from its suppliers for the benefit of the parties. *** It is agreed that the
process of ordering third party manufactured drive parts through Tandberg is for
the primary benefit of Overland and that, as a consequence, no liability will
attach to Tandberg for performing this function. In the event that the
suppliers will not accept recourse directly from Overland when Overland orders
through Tandberg, then, unless otherwise mutually agreed, Overland will have to
order from the suppliers directly.
4.4 Subject to the provisions of Sections 12.3 and 12.4, when Overland
purchases ***.
4.5 Overland commits to develop Loaders and Libraries to work with MLR
Drives and MLR VR(2) Drives and Media. Overland will manufacture these Loaders
and Libraries and offer them through its worldwide sales channel. It is the goal
of the parties
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that ***. Overland will supply Tandberg such Loaders and Libraries as an OEM
at Tandberg's request. From and after the date when ***.
4.6 Overland agrees to supply Tandberg with ASICs incorporating VR(2)
Technology as needed to manufacture MLR VR(2) Drives and related
subassemblies according to the principles and terms set forth in EXHIBIT E.
*** In addition to the price of such ASICs, Tandberg agrees to pay to
Overland the royalties specified in EXHIBIT D in accordance with the terms of
SECTION 3.10. Tandberg shall have the right to audit the quality of ASICs
produced for Tandberg to ensure compliance with Tandberg's quality standards.
It is agreed that Overland shall transfer sufficient know how to Tandberg
regarding Overland's VR(2) Technology and Tandberg shall cooperate with
Overland so that Tandberg can modify Tandberg's production test programs to
effectively build and test MLR VR(2) Drives.
4.7 Overland agrees to supply Tandberg with the necessary VHDL source
code of the VR(2) Technology for Tandberg to implement in one or more of its
own ASICs on the ***. During the Development Period, Overland will transfer
know-how as necessary to complete the implementation task.
4.8 In the event of an end-of-life situation for a given MLR Drive,
Overland has the right to continue producing a discontinued version of said
MLR Drive for a period of ***. If Overland wants to continue beyond this
period, Overland will have the right to do so, and if Tandberg cannot or will
not supply Overland, then Overland has the rights to approach each supplier
directly to get necessary components previously approved by Tandberg to
continue its own manufacturing of such drive for a period of *** thereafter.
4.9 If there is a shortage of critical materials, parts, assemblies or
components which causes either party to allocate its supply of products among
its customers, such party agrees that it will (i) provide immediate notice to
the other party of such shortage; (ii) keep the other party apprised of the
ongoing issues related to inventory and delivery; and (iii) grant the other
party a priority in the allocation of its constrained product supply.
4.10 The parties agree that when Tandberg starts up a new product
into manufacturing following general availability, Tandberg will be allowed
to focus its resources on stabilizing its processes prior to assisting
Overland in building this product. This process may take ***. During this
period, Overland will get early units for test and release in its Loaders and
Libraries and Overland will be able to purchase the new products at the
special price defined in Section 4.1.
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ARTICLE 5 -- CONTINUITY OF DEVELOPMENT
5.1 Each of the parties hereto recognizes that the other will make a
considerable investment in money and in resources including manpower, equipment
and plant allocation to complete its obligations under this Agreement. ***
5.2 ***
5.3 ***
5.4 ***
5.5 ***
5.6 ***
5.7 To the extent that Overland's know-how, design criteria and test
data concerning its VR(2) Technology has been reduced to documentary form as
defined in EXHIBIT H (hereinafter "VR(2) Technology Information"), all such
"VR(2) Technology Information" shall, during the Development Period, be
deposited in a third party escrow commencing as soon after the Effective Date
hereof as is reasonably practicable (but no later than 30 days following the
Effective Date hereof) and this third party escrow shall be updated to be
reasonably current throughout the term of the Development Period. Overland
shall advise Tandberg promptly of the identity of such third party escrowee.
The third party escrowee shall be instructed to turn over all such "VR(2)
Technology Information" to Tandberg in the event, and only in the event, that
during the Development Period, (a) the Overland contracting party, or its
Parent, if any, declares bankruptcy or (b) a Takeover of the Overland
contracting party, or its Parent, if any, has occurred. In this event,
Overland will continue to support Tandberg on a "best efforts" basis.
Tandberg will control this know-how as a trade secret and will not pass this
know-how to any other party except as a necessary part of a manufacturing
sublicense. Failure to turn over all such "VR(2) Technology Information" to
the escrowee as provided herein or to disclose to Tandberg the identity of
such third party escrowee shall constitute a material breach of this
Agreement.
5.8 To the extent that Tandberg's know-how, manufacturing criteria and
test
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data concerning the manufacture of its MLR Drives has been reduced to
documentary form as defined in EXHIBIT I (hereinafter "MLR Manufacturing
Technology Information"), all such "MLR Manufacturing Technology Information"
shall, throughout the period preceding full manufacturing by Overland be
deposited in a third party escrow commencing as soon after the Effective Date
hereof as is reasonably practicable (but no later than 30 days following the
Effective Date hereof) and this third party escrow shall be updated to be
reasonably current throughout the period preceding full manufacturing by
Overland. Tandberg shall advise Overland promptly of the identity of such
third party escrowee. The third party escrowee shall be instructed to turn
over all such "MLR Manufacturing Technology Information" to Overland in the
event, and only in the event, that (a) the Tandberg contracting party, or
its Parent, if any, declares bankruptcy or (b) a Takeover of the Tandberg
contracting party, or its Parent, if any, has occurred. In this event,
Tandberg will continue to support Overland on a "best efforts" basis.
Overland will control this know-how as a trade secret and will not pass this
know-how to any other party. Failure to turn over all such "MLR
Manufacturing Technology Information" to the escrowee as provided herein or
to disclose to Overland the identity of such third party escrowee shall
constitute a material breach of this Agreement.
5.9 In the event that either of the parties hereto gains access to
escrowed information of the other, prior to the planned transfer of such
information pursuant to the Agreement, neither will use the information
unless absolutely required to maintain the operation of permitted programs
after all reasonable alternatives to gain a solution without utilizing this
information have been exhausted. In all cases, either party's use of such
escrowed information shall be subject to the licenses and other terms and
conditions of this Agreement. In the event that Overland does not require
usage of the escrowed information (because Tandberg is supporting Overland),
then all such information shall be immediately returned to escrow following
full manufacturing by Overland as described herein.
5.10 Tandberg shall determine how much of its know-how will be shared
with Overland engineers during the Development Period. Tandberg will make
available to Overland all know-how required by Overland to support Overland's
assembly and test and full manufacturing efforts. Overland will control all
know-how received as trade secret and will not pass this know-how on to any
third party or use it for design of tape drives.
5.11 It is agreed that each party shall use the other party's know-how
and intellectual property only to the extent required to implement the MLR
VR(2) Development Program except that Tandberg may use VR(2) Technology know
how for the purpose of designing and manufacturing other tape drives.
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CONFIDENTIAL TREATMENT REQUESTED
5.12 Neither party shall be obligated to disclose to the other party any
know-how, trade secrets or Confidential Information unless it is required by the
other party to discharge its obligations and duties under this Agreement.
ARTICLE 6 -- USE OF RESOURCES AND PARTS SUPPLY
6.1 The parties agree that they will cooperate to utilize necessary
resources to achieve the shortest possible development times for the MLR VR(2)
Drive. The parties agree that it shall be their joint goal to have an MLR VR(2)
Drive available for the market by *** and each of the parties hereto has the
capacity to and shall make sufficient resources available to achieve this end.
6.2 Overland agrees to Tandberg's MLR roadmap(s) (as shown in EXHIBIT
J and as updated from time to time) and agrees during the Development Period
to make available a number of skilled engineers for general design work and
critical component development and ASIC design for integrating the VR(2)
Technology into the read/write channel of the MLR Drive design either in the
US or in Oslo (by mutual agreement) for the necessary time it takes to
complete the defined work for the MLR road map.
6.3 It is agreed that Overland may buy manufacturing process tooling
from Tandberg and that the price charged to Overland by Tandberg shall be
fair and equitable. ***
ARTICLE 7 -- INTELLECTUAL PROPERTY
7.1 Each party shall retain the sole ownership on any know how, Patent
Rights, Copyrights or maskworks it has developed or acquired prior to the
signing of this Agreement.
7.2 Each party shall retain the sole ownership of any know how, Patent
Rights, Copyrights or maskworks it has developed or acquired independently of
the MLR VR(2) Development Program.
7.3 All Project Rights which are related to MLR Drive technology shall
be owned by or assigned to Tandberg.
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CONFIDENTIAL TREATMENT REQUESTED
7.4 All Project Rights which are related to VR(2) Technology shall be
owned by or assigned to Overland. Tandberg shall have the right to use and
sublicense, subject to SECTION 7.10, such Project Rights but only for use in
its manufacturing of tape drives contemplated by this Agreement.
7.5 Each party shall have and retain sole and exclusive title to all
Project Rights which are conceived solely by its employees or agents other than
as specified in SECTIONS 7.3 and 7.4.
7.6 The parties shall jointly own patents, invention rights,
copyrights, mask works which are jointly conceived by their employees or agents
other than as specified in SECTIONS 7.3, 7.4 and 7.5.
7.7 Neither party shall withdraw an application for, or allow to
lapse, any jointly-created patents or other jointly-created appropriate
registerable rights unless it has given the other party at least two (2)
months written notice of its intention in this respect to allow such other
party the possibility to prosecute, maintain, and extend such patents or
other appropriate registerable rights.
7.8 Each party shall, at its own expense, provide reasonable
assistance to the other party to facilitate filing of all patents or other
registerable rights covering Project Rights referred to in this ARTICLE 7 and
shall execute all documents necessary or desirable for that purpose.
7.9 In the event that Tandberg wants to make an improvement to the
VR(2) Technology following the Development Period, Tandberg may make such
change independently of Overland and use it for any purpose. Overland will
provide sufficient design information to allow Tandberg to effectively make
such improvement. If Tandberg requests that Overland assist, and Overland
agrees to assist, in making the improvement, then Tandberg will pay for
Overland's development costs. Tandberg will own the intellectual property
relating to the improvement, and Overland may license or sub-license such
improvement to the VR(2) Technology for use on any tape drive other than an MLR
VR(2) Drive or a future tape drive developed by Tandberg which employs VR(2)
Technology, by entering into a written license agreement with Tandberg on
mutually agreed reasonable terms and conditions. If either Overland or
Tandberg makes an improvement to VR(2) Technology, and such improvement is
utilized within MLR VR(2) Drives or future tape drives developed by Tandberg
which employ VR(2) Technology, then no royalty will be
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CONFIDENTIAL TREATMENT REQUESTED
payable on such improvement used in such drives built by either party.
7.10 Tandberg only has the right to grant sublicenses under the VR(2)
Technology to other companies to make, have made, use and sell, and otherwise
dispose of drives covered by this Agreement. Tandberg shall not be entitled to
sublicense to other companies any rights or know-how to make ASICs incorporating
the VR(2) Technology, but shall be entitled to subcontract the design and
manufacturing of such ASICs for Tandberg for use in drives covered by this
Agreement. Tandberg shall have the right to grant sublicenses under the VR(2)
Technology to other companies to make, have made, use and sell, and otherwise
dispose of future drives which incorporate VR(2) Technology.
ARTICLE 8 -- MANUFACTURE, ASSEMBLY AND SALES RIGHTS
8.1 Overland shall ensure that all Overland products utilizing
Tandberg's MLR and SLR trademarks shall conform to Tandberg's commercially
acceptable product quality standards. Failure to comply with these quality
standards shall result, following a 30-day cure period, in immediate
termination of the MLR trademark license from Tandberg to Overland unless,
within a 30 day period from notification that such standards are not being
met, Overland shall have cured the quality problem to the reasonable
satisfaction of Tandberg.
8.2 Tandberg shall ensure that all Tandberg products utilizing
Overland's VR(2) trademark shall conform to Overland's commercially
acceptable product quality standards. Failure to comply with these quality
standards shall result, following a 30-day cure period, in immediate
termination of the Overland's VR(2) trademark license from Overland to
Tandberg unless, within a 30 day period from notification that such standards
are not being met, Tandberg shall have cured the quality problem to the
reasonable satisfaction of Overland.
8.3 As specified herein, Tandberg may audit on a regular basis that
MLR drives assembled or manufactured by Overland meet the minimum product
quality standards (compatibility, etc.) and that Overland keep the necessary
documentation to prove that they adhere to these quality requirements. Both
companies agree that the quality of the MLR drives are critical for the
success of the products in the market place.
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CONFIDENTIAL TREATMENT REQUESTED
ARTICLE 9 -- FUNDING
9.1 Each party will independently fund its respective development costs
for the development programs defined by this Agreement.
9.2 In the event that one party decides to have a third party to
undertake a development of one or more components instead of itself providing
engineering resources to do so, such party will cover the cost of such a
program.
9.3 Shared funding will be considered (subject to mutual agreement) for
significant expenses, third-party technology acquisition and/or marketing
programs.
ARTICLE 10 ***
ARTICLE 11 -- CONFIDENTIALITY AND PUBLICATIONS
11.1 Unless as otherwise expressly provided in this Agreement, neither
party shall disclose to any third party (other than a third party engaged as an
independent consultant who has bound himself to a confidential agreement) any
Confidential Information of the other party or shall use such Confidential
Information for the purpose other than the purpose contemplated in this
Agreement, without prior written permission from the other party. Each party
shall cause its directors, officers, agents, attorneys, employees, and its
Affiliates to abide by the secrecy obligations set forth herein.
11.2 This Agreement imposes no obligation upon recipient with respect to
Confidential Information that recipient can establish:
(a) was in recipient's possession before receipt from discloser;
(b) is or becomes available to the public through no fault of
recipient;
(c) is received in good faith by recipient from a third party and is
not subject to an obligation of confidentiality owed to the third
party; or
(d) is independently developed by recipient without reference to
Confidential Information received hereunder.
11.3 A recipient of Confidential Information agrees not to disclose
such Confidential Information to a third party (including disclosing such
Confidential Information in a patent application), without the written
consent of the discloser of the
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CONFIDENTIAL TREATMENT REQUESTED
Confidential Information. Each party shall protect the Confidential
Information by using the same degree of care, but no less than a reasonable
degree of care, to prevent the unauthorised disclosure of the Confidential
Information, as such party uses to protect its own Confidential Information
of a like nature.
11.4 If any party is required by judicial or administrative process to
disclose the Confidential Information, such party shall promptly notify the
other party and allow the other party a reasonable time to oppose such process.
11.5 Recipient's duties under this Article expire five (5) years from
the date of termination of this Agreement.
11.6 The terms of this Agreement, are also Confidential Information
under the terms of this Article.
11.7 The parties will work together to coordinate press releases
relating to the products and activities resulting from this Agreement.
Furthermore, the parties shall agree on the wording for the first such press
release.
11.8 Confidential document handling shall be as specified in EXHIBIT F
and shall be such that Confidential Information existing in documentary form
shall have Registered Confidential status, meaning that such documents must be
signed out to individuals and who are aware of these confidentiality provisions
and must be tracked at all times.
11.9 A list of individuals of the prospective receiving party deemed to
require access to Registered Confidential documents must be approved by the
owner of the Registered Confidential documents. Only these individuals may
request access to a Registered Confidential document and such request must be
justified and approved by the Registered Confidential Document Manager who shall
be a single individual in each company such as the Manager of the MLR VR(2)
Development Program Engineering Team.
11.10 Each recipient of a Confidential Document shall sign a
Non-Disclosure (and non-use) agreement (acceptable in form to both parties)
prior to receiving any Registered Confidential document.
11.11 Upon termination of this Agreement for any reason, all Registered
Confidential documents will be returned to their owners with the detailed
request and access logs.
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CONFIDENTIAL TREATMENT REQUESTED
ARTICLE 12 -- TERM AND TERMINATION
12.1 This Agreement shall begin on the Effective Date and shall remain
in effect until terminated by the parties by mutual agreement or by the other
termination provisions of this Agreement, provided however that following two
years from the Effective Date hereof, either party may terminate this Agreement
without cause as provided in this Article by giving one hundred eighty (180)
days' written notice. In the event of a breach, the breaching party will have
ninety (90) days after receipt of notice from the non-breaching party to cure
any such breach.
12.2 The effect of termination of this Agreement on the licenses granted
herein and certain obligations of the parties are set forth in EXHIBIT L. The
obligations of the parties with respect to maintenance of trade secret
information, know-how protection and confidentiality shall survive termination
of this Agreement.
12.3 Should a situation occur, related to the MLR VR(2) Drive which
makes it practically unrealistic to complete the MLR VR(2) Development
Program within any kind of reasonable time and cost limits, either party
shall have the right to terminate this Agreement on one hundred eighty days
notice unless otherwise mutually agreed. The test shall be whether it
objectively appears that the project is commercially reasonably possible
within a reasonable period of time. The two companies shall consult and
advise each other prior to such a decision, and also agree that they will do
their best to avoid that such a situation shall occur. However, the parties
may agree to terminate the development work if the product will become so
severely delayed or so expensive that it will become obviously
non-competitive in the market. The parties agree to consider reasonable
solutions before the work is eventually terminated. In the event that the
VR(2) Technology is successfully implemented in an MLR Drive and MLR VR(2)
Drives can be effectively produced at Tandberg but for any reason the set up
of a manufacturing line for MLR or MLR VR(2) Drives at Overland cannot be
successfully completed, then and in that event, Tandberg shall continue to
have the rights to the VR(2) Technology subject to the price increases in
Exhibit D.
12.4 In the event that the implementation of the VR(2) Technology in the
MLR Drives is not successful within *** of the Effective Date hereof, either
party may declare this Agreement terminated and such termination shall take
place *** following such declaration and in such event, the obligations of the
parties with respect to maintenance of
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CONFIDENTIAL TREATMENT REQUESTED
trade secret information, know-how protection and confidentiality, and those
obligations specified in Section 3.8 and Exhibit L, shall continue.
12.5 In the event of any good-faith termination, each party agrees that
it shall absorb all costs it incurred with respect to the Development Program to
the date of termination without seeking indemnification from the other party.
12.6 If either of the parties fails to exercise a good faith effort to
fulfill its commitments under this Agreement as fast as is reasonably
commercially feasible, then after written notice specifically identifying such
party's failure to exercise good faith and failure to cure the specified problem
within a ninety-day (90-day) period of time, the Agreement is terminated and the
effects of such termination are set forth in Exhibit L.
ARTICLE 13 -- ASSIGNMENT
13.1 This Agreement and the rights and obligations hereunder may not be
assigned by either party without the express written consent of the other party,
unless as a part of the sale or other transfer of all or substantially all of
the business of a party to which this Agreement relates.
ARTICLE 14 -- COMMUNICATIONS
14.1 Communications or notices required or permitted under this
Agreement shall be in writing, shall identify this Agreement, and shall be hand
delivered, sent by express or first class mail, or sent by facsimile, and
addressed as follows:
To Tandberg: To Overland:
President President
Tandberg ASA Overland Data, Inc.
P.O. Box 134, Kjelsas 8975 Balboa Avenue
N-0411 Oslo, Norway San Diego, CA 92123-1599, USA
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CONFIDENTIAL TREATMENT REQUESTED
ARTICLE 15 -- RELEASE, REPRESENTATIONS,
WARRANTIES, AND INDEMNIFICATIONS
15.1 Unless otherwise noted, each party represents and warrants that it
has the right to grant the license rights granted under this Agreement.
15.2 Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation by either party as to the validity or
scope of any patent;
(b) a warranty or representation that the exercise of rights and
licenses granted under this Agreement shall be free from
infringement of patents, other than those patents licensed
hereunder (except that both parties hereby represent and warrant
that they have no actual knowledge of any actual infringement or
claim thereof); or
(c) an agreement, understanding, or obligation of any kind by either
party to maintain or enforce its patents, to bring or prosecute
actions or suits against any third parties for infringement, or
conferring any rights to bring or prosecute actions or suits
against third parties for infringement.
15.3 IT IS AGREED THAT NEITHER PARTY SHALL BE LIABLE TO THE OTHER UNDER
BREACH OF CONTRACT, WARRANTY, NEGLIGENCE, STRICT LIABILITY OR ANY OTHER LEGAL
THEORY FOR ANY INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL LOSS, EXPENSE,
DAMAGES, DEMANDS, ACTIONS OR CAUSES OF ACTION OR ANY OTHER CLAIMS WHATSOEVER
(INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFIT, INVESTMENT, GOODWILL, BUSINESS
OR BUSINESS OPPORTUNITY) OR FOR ANY PUNITIVE DAMAGES ARISING OUT OF OR RESULTING
FROM THE RISKS REFERRED TO IN THIS ARTICLE 12 OR OTHERWISE FROM THIS AGREEMENT
OR THE TERMINATION OF THIS AGREEMENT. Notwithstanding anything else to the
contrary contained in this Agreement, neither party shall be liable to the other
for any amounts in excess of $ ***.
15.4 Each party shall indemnify and hold the other party harmless from
any and all loss or liability for any and all claims, causes of action, suits,
proceedings, losses, damages, demands, fees, expenses, fines, penalties and
costs (including, without limitation, reasonable attorney's fees, costs and
disbursements) arising from any injury or alleged injury to any third person or
business for property damage or personal injury caused by any MLR Drives, MLR
VR(2) Drives or related products made or processes
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CONFIDENTIAL TREATMENT REQUESTED
performed by said each party.
15.5 A party (the "indemnitee") which intends to claim indemnification
under this Article 15 shall promptly notify the other party ("the
indemnitor") in writing of any action, claims, or liability in respect of
which the indemnitee or any of its employees or agents intend to claim such
indemnification. The indemnitee shall permit, and shall cause its employees
and agents to permit, the indemnitor to settle any such action, claims, or
liability and agrees to the control of such defence or settlement by the
indemnitor; provided, however, that such settlement does not adversely affect
the indemnitee's rights hereunder or impose any obligations on the indemnitee
in addition to those set forth herein. No action, claim, or liability shall
be settled without the prior written consent of the indemnitor, and the
indemnitor shall not be responsible for any attorneys' fees or other costs
incurred other than as provided herein. The indemnitee, its employees and
agents, shall cooperate fully with the indemnitor and its legal
representatives in the investigation and defence of any action, claim, or
liability covered by this indemnification. The indemnitee shall have the
right, but not the obligation, to be represented by counsel of its own
selection and at its own expense.
15.6 Neither party guarantees the success of any of the development
programs or that the performance or work under this Agreement will result in
the development of commercial products. Both parties assume the risk that
the development programs will not produce the results required.
ARTICLE 16 -- MISCELLANEOUS PROVISIONS
16.1 Arbitration.
a. Governing Law. This Agreement will be governed in all respects
solely and exclusively by the laws of the State of California, U.S.A. without
regard to conflict of laws principles. The United Nations Convention on the
International Sale of Goods will not apply to this Agreement.
b. Mandatory Arbitration. All disputes, controversies, or claims
arising out of, relating to or in connection with this contract including the
determination of the scope of the agreement to arbitrate, will be finally
settled by arbitration in accordance with the Arbitration Rules of the United
Nations Commission on International Trade Law (UNCITRAL), applicable at the time
of submission of the dispute to arbitration. The
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CONFIDENTIAL TREATMENT REQUESTED
American Arbitration Association, ("AAA") will be the Appointing Authority
and will appoint a single arbitrator. The arbitration case will be
administered by the AAA in accordance with its "Procedures for Cases Under
the UNCITRAL Arbitration Rules" ("Rules"). The place of arbitration will be
Chicago, Illinois, and the exclusive language to be used for the arbitral
proceedings will be English.
c. Ancillary Relief. Nothing herein will prevent a party, prior to
appointment of the arbitrator, from making application to any court of
competent jurisdiction, for a temporary restraining order or any other
provisional remedy available at law or in equity not cognizable by
arbitration. Such application for relief will not constitute a waiver of
this agreement to arbitrate. Upon appointment, the arbitrator will have
exclusive authority to order provisional or interim relief, except that any
relief ordered by the arbitrator may be immediately and specifically enforced
by a court otherwise having jurisdiction. The parties waive objection to
venue and consent to the personal jurisdiction of the federal courts of
Chicago, Illinois, U.S.A. in any action to enforce this agreement to
arbitrate or any order or award of the arbitrator, or for the provisional or
interim remedies provided for in this Agreement.
d. Expenses. In any arbitration proceeding pursuant to this
Agreement, each party will bear the expenses of its witnesses. All other costs
of arbitration, including, without limitation, the fees and expenses of the
arbitrators, the cost of the record or transcripts thereof, if any,
administrative fees, the attorneys' fees of the parties, and all other fees and
costs will be allocated to the parties to the arbitration as determined by the
arbitrator, except that the prevailing party in such arbitration will be
entitled to recover its reasonable attorneys' fees and expenses.
e. Discovery. Discovery will be limited to written requests for the
production of specific documents. The period for requesting documents will
be 60 days commencing upon the day that the answer is due under the Rules.
The responding party will have 30 days to produce the requested documents by
sending copies to the requesting party or its representative via a recognized
international courier service. The parties will also voluntarily produce all
documents that they intend to use at the arbitration hearing and a list of
intended witnesses before the close of discovery subject to supplementation
for purposes of rebuttal or good cause shown. The parties waive any right to
seek any discovery not provided for in this Agreement irrespective of whether
the laws of any country provide for different or additional discovery in
international arbitration. The arbitrator will hold a pre-hearing conference
within three days of the close of discovery and will schedule and hold the
final hearing within 30 days of the close of discovery.
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CONFIDENTIAL TREATMENT REQUESTED
EACH PARTY HERETO HEREBY AGREES THAT THE ARBITRATION PROCEDURE PROVIDED IN
THIS AGREEMENT WILL BE THE SOLE AND EXCLUSIVE METHOD OF RESOLVING ANY
DISPUTES, CONTROVERSIES OR CLAIMS ARISING IN CONNECTION WITH, OR OUT OF THIS
AGREEMENT.
16.2 Any provision of this Agreement which may be deemed invalid or
unenforceable by a court of competent jurisdiction shall in no way invalidate or
render unenforceable the remainder of this Agreement, which shall remain in full
force and effect.
16.3 The failure or delay of a party at any time to enforce performance
of this Agreement shall not be construed as a waiver of the right of such party
to enforce performance of this Agreement at any subsequent time.
16.4 The parties agree that during the term of this Agreement and within
two years thereafter, neither will solicit as its own employee or consultant any
person who was at any time during the term of this Agreement both associated in
any way with the subject matter of this Agreement and also an employee or
consultant of the other (excepting those who may have been consultants of both
parties jointly).
16.5 This Agreement contains the complete and entire agreement between
the parties, and supersedes any previous relevant communication, representation
or agreement, verbal or written. No modification or renewal of this Agreement
will be binding upon the parties unless it is made in writing by authorised
representatives of both parties.
16.6 The parties shall adhere to the U.S. and European export
administration laws and regulations and shall not export or re-export any
technical data or products received from the other party or the direct product
of such technical data to any proscribed country listed in the U.S. or European
regulations unless properly authorised by the U.S. or European governmental
agency, respectively.
16.7 All reports, data, information, notices, schedules, plans, records
and other information required to be provided pursuant to this Agreement by
either party to this Agreement will be in the English language. If a
translation is made of this Agreement, it will be made for the convenience of
the translating party and the English version of this Agreement, rather than the
translated version, will be deemed controlling.
16.8 Neither party shall be liable for its failure to perform any of its
obligations hereunder during any period in which performance is delayed by fire,
flood, war,
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CONFIDENTIAL TREATMENT REQUESTED
embargo, riot strike, or an unforeseeable intervention of any government
authority and other such causes beyond the control of either party that
causes complete business interruption ("Force Majeure"), provided that the
party suffering such delay immediately notifies the other party of the delay.
In such circumstances, the party suffering such delay shall lose no
previously granted rights as a consequence of such delay.
OVERLAND DATA, INC.: TANDBERG DATA ASA:
By: /s/ Scott Mcclendon By: /s/ Hans Christian Qvist
-------------------------- --------------------------
Name: Scott McClendon Name: Hans Christian Qvist
-------------------------- --------------------------
Title: President & CEO Title: President & CEO
-------------------------- --------------------------
Date: March 30, 1998 Date: March 31, 1998
-------------------------- --------------------------
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EXHIBITS
- -------------------------------------------------------------------------------
EXHIBIT A DEFINITION OF VR(2) TECHNOLOGY
EXHIBIT B MLR VR(2) DEVELOPMENT PROGRAM
EXHIBIT C OEM AGREEMENT FROM TANDBERG TO OVERLAND
EXHIBIT D MLR AND VR(2) ROYALTIES
EXHIBIT E SUPPLY OF ASSEMBLIES AND COMPONENTS BY TANDBERG TO OVERLAND
EXHIBIT F CONFIDENTIAL DOCUMENT HANDLING
EXHIBIT G MANUFACTURING KNOW-HOW AND PROCESS TOOLING
EXHIBIT H ESCROW CONTENTS BY OVERLAND
EXHIBIT I ESCROW CONTENTS BY TANDBERG
EXHIBIT J MLR DRIVE ROADMAP(S)
EXHIBIT K TRADEMARK USE AND QUALITY CONTROL
EXHIBIT L EFFECTS OF TERMINATION
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
DEFINITION OF VR(2) TECHNOLOGY
VR(2) Technology is a magnetic data channel technology including the subject
matter disclosed in U.S. PATENT #5,712,863 *** and any reissues,
continuations, continuations in part, divisionals, regular U.S. patent
applications (relating to improvements), provisional U.S. patent
applications, counterpart foreign applications, and reexaminations thereof
(collectively the "VR(2) Patent/Applications"). VR(2) Technology provides
approximately a 50% increase in user bit density for the same symbol spacing
density.
U.S. PATENT #5,712,863 discloses a non-deterministic randomizer which
eliminates the need for worst case data pattern design testing.
***
VR(2) Technology also includes (1) Overland's VDHL models, and (2) know-how,
trade secrets and other proprietary and confidential information of Overland
which directly relates to the inventions disclosed in the VR(2)
Patent/Applications. It is understood by the parties that VR(2) Technology
shall not include any PRML or similar technology which is (1) already
generally known, and (2) not disclosed in the VR(2) Patent/Applications and
shall not include any portion of the write and/or read data channels or
corresponding data format(s) already used by Tandberg or any natural
extension of these write and/or read data channels and corresponding data
format(s) resulting from the implementation of such PRML-based technology
into these channels and formats.
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EXHIBIT B
MLR VR(2) DEVELOPMENT PROGRAM
***
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EXHIBIT C
OEM AGREEMENT
FROM
TANDBERG TO OVERLAND
The parties have agreed that the OEM Agreement shall be entered into within 90
days of the Effective Date of the Agreement.
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REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT D
MLR AND VR(2) ROYALTIES
***
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT E
SUPPLY
OF
ASSEMBLIES AND COMPONENTS
BY
TANDBERG TO OVERLAND
I. SUPPLY
1.1 With reference to Section 3.2 and 4.2 of the Agreement, Overland
shall be supplied assemblies and/or components by Tandberg or by Tandberg's
approved suppliers ("Suppliers") for final assembly and test of MLR Drives and
MLR VR(2) Drives.
1.2 With reference to Section 3.3, 4.3 and 4.4 of the Agreement,
Overland shall be supplied assemblies and/or components by Tandberg or by the
Suppliers for full manufacturing of MLR Drives and MLR VR(2) Drives.
1.3 With reference to Section 4.6 of the Agreement, Tandberg shall be
supplied ASICs incorporating VR(2) Technology by Overland as needed to
manufacture drives covered by the Agreement and related subassemblies.
II. ASSEMBLIES AND COMPONENTS TO BE SUPPLIED TO OVERLAND ACCORDING TO
SECTION 3.2
The following may be supplied to Overland as components or as module assemblies
by Tandberg or the Suppliers:
***
III ORDERING AND DELIVERY.
Overland may either order assemblies and components from Tandberg or from the
Suppliers as follows:
3.1 SUPPLY BY TANDBERG
3.1.1 Overland will issue purchase orders ("PO") to Tandberg for supply
of the Bridge and PC Board as assemblies.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
3.1.2 Tandberg will confirm the PO and supply the Bridge and PC Board in
accordance with the confirmed PO and Tandberg's terms and conditions for supply,
including its standard warranty.
3.1.3 ***
3.2 SUPPLY BY SUPPLIERS.
3.2.1 For ordering of Front, Frame and Top Cover as components or
assemblies, Overland will issue POs to Tandberg for supply of such components by
the Suppliers. Tandberg will confirm and forward the PO to its Suppliers so that
Tandberg may obtain its best pricing from the Suppliers for the benefit of
Overland and Tandberg.
3.2.2 The Supplier will supply the components or assemblies directly to
Overland in accordance with the confirmed PO and Supplier's terms and conditions
for supply, including its warranty provisions. The Supplier will invoice
Overland directly. ***
3.2.3 If the above arrangement with the Suppliers is not feasible, the
parties will follow the following procedures:
* Overland will place POs according to clause 3.2.1.
* The Suppliers will supply the components or assemblies directly to
Overland in accordance with the confirmed PO and Supplier's terms and
conditions for supply, including its warranty provisions, but will make out
its invoices to Tandberg. *** Overland shall make payment of invoices so
that payment is received by Tandberg at least 3 days prior to the invoice
due date.
3.3 Supply in accordance with this section III shall be subject to
credit approval of Overland by Tandberg.
3.4 In the event the Suppliers will not accept recourse directly from
Overland when Overland orders through Tandberg, then, unless otherwise mutually
agreed, Overland will have to order from the Suppliers directly. In this case,
Tandberg will not bill Overland a handling fee.
3.4 For the right to assemble and test, Overland shall pay a royalty as
specified in Exhibit D, paragraph 2.2.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
IV. SUPPLY OF ASSEMBLIES AND COMPONENTS FOR FULL MANUFACTURING ACCORDING
TO SECTION 3.3
Overland may either order assemblies and components from Tandberg or from the
Suppliers as follows:
4.1 SUPPLY BY TANDBERG
4.1.1 Overland will issue PO to Tandberg for supply of the assemblies and
components.
4.1.2 Tandberg will confirm the PO and supply the assemblies and
components in accordance with the confirmed PO and Tandberg's terms and
conditions for supply, including its standard warranty.
4.2 SUPPLY BY SUPPLIERS.
4.2.1 For ordering of supplies of components or assemblies from the
Suppliers, Overland will issue POs to Tandberg for supply of such components or
assemblies by the Suppliers. Tandberg will confirm and forward the PO to the
Suppliers so that Tandberg may obtain its best pricing from the Suppliers for
the benefit of Overland and Tandberg.
4.2.2 The Supplier will supply the components or assemblies directly to
Overland in accordance with the confirmed PO and Supplier's terms and conditions
for supply, including its warranty provisions. The Supplier will invoice
Overland directly. ***
4.2.3 If the above arrangement with the Suppliers is not feasible, the
parties will follow the following procedures:
* Overland will place POs according to clause 4.2.1.
* The Suppliers will supply the components or assemblies directly to
Overland in accordance with the confirmed PO and the Supplier's terms and
conditions for supply, including its warranty provisions, but will make out
its invoices to Tandberg. *** Overland shall make payment of invoices so
that payment is received by Tandberg at least 3 days prior to the invoice
due date.
4.3 Supply in accordance with this section IV shall be subject to
credit approval of Overland by Tandberg.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
4.4 In the event the Suppliers will not accept recourse directly from
Overland when Overland orders through Tandberg, then, unless otherwise mutually
agreed, Overland will have to order from the Suppliers directly. In this case,
Tandberg will not bill Overland a handling fee.
4.5 For full manufacturing, Overland shall pay a royalty as specified
in Exhibit D, paragraph 2.1.
V. SUPPLY BY OVERLAND.
5.1 Tandberg will issue POs to Overland for supply of ASICs
incorporating VR(2) Technology as needed to manufacture MLR Drives and related
subassemblies.
5.2 Overland will confirm the PO and supply the ASICs in accordance
with the confirmed PO and Overland's terms and conditions for supply, including
its standard warranty.
5.3 *** Tandberg shall make payment of invoices so that payment is
received by Overland at least 3 days prior to the invoice due date of its
supplier. In the event that Tandberg is allowed to order directly from
Overland's supplier, Overland will not bill Tandberg a handling fee.
5.4 Supply in accordance with this section V shall be subject to credit
approval of Tandberg by Overland.
VI GENERAL
6.1 It is agreed that the arrangement of ordering Supplier's
manufactured assemblies and components through Tandberg is for the primary
benefit of Overland, and that, as a consequence, no liability will attach to
Tandberg for performing this function.
6.2 Each party shall provide the other party with adequate information
regarding its purchasing arrangements with its suppliers.
6.3 It is further agreed as a general principle that the parties will
cooperate in good faith within the spirit of this Agreement to ensure that each
party may efficiently carry out its work and obligations hereunder.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT F
CONFIDENTIAL DOCUMENT HANDLING
1. Each party will adhere to the procedures in this Exhibit for the transfer
of any know-how, trade secrets, and Confidential Information to the other
party. Such know-how, trade secrets and Confidential Information will be
accorded a "Registered Confidential" status and will be identified as
"Registered Confidential Documents."
2. Each party will identify a "Registered Confidential Document Manager."
3. The Document Manager will be responsible for transporting or receipt of a
Registered Confidential Document. All transportation and receipt of
documents via e-mail, fax, US Mail, International Mail, courier services,
etc., must be routed through the Document Manager who will disperse to the
required individual(s). The Registered Confidential Document will be
controlled via an alphanumeric system to be determined by the Document
Manager.
4. All originals and copies will be stamped or printed with an alphanumeric
code in ink other than black, on the first page of every document.
5. Registered Confidential Documents will be dispersed by the Document Manager
in a manner best befitting the confidentiality of the document. Copies
made of a Registered Confidential Document are to be logged and tracked in
such a manner as to include the following, the date received by Document
Manager, the printed name of the receiving party, the date received by
party, along with the signature of the receiving party, as well as, the
alphanumeric code for that document. Every copy and original will have its
own unique number.
6. The original Registered Confidential Document will be kept in a locked
cabinet along with all controlled lists. The key will be maintained by the
Document Manager.
7. Controlled lists will include, but not be limited to, a listing of
Registered Confidential Documents sent and/or received by either party.
8. Any individual receiving a Registered Confidential Document must sign a
non-disclosure and non-use Agreement acceptable in form to both parties
prior to receiving any Registered Confidential Document. Such Agreement
will reference the terms and conditions of this Exhibit.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
9. Either party can request at any time a listing of said controlled
alphanumeric Registered Confidential Documents and those individuals who
have access and/or copies of said documents.
10. Registered Confidential Documents will be held by individual employees and
when not in use must be stored in a secured locked area.
11. Individuals returning Registered Confidential Documents to the Document
Manager must sign and date the control log showing items returned. The
Document Manager will shred said copies.
12. When an employee terminates from the company, said individual must return
all Registered Confidential Documents to the Document Manager prior to
exiting.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT G
MANUFACTURING KNOW-HOW
AND
PROCESS TOOLING
***
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT H
ESCROW CONTENTS BY OVERLAND
1. In accordance with Section 5.8 of the Agreement, Overland shall deposit the
VR(2) Technology Information listed in clause 5 hereof ("Information") in escrow
with the escrow agent specified in clause 4 hereof ("Escrow Agent").
2. Overland shall update the Information to become reasonably current during
the term of the Development Period.
3. Overland will enter into an agreement with the Escrow Agent ("Escrow
Agreement") which, among other things, shall contain the following provisions:
3.1 The following events shall constitute release conditions ("Release
Conditions"):
a) the Overland contracting party, or its Parent, if any, declares
bankruptcy; or
b) a Takeover of the Overland contracting party, or its Parent, if
any, has occurred.
3.2 Upon the occurrence of a Release Condition, and only then, the Escrow Agent
shall be instructed to turn all Information over to Tandberg.
4. Overland has appointed the following Escrow Agent:
Name: Fort Knox Escrow Services, Inc.
Address: 3539A Church Street
Clarkston, GA 30021-1717
5. Overland shall deposit the following Information in escrow:
***
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT I
ESCROW CONTENTS BY TANDBERG
1. In accordance with Section 5.9 of the Agreement, Tandberg shall deposit the
MLR Manufacturing Technology Information listed in clause 5 hereof in escrow
with the escrow agent specified in clause 4 hereof ("Escrow Agent").
2. Tandberg will update the Information to become reasonably current
throughout the period preceding full manufacturing by Overland.
3. Tandberg shall enter into an agreement with the Escrow Agent ("Escrow
Agreement") which, among other things, shall contain the following provisions:
3.1 The following events shall constitute release conditions ("Release
Conditions"):
a) the Tandberg contracting party, or its Parent, if any, declares
bankruptcy; or
b) a Takeover of the Tandberg contracting party, or its Parent, if
any, has occurred.
3.2 Upon the occurrence of a Release Condition, and only then, the Escrow Agent
shall be instructed to turn all Information over to Overland.
4. Tandberg has appointed the following Escrow Agent:
Name: Wikborg, Rein & Co.
Address: Post Office Box 1513 Vika
Olav V's Gate 6
N-0117 Oslo, Norway
5. Tandberg will deposit the following information in escrow:
***
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT K
TRADEMARK USE AND QUALITY CONTROL
1. Overland will at all times use all reasonable efforts to ensure that all
products in relation to which it uses the MLR Trademark conform to the
guidelines provided in this Exhibit.
2. Overland is authorized to use the MLR Trademark only in connection with
the promotion and sale of MLR Drives, MLR VR(2) Drives or Libraries having
MLR or MLR VR(2) Drives.
3. Overland shall cooperate with Tandberg in making or facilitating any
governmental registrations or submissions that are necessary to protect the
MLR Trademark and Tandberg's rights therein, including, but not limited to,
registration of Overland as a registered user of the MLR Trademark. Upon
termination of Overland's right to use the MLR Trademark under this
Agreement, Overland shall cooperate with Tandberg in revocation of any such
registered user registration.
4. Overland shall comply with all applicable laws and governmental
regulations pertaining to the proper use and designation of trademarks.
5. Overland admits the validity of the MLR Trademark.
6. Tandberg does not warrant or represent that the use of the MLR Trademark
shall be free from infringement of third party trademarks. Tandberg does
represent, however, that it is not aware of any such infringement.
7. Overland further agrees not to use or register in any country any
trademarks resembling, diluting, or confusingly similar to the MLR Trademark.
Whenever the attention of Overland is called by Tandberg to any such
resemblance, dilution, confusion, or risk of confusion, Overland agrees to
take appropriate steps immediately to remedy or avoid such situations.
8. Overland shall give Tandberg notice of any known or presumed
infringements of the MLR Trademark, and Overland shall give Tandberg full
cooperation in the protection of the MLR Trademark. If Tandberg decides to
enforce the MLR Trademark against an infringer, all costs incurred and all
recoveries made shall be for the account of Tandberg.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
9. Tandberg will at all times use all reasonable efforts to ensure that all
products in relation to which it uses the VR(2) Trademark conform to the
guidelines provided in this Exhibit.
10. Tandberg is authorized to use the VR(2) Trademark only in connection
with the promotion and sale of products incorporating VR(2) Technology.
11. Tandberg shall cooperate with Overland in making or facilitating any
governmental registrations or submissions that are necessary to protect the
VR(2) Trademark and Overland's rights therein, including, but not limited to,
registration of Tandberg as a registered user of the VR(2) Trademark. Upon
termination of Tandberg's right to use the VR(2) Trademark under this
Agreement, Tandberg shall cooperate with Overland in revocation of any such
registered user registration.
12. Tandberg shall comply with all applicable laws and governmental
regulations pertaining to the proper use and designation of trademarks.
13. Tandberg admits the validity of the VR(2) Trademark.
14. Overland does not warrant or represent that the use of the VR(2)
Trademark shall be free from infringement of third party trademarks.
Overland does represent, however, that it is not aware of any such
infringement.
15. Tandberg further agrees not to use or register in any country any
trademarks resembling, diluting, or confusingly similar to the VR(2)
Trademark. Whenever the attention of Tandberg is called by Overland to any
such resemblance, dilution, confusion, or risk of confusion, Tandberg agrees
to take appropriate steps immediately to remedy or avoid such situations.
16. Tandberg shall give Overland notice of any known or presumed
infringements of the VR(2) Trademark, and Tandberg shall give Overland full
cooperation in the protection of the VR(2) Trademark. If Overland decides to
enforce the VR(2) Trademark against an infringer, all costs incurred and all
recoveries made shall be for the account of Overland.
17. The parties will not combine the MLR Trademark and the VR(2) Trademark
into a single mark or a composite mark.
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THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT
REQUEST. REDACTED MATERIAL IS MARKED WITH A *** AND HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL TREATMENT REQUESTED
18. Upon termination of this Agreement, Overland will immediately
discontinue all use of the MLR trademark and any term confusingly similar
thereto, and Tandberg will immediately discontinue all use of the VR(2)
trademark and any term confusingly similar thereto. The parties will at that
time exchange information relating to inventory of materials and products and
agree upon an orderly and limited schedule to exhaust such inventories.
41
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT L
EFFECTS OF TERMINATION
***
42