EXHIBIT 10.8
CONFIDENTIAL TREATMENT REQUESTED
TRAVAN-TM- VR(2)-TM- ASIC LICENSE AND SUPPLY AGREEMENT
This Agreement is effective February 25, 1999 ("Effective Date"),
between Imation Corp., incorporated under the laws of the state of Delaware
and having a place of business at 1 Imation Place, Oakdale, Minnesota
55128-3414, USA ("Imation"), and Overland Data, Inc., having a place of
business at 8975 Balboa Avenue, San Diego, CA 92123 ("Overland Data").
Whereas, Imation has offered licenses to several manufacturers to
allow them to manufacture and sell drives for use with Travan-TM- data
cartridges, including Travan 8 GB, Travan NS-TM- 8, Travan 20 GB, and Travan
NS 20, and which licenses Imation may extend to include a generation beyond
Travan 20 GB and Travan NS 20, which is expected to have a capacity of at
least *** (compressed);
Whereas, Overland Data has developed and owns intellectual property
relating to the VR(2)-TM- data encoding and decoding channel technology for
linear magnetic tape formats, including various ASIC designs and embodiments
of the VR(2) Technology;
Whereas, Imation desires an ASIC having the VR(2) Technology for
incorporation into Next Generation Travan Drives having a capacity of at
least *** (compressed);
Whereas, Overland Data desires to supply such ASIC to Imation and
Imation's licensees;
Whereas, Overland Data desires to license Imation's intellectual
property to manufacture libraries for Next Generation Travan Cartridges
having a capacity of at least ***; and
Whereas, Imation is willing to grant such license under the terms
herein;
Now, therefore, the Parties agree as follows:
1. DEFINITIONS
1.1 "Compliance Test" means test activities designed to test for
compliance with the format for the Next Generation Travan
Cartridges to ensure
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interchangeability of Next Generation Travan Cartridges
written on Next Generation Travan Drives manufactured by
different manufacturers.
1.2 "Cartridge" means a belt-driven tape cartridge which is driven
and controlled through a single drive roller and has a linear
recording format with tracks extending longitudinally along
the tape and written in a serpentine manner.
1.3 "VR(2) Technology" means the data encoding and decoding
channel technology for linear magnetic tape formats
developed by Overland Data, and includes solid state
circuits embodied in semiconductor chips, associated
specifications, designs, drawings, data, test
qualification, and other documented technical and
application information related thereto.
1.4 "Imation Licensed IP" means the intellectual property rights
which are listed in Exhibit A, which may be added to from time
to time by Imation.
1.5 "Next Generation Travan Cartridge" means the next and future
generations of Travan Cartridges, including (1) Travan NS
Cartridge after the Travan NS 20 Cartridge, and (2) Travan
Cartridge after the Travan 20 GB Cartridge, and (3) off-path
Travan technology based Cartridges, all of which incorporate
Imation Licensed IP and are presently expected to have a
capacity of at least *** (compressed). These capacities and
formats will be set by Imation with input from Overland Data
and Imation's Next Generation Travan Drive licensees.
1.6 "Travan VR(2) ASIC" means an Application Specific Integrated
Circuit ("ASIC") embodying the VR(2) Technology, which is a
modification of existing ASIC designs of Overland Data
specifically adapted for incorporation into Next Generation
Travan Drives, such ASIC specification for which is attached
as Exhibit B. The parties may modify by mutual written
agreement such applicable specifications (the "REVISED PRODUCT
SPECIFICATIONS"). Upon execution of such mutual written
agreement, the Revised Product Specifications will be
incorporated by reference herein and attached as EXHIBIT B.
1.7 "Next Generation Travan Drive" means a drive which reads and
writes data onto a Next Generation Travan Cartridge.
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1.8 "Next Generation Travan Library" means an automated system
using at least one Next Generation Travan Drive to access
multiple Next Generation Travan Cartridges.
1.9 "Party" means Imation or Overland Data.
1.10 "Trademark Kit" means the trademark artwork and other
trademark-related information provided by Imation, which may
be updated from time to time by Imation.
1.11 "Imation Trademarks" means Imation's Travan and Travan NS
trademarks included in the Trademark Kit.
1.12 "Overland Trademark" means the VR(2) mark adopted by Overland
Data in connection with the VR(2) Technology.
2. TRAVAN VR(2) ASIC DESIGN
2.1 Overland Data and Imation have determined that it is necessary
and advantageous to incorporate the VR(2) Technology into a
Travan VR(2) ASIC specifically designed for Next Generation
Travan Drives. Overland Data will design and provide the
Travan VR(2) ASIC in accordance with the terms of this Section
2.
2.2 Overland Data will design the Travan VR(2) ASIC in accordance
with Exhibit B. The parties may modify by mutual written
agreement such applicable specifications (the "REVISED PRODUCT
SPECIFICATIONS"). Upon execution of such mutual written
agreement, the Revised Product Specifications will be
incorporated by reference herein and attached as EXHIBIT B.
Imation will pay Overland Data the amounts set forth below for
such design:
***
2.3 Milestone payments by Imation set forth in Section 2.2 will be
due within 5 days of receipt by Imation of an invoice from
Overland Data. Imation will make such payments by wire
transfer to the account specified by Overland Data in such
invoice.
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2.4 Overland Data will teleconference or meet with Imation every
two weeks to update Imation on the progress of the design and
commercialization of the Travan VR(2) ASIC prior to launch in
commercial volumes.
2.5 Overland Data will devote the level of resources reasonably
required to meet the schedule outlined in Section 2.2.
2.6 ***
3. SUPPLY & LICENSE
3.1 Provided that each party successfully performs its
obligations under Section 2.2, Overland Data will sell the
Travan VR(2) ASIC to Imation and Imation's approved
licensees of Next Generation Travan Drives, a list of such
approved licensees is attached as Exhibit D. Imation will
update Exhibit D from time to time as approved licensees
are added and/or removed by Imation. Overland Data will not
knowingly sell the Travan VR(2) ASIC to any third party not
listed in Exhibit D. Imation and each of Imation's
licensees desiring such Travan VR(2) ASICs will enter a
supply agreement with Overland Data specifying the prices
and other terms and conditions of supply, provided that
Imation and such Imation licensees agree not (i) to reverse
engineer, reverse assemble, decompile or otherwise attempt
to derive the underlying design, structure, organization,
algorithms, and ideas embodied in the Travan VR(2) ASICs or
(ii) to create any derivative works therefrom. Such supply
agreements between Overland Data and Imation's licensees
will require that the licensees not resell the Travan VR(2)
ASIC to third parties except as part of Next Generation
Travan Drives. Commercially reasonable efforts will be made
to ensure that the timing of such sales will be such that
the chips may be incorporated into Next Generation Travan
Drives in time to allow commercial launch of such drives no
earlier than *** but no later than ***, in volumes
sufficient to meet market demand. *** Pursuant to the
execution of a supply agreement between Overland Data and
Imation, Overland Data will supply to Imation up to ***
Travan VR(2) ASICs per year during the term of their supply
agreement *** for evaluation and testing purposes,
provided that Imation shall not (x) reverse engineer,
reverse assemble, decompile or otherwise attempt to derive
the underlying
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design, structure, organization, algorithms, and ideas
embodied in the ASICs, or (y) to create any derivative
works therefrom. The parties acknowledge and agree that
pricing for the Travan VR(2) ASIC is subject to the execution
of a binding foundry agreement (the "FOUNDRY AGREEMENT")
between Overland Data and its semiconductor foundry
licensed to produce the Travan VR(2) ASIC design. As such, no
pricing for the Travan VR(2) ASIC will be available until
such time as the Foundry Agreement is executed. The parties
acknowledge and agree that Overland Data will endeavor to
achieve the price targets for specific volumes set forth in
Exhibit C. Imation agrees and acknowledges that such price
targets do not constitute any binding obligation,
representation or warranty of Overland Data to supply
Travan VR(2) ASICs to anyone at such prices and volumes.
3.2 Imation grants to Overland Data a *** license, under Imation
Licensed IP to make, have made, import, use, offer for sale,
and sell Next Generation Travan Libraries, including Next
Generation Travan Drives provided therein. Imation grants to
Overland Data a *** license, under Imation Licensed IP to
import, offer for sale, and sell Next Generation Travan Drives
for single Cartridge use provided such drives are obtained
from suppliers licensed by Imation to offer for sale and sell
such drives. Otherwise, Overland Data is not licensed for Next
Generation Travan Drives which are not incorporated into Next
Generation Travan NS Libraries. ***
3.3 If Overland Data manufactures Next Generation Travan
Libraries, Overland Data will sell such Libraries to Imation
upon request by Imation at prices and terms to be agreed to by
the Parties, provided that such prices and terms for such
Libraries are ***.
3.4 If (i) Overland Data manufactures Next Generation Travan
Libraries and (ii) Imation manufactures Next Generation Travan
Cartridges, Imation will sell library packs of such cartridges
to Overland Data upon request by Overland Data for: (a)
pack-in of Imation-brand Next Generation Travan Cartridges
with Next Generation Travan Libraries sold by Overland Data,
and (b) resale by Overland Data of Imation-brand Next
Generation Travan Cartridges. ***
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4. COMPLIANCE TEST
4.1 Imation will provide to Overland Data a Compliance Test
comprising a test suite for Overland Data to self-administer.
Subject to Article 4.4, Overland Data will not sell Next
Generation Travan Libraries containing drives which do not
pass such Compliance Test.
4.2 If the Compliance Test requires use of reference tapes,
Imation will provide Overland Data with a tape set comprising
reference tapes and sample tapes. The reference tapes will
include reference sequences recorded according to the Next
Generation Travan Cartridge format. The sample tapes will be
provided with servo bursts and track ID's. The Compliance
Tests will specify data sequences to be recorded on the sample
tapes.
4.3 If at any time Imation has reason to believe that Overland
Data's drives in its Next Generation Travan Libraries no
longer pass the Compliance Test, Imation shall so notify
Overland Data. Overland Data shall then re-administer the
Compliance Test to its drives and shall notify Imation
promptly of the results of the Compliance Test. If Overland
Data's drives fail the Compliance Test, Overland Data will (i)
immediately cease selling such drives and (ii) shall not
resume selling such drives until they are retested under the
supervision of an independent Compliance Verifier and such
Compliance Verifier determines that such drives again pass the
Compliance Test; and (iii) pay the Compliance Verifier's fee.
If Overland Data's drives pass the Compliance Test, Imation
shall pay Overland Data for any costs and fees needed to
administer the Compliance Test.
4.4 If Imation does not provide the Compliance Test at least
ninety (90) days before Overland Data is otherwise prepared to
sell its Next Generation Travan Library, Overland Data may
sell the library until ninety (90) days after the date Imation
provides the Compliance Test to Overland Data. If Overland
Data makes sales under this Section 4.4, Overland Data shall
ensure that its drives in its libraries pass the Compliance
Test within ninety (90) days of delivery of Compliance Test to
Overland Data. If Overland Data's drives in its libraries do
not pass the Compliance Test within that ninety (90) day
period, Overland Data shall immediately cease
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selling such libraries, and shall not resume selling such
libraries until the drives are re-tested and pass the
Compliance Test in accordance with the provisions of
Section 4.3.
4.5 Overland Data shall only use the reference tapes for its own
internal purposes and shall return such tapes upon termination
of this Agreement.
4.6 While Imation believes that the Compliance Test is reasonably
comprehensive, Overland Data acknowledges that the Compliance
Test does not cover all possible aspects of compliance and
does not exercise all possible combinations or permutations of
features of the Next Generation Travan Cartridge format.
Imation makes no warranty that successful completion of the
Compliance Test guarantees that sample drives are fully
compliant with the Next Generation Travan Cartridge format or
the Next Generation Travan Drive specification, and Imation
disclaims any liability in that respect. However, Imation
acknowledges and agrees that Overland Data is in compliance
with the terms and conditions of Sections 4 and 5 of this
Agreement when Overland Data's drives pass any Compliance
Tests provided by Imation pursuant to Section 4.1.
4.7 WHILE IMATION SHALL ENDEAVOR TO PROVIDE REFERENCE TAPES,
SAMPLE TAPES, AND INSTRUCTIONS FOR WRITING THE SAMPLE TAPES
THAT ARE COMPLIANT WITH NEXT GENERATION TRAVAN NS CARTRIDGE
FORMAT AND DRIVE SPECIFICATIONS, IMATION SHALL NOT BE LIABLE
FOR ANY LOSS, HOWEVER ARISING, RESULTING FROM ANY DEFECTS OF
SUCH REFERENCE OR SAMPLE TAPES, INCLUDING TAPE MEDIA DEFECTS,
THAT MAY BE PRESENT, AND IMATION'S SOLE OBLIGATION IN RESPECT
OF SUCH DEFECTS SHALL BE TO CORRECT THEM IN A TIMELY MANNER,
INCLUDING, WHERE APPROPRIATE, TAPE MEDIA REPLACEMENT.
5. TRADEMARK USE AND QUALITY CONTROL
5.1 Imation hereby grants to Overland Data a non-exclusive license
under Imation's rights in the Imation Trademarks to use the
Imation Trademarks
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in connection with Next Generation Travan Libraries made or
sold by Overland Data, provided, however, that such use
shall be in accordance with the specifications and
requirements set forth in the Compliance Test.
5.2 Overland Data will at all times use all reasonable efforts to
ensure that all products in relation to which it uses the
Imation Trademarks conform to the guidelines provided in the
Trademark Kit.
5.3 Overland Data is authorized to use the Imation Trademarks only
in connection with the promotion and sale of Next Generation
Travan Libraries which contain Next Generation Travan Drives
or Next Generation Travan Drives purchased through a third
party for the purpose of resale as stand-alone units which
satisfy the Compliance Test.
5.4 Overland Data shall cooperate with Imation in making or
facilitating any governmental registrations or submissions
that are necessary to protect the Imation Trademarks and
Imation's rights therein, including, but not limited to,
registration of Overland Data as a registered user of the
Imation Trademarks. Upon termination of Overland Data's right
to use the Imation Trademarks under this Agreement, Overland
Data shall cooperate with Imation in revocation of any such
registered user registration.
5.5 Overland Data shall comply with all applicable laws and
governmental regulations pertaining to the proper use and
designation of trademarks.
5.6 Overland Data admits the validity of the Imation Trademarks.
5.7 Imation does not warrant or represent that the use of the
Imation Trademarks shall be free from infringement of third
party trademarks. Imation does represent, however, that it is
not aware of any such infringement.
5.8 Overland Data further agrees not to use or register in any
country any trademarks resembling, diluting, or confusingly
similar to the Imation Trademarks. Whenever the attention of
Overland Data is called by Imation to any such resemblance,
dilution, confusion, or risk of confusion, Overland Data
agrees to take appropriate steps immediately to remedy or
avoid such situations.
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5.9 Overland Data shall give Imation notice of any known or
presumed infringements of the Imation Trademarks, and Overland
Data shall give Imation full cooperation in the protection of
the Imation Trademarks. If Imation decides to enforce the
Imation Trademarks against an infringer, all costs incurred
and all recoveries made shall be for the account of Imation.
5.10 Overland Data agrees to show the Imation Trademarks on each of
its Next Generation Travan Libraries and related materials.
The size of the display of Imation Trademarks will be no less
than 75% of the size of the VR(2) Trademark on such libraries
and related materials.
5.11 Overland Data hereby grants to Imation a non-exclusive license
under Overland Data's rights in the Overland Trademark to use
the Overland Trademark in connection with the advertising,
marketing, promoting and distribution of Next Generation
Travan Drives, Next Generation Travan Cartridges, and Next
Generation Travan Libraries made or sold by Imation. This
trademark license to Imation shall include the right to
sublicense to Imation's licensees of such drives, provided
that each of Imation's licensees agree in writing to comply
with the terms of this Section 5.
5.12 Imation will at all times use all reasonable efforts to ensure
that all products in relation to which it uses the Overland
Trademark conform to the quality control guidelines provided
in this section or provided from time to time by Overland
Data.
5.13 Imation is authorized to use the Overland Trademark only in
connection with the promotion and sale of Next Generation
Travan Drives, Next Generation Travan Cartridges, and Next
Generation Travan Libraries which contain the Travan VR(2)
ASIC.
5.14 Imation shall cooperate with Overland Data in making or
facilitating any governmental registrations or submissions
that are necessary to protect the Overland Trademark and
Overland Data's rights therein, including, but not limited to,
registration of Imation as a registered user of the Overland
Trademark. Upon termination of Imation's right to use the
Overland
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Trademark under this Agreement, Imation shall cooperate
with Overland Data in revocation of any such registered
user registration.
5.15 Imation shall comply with all applicable laws and governmental
regulations pertaining to the proper use and designation of
trademarks.
5.16 Imation admits the validity of the Overland Trademark.
5.17 Overland Data does not warrant or represent that the use of
the Overland Trademark shall be free from infringement of
third party trademarks. Overland Data does represent, however,
that it is not aware of any such infringement.
5.18 Imation further agrees not to use or register in any country
any trademarks resembling, diluting, or confusingly similar to
the Overland Trademark. Whenever the attention of Imation is
called by Overland Data to any such resemblance, dilution,
confusion, or risk of confusion, Imation agrees to take
appropriate steps immediately to remedy or avoid such
situations.
5.19 Imation shall give Overland Data notice of any known or
presumed infringements of the Overland Trademark, and Imation
shall give Overland Data full cooperation in the protection of
the Overland Trademark. If Overland Data decides to enforce
the Overland Trademark against an infringer, all costs
incurred and all recoveries made shall be for the account of
Overland Data.
5.20 Imation agrees to show the Overland Trademark on all
advertising, marketing, distribution and promotional materials
(and, to the extent it is commercially reasonable, the drives
and related packaging) related to its Next Generation Travan
Drives and Next Generation Travan Libraries. The size of the
display of the VR(2) trademark will be no less than 75% of the
size of the Imation Trademarks on such materials, and to the
extent commercially reasonable, the drives, and related
packaging.
5.21 Overland Data understands that Imation has offered licenses to
several manufacturers to allow them to manufacture and sell
drives for use with
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Travan 20 GB and Travan NS Cartridges, and that Imation may
extend such licenses to include Next Generation Travan
Drives. ***
6. ***
7. CONFIDENTIALITY
7.1 Each party agrees that any information identified as
confidential ("Confidential Information"), including the VR(2)
Technology, which is made available to the other party in
accordance with this Agreement shall be kept confidential.
Each party will use the other party's Confidential Information
only for the purposes contemplated and permitted by this
Agreement. Neither party will disclose the other party's
Confidential Information to any third party except as may be
required (i) by court order (provided that the party subject
to such court order gives prompt written notice thereof to the
party whose Confidential Information will be disclosed and
cooperates in any motion or action to prevent or limit the
required disclosure), and (ii) pursuant to any discovery
obligation in litigation provided that a mutually agreeable
protective order has been entered by the court. This
obligation of confidentiality shall last for five (5) years
from the date the confidential information is disclosed to the
recipient, regardless of the termination date of this
Agreement.
7.2 Each Party further agrees to protect the other party's
Confidential Information from unauthorized use or disclosure
in the same manner as it protects its own similar Confidential
Information (but in no event with less than reasonable care),
and to limit access to the other party's Confidential
Information to those of its employees and agents who need such
access for purposes contemplated and permitted by this
Agreement. However, the obligations in this Section 6 will not
apply to any information which is:
7.2.1 presently publicly available, except as disclosed in
violation of this Agreement; or
7.2.2 lawfully received by any party from a third party who
is or who was not bound in a confidential
relationship to the other party; or
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7.2.3 already properly and lawfully in possession of any
party prior to the date of this Agreement or the date
of its disclosure, or information which such party
demonstrates with appropriate documentation was known
prior hereto; or
7.2.4 required by law or governmental regulation or
necessary for the purpose of enforcement of this
Agreement; or
7.2.5 independently developed by one party without use of
any Confidential Information of the other party by
employees who have had no access to such Confidential
Information.
8. DISCLOSURE
8.1 Imation warrants that it has the power and authority to carry
out the actions contemplated under this Agreement and that its
entry into and performance under the terms of this Agreement
will not cause it to be in breach of any obligations to a
third party.
8.2 Imation acknowledges that any VR(2) Technology, any
know-how, and all documentary records and copies thereof,
as well as the copyright in any documentation or media
supplied by Overland Data pursuant to this Agreement, will
belong to and remain the property of Overland Data. Upon
termination of this Agreement, Imation will (i) return all
documentary records and copies thereof relating to the
VR(2) Technology to Overland Data, and (ii) immediately
terminate any use of the VR(2) Technology, any know-how,
and all documentary records and copies thereof.
8.3 Overland Data warrants that it has the power and authority to
carry out the actions contemplated under this Agreement and
that its entry into and performance under the terms of this
Agreement will not cause it to be in breach of any obligations
to a third party.
8.4 Overland Data acknowledges that the Compliance Test and
related reference tapes, sample tapes, instructions for
writing such sample tapes, specifications for Next Generation
Travan Tape Recording Formats, and all documentary records and
copies thereof, as well as the copyright in any documentation
or media supplied by Imation pursuant to this
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Agreement, will belong to and remain the property of
Imation. Upon termination of this Agreement, Overland Data
will (i) return all reference tapes, sample tapes,
instructions, specifications for Next Generation Travan
Tape Recording Formats, and documentary records and copies
thereof relating to the Compliance Test to Imation, and
(ii) immediately terminate any use of the reference tapes,
sample tapes, instructions, specifications for Next
Generation Travan Tape Recording Formats, and documentary
records and copies thereof relating to such Compliance Test.
9. DISCLAIMER
9.1 With respect to any samples provided by Overland Data
pursuant to this Agreement, Imation acknowledges and agrees
that Overland Data does not undertake, but will
nevertheless be entitled to defend, any suit brought for
infringement of third party rights and that Overland Data
does not undertake to reimburse or indemnify Imation, its
agents, subagents, customers, or any other persons for the
cost of defending suits or for damages incurred as a result
of such suits. Any risks associated with infringement of
third party rights with respect to such samples will be
borne solely by Imation or its licensees. OVERLAND DATA
SPECIFICALLY DISCLAIMS ALL WARRANTIES, EXPRESSED OR
IMPLIED, INCLUDING WITHOUT LIMITATION IMPLIED WARRANTIES OF
MERCHANTABILITY, NON-INFRINGEMENT AND FITNESS FOR A
PARTICULAR PURPOSE, WHETHER OR NOT SUCH PURPOSE IS KNOWN TO
OVERLAND DATA, WITH RESPECT TO SUCH SAMPLES EMBODYING THE
VR(2) TECHNOLOGY AND ANY PARTICULAR APPLICATION OR USE OF
THE VR(2) TECHNOLOGY EMBODIED IN SUCH SAMPLES IN ANY TRAVAN
PRODUCT. IN NO EVENT SHALL OVERLAND DATA BE LIABLE FOR ANY
LOSS OR PROFIT OR ANY OTHER COMMERCIAL DAMAGES WITH RESPECT
TO SUCH SAMPLES, INCLUDING WITHOUT LIMITATION SPECIAL,
INCIDENTAL, CONSEQUENTIAL, PUNITIVE OR OTHER DAMAGES.
9.2 Overland Data acknowledges and agrees that Next Generation
Travan Drives have not been commercialized yet and that
Imation cannot guarantee that such drives will be
commercialized.
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10. TERM AND TERMINATION
10.1 This Agreement is effective as of the Effective Date and shall
continue for the life of the last to expire of the patents
licensed under this agreement.
10.2 If either Party at any time during the term of this Agreement
shall fail to perform any of its obligations hereunder,
including any failure of Imation to make any payment as set
forth in Section 2.3 or any failure of Overland Data to meet a
milestone date recited in Section 2.2, such Party may so
notify such other Party in writing of such default, stating in
such written notice the obligations which such other Party
shall have failed to perform. *** If such other Party fails to
so cure the default, the Party may at its option terminate the
applicable license(s) by giving such other Party written
notice of such termination. If (i) ***, and (ii) Imation
waives its right to terminate this Agreement for such default
by Overland Data, and (iii) Overland Data receives written
notice from Imation of such waiver and its intent to perform
its remaining obligations under this Agreement, Overland Data
will use commercially reasonable efforts to (a) select another
semiconductor foundry to fabricate the Travan VR(2) ASIC; (b)
enter into a foundry agreement granting such foundry
intellectual property licenses and know-how to fabricate the
Travan VR(2) ASIC on commercially reasonable terms so as to
reduce any delays in achieving the milestones by the dates set
forth in Section 2.2. This right of termination is in addition
to and not in lieu of any other rights the Parties may have
under this contract.
10.3 Imation agrees and acknowledges that Overland Data will be in
compliance with the provisions of Articles 4 and 5 of this
Agreement if any reference tapes, sample tapes, or
instructions provided by Imation are defective in any way,
resulting in a successful completion of the Compliance Test
when such drive would otherwise fail, until such time as
Imation provides non-defective replacement tapes and/or
instructions.
10.4 No waiver by either Party of any default or breach of any
covenant by the other Party shall be implied from any omission
by such Party to take action on account of such default if
such default persists or is repeated, and no express waiver
shall affect any default other than the default
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CONFIDENTIAL TREATMENT REQUESTED
OVERLAND DATA INC. CONFIDENTIAL
specified in the waiver, and then said waiver shall be
operative only for the time and to the extent therein
stated.
11. NOTICES
11.1 Any notice, report, or communication required or permitted to
be given hereunder shall be in writing and shall be deemed to
be properly given when sent by registered mail, postage
prepaid, addressed to the party to whom such notice is to be
given as follows:
Imation: General Manager
Data Storage Technologies Business
Imation Corp., 1 Imation Place
Oakdale, MN 55128-3414, U.S.A.
with a copy to: Imation Legal Affairs
1 Imation Place
Oakdale, MN 55128-3414, U.S.A.
Attention: General Counsel
Facsimile: 651-704-5952
Overland Data: Scott McClendon
Overland Data, Inc.
8975 Balboa Avenue
San Diego, CA 92123
11.2 Any Party may change the address or designee to which notice
to it may be given by notice as provided herein.
12. MISCELLANEOUS PROVISIONS
12.1 This Agreement shall be construed according to the laws of
Minnesota, without regard to conflicts of laws rules.
12.2 Neither Party will do any act which will violate any law
and/or regulation of the U.S. or any other applicable country
related to the export and re-
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OVERLAND DATA INC. CONFIDENTIAL
export of technical information provided hereunder or any
product incorporating such technical information.
12.3 Any dispute, controversy or claim arising out of or relating
to this Agreement, or the performance, breach or termination
thereof, or any other dispute between the parties, will be
settled by a single arbitrator selected by the parties in
accordance with the Rules of the American Arbitration
Association, as in effect as of the date of this Agreement.
The place of the arbitration will be San Diego, CA. The
language to be used in the arbitration will be English.
Judgment on the award rendered by the arbitrator may be
entered in any court of appropriate jurisdiction.
Notwithstanding the foregoing, the parties may seek
preliminary equitable relief in any court of competent
jurisdiction prior to the commencement of arbitration
proceedings under this section.
12.4 This Agreement and the licenses granted herein shall be
non-assignable and non-transferable unless approved by both
Parties in writing, except as part of the sale or other
transfer of all or substantially all of the business of a
Party to which this Agreement relates.
12.5 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 or trademark;
(b) a warranty or representation that the exercise of rights and
licenses granted under this Agreement shall be free from
infringement of patents or trademarks; or
(c) an agreement, understanding, or obligation of any kind by
either Party to maintain or enforce its patents or trademarks
to bring or prosecute actions or suits against any third
parties for infringement, or conferring any rights to the
licensed Party to bring or prosecute actions or suits against
third parties for infringement.
12.6 IT IS UNDERSTOOD AND AGREED THAT NEITHER PARTY SHALL BE LIABLE
TO THE OTHER UNDER BREACH OF CONTRACT, WARRANTY, NEGLIGENCE,
STRICT LIABILITY OR ANY OTHER
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CONFIDENTIAL TREATMENT REQUESTED
OVERLAND DATA INC. CONFIDENTIAL
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 THIS AGREEMENT OR
THE TERMINATION OF THIS AGREEMENT.
12.7 Subject to Article 12.6, 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 attorneys'
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 products made or
processes performed by the indemnifying Party under this
Agreement.
12.8 Subject to Article 12.6, a Party (the "indemnitee") which
intends to claim indemnification under this Article 12 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 defense 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 defense 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.
12.9 Any provision of this Agreement which may be deemed invalid or
unenforceable by a court of competent jurisdiction shall in no
way
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invalidate or render unenforceable the remainder of this
Agreement, which shall remain in full force and effect.
12.10 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.
12.11 This Agreement contains the complete and entire agreement
between the Parties, and supersedes any previous relevant
communication, representation or agreement, verbal or written,
including the Letter of Intent between the Parties dated March
31, 1998. No modification or renewal of this Agreement will be
binding upon either Party unless it is made in writing by
authorized representatives of both Parties.
12.12 Each of the Parties hereto is an independent contractor and
nothing herein shall be deemed to constitute the relationship
of partners, joint venturers, nor of principal and agent
between the Parties hereto.
12.13 This Agreement shall bind the Parties, their successors,
trustees, and permitted assignees.
12.14 The article and section headings in this Agreement are
inserted for convenience only and shall not constitute a part
hereof.
IN WITNESS WHEREOF, the parties hereto have each caused this Agreement to be
duly executed as of the Effective Date.
Overland Data, Inc. Imation Corp.
By: /s/ Scott McClendon By: /s/ R. C. Lueck
------------------------- ----------------------------------
Name: Scott McClendon Name: R. C. Lueck
------------------------- ----------------------------------
Title: President and CEO Title: Director Finance and Operations
------------------------- ----------------------------------
Date: March 1, 1999 Date: February 25, 1999
------------------------- ----------------------------------
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OVERLAND DATA INC. CONFIDENTIAL
EXHIBIT A
Imation Licensed IP
1) COPYRIGHTS, MASK WORKS. Any copyright or mask works owned by Imation (or
licensable by Imation without incurring a royalty), use of which is necessary to
both (1) manufacture and/or sell a Next Generation Travan Drive and (2) enable
interchangeability of Next Generation Travan Cartridges among Next Generation
Travan Drives employing the Travan formats.
2) PATENTS.
US Patent
Number Issue Date Title
- ------------------------------------------------------------------------------------------
4,462,053 Jul. 24, 1984 Method for Controlling Disc Head
4,472,750 Sep. 18, 1984 Data Record with Pre-Recorded Transducer
Positioning Signals, and System for Utilizing Same
4,498,129 Feb. 5, 1985 Method and Apparatus for Normalizing Servo-
Positioning Signals
4,646,175 Feb. 24, 1987 Method and Apparatus for Positioning Transducers
by Digital Conversion of Analog-Type Signals
5,558,291 Sep. 24, 1996 Drive for Handling Multiple-Size Information
Storage Media Cartridges and Cartridges Therefor
In addition to the patents listed above, corresponding published applications in
any country and any and all patents issuing on said applications, and any
continuations, continuations-in-part, divisions, extensions, reissues or
renewals thereof, shall be deemed to be included in this Exhibit A.
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CONFIDENTIAL TREATMENT REQUESTED
OVERLAND DATA INC. CONFIDENTIAL
EXHIBIT B
***
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OVERLAND DATA INC. CONFIDENTIAL
EXHIBIT C
1. Imation agrees and acknowledges that pricing for the Travan VR(2) ASIC is
subject to the execution of a binding foundry agreement (the "FOUNDRY
AGREEMENT") between Overland Data and its semiconductor foundry licensed
to produce the Travan VR(2) ASIC design.
2. The parties agree and acknowledge that Overland Data will endeavor to
achieve the price targets for specific volumes set forth below.
3. Imation agrees and acknowledges that such price targets below do not
constitute any binding obligation, representation or warranty of Overland
Data to supply Travan VR(2) ASICs to anyone at such prices and volumes.
***
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CONFIDENTIAL TREATMENT REQUESTED
OVERLAND DATA INC. CONFIDENTIAL
EXHIBIT D
TRAVAN-TM- AND TRAVAN NS-TM- DRIVE MANUFACTURER LICENSEES AS OF 2/3/99:
AIWA
TECMAR
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