Second Amendment to
License, Distribution and Option Agreement
This Second
Amendment to License, Distribution and Option Agreement
(“Amendment”) is entered into this 16
th day of June, 2005 (“Amendment Effective
Date”), by and between IXIA, a California corporation doing
business at 26601 West Agoura Road, Calabasas, CA 91302
(“Ixia”), and NETIQ CORPORATION, a Delaware corporation
with its principal place of business at 3553 First Street, San
Jose, California 95134, and its wholly owned subsidiaries
(“NetIQ”), and amends the License, Distribution and
Option Agreement entered into on July 7, 2003, by and between
Ixia and NetIQ (as previously amended, the
“Agreement”).
In consideration
of the premises and mutual covenants contained herein and other
good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the parties agree as
follows:
For purposes of
this Amendment, capitalized terms set forth in this Amendment shall
have the meanings set forth in the Agreement, unless otherwise
defined in this Amendment.
2. Deletion
of Section 22
Section 22 of
the Agreement is deleted in its entirety.
3.
Assignment and Further Assurances
NetIQ hereby
sells, assigns, transfers, and sets over to Ixia (and Ixia’s
successors and assigns) the Patents set forth on
Exhibit A (collectively, the “Assigned
Patents”), together with all rights and interests currently
possessed by NetIQ with respect to the Assigned Patents, including
the right to sue for past infringement of the Assigned Patents and
collect any and all damages arising from such past infringement.
Except as expressly set forth below in this Section 3:
(a) the Assigned Patents are assigned to Ixia, on an “AS
IS, WHERE IS” basis; (b) NetIQ makes no representations
or warranties regarding the Assigned Patents, including, but not
limited to, any representation regarding ownership or validity; and
(c) the representations and warranties set forth in
Section 19 of the Agreement are inapplicable to the Assigned
Patents. Within five days of the Amendment Effective Date, NetIQ
shall deliver to Ixia the Memorandum of Patent Assignment in the
form attached hereto as Exhibit B . In addition, upon
Ixia’s reasonable request, NetIQ shall prepare, execute and
deliver such further instruments of conveyance, sale, assignment or
transfer, at Ixia’s expense, and shall take or cause to be
taken such other or further action, as Ixia shall reasonably
request of NetIQ at any time or from time to time, in order to
perfect, confirm or evidence Ixia’s title to all or any part
of the Assigned Patents.
NetIQ will provide
a written conflict waiver to permit the firm of Myers Bigel Sibley
& Sajovec, P.A. and individual attorneys such as Robert W.
Glatz and Mitchel S. Bigel to provide to Ixia, at Ixia’s cost
and expense, any advice, counsel, and assistance that Ixia seeks
with respect to the
Assigned
Patents and/or the prosecution thereof. Promptly following
Ixia’s request, NetIQ will also provide to Ixia copies of
files and other materials related to the Assigned Patents and/or
the prosecution thereof, including copies of correspondence to or
from examining authorities, invention disclosures, prior art
searches, records relating to products embodying the inventions
covered by the Assigned Patents, attorney/client correspondence and
internal memoranda. Ixia will reimburse NetIQ for its out-of-pocket
expenses in providing such materials.
Promptly following
Ixia’s request, and subject to its compliance with applicable
laws and regulations on data privacy, NetIQ will provide to Ixia
such information it has as to the current whereabouts of the
inventors named on the Assigned Patents, and NetIQ will use
commercially reasonable efforts to encourage those inventors to
cooperate with Ixia in enforcing the Assigned Patents. If any of
those inventors are NetIQ employees, NetIQ will make them available
to Ixia during normal business hours for consultation and
cooperation in enforcing the Assigned Patents; provided, however,
in no event shall the burden imposed on such employees exceed ten
hours per individual and twenty hours cumulative for all such
individuals unless Ixia agrees to reimburse NetIQ for such
individuals’ additional time at a reasonable per-hour rate
(notwithstanding the foregoing, the parties hereby agree that any
testimony—whether in court, depositions, or
otherwise—provided by such individuals shall not count
towards such time limitations, and Ixia shall have no obligation to
reimburse NetIQ or such individuals for any such testimony). In
addition, NetIQ will provide documentation, information, and other
cooperation reasonably requested by Ixia relating to the
Assigned
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