INTELLECTUAL PROPERTY
AGREEMENT
HARRIS STRATEX NETWORKS,
INC.
INTELLECTUAL PROPERTY
AGREEMENT
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ARTICLE
1
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1
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ARTICLE
2
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ASSIGNMENT AND LICENSE BACK OF TRADE
SECRETS
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1
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ARTICLE
3
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LICENSES TO TRADE SECRETS
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2
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ARTICLE
4
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PATENT ASSIGNMENT AND LICENSES
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3
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ARTICLE
5
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4
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ARTICLE
6
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5
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ARTICLE
7
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6
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ARTICLE
8
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LICENSES TO SUBSIDIARIES AND
IMPROVEMENTS
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6
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ARTICLE
9
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6
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ARTICLE 10
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9
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SCHEDULE A
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INTELLECTUAL PROPERTY
AGREEMENT
This INTELLECTUAL
PROPERTY AGREEMENT (this “ Agreement ”),
dated as of January 26, 2007, is made by and between HARRIS
CORPORATION, a Delaware corporation (“ Harris
”), and HARRIS STRATEX NETWORKS, INC., a Delaware corporation
(the “ Company ”).
WHEREAS, in
connection with the combination of Harris’ Microwave
Communications Division with Stratex Networks, Inc., a Delaware
corporation (“ Stratex ”), Harris, the
Company, Stratex, and Stratex Merger Corp., a Delaware corporation
and wholly owned subsidiary of the Company, have entered into an
Amended and Restated Formation, Contribution and Merger Agreement,
dated as of December 18, 2006, as amended by that certain
letter agreement, dated January 26, 2007 (the “
Formation Agreement ”), among the parties
thereto, pursuant to which the Company was formed to acquire
Stratex pursuant to the Merger (as defined in the Formation
Agreement) and to receive the Contributed Assets (as defined in the
Formation Agreement) from Harris in the Contribution Transaction
(as defined in the Formation Agreement), in each case on the terms
and subject to the conditions set forth in the Formation Agreement;
and
WHEREAS, Harris
and Stratex would not have entered into the Formation Agreement
without the undertakings contained in this Agreement and the
execution and delivery of this Agreement is a condition to closing
under the Formation Agreement.
NOW, THEREFORE, in
consideration of the foregoing and the mutual covenants in the
Agreement the parties agree as follows:
1.01
Definitions . Unless otherwise defined in this
Agreement, any term used but not expressly defined in this
Agreement shall have the meaning ascribed to such term in the
Formation Agreement. “ Affiliate ” shall
have the meaning assigned to such term by Rule 405 under the
Securities Act; provided, however , that neither the Company
nor any of its Subsidiaries shall be deemed to be an Affiliate of
Harris or any of its other Subsidiaries.
ARTICLE 2
ASSIGNMENT AND LICENSE BACK OF TRADE
SECRETS
2.01
Assignment of Contributed Trade Secrets . Subject to the
licenses granted back to Harris and its Subsidiaries pursuant to
Section 2.02 and to any and all pre-existing licenses
granted by Harris or its Subsidiaries, Harris and its Subsidiaries
hereby irrevocably transfer and assign to the Company, all of their
present worldwide right, title and interest in and to the Trade
Secrets included in the Contributed Intellectual Property together
with all Copyrights that are also Contributed Intellectual
Property, along with all rights to sue and recover for any past
infringements thereof (collectively, (“ Contributed
Trade Secrets ”).
2.02
License Back to Harris and its Subsidiaries . In
consideration for the transfer and assignment of the Contributed
Trade Secrets by Harris and its Subsidiaries to the Company
pursuant to Section 2.01 , the Company grants to Harris
and its Subsidiaries a personal, nonexclusive, non-transferable
(except as provided in Article 7 ), irrevocable
(subject to Article 6 ), worldwide, fully paid-up
license to use, copy, execute and perform, and to display and
distribute (subject to confidentiality provisions at least as
restrictive as those contained in Section 9.02(c) and
Section 9.02(d) ), the Contributed Trade Secrets, and
to create, use, copy, execute and perform, and to display and
distribute (subject to confidentiality provisions at least as
restrictive as those contained in Section 9.02(c) and
Section 9.02(d) ), derivative works from the
Contributed Trade Secrets.
2.03
Sublicenses of Contributed Trade Secrets . The grant to
Harris and its Subsidiaries from the Company in
Section 2.02 shall include a personal, non-transferable
(except as provided in Article 7 ) and nonexclusive
right to communicate portions of and grant nonexclusive sublicenses
(subject to confidentiality provisions at least as restrictive as
those contained in Section 9.02(c) and
Section 9.02(d) ) to such Contributed Trade Secrets to
customers, suppliers, sublicensees or other third parties as
necessary with respect to any products or services sold by Harris
or its Subsidiaries now or in the future.
2.04
Delivery of Contributed Trade Secrets . In the event
that any Contributed Trade Secret is not already in the possession
of the MCD Business or MCD Employees transferred to the Company,
Harris agrees to deliver to the Company, within a commercially
reasonable amount of time, any missing parts of the Contributed
Trade Secrets, to the extent such Contributed Trade Secrets are
available and can be so transferred.
2.05
Retained Copies of Contributed Trade Secrets . To the
knowledge of Harris, Harris has attempted to retain adequate copies
of the Contributed Trade Secrets. However, the parties hereto
recognize that the best or only available copy of certain
Contributed Trade Secrets may reside, prior to or after the Closing
Date, within the MCD Business, and that Harris may require certain
access to or copies of the Contributed Trade Secrets.Accordingly,
the Company agrees, upon receiving a reasonable written request
from Harris, to make a good faith effort to locate and provide, to
the extent such Contributed Trade Secret is available, within a
commercially reasonable amount of time after receipt of
Harris’ or its Subsidiary’s written request, copies of
all or any portion of the Contributed Trade Secrets.
ARTICLE 3
LICENSES TO TRADE SECRETS
3.01 Trade
Secrets Licensed to the Company . Harris and its
Subsidiaries grant to the Company a fully paid-up, worldwide,
irrevocable (subject to Article 6 ), non-transferable
(except as provided in Article 7 ) and nonexclusive
(subject to Section 3.02 ) license, subject to any and
all pre-existing licenses granted by Harris, to use any Trade
Secrets owned by Harris that are not Contributed Trade Secrets, but
are otherwise used in connection with the design, development,
repair, manufacture, use, sale, offer for sale, lease, importation
or other distribution of products or services of the MCD Business
immediately prior to the Closing together with all Copyrights
(collectively, the “ Licensed Trade Secrets
”).
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3.02 Right
to Sublicense Licensed Trade Secrets . Subject to any and
all pre-existing licenses granted by Harris or its Subsidiaries,
Harris and its Subsidiaries grant to the Company a personal,
non-transferable (except as provided in Article 7 ) and
nonexclusive right to communicate portions of and grant
nonexclusive sublicenses (subject to confidentiality provisions at
least as restrictive as those in Section 9 ) to the
Licensed Trade Secrets in connection with the operation of the MCD
Business or any products or services sold by the Company now or in
the future to suppliers to the extent necessary to produce products
or components for such products for the Company and to customers to
the extent necessary to permit such customers to use any product or
service produced or provided by the Company for its intended
purpose. The Company may not under any circumstances grant
sublicenses of such rights in connection with a general licensing
program, for settlement purposes or other purposes not directly
related to its own operations.
3.03
Retained Copies of Licensed Trade Secrets . To the
knowledge of Harris, Harris has attempted to retain adequate copies
of the Licensed Trade Secrets. However, the parties recognize that
the best or only available copy of certain Licensed Trade Secrets
may reside, after the Closing Date, within the MCD Business or the
businesses retained by Harris following the Closing, and Harris or
the Company may require certain access to or copies of the Licensed
Trade Secrets. Accordingly, the Company and Harris each agree, upon
receiving a reasonable written request from the other party, to
make a good faith effort to locate and provide, to the extent such
Licensed Trade Secrets is available, within a commercially
reasonable amount of time after receipt of the other party’s
written request, copies of all or any portion of the Licensed Trade
Secrets reasonably deemed necessary by such other party.
ARTICLE 4
PATENT ASSIGNMENT AND LICENSES
4.01
Assignment of Contributed Patents . Subject to the
licenses granted back to Harris and its Subsidiaries pursuant to
Section 4.03 and to any and all pre-existing licenses
granted by Harris or its Subsidiaries, Harris and its Subsidiaries
hereby assign and transfer to the Company all of their right, title
and interest in and to the contributed patents listed in
Schedule A , along with all rights to sue and recover
for any past infringements thereof (collectively, the “
Contributed Patents ”).
4.02
Patents Licensed to the Company . Harris and its
Subsidiaries hereby grant to the Company a personal, fully paid-up,
worldwide, non-transferable (except as provided in Article 7
), irrevocable (subject to Article 6 ) and nonexclusive
license under the Licensed Patents, subject to any and all
pre-existing licenses granted by Harris or its Subsidiaries, to
make, have made, use, sell, offer to sell, lease, transfer, import,
export or otherwise distribute products or services of the Company
now or in the future and to use and perform all processes and
methods claimed by the Licensed Patents. The licenses in this
Section 4.02 include the right to convey to any
customer of the Company, with respect to any product which is sold
or leased by the Company to such customer, rights to use and resell
such products as sold or leased by the Company. “
Licensed Patents ” shall mean those Patents,
other than Patents which are part of the Contributed Intellectual
Property ( i.e. , the “ Contributed
Patents ”), which Harris or its Subsidiaries own or
control as of the Closing Date, which are used in the MCD Business
immediately prior to the Closing, and for which Harris or its
Subsidiaries have the right to grant
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licenses
hereunder without the payment of royalties (other than to an
inventor thereof), loss of rights or imposition of a
penalty.
4.03
License Back to Harris and its Subsidiaries . The
Company hereby grants to Harris and its Subsidiaries a personal,
fully paid-up, worldwide, non-transferable (except as provided in
Article 7 ), irrevocable (subject to
Article 6 ) and nonexclusive license under the
Contributed Patents to make, have made, use, sell, offer to sell,
lease, transfer, import, export or otherwise distribute products or
services sold by Harris or its Subsidiaries now or in the future
and to use and perform all processes and methods claimed by the
Contributed Patents. The licenses in this Section 4.03
include the right to convey to any customer of Harris or its
Subsidiaries, with respect to any product which is sold or leased
by Harris and its Subsidiaries to such customer, rights to use and
resell such products as sold or leased by Harris and its
Subsidiaries now or in the future.
4.04
Term . The licenses granted under
Section 4.02 and Section 4.03 shall extend
until the applicable patent’s expiration or the expiration of
as much of such term as grantor has the right to grant unless
otherwise terminated in accordance with the provisions of this
Agreement.
4.05 Right
to Sublicense Licensed Patents . Subject to any and all
pre-existing licenses granted by Harris or its Subsidiaries, Harris
and its Subsidiaries grant to the Company a personal,
non-transferable (except as provided in Article 7 ),
irrevocable (subject to Article 6) and nonexclusive right to
grant nonexclusive sublicenses under the Licensed Patents in
connection with the operation of the MCD Business or any products
or services sold by the Company now or in the future to suppliers
to the extent necessary to produce products or components for such
products for the Company and to customers to the extent necessary
to permit such customers to use any product or service produced or
provided by the Company for its intended purpose. The Company may
not under any circumstances grant sublicenses of such rights in
connection with a general licensing program, for settlement
purposes or other purposes not directly related to its own
operations.
4.06 No
Sham . The “have made” rights granted hereunder
to a party do not extend or give rights to such party which would
effectively create a sublicense to a third party for the patents
licensed hereunder and not for bona fide business purposes of the
ordinary operations of such party.
5.01 The
parties acknowledge that any information and software (including,
but not limited to, services and training) provided under this
Agreement are subject to U.S. export laws and regulations and
export of such information and software must be authorized under
those regulations. Each party hereby assures the other that it will
not without a license or license exception authorized by the Bureau
of Export Administration of the U.S. Department of Commerce,
Washington, D.C. 20230, United States of America, if
required:
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(i)
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export or release the information or
software (including source code) obtained pursuant to this
Agreement to a national of Country Groups D:1 or E:2 (15 C.F.R.
Part 740, Supp. 1), Iran, Iraq, Sudan, or Syria;
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(ii)
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export to Country Groups D:1 or E:2,
or to Iran, Iraq, Sudan, or Syria, the direct product (including
processes and services) of the information or software:
or
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(iii)
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if
the direct product of the information is a complete plant or any
major component of a plant, export to Country Groups D:1 or E:2, or
to Iran, Iraq, Sudan, or Syria, the direct product of the plant or
major component,
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subject to the
U.S. export control laws and regulations applicable to such
countries changing over time so as to permit exports.
This assurance
will be honored even after any termination of this Agreement or the
Formation Agreement.
ARTICLE 6
TERM AND TERMINATION
6.01 This
Agreement and the licenses and rights granted herein shall be
effective during the term commencing on the Closing Date and shall
continue in perpetuity, subject to the term of the patent licenses
granted in Article 4 , unless terminated: (i) by
mutual agreement between the Parties; or (ii) pursuant to this
Article 6 .
6.02
Harris may terminate, immediately upon notice, any of the licenses
granted by it hereunder in the event that the Company breaches any
of its obligations hereunder in any material respect; provided,
however , that if such breach is capable of being cured, the
Company shall have 45 days during which it may cure such
breach and avoid termination.
6.03 The
Company may terminate, immediately upon notice, any of the licenses
granted by it hereunder in the event that Harris breaches any of
its obligations hereunder in any material respect; provided,
however , that if such breach is capable of being cured, Harris
shall have 45 days during which it may cure such breach and
avoid termination.
6.04
Section 2.01 , Section 2.04 ,
Section 2.05 , Section 3.03 (but only to
the extent a party is otherwise entitled to use the Licensed Trade
Secrets), Section 4.01 , Section 4.04 ,
Section 5 , this Section 6.04 ,
Article 9 and Article 10 shall survive and
continue after any termination of this Agreement and other rights
and obligations of the parties which, by their nature would
continue beyond termination of this Agreement ( e.g .,
licenses to customers with respect to products sold by a party
prior to any such termination), but the ability to continue using
any of the trade secrets, Copyrights, or patents licensed hereunder
would terminate.
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