EXHIBIT 10.1
INTELLECTUAL PROPERTY
AGREEMENT
This Intellectual
Property Agreement, dated as of March 10, 2004 (the “
Agreement ”), is made by and among CACI
International Inc , a Delaware corporation (“
Parent ”), CACI, INC. — FEDERAL , a
Delaware corporation and wholly-owned subsidiary of Parent (“
Federal ”), Dagger Acquisition Corporation
(“ Dagger ”), a Delaware corporation and
wholly-owned subsidiary of Federal, CGI Group Inc. , a
Québec Corporation (“ Crossbow ”), and
American Management Systems, Incorporated , a Delaware
corporation (“ Arrow ”)(collectively, the
“ Parties ”, and individually a “
Party ”).
WHEREAS, Arrow,
Crossbow, Dagger and certain other parties, simultaneously with the
execution hereof, are entering into an Asset Purchase Agreement
(the “ APA ”) and other agreements under which
Dagger will purchase assets of Arrow related to the Business (as
defined in the APA, the “ Transaction
”);
WHEREAS, a
subsidiary of Crossbow intends to purchase all or substantially all
of the capital stock of Arrow immediately upon the Closing of the
Transaction (the “ Subsequent Transaction ”) and
to operate those of Arrow’s businesses that Dagger does not
purchase under the APA (as defined in the APA, the “
Retained Operations ”);
WHEREAS, as a
result of the APA, certain assets Used In The Business are to be
transferred to Dagger, while other assets Used In The Business are
also used in the Retained Operations and are to be transferred in
part or licensed to Dagger while retained in part by
Arrow;
WHEREAS, Dagger
needs to receive ownership of certain assets of Arrow which are
being transferred in connection with the Transaction, and Arrow
needs to retain ownership of assets used in the Retained
Operations;
NOW, THEREFORE, in
consideration of the mutual promises hereinafter set forth and
other good and valuable consideration, the receipt and adequacy of
which are hereby acknowledged, the Parties hereby agree as
follows:
1. DEFINITIONS
As used herein, the following
terms shall have the meanings set forth below:
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1.1.
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Capitalized terms used in this
Agreement but not defined herein shall have the meaning given in
the APA.
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1.2.
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“Arrow Exclusive Field of
Use” means (a) the United States
Government and quasi-United States Government agencies (e.g.,
United States Postal Service and Federal Thrift), and U.S. state
and local governments, other than those included in the Dagger
Exclusive Field of Use, and (b) companies whose predominant
business is to provide communications, media, entertainment,
financial services and healthcare products or services.
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1.3.
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“Dagger Exclusive Field of
Use” means United States Government
involved with defense, the United States Intelligence Community (as
comprised by Air Force Intelligence, Army Intelligence, the Central
Intelligence Agency, Coast Guard Intelligence, the Defense
Intelligence Agency, Marine Corps Intelligence, the National
Geospatial-Intelligence Agency, the National Reconnaissance Office,
the National Security Agency and Navy Intelligence, as well as the
intelligence organizations and functions within the Department of
Energy, the Department of Homeland Security, the Department of
State, the Department of Treasury and the Federal Bureau of
Investigation) and homeland security (consisting of all agencies of
the United States Government included in the Department of Homeland
Security as of the date hereof), either directly or through other
parties that provide goods and/or services to such
agencies.
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1.4.
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“Nonexclusive Field of
Use” means in all countries and all
markets other than the Arrow Exclusive Field of Use and the Dagger
Exclusive Field of Use.
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1.5.
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“Improvements”
means the modifications,
enhancements and improvements to any Technology made after the
Closing, but excluding Momentum Improvements.
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1.5.1.
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“Momentum
Improvements” means the modifications,
enhancements and improvements to the Shared Technology made by
Arrow or Dagger in connection with the production of version 6.0 of
the listed “Momentum Products” in
Schedule B-2, including such modifications, enhancements and
improvements made prior to the first product release by Arrow and
Dagger of the complete version 6.0 of the Momentum
Products.
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1.5.2.
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“Intellectual
Property” means all Patents, Trademarks and
Other IPR.
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1.5.3.
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“Patents”
means patents, utility
models and applications for the foregoing and similar technology
rights which and insofar as they are the subject of registration
with a competent authority, including divisions, extensions,
re-examinations, reissues, continuations, continuations-in-part and
renewal applications, anywhere in the world.
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1.5.3.1.
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“Inventions”
means any invention or
discovery (i) related to the Technology and conceived prior to
the Closing Date, or (ii) related to Momentum Improvements and
conceived prior to the first product release of the complete
Momentum Products release 6.0, and for which a Patent is
subsequently obtained.
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1.5.3.2.
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“Subject
Patents” means all Patents owned by Arrow as
of the Closing Date, all Patents that claim priority to any of the
Patents owned by Arrow as of the Closing Date, and all Patents for
any Invention.
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1.5.4.
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“Trademarks”
means all registered and
common law trademarks, trade names, service marks, and trade dress
rights, including all applications and registrations thereof and
any common law rights, anywhere in the world.
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1.5.4.1.
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“Dagger
Trademarks” means all Trademarks listed in
schedule A-1, the names used in connection with the Dagger
Products, domain names registered to Arrow that incorporate the
name of a Dagger Product (excluding domain names that combine a
Dagger Product name with an Arrow Trademark) and the goodwill
associated therewith.
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1.5.4.2.
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“Arrow
Trademarks” means all Trademarks, including
domain names, used by Arrow prior to Closing except for the Dagger
Trademarks and excluding domain names that combine a Dagger Product
name with an Arrow Trademark, and the goodwill associated
therewith.
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1.5.5.
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“Other IPR”
means all copyrights,
trade secrets, confidential or proprietary rights, or other
intellectual property rights in Technology anywhere in the world,
excluding (i) Patents, and (ii) Trademarks.
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1.5.5.1.
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“Dagger IPR”
means all Other IPR in
the Dagger Technology, excluding Shared IPR, Special IPR, and Tool
IPR.
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1.5.5.2.
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“Shared IPR”
means all Other IPR in
the Shared Technology, excluding Special IPR and Tool
IPR.
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1.5.5.3.
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“Special IPR”
means all Other IPR in
the Special Technology, excluding Tool IPR.
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1.5.5.4.
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“Tool IPR”
means all Other IPR in
the Tools.
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1.6.
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With respect to a license granted
herein, “Grantor” means the Party, either Dagger
or Arrow as the case may be, granting the license and
“Grantee” means the Party, either Arrow or
Dagger as the case may be, being granted the license.
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1.7.
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“Products”
means those products,
for the specified versions and type (object and/or source code),
set forth in the attached Schedules B-1 through B-4, in which
Schedule B-1 lists “Dagger Products” ,
Schedule B-2 lists “Shared Products” ,
Schedule B-3 lists “Special Products” , and
Schedule B-4 lists “Tools.”
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1.8.
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“Technology”
means all software (in
source code, object code, firmware and other form), technical and
commercial information of a confidential or proprietary nature (in
tangible or intangible form), know-how, business methods, supplier
lists, designs, data, databases and documents of whatever kind,
whether drawings, specifications, photographs, samples, models,
processes, procedures, reports and correspondence, that are Used In
The Business and (i) in existence and owned by Arrow prior to
the Closing Date or (ii) Momentum Improvements. Technology
does not include Improvements made after the Closing Date, except
for Momentum Improvements. Technology includes the software listed
in Schedules B-1 through B-5.
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1.8.1.
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“Dagger
Technology” means all Dagger Products, and the
Technology used in connection with the Dagger Products, excluding
Technology also used in the Retained Operations.
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1.8.2.
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“Shared
Technology” means all Shared Products, and the
Technology used in connection with the Shared Products, excluding
Special Technology and Tools.
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1.8.3.
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“Special
Technology” means all Special Products, and the
Technology used in connection with the Special Products, excluding
Tools.
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1.9.
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“Used In The
Business” means as of the Closing or
immediately prior to the execution of this Agreement
(i) actually licensed by Arrow to a customer or customers in
the Business, or (ii) promised to be delivered by Arrow to a
customer in connection with the Business and for which there is an
outstanding contract with a customer, or an outstanding formal bid
or proposal made by Arrow prior to the Closing or execution of this
Agreement.
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2.
CONSIDERATION
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2.1.
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This Agreement, including all of the
transfers, assignments, and grants of licenses set forth in
Article 3 hereof, and the rights and obligations of Articles 3
through 11 and 13, is made in consideration of the mutual covenants
set forth in the APA and herein and a portion of the Purchase Price
referred to in the APA. The rights and obligations of the Parties
under Article 12 “Conditions Precedent and
Representations” and Section 7.1 “Third Party
Consents” shall be deemed effective upon execution and
delivery of this Agreement. All other rights and obligations of the
Parties, including the transfers, assignments and grants of
licenses set forth in Article 3 and the rights and obligations
of Articles 3 through 11 and 13 and Sections 7.2 through 7.7,
shall be effective upon the occurrence of, and as of, the Closing.
Article 12 “Conditions Precedent and
Representations” shall terminate upon the occurrence of, and
as of, the Closing.
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3. RIGHTS TRANSFERRED,
ASSIGNED AND GRANTED TO DAGGER
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3.1.
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Transfer and Assignment of Dagger
Technology and Dagger IPR. Arrow hereby sells, transfers and
assigns to Dagger, and Dagger purchases and acquires from Arrow,
all of Arrow’s rights, title and interest in and to the
Dagger Technology and Dagger IPR. Such transfer and assignment
includes (i) the rights with respect to all causes of action
either in law or equity, if any, for past, present or future
infringement of the Dagger IPR, except as otherwise provided in
this Agreement; and (ii) all income, royalties and payments
now or hereafter due or payable in respect to the Dagger
IPR.
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3.2.
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Transfer and Assignment of Shared
Technology and Shared IPR
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3.2.1.
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Arrow hereby sells, transfers and
assigns to Dagger, and Dagger purchases and acquires from Arrow,
all of Arrow’s right, title and interest in and to the Shared
Technology and Shared IPR solely in the Dagger Exclusive Field of
Use, including all right, title and interest in and to copyrights
in the Shared Technology, and other
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Shared IPR, solely in the Dagger
Exclusive Field of Use. Such transfer and assignment includes
(i) the rights with respect to all causes of action either in
law or equity, if any, for past, present or future infringement of
the Shared IPR in the Dagger Exclusive Field of Use, except as may
be otherwise provided subsequent to the Closing under
Article 5 of this Agreement; and (ii) all income,
royalties and payments now or hereafter due or payable in respect
to the Shared IPR, in the Dagger Exclusive Field of Use, except as
may be otherwise subsequent to to the Closing provided under any
subsequent distribution or services agreement entered into between
the Parties. Such transfer and assignment under this section 3.2.1
excludes (i) any assignment of Arrow’s right, title and
interest in and to the Shared Technology and Shared IPR in the
Arrow Exclusive Field of Use or Nonexclusive Field of Use;
(ii) the rights with respect to all causes of action either in
law or equity, if any, for past, present or future infringement in
the Shared IPR in the Arrow Exclusive Field of Use and Nonexclusive
Field of Use; and (ii) all income, royalties and payments now
or hereafter due or payable in respect to the Shared IPR in the
Arrow Exclusive Field of Use and Nonexclusive Field of
Use.
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3.2.2.
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Arrow hereby sells, transfers and
assigns to Dagger, and Dagger purchases and acquires from Arrow, a
joint and undivided co-ownership of all right, title and interest
in and to the Shared Technology and Shared IPR solely in the
Nonexclusive Field of Use. Such transfer and assignment includes
the rights with respect to all causes of action either in law or
equity, if any, for past, present or future infringement of the
Shared IPR in the Nonexclusive Field of Use, except as otherwise
provided in this Agreement. Such transfer and assignment under this
section 3.2.2 excludes (i) any assignment of Arrow’s
right, title and interest in and to the Shared Technology and
Shared IPR in the Arrow Exclusive Field of Use; (ii) the rights
with respect to all causes of action either in law or equity, if
any, for past, present or future infringement in the Shared IPR in
the Arrow Exclusive Field of Use; and (ii) all income,
royalties and payments now or hereafter due or payable in respect
to the Shared IPR in the Arrow Exclusive Field of Use.
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3.3.
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Exclusive License for Special
Technology. Arrow hereby grants to Dagger a
worldwide, irrevocable, perpetual, royalty-free exclusive license
under the Special IPR in the Dagger Exclusive Field of Use, of the
rights to make, use, distribute (including to sell and offer to
sell) in object code and source code form, import, copy and make
derivative works of, the Special Technology, including the right to
transfer or sublicense such rights, except that Arrow’s
approval of the transferee or sub-licensee is required for either
(i) transfer of such rights in the Special Technology
identified in Schedule B-3 as Legacy Momentum (“
Legacy Momentum ”) to any third party or
(ii) sublicense of such rights in Legacy Momentum to any third
party other than an existing Legacy Momentum customer under a
Dagger Engagement. Arrow shall not unreasonably delay or withhold
approval of a transfer or sublicense of such rights in Legacy
Momentum. Whether or not Arrow has acted reasonably shall be
assessed against the business judgment that would have been made by
a similarly situated company with comparable market presence, and
technical and intellectual property resources.
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3.4.
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Nonexclusive License for
Tools. Arrow
hereby grants to Dagger a worldwide, irrevocable, perpetual,
royalty-free nonexclusive license under the Tools IPR in the Dagger
Exclusive Field of Use and for internal use only, to make, use,
import, copy and make derivative works of, the Tools, solely for
use in connection with the Dagger Technology, Shared Technology, or
Special Technology, including the right to transfer or sublicense
such rights in connection with a transfer or sublicense of Dagger
Technology, Shared Technology, or Special Technology.
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3.5.
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Transfer of Trademarks.
Arrow hereby transfers
and assigns to Dagger all of Arrow’s rights, title and
interest in and to the Dagger Trademarks, and the goodwill
associated therewith. Such transfer and assignment includes
(i) the rights with respect to all causes of action either in
law or equity, if any, for past, present or future infringement of
the Dagger Trademarks, except as otherwise provided in this
Agreement; and (ii) all income, royalties and payments now or
hereafter due or payable in respect to the Dagger
Trademarks.
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4. RIGHTS RETAINED BY ARROW
AND DAGGER
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4.1.
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Retained Interests.
All rights, title and
interests not transferred or assigned at the Closing under the APA
or this Agreement are reserved by Arrow, including but not limited
to (i) all right, title and interest in the Arrow Trademarks,
(ii) all right, title and interest in the Shared Technology
and Shared IPR solely with respect to the Arrow Exclusive Field of
Use, and (iii) a joint and undivided co-ownership right, title
and interest in the Shared Technology and Shared IPR in the
Nonexclusive Field of Use.
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4.2.
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Rights of Grantee in the Event of
Grantor’s Insolvency. In the event of a rejection or
termination of this Agreement or any license hereunder in
connection with a Grantor’s insolvency, bankruptcy,
dissolution or liquidation, (a) such rejection or termination
shall be deemed to not terminate the Grantee’s right, title
and interest with respect to any Intellectual Property or
Technology under this Agreement or such license, (b) the
Grantee shall be entitled to continue to exercise its rights under,
and in accordance with, this Agreement and any such license, and
(c) the Grantee’s continued use of the Intellectual
Property and Technology as described in this Agreement shall be
deemed to not breach any obligation under this Agreement and to not
violate or infringe any Intellectual Property or rights in the
Technology. To the extent applicable to the Grantor’s
insolvency, bankruptcy, dissolution or liquidation, this
Section 4.2 shall be construed and enforced in accordance with
the U.S. Bankruptcy Code, including Section 365(n).
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4.3.
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Co-Ownership Rights.
A Party’s
co-ownership rights in Shared Technology and Shared IPR shall be
complete and equal ownership of all right, title and interest in
the Non-Exclusive Field of Use, such that each shall own therein
all of the exclusive rights of intellectual property ownership
granted, vested or afforded by law or equity, excepting only the
rights expressly herein relinquished, waived and agreed to not
assert and the rights otherwise restricted by any of the Ancillary
Agreements.
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5. IMPROVEMENTS;
ENFORCEMENT
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5.1.
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Improvements.
All Improvements which
are made, conceived or reduced to practice by a Party following the
execution of this Agreement, and all intellectual property rights
therein, shall be the exclusive property of that Party, without
restrictions. Neither Party shall have an obligation to disclose,
or to notify the other Party of, any Improvements under this
Agreement. Each Party shall have the sole right to file, prosecute,
and maintain any patent, copyright, trademark or other intellectual
property protection that may become available from the Improvements
made by it, and shall have the right to determine whether or not,
and where, to file a patent, copyr
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