Appendix 2.4(a) to
Intellectual Property License Agreement
THIS LICENSE
AGREEMENT (this
“License Agreement”) is entered as of October
___, 2002, by and between ECI TELECOM LTD. (
“ECI” or “Licensee” ) and
VERAZ NETWORKS LTD. [formerly Chorale Networks Ltd.](
“Veraz” or “Licensor” ); ECI
or Licensee, on the one hand, and Veraz or Licensor, on the other,
may each individually be referred to in this License Agreement as a
“Party” , and collectively referred to in this
License Agreement as the “Parties”.
WHEREAS, Licensee and Licensor are parties to that
certain Separation and Asset Purchase Agreement dated as of October
___, 2002 (the “APA” ); and
WHEREAS , Licensee and Licensor are parties to that
certain Intellectual Property License Agreement dated as of October
___, 2002 (the “Intellectual Property License
Agreement” ); and
WHEREAS , as part of the Intellectual Property License
Agreement, Licensor and Licensee have agreed to enter into this
License Agreement; and
WHEREAS ; Licensee is desirous of obtaining from
Licensor, and Licensor is willing to grant to Licensee, subject to
the terms and conditions set forth herein, a license to use
Licensor IPR (as defined below) for certain prescribed purposes;
and
NOW,
THEREFORE, in
consideration of the mutual covenants and provisions herein
contained, it is hereby agreed by and between the Parties as
follows:
As used herein,
the following terms have the following meanings unless otherwise
defined herein. Additionally, all capitalized terms used herein
shall have the meanings as set forth in the Intellectual Property
License Agreement:
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1.1
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“Assignment
Agreement” shall mean that certain Intellectual
Property Assignment Agreement of even date herewith for which the
Parties have entered into.
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1.2
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“Intellectual Property
Rights” shall mean all rights under the laws
of any jurisdiction in the world with respect to: (i) rights
associated with works of authorship, including exclusive
exploitation rights, copyrights, moral rights, and mask works;
(ii) trade secret rights; (iii) contract rights in
intellectual property of every kind and nature; and
(iv) rights in or relating to registrations, renewals,
extensions, combinations, divisions, and reissues of, and
applications for, any of the rights referred to in subclauses
(i) through (iii) above; but excluding all Patents,
trademarks, service marks, trade names, and service
names.
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1.
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1.3
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“Licensor
Know-How” shall mean the Know-How of Licensor
listed on Appendix 1.3 attached hereto that has been
assigned to Licensor under the Assignment Agreement, which is the
Know-How licensed to Licensee hereunder.
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1.4
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“Licensor
Patents” shall mean the Patents of Licensor
listed on Appendix 1.4 attached hereto that have been
assigned to Licensor under the Assignment Agreement, which are
those Patents that are licensed to Licensee hereunder.
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1.5
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“Licensor
IPR” shall mean the Licensor Know-How and
Licensor Patents.
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1.6
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“Licensee
Business” shall mean the development,
manufacturing, distribution, sale, service and support solely of
Licensee Products.
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1.7
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“Licensee
Products” shall mean those products of
Licensee listed on Appendix 1.7 attached hereto that
contain and are used substantially to perform bandwidth
optimization functions and features for mobile radio cellular
networks only.
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1.8
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“Term”
shall have the meaning
set forth in Article 9 hereof.
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2.1
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Grant of License
. Effective as of
Closing and subject to the terms and conditions of this License
Agreement, including the license restrictions set forth in
Section 2.2 below, Licensor grants to Licensee an
irrevocable, perpetual, nonexclusive, worldwide, fully paid,
royalty-free, non-transferable (except as provided in
Section 8.2 ) license:
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(a) under the
Licensor Patents to use, develop, design, integrate, make, have
made, market, sell, offer to sell, lease, offer to lease, import
and otherwise transfer any products and services with respect to
activities conducted within the Licensee Business, and to use any
apparatus and practice any method in the manufacture or use
thereof; and
(b) under the
Licensor’s Intellectual Property Rights, to use, develop,
market, sell, offer to sell, lease, offer to lease, import,
service, reproduce, display, perform, design, integrate, import,
modify, create derivative works of, adapt, further develop,
distribute directly or indirectly, and otherwise exploit the
Licensor Know-How with respect to activities conducted within the
Licensee Business.
Licensee may,
at its discretion, sublicense the foregoing rights solely to the
extent necessary for Licensee to develop, market, sell, offer to
sell, lease, offer to lease, import, distribute, service and
support the Licensee Products with respect to activities conducted
by Licensee within the Licensee Business.
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2.2
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Limitations on Use
. Licensee shall not
under any circumstances use, or encourage any third party to use,
any of the Licensor IPR to perform any activities within the Veraz
Business (as that term is defined in the Intellectual Property
License Agreement). Notwithstanding the above, Licensee shall not
be restricted in any way from pursuing any joint venture that
involves independent development or making any financial investment
in any company whatsoever provided, however, that Licensee does not
breach or
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2.
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otherwise violate any license grant,
license restriction or other obligation in this License
Agreement.
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2.3
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Grant Back Right
. Licensor and ECI
hereby acknowledge that Licensor has agreed to grant certain
limited licenses under the specified Licensor Patents listed in
Appendix 2.3 attached hereto to the respective parties
set forth therein, upon their written request to Licensor, to
permit them to use, develop, design, integrate, make, have made,
market, sell, offer to sell, lease, offer to lease, import and
otherwise transfer certain products that are not competitive to
Veraz’s products, with respect to activities conducted within
the fields of use identified in Appendix 2.3 for such
products, and to use any apparatus and practice any method in the
manufacture or use thereof. Should any of the respective parties
set forth in Appendix 2.3 request in writing for
Licensor to grant such license thereto to them, Licensor shall
grant a license under the ownership rights that Licensor has in
such applicable specified Licensor Patents at such time to such
respective party of the same scope and duration and with
appropriate field of use, product line and other similar
restrictions as those provided in this License Agreement with
regard to such specified Licensor Patents.
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2.4
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Technical Support
. For a period of two
(2) years after the date of execution of this License
Agreement by the Parties, at Licensee’s written request and
subject to the availability and agreement by the Parties upon the
amounts, including the rates for support, to be paid by Licensee
for technical support to be provided by Licensor, Licensor will
provide at mutually agreed dates and times technical support to
the
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