Exhibit 2.3
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
THIS INTELLECTUAL PROPERTY LICENSE AGREEMENT
(“Agreement”) is made and entered into as of July 27,
2005 (the “Effective Date”) by and between XYRATEX
TECHNOLOGY LIMITED, a company incorporated under the laws of
England (“Licensee”) and nSTOR CORPORATION, INC., a
Delaware corporation (“Licensor”).
A. Licensee’s parent company,
Xyratex Limited, and Licensor’s parent company, nStor
Technologies, Inc. have entered into an agreement and plan of
merger dated as of the date hereof (the “Merger
Agreement”) pursuant to which Xyratex Limited or a
wholly-owned subsidiary of Xyratex Limited will acquire the
Intellectual Property Rights (defined below) that are the subject
of this Agreement;
B Licensee has provided a loan to
Licensor as specified in the promissory note dated the date hereof
(the “Note”) in furtherance of the parties’
objectives under the Merger Agreement; and
C. Licensor has agreed to license
the Intellectual Property Rights to Licensee in accordance with the
terms and conditions of this Agreement.
NOW, THEREFORE, in consideration of the mutual
promises set forth herein, Licensee and Licensor hereby agree as
follows:
ARTICLE 1 : DEFINITIONS
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1.1
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“Affiliate” shall mean any company
that controls, is controlled by, or is under common control with
Licensee or its successor entity.
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1.2
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“Confidential Information” shall
mean any and all technical and non-technical information that is
identified at the time of disclosure to be proprietary or
confidential information of the disclosing party, including
tooling, formulae, bills of material, know-how, designs,
schematics, techniques, software code, mask works, technical
documentation, plans or any other information relating to any
research project, work in process, future development, scientific,
engineering, manufacturing, marketing or business plan or financial
or personnel matter relating to the disclosing party, or its
present or future products, sales, suppliers, customers, employees,
investors or business, whether in written, oral, graphic or
electronic form.
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1.3
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“Documentation” shall mean the items
of user documentation with respect to the Software provided to
Licensee or to be provided to pursuant to the Agreement, including
but not limited to the description of the functional, operational
and design characteristics of the Software and the items of
programming, systems and data base documentation.
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1.4
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“Effective Time” shall mean the
closing date specified in the Merger Agreement.
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1.5
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“Improvements” shall mean any
improvements, discoveries, developments, modifications or
derivative works, whether or not patentable.
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1.6
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“Intellectual Property Rights” shall
mean all Licensor Patents and Applications and Software, copyright
rights, moral rights, trade secret rights, mask work rights, and
all other intellectual and industrial property rights (excluding
trade marks and service marks), whether or not registered or
perfected, anywhere in the world, and all registrations, initial
applications, renewals, extensions, continuations, divisions or
reissues for any of the foregoing.
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1.7
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“Licensor
Materials” shall mean the specifications, schematics,
technical information, bills of materials, instructions, records,
drawings, data sheets, reports, hardware, firmware and other
materials and technology listed in Exhibit A .
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1.8
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“Licensor
Patents and Applications” shall mean all unexpired U.S. and
foreign patents and patent applications, and any related
continuations, continuations in part, reissues, re-examinations,
renewals, extensions and divisions thereof. “Licensor Patents
and Applications” includes those patents and applications
listed in Schedule 3.15.1(i) of the Merger Agreement.
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1.9
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“Merger” shall have the meaning set
forth in the Merger Agreement.
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1.10
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“Software” shall mean the computer
software programs and files, as listed in Exhibit A hereto
to be provided to Licensee by Licensor pursuant to this Agreement
and Licensor’s Documentation, which may be delivered to
Licensee by or on behalf of Licensor.
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1.11
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“Source
Code” shall mean the human readable source code version of
the Software including, but not limited to, all corresponding
source documentation, all developer’s notes, specifications,
flow diagrams, release notes and build procedures, and any tools
necessary to execute the build procedures or otherwise create the
Software from the source code version of the Software.
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ARTICLE 2 : SCOPE OF LICENSES
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2.1
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Grant of
License to Software and Source Code . Subject to Section 7.1 and Article 8 hereof,
Licensor hereby grants to Licensee and its Affiliates a worldwide,
non-exclusive, fully paid-up, royalty-free, perpetual, irrevocable
license, with right of sublicense, under and to all of
Licensor’s Intellectual Property Rights embodied in or
arising from the Licensor Patents and Applications, Software,
Source Code, Licensor Materials and Documentation, to: (i) use,
install, reproduce, modify and improve or have improved, make
derivative works of, distribute (through multiple tiers of
distribution), transmit and display the Software, or have improved
and operate the Software by any number of users, on any number of
computers, and at any number of sites and to use the Documentation
and Licensor Materials in any manner subject to the terms and
conditions of this Agreement; (ii) use, modify, enhance, translate,
convert, recompile, upgrade and otherwise prepare derivative works
of the Source Code; and (iii) make (including the
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right to practice methods, processes
and procedures), have made for Licensee and Licensee’s
Affiliates, use, lease, sell, offer for sale and import products.
Notwithstanding the foregoing, Licensor does not grant Licensee a
license to use or otherwise practice any patents prosecuted by
Licensor after the Effective Time that do not constitute a
continuation, continuation in part, reissue, re-examination,
renewal, extension or division of the patents and applications
listed in Schedule 3.15.1(i) of the Merger Agreement.
ARTICLE 3 : DELIVERY; INSTALLATION;
TRAINING
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3.1
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Promptly upon
execution of this Agreement, Licensor shall deliver the Software,
Source Code, Licensor Materials and Documentation to Licensee and
provide Licensee with reasonable assistance with respect to the
installation of the Software on Licensee’s computer
systems.
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3.2
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Upon delivery
of Software, Licensor shall deliver to Licensee at least one (1)
electronic and one (1) hard copy of all generally available
Documentation for such Software and Licensor Materials sufficient
to enable Licensee personnel to use and to fully understand the
functionality, use and operation of such Software. Licensor agrees
that Licensee may copy the Documentation and Licensor Materials in
order to satisfy its own reasonable internal
requirements.
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3.3
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The
Documentation specified above shall include detailed program code
and documentation relating to the development, maintenance and use
of the Source Code.
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ARTICLE 4 : WARRANTIES
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4.1
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Subject to
Section 9.3 hereof, Licensor warrants to Licensee that: (i)
Licensor has all rights necessary to provide the Software, Source
Code, Documentation and Licensor Materials to Licensee and to
perform the services as specified in this Agreement and warrants
that such Software, Source Code, Documentation, Licensor Materials
and services are free of all liens, claims, encumbrances and other
restrictions, except as otherwise set forth in the Merger
Agreement; (ii) the Software, Source Code, Documentation, Licensor
Materials and services furnished by Licensor and Licensee’s
use of the same hereunder do not violate or infringe the rights of
any third party or the laws or regulations of any governmental or
judicial authority; (iii) Licensee shall be entitled to use and
enjoy the benefit of the Software, Source Code, Documentation
Licensor Materials and services, subject to and in accordance with
this Agreement; (iv) Licensee’s use and possession of the
Software, Source Code, Documentation, Licensor Materials and
services hereunder shall not be adversely affected, interrupted or
disturbed by Licensor or any entity asserting a claim under or
through Licensor; (v) Licensor has all rights necessary to grant
the licenses to Licensee as set forth in Article 2; and (vi)
Licensee’s exercise of its rights under this Agreement will
not violate the proprietary or Intellectual Property Rights of any
third party.
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4.2
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EXCEPT AS
SPECIFICALLY PROVIDED IN THIS AGREEMENT, LICENSOR MAKES NO OTHER
WARRANTIES, EXPRESSED OR IMPLIED, AND
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SPECIFICALLY DISCLAIMS ANY IMPLIED
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
LICENSEE MAKES NO EXPRESS OR IMPLIED WARRANTIES WITH RESPECT TO ANY
MATTER.
ARTICLE 5 : INTELLECTUAL PROPERTY
INDEMNIFICATION
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5.1
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Licensor shall
indemnify, defend and hold Licensee, its Affiliates, officers,
directors, employees, consultants and customers harmless from and
against any and all liabilities, losses, damages, costs and
expenses (including reasonable attorneys’ fees) arising out
of or resulting from any claim, action, suit or proceeding alleging
infringement, breach, contravention, misuse or misappropriation of
any Intellectual Property Rights or proprietary rights, including,
without limitation, trademarks, service, marks, patents,
copyrights, trade secrets or any similar proprietary rights, based
upon the Software, Source Code, Documentation, or Licensor
Materials or services furnished hereunder by Licensor or based on
Licensee’s (including its respective directors, officers,
employees and agents) use thereof. Licensor, at its sole cost,
shall have the right to conduct the defense of any such claim or
action and all negotiations for its settlement or compromise,
unless otherwise mutually agreed to in writing; provided, that any
such settlement or compromise shall not be made without
Licensee’s consent (which consent shall not be unreasonably
withheld) and shall include an unconditional release of Licensee
from all liability arising out of or in relation to such action and
any transactions or conduct in connection therewith.
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5.2
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If any
Software, Source Code, Documentation and/or Licensor Materials or
services become, or in Licensor’s opinion are likely to
become, the subject of any such claim or action, then, Licensor, at
its sole expense, may either: (i) procure for Licensee the right to
continue using the same as contemplated hereunder; (ii) modify the
same to render the same non-infringing (provided such modification
does not adversely affect Licensee’s use as contemplated
hereunder); or (iii) replace the same with equally suitable,
functionally equivalent, compatible, non-infringing Software,
Documentation,
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