This IP License
Agreement (this “
Agreement ”) is entered into as of April 29,
2008, and will become effective on the date (the “
Effective Date ”) of the Closing (as defined in the
APA (as defined below)), by and between Conexant Systems, Inc. , a
Delaware corporation (the “ Seller ”), and NXP
B.V, a Dutch besloten venootshap (the “
Purchaser ”). The Seller and the Purchaser are
referred to collectively in this Agreement as the “
Parties .” Certain other capitalized terms used in
this Agreement are defined in Section 6.16.
The Parties have
entered into that certain Asset Purchase Agreement dated
April 29, 2008, pursuant to which the Seller, among other
things, has agreed to sell and transfer to the Purchaser certain
intellectual property rights related to the conduct of its
broadband media processing business;
The Parties have
agreed that the Purchaser will grant back to the Seller a
worldwide, nonexclusive, royalty-free and fully-paid license under
such transferred intellectual property rights in accordance with
the terms and conditions of this Agreement; and
The Seller is
retaining certain other intellectual property rights that relate to
its broadband media processing business, but has agreed to grant to
the Purchaser a worldwide, royalty-free and fully-paid license
under such retained intellectual property rights in accordance with
the terms and conditions herein.
The Parties,
intending to be legally bound, agree as follows:
1.
Licenses to the
Purchaser
1.1 Licensed
Patents. Subject to the terms and conditions of this Agreement,
the Seller hereby grants to the Purchaser and its Affiliates a
worldwide, nonexclusive, nontransferable (except to the extent
permitted in Section 6.7), irrevocable, royalty-free and
fully-paid license (with the right to sublicense to the extent
permitted in Section 1.3):
(a) under each claim of the Licensed Patents,
to (i) use, make, have made
(solely for the Purchaser or an Affiliate of the Purchaser),
import, sell, offer for sale, and otherwise dispose of current or
future Purchaser Products in the Business Field of Use; and
(ii) practice any methods for the purpose of using, making,
having made (solely for the Purchaser or an Affiliate of the
Purchaser), importing, selling, offering for sale, or otherwise
disposing of, current or future Purchaser Products in the Business
Field of Use, provided however that the license granted
under this Section 1.1(a) shall not extend to claims of the
Licensed Patents to the extent that such claims Cover components in
such Purchaser Products that implement (1) xDSL technologies,
including asymmetrical DSL, very high data rate DSL, and symmetric
high bit-rate
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DSL
technologies; or (2) wireless networking technologies,
including IEEE 802.11, IEEE 802.16, and Bluetooth standards
(“ DSL/Wireless Components ”); but provided
further that if a claim of a Licensed Patent Covers both
(A) a DSL/Wireless Component; and (B) another component
in such Purchaser Product that is not a DSL/Wireless Component (a
“ Non-DSL/Wireless Component ”), then the
license granted in this Section 1.1(a) shall not extend to the
DSL/Wireless Component but shall extend to the Non-DSL/Wireless
Component; and
(b) under each claim of the Licensed Patents that Covers any
portion of the Purchaser Modules, Reasonable Modifications, or
Interface Technology, to (i) use, make, have made (solely for
the Purchaser or an Affiliate of the Purchaser), import, sell,
offer for sale, and otherwise dispose of current or future
Purchaser Modules, Reasonable Modifications, and Interface
Technology, in each of the foregoing cases in the Purchaser Field
of Use; and (ii) practice any methods for the purpose of
using, making, having made (solely for the Purchaser or an
Affiliate of the Purchaser), importing, selling, offering for sale,
or otherwise disposing of current or future Purchaser Modules,
Reasonable Modifications, or Interface Technology, in each of the
foregoing cases in the Purchaser Field of Use.
This license
will remain in effect until the expiration of the last-to-expire of
the Licensed Patents.
1.2 Licensed
Non-Patent IP. Subject to the terms and conditions of this
Agreement, the Seller hereby grants to the Purchaser and its
Affiliates a worldwide, nontransferable (except to the extent
permitted in Section 6.7), perpetual and irrevocable,
royalty-free and fully-paid license (with the right to sublicense
solely to the extent permitted in Section 1.3) to use,
reproduce, modify, create derivative works of, distribute (through
multiple tiers), perform, and display the Licensed Non-Patent IP
(in both source code and executable code form, for those portions
of the Licensed Non-Patent IP that are comprised of software code)
for the sole purpose of using, developing, manufacturing,
marketing, distributing, selling, supporting, or otherwise
disposing of current or future Purchaser Products in the Purchaser
Field of Use. The license granted under this Section 1.2 shall
be exclusive (including with respect to the Seller) to Purchaser in
the STB field of use and the DTV field of use during the three-year
period following the Effective Date, and nonexclusive thereafter.
The license granted under this Section 1.2 shall be
nonexclusive at all times with respect to fields of use other than
the STB field of use and DTV field of use.
1.3
Sublicensing of Licensed Patents and Licensed Non-Patent
IP.
(a) The Purchaser may sublicense all of the rights granted
to it in Section 1.1 and Section 1.2 solely (i) to
contract manufacturers, foundries, test and assembly contractors,
design contractors, and other subcontractors engaged by the
Purchaser or any Affiliate of the Purchaser for the sole purpose of
performing services for and on behalf of the Purchaser or any
Affiliate of the Purchaser; (ii) to customers and distributors
of the Purchaser or any Affiliate of the Purchaser, solely to the
extent necessary to allow such customers and distributors to use,
operate, and sell Purchaser Products or Purchaser Modules (or other
products incorporating such Purchaser Products or Purchaser
Modules); and (iii) to Technical Collaborators of the
Purchaser or any Affiliate of the Purchaser, solely to the extent
necessary to allow such Technical Collaborators to perform their
development obligations to the Purchaser or such Affiliate of the
Purchaser with respect to a Purchaser Product or Purchaser Module;
provided, however, that (1)
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no sublicensee
shall have the right further to sublicense the rights described
above; and (2) the Purchaser ensures that all such sublicensees are
bound by an agreement containing terms and conditions no less
protective of the Seller’s interests in the Licensed Patents
and the Licensed Non-Patent IP than those set forth in
Section 1.4 and Section 3.
(b) In addition, the Purchaser may sublicense any or all of
the rights granted to it in Section 1.1(b) and
Section 1.2 (including the right to sublicense under
Sections 1.3(a)(i), 1.3(a)(ii) and 1.3(a)(iii) above)
(i) to another entity (whether owned by a third party or
partially owned by the Purchaser), or to a participant in a joint
venture or similar arrangement, solely in connection with the sale,
disposition, or contribution to such joint venture or similar
arrangement, of any business unit, product or business line, or
operating unit of the Purchaser or any of its Affiliates (whether
through a sale, contribution of assets or stock, merger,
consolidation or any other form of business transfer or business
combination), and (ii) to purchasers and licensees of the
Transferred Non-Patent IP, solely with respect to the Transferred
Non-Patent IP that is purchased or licensed; provided,
however , that, in each case, (1) the foregoing right to
sublicense shall not enable a sublicensee further to sublicense to
additional third parties; (2) the Purchaser ensures that all
such sublicensees are bound by an agreement containing terms and
conditions no less protective of the Seller’s interests in
the Licensed Patents and the Licensed Non-Patent IP than those set
forth in Section 1.4 and Section 3; and (3) Purchaser
shall have no right to sublicense any of the rights granted in
Section 1.1(a) under this Section 1.3(b).
1.4 No Implied
Licenses. As between the Seller and the Purchaser, the Seller
retains exclusive ownership of the Licensed Patents and Licensed
Non-Patent IP (and all Intellectual Property Rights related
thereto). There are no implied licenses granted to the Licensed
Patents or Licensed Non-Patent IP under this Agreement, and all
rights to the foregoing that are not expressly granted herein are
reserved to the Seller.
2.1
Transferred Patents. Subject to the terms and conditions of
this Agreement, the Purchaser hereby grants to the Seller and its
Affiliates a worldwide, nonexclusive, nontransferable (except to
the extent permitted in Section 6.7), irrevocable,
royalty-free and fully-paid license (with the right to sublicense
solely to the extent permitted in Section 2.3), under the
Transferred Patents, to (a) use, make, have made (solely for
the Seller or an Affiliate of the Seller), import, sell, offer for
sale, and otherwise dispose of, current or future Seller Products
in the Seller Field of Use; and (b) practice any methods for
the purpose of using, making, having made (solely for the Seller or
an Affiliate of the Seller), importing, selling, offering for sale,
or otherwise disposing of, current or future Seller Products in the
Seller Field of Use. This license will remain in effect until the
expiration of the last-to-expire of the Transferred
Patents.
2.2
Transferred Non-Patent IP. Subject to the terms and conditions
of this Agreement, the Purchaser hereby grants to the Seller and
its Affiliates a worldwide, nontransferable (except to the extent
permitted in Section 6.7), perpetual and irrevocable,
royalty-free and fully-paid license (with the right to sublicense
solely to the extent permitted in Section 2.3) to use,
reproduce, modify, create derivative works of, distribute (through
multiple tiers), perform, and display the Transferred Non-Patent IP
(in both source code and executable
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code form, for
those portions of the Transferred Non-Patent IP that are comprised
of software code) for the sole purpose of using, developing,
manufacturing, marketing, distributing, selling, supporting, or
otherwise disposing of current or future Seller Products in the
Seller Field of Use. The license granted under this
Section 2.2 shall be exclusive (including with respect to the
Purchaser) to Seller in the PCTV field of use and the Video
Surveillance field of use during the three-year period following
the Effective Date, and nonexclusive thereafter. The license
granted under this Section 2.2 shall be nonexclusive at all
times with respect to fields of use other than the PCTV field of
use and the Video Surveillance field of use. Notwithstanding the
foregoing, the Seller acknowledges and agrees that the license
granted under this Section 2.2 shall not extend to, and the
Seller shall not use, reproduce, modify, create derivative works
of, distribute (through multiple tiers), perform, or display
(a) the Transferred Non-Patent IP listed in Exhibit B-1
at any time inside the STB field of use or the DTV field of use; or
(b) the Transferred Non-Patent IP listed in Exhibit B-2
at any time outside the PCTV field of use and the Video
Surveillance field of use.
2.3
Sublicensing of Transferred Patents and Transferred Non-Patent
IP.
(a) The Seller may sublicense the rights granted to it in
Section 2.1 and Section 2.2 solely (a) to contract
manufacturers, foundries, test and assembly contractors, design
contractors, and other subcontractors engaged by the Seller or any
Affiliate of the Seller for the sole purpose of performing services
for and on behalf of the Seller or any Affiliate of the Seller;
(b) to customers and distributors of the Seller or any
Affiliate of the Seller, solely to the extent necessary to allow
such customers and distributors to use and operate the Seller
Products; and (c) to Technical Collaborators of the Seller or any
Affiliate of the Seller, solely to the extent necessary to allow
such Technical Collaborators to perform their development
obligations to the Seller or such Affiliate of the Seller with
respect to the applicable Seller Product; provided, however
, that (i) no sublicensee shall have the right to further
sublicense the rights described above; and (ii) the Seller
ensures that all such sublicensees are bound by an agreement
containing terms and conditions no less protective of the
Purchaser’s interests in the Transferred Patents and the
Transferred Non-Patent IP than those set forth in Section 2.4
and Section 3, and uses commercially reasonable efforts to
enforce such agreement.
(b) One-Time Sublicenses for Business Reorganizations.
In addition, the Seller may sublicense all or any portion of the
rights granted to it in Section 2.1 and Section 2.2
(including the right to sublicense under Section 2.3(a) above)
to (i) any successor of any portion of the business of the
Seller or an Affiliate of the Seller resulting from a
reorganization, spin-off, sale, or divestiture of such business; or
(ii) any joint venture entity in which the Seller or any
Affiliate of the Seller owns an equity interest (whether
controlling or not); provided, however , that (1) effective
immediately upon the grant of a sublicense by the Seller pursuant
to this Section 2.3(b), the Seller and its Affiliates
automatically shall have no further right to exercise any rights in
the Transferred Patents or the Transferred Non-Patent IP that were
granted to the sublicensee pursuant to such sublicense, and the
license rights granted to the Seller and its Affiliates shall be
deemed to exclude such sublicensed rights; (2) no such
sublicensee shall have the right to further grant sublicenses
pursuant to this Section 2.3(b); and (3) the Seller shall
ensure that all such sublicensees are bound by an agreement
containing terms and conditions no less protective of the
Purchaser’s interests in the Transferred Patents and the
Transferred Non-Patent IP than those set forth in Section 1.4
and Section 3. By way of illustration : if
Seller
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chooses to
grant a sublicense pursuant to this Section 2.3(b) to a joint
venture entity in which the Seller owns an equity interest, and
such sublicense covers a particular field of use, then the joint
venture entity may exercise its sublicensed rights under the
applicable Transferred Patents and the Transferred Non-Patent IP in
that particular field of use, but neither the Seller nor its
Affiliates shall have any further rights under the applicable
Transferred Patents or Transferred Non-Patent IP in that same field
of use.
2.4 No Implied
Licenses. There are no implied licenses granted to the
Transferred Patents or Transferred Non-Patent IP under this
Agreement, and all rights to any of the foregoing that are not
expressly granted herein are reserved to the Purchaser.
3.1 Seller
Confidential Information . Subject to Section 3.3, the
Seller may from time to time furnish the Purchaser with information
that it clearly marks as confidential or proprietary; further, the
Purchaser acknowledges that the Licensed Patents (other than
patents and patent applications that are publicly available) and
Licensed Non-Patent IP embody or contain valuable trade secrets and
other confidential and proprietary information of the Seller (such
furnished information along with the Licensed Patents and Licensed
Non-Patent IP are collectively “ Seller Confidential
Information ”). During the Confidentiality Period, the
Purchaser will not use any Seller Confidential Information for any
purpose not expressly permitted by this Agreement, and will
disclose the Seller Confidential Information only to its employees
and permitted sublicensees who have a need to know such Seller
Confidential Information for purposes of this Agreement and who are
under a duty of confidentiality no less restrictive than the
Purchaser’s duty hereunder. Notwithstanding the foregoing,
the Purchaser may disclose the Seller Confidential Information to
authorized sublicensees that are distributors and customers of the
Purchaser Products solely to the extent that such disclosure is
reasonably necessary to facilitate the use and operation of the
Purchaser Products by such distributors and customers. During the
Confidentiality Period, the Purchaser will protect the Seller
Confidential Information from unauthorize
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