***Text Omitted and Filed
Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 240.24b-2.
License
Reference Number___ [***] ___
122205
PATENT
CROSS LICENSE
LICENSE
AGREEMENT (“Agreement”) dated December ___, 2005
(“Agreement Date”) between INTERNATIONAL BUSINESS
MACHINES CORPORATION, a New York corporation (“IBM”),
and Dot Hill Systems Corp., a California corporation (“DOT
HILL”).
Each of the
parties (as “Grantee”) desires to acquire a
nonexclusive license under patents of the other party (as
“Grantor”). In consideration of the premises and mutual
covenants herein contained, IBM and DOT HILL agree as
follows:
“Authorized Assembler” shall mean a
third party that, pursuant to a written contract with a Grantee,
assembles Grantee’s Licensed Products, in accordance with
written specifications provided by said Grantee, for sale under
Grantee’s brand name. The definition of an Authorized
Assembler is distinct from that of a have-made manufacturer, which
is licensed pursuant to Section 2.1(b).
“Authorized Copy (Copies)” shall
mean a software program copied from a Master Copy by a third party
under written authorization to such third party to make copies of
such Master Copy for its own use or for further Distribution (by
transmission or other distribution means). A have-made
manufacturer, which is licensed pursuant to Section 2.1(b), is
defined distinctly from a third party who makes or distributes
Authorized Copies.
“Distribute” shall mean lease,
license, sell, or otherwise transfer.
“DOT HILL
Licensed Products” shall mean: [***]
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“Effective Date” shall mean December
___, 2005.
“IBM
Licensed Products” shall mean [***]
“IHS
Product” shall mean an [***]
“Information Handling System” shall
mean [***]
“Integrated Circuit” shall mean an
integral unit including a plurality of active and/or passive
circuit elements formed at least in part of Semiconductor Material
and associated on, or in, one substrate comprising the first level
of packaging for such elements; such unit forming or contributing
to the formation of a circuit for performing electrical or
electronic functions.
“Licensed
Patents” shall mean all patents, including utility models and
typeface design patents and registrations (but not including any
other design patents or registrations):
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(a)
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issued or issuing on patent
applications entitled to an effective filing date prior to [***];
and
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(b)
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under which patents or the
applications therefor a party hereto or any of its Subsidiaries has
as of the Agreement Date, or thereafter obtains, the right to grant
licenses to Grantee of or within the scope granted herein without
such grant or the exercise of rights thereunder resulting in the
payment of royalties or other consideration by Grantor or its
Subsidiaries to third parties (except for payments among Grantor
and its Subsidiaries, and payments to third parties for inventions
made by said third parties while employed by Grantor or any of its
Subsidiaries).
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Licensed
Patents shall include said patent applications,
continuations-in-part of said patent applications, and any patents
reissuing on any of the aforesaid patents. Notwithstanding the
foregoing, in the case when IBM is the Grantor, Licensed Patents
shall not include any patent having any claim directed to a method
or process of making (including methods or processes for testing)
Semiconductor Products, and no license is granted herein under any
such patents.
“Licensed
Products” shall mean either IBM Licensed Products or DOT HILL
Licensed Products as the context indicates.
“Master
Copy” shall mean a software program distributed by Grantee to
a third party with written authorization to such third party to
make copies of such software program for its own use or for further
Distribution (by transmission or other distribution
means).
“Performance of Business Processes”
shall mean [***] enterprise or organization.
“Semiconductor Product” shall mean
any Semiconductor Material, Semiconductor Device, Semiconductor
Circuit, and/or Integrated Circuit and any combination thereof. Any
instrumentality or aggregate of instrumentalities primarily
designed for use in the fabrication (including testing) of a
Semiconductor Product shall not be considered to be a Semiconductor
Product.
“Semiconductor Circuit” shall mean a
circuit in which one or more Semiconductor Devices are
interconnected in one or more paths (including passive circuit
elements, if any) for performing fundamental electrical or
electronic functions, and if provided therewith, such circuit
includes housing and/or supporting means therefor.
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“Semiconductor Device” shall mean a
device and any material therefor, comprising a body of one or more
Semiconductor Materials and one or more electrodes associated
therewith, and, if provided therewith, housing and/or other
supporting means therefor.
“Semiconductor Material” shall mean
any material whose conductivity is intermediate to that of metals
and insulators at room temperature and whose conductivity, over
some temperature range, increases with increases in temperature.
Such materials shall include but not be limited to refined
products, reaction products, reduced products, mixtures and
compounds.
“Data
Storage Products” shall mean [***]
“Data
Storage Software” shall mean [***]
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“Database
Products” shall mean [***] including but not limited
to:
(i) [***];
(ii) [***];
(iii) [***]; and
(iv) [***].
“Subsidiary” of a party hereto or of
a third party shall mean a corporation, company or other
entity:
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(a)
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more than fifty percent (50%) of
whose outstanding shares or securities (representing the right to
vote for the election of directors or other managing authority)
are, now or hereafter, owned or controlled, directly or indirectly,
by a party hereto or such third party, but such corporation,
company or other entity shall be deemed to be a Subsidiary only so
long as such ownership or control exists; or
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(b)
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which does not have outstanding
shares or securities, as may be the case in a partnership, joint
venture or unincorporated association, but more than fifty percent
(50%) of whose ownership interest representing the right to make
the decisions for such corporation, company or other entity is now
or hereafter, owned or controlled, directly or indirectly, by a
party hereto or such third party, but such corporation, company or
other entity shall be deemed to be a Subsidiary only so long as
such ownership or control exists.
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Section 2 . Grants of Rights
2.1 Each party,
as Grantor, on behalf of itself and its Subsidiaries grants to the
other, as Grantee, a nonexclusive and worldwide license under
Grantor’s Licensed Patents:
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(a)
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to
make (including the right to use any apparatus and practice any
method in making), use, import, offer for sale, lease, license,
sell and/or otherwise transfer Grantee Licensed Products;
and
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(b)
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to
have Grantee Licensed Products made by another manufacturer for the
use, importation, offer for sale, lease, sale and/or other transfer
by Grantee only when the conditions set forth in Section 2.2
are met.
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(c)
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to
use any apparatus and practice any method in connection with the
Performance of Business Processes for itself or third parties in
connection with Licensed Products.
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A particular
Licensed Product, or use of any apparatus or practice of any method
in connection with the Performance of Business Processes, shall be
licensed under only those of Grantor’s Licensed Patents that:
(a) exist in the country where Grantee made, used, imported,
offered for sale, leased, licensed, sold, and/or otherwise
transferred such Licensed Product, or used any such apparatus or
practiced any such method in connection with the Performance of
Business Processes, and which, but for the license granted herein
would have been infringed (including contributory infringement) by
the performance of such acts; or (b) exist in any country
other than where Grantee performed such acts and which, but for the
license granted herein would have been infringed (including
contributory infringement) if Grantee’s performance of such
acts had occurred in the country where such Licensed Patents
exist.
The license
granted by DOT HILL to IBM is fully paid up, and the license
granted by IBM to DOT HILL shall be fully paid up upon the payment
by DOT HILL of the amount specified in Section 4.1.
2.2 The license
granted in Section 2.1(b) to Grantee to have products made by
another manufacturer:
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(a)
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shall only apply to
[***];
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(b)
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shall only apply to Grantee Licensed
Products and/or portions thereof for which [***];
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(c)
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shall only be under claims of [***];
and
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(d)
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shall not apply to any products in
the form manufactured or marketed, or any process or method used,
[***].
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Unless Grantee
informs Grantor to the contrary, Grantee shall be deemed to have
authorized said other manufacturer to make Grantee’s Licensed
Products under the license granted to Grantee in this section when
the conditions specified in this Section 2.2 are fulfilled. In
response to a written request identifying a product and a
manufacturer, Grantee shall in a timely manner inform Grantor of
the quantity of such product, if any, manufactured by such
manufacturer pursuant to the license granted in
Section 2.1(b).
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2.3 Except as
expressly provided herein, no license or immunity is granted under
this Agreement by either party, either directly or by implication,
estoppel or otherwise to any third parties acquiring items from
either party for the combination of such acquired items with other
items (including items acquired from either party hereto) or for
the use of such combination. Such acquired items in such
combinations, if licensed hereunder, shall continue to enjoy the
license rights set forth herein.
2.4 Subject to
Section 2.5, the licenses granted herein shall include the
right of each party to grant sublicenses to its Subsidiaries
existing on or after the Agreement Date, which sublicenses may
include the right of sublicensed Subsidiaries to sublicense other
Subsidiaries of said party. No sublicense shall be broader in any
respect at any time during the life of this Agreement than the
license held at that time by the party that granted the
sublicense.
2.5 A
sublicense granted to a Subsidiary shall terminate on the earlier
of:
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(a)
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the
date such Subsidiary ceases to be a Subsidiary; and
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(b)
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the
date of termination or expiration of the license of the party or
Subsidiary that granted the sublicense.
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If a Subsidiary
ceases to be a Subsidiary and holds any patents under which a party
hereto is licensed, such license shall continue for the term
defined herein.
2.6 In the
event that neither a party nor any of its Subsidiaries has the
right to grant a license under any particular Licensed Patent of
the scope set forth in Section 2, then the license granted
herein under said Licensed Patent shall be of the broadest scope
which said party or any of its Subsidiaries
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