Exhibit 4.5(a)
PATENT CROSS LICENSE
AGREEMENT
PATENT CROSS LICENSE
AGREEMENT
This Patent
Cross License Agreement (the “ Agreement ”), is
made and entered into by and between the parties below, effective
as of January 1, 2005, upon the latest signature by the
parties (“ EFFECTIVE DATE ”):
AXALTO
Holding N.V. a company having its
registered office at Joop Geesinkweg 541-542 1096 AX Amsterdam
Netherlands, and registered under number 272 550 26 (hereinafter
referred to as “ AXALTO ”), acting for and on
behalf of the “ AXALTO GROUP ” (as hereinafter
defined),
and,
GEMPLUS
S.A. , a corporation existing
and organized under the laws of France, and having its principal
place of business at Avenue du Pic de Bertagne, BP 100 13881
Gémenos, France (hereinafter referred to as “
GEMPLUS ”), acting for and on behalf of the “
GEMPLUS GROUP ” (as hereinafter defined).
Both being
hereinafter individually referred to as a “Party” and
collectively as the “Parties”.
WITNESSETH
:
WHEREAS
, the AXALTO
GROUP and the GEMPLUS GROUP are in the business of developing and
manufacturing smart cards with microprocessors, terminals and
related products and services including software. In this
connection, they have applied for and have been granted patent
rights worldwide; and
WHEREAS
, each Party
contends that the other Party and its respective group may infringe
its valuable patents (including blocking patents) and asserts its
rights in respect thereto. Each Party wishes to avoid the risks,
costs and potential business disturbances and inefficiencies
associated with claims of infringement of patents by the other
Party. The Parties further wish to benefit their customers and
consumers by using resources to innovate and manufacture new and
better products rather than expending resources on legal
proceedings.
NOW
THEREFORE, in consideration of the
mutual covenants hereafter set forth, the Parties hereby agree as
follows:
ARTICLE
1 - DEFINITIONS
Terms in
this Agreement that are capitalized shall have the meanings set
forth below or as defined elsewhere in this Agreement. Any term,
whether used in a plural or a singular form, shall have the same
meaning.
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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CONFIDENTIAL
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PATENT CROSS LICENSE
AGREEMENT
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1.1
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“ MICRO ” means a
device comprising a maximum of one micro-chip, either a
microprocessor combined with memory or a micro-chip not capable of
executing a command, said micro-chip being able to store
information and/or perform tasks specified in a program or
microcode which can be stored in the device itself.
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1.2
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“ MODULE(S) ”
refer(s) to a micro-chip carrier element including a maximum of one
MICRO, the main destination of which element is to be embedded in a
LICENSED PORTABLE DEVICE. For example, a MODULE can be a smartcard
micro-module or an inlay.
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1.3
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1.3.1
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“ LICENSED PORTABLE
DEVICE ” means any portable device that:
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includes a maximum of one MODULE, is
marketed by one of the Parties or its AFFILIATES at or after the
EFFECTIVE DATE and is covered by at least one claim of the PATENT
RIGHTS, and:
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(i) complies with ISO
standard 7816 width and length dimensions;
(ii) incorporates an
object complying with the electrical contact assignments and
pattern defined in ISO standard 7816, part 2; or
(iii) includes means
for establishing connection (with or without contact) with a
LICENSED ASSOCIATED DEVICE, for the purpose of identification or
authentication of the portable device itself and/or the bearer
thereof, or for storage of information and/or history relating to
said bearer and/or portable device, provided that the portable
device referred to in this section (iii) is of pocket size or
smaller;
and where said portable
device can be used by the final user after potential
personalization which can be done by a third party.
LICENSED PORTABLE DEVICES
include in particular smartcards, including for example, SIM cards,
bank cards, access cards or electronic identity
documents.
1.3.2 LICENSED PORTABLE
DEVICES include portable devices where the connection between the
portable device and a LICENSED ASSOCIATED DEVICE is made through
any communication protocol, such as but not limited to the USB
protocol according to ISO 7816 part 12, T=1, T=0 or any other
communication protocol.
1.3.3 Regarding the
specific case of a LICENSED PORTABLE DEVICE made of a micro-chip
and an antenna, commonly called “Tag”, or “Smart
Label”, it is understood between the Parties, that up to
August 1, 2006, the Agreement shall not cover the following
fields of use:
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(i)
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traceability of goods;
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(ii)
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traceability of plants;
and
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(iii)
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traceability of animals (as opposed
to human beings);
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in a form factor
different from an ISO 7816 form factor.
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1.4
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“ LICENSED ASSOCIATED
DEVICE ” means any terminal being useful or necessary to
fulfil some or all of the functions of the LICENSED PORTABLE DEVICE
as long as said terminal is marketed by one of the Parties or their
respective AFFILIATES, and is covered by at least one claim of the
PATENT RIGHTS.
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Examples of such “LICENSED
ASSOCIATED DEVICE” include LICENSED PORTABLE DEVICE reader
terminals used in the fields of banking, point of sale terminals,
health, traffic, transport and physical access systems and IT
access systems.
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Regarding the specific case of a
LICENSED ASSOCIATED DEVICE used in conjunction with a LICENSED
PORTABLE DEVICE made of a micro-chip and an antenna, commonly
called “Tag”, or “Smart Label”, it is
understood between the Parties, that up to August 1, 2006, the
Agreement shall not cover the following fields of use:
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(i)
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traceability of goods;
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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CONFIDENTIAL
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PATENT CROSS LICENSE
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(ii)
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traceability of plants;
and
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(iii)
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traceability of animals (as opposed
to human beings).
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1.5
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“ LICENSED PRODUCTS
” means LICENSED PORTABLE DEVICES and LICENSED ASSOCIATED
DEVICES.
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1.6
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“ GEMPLUS GROUP ”
means GEMPLUS and its AFFILIATES at the EFFECTIVE DATE.
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1.7
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“ AXALTO GROUP ”
means AXALTO GROUP and its AFFILIATES at the EFFECTIVE
DATE.
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1.8
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1.8.1
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“ PATENT RIGHTS ”
means all rights under any patents and patent applications solely
held by the GEMPLUS GROUP or the AXALTO GROUP at the EFFECTIVE
DATE, and having or claiming a priority date pursuant to the Paris
Convention prior to January 1, 2005, including all current or
subsequent extensions, divisional applications, continuations and
reissues. The PATENT RIGHTS of the AXALTO GROUP (“AXALTO
PATENT RIGHTS”) are further defined in Annex 1A hereto. The
PATENT RIGHTS of the GEMPLUS GROUP (“GEMPLUS PATENT
RIGHTS”) are further defined in Annex 2A hereto.
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1.8.2
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The
AXALTO GROUP represents that those of its patents and patent
applications listed in Annex 1B are not available for a license at
the Effective Date for good legitimate reasons such as ownership
litigation or exclusive license already granted, and that those
patents are therefore not included in the PATENT RIGHTS at the
Effective Date.
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The
GEMPLUS GROUP represents that those of its patents and patent
applications listed in Annex 2B are not available for a license at
the Effective Date for good legitimate reasons such as ownership
litigation or exclusive license already granted, and that those
patents are therefore not included in the PATENT RIGHTS at the
Effective Date.
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Each Party warrants and represents
that if, at a certain date after the EFFECTIVE DATE, any of its
patents listed in their respective Annex 1B and 2B becomes
available for grant of a license, said patents shall automatically
be deemed added to the PATENT RIGHTS from said certain date and
each such Party shall promptly notify the other Party
thereof.
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1.8.3
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For
the avoidance of doubt, any patents and patent applications
co-owned by the GEMPLUS GROUP and a third party or by the AXALTO
GROUP and a third party prior to the EFFECTIVE DATE, are not part
of the PATENT RIGHTS.
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1.8.4
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The
PATENT RIGHTS do not include any other intellectual property rights
such as, but not limited to, trade marks, know how, trade secrets,
copyrights or models. Except as expressly provided herein, patents
in respect of improvements to inventions covered by PATENT RIGHTS
are not licensed pursuant to this Agreement.
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1.9
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“ AFFILIATES ”
shall mean any legal entity, which directly or indirectly
(i) is owned or controlled by, or (ii) owns or controls
GEMPLUS or AXALTO, where “control” shall mean the
direct or indirect possession of more than fifty percent (50%) of
the voting securities of any company or the power effectively to
direct or cause to be directed, the management and policies of a
company through the ownership of voting securities or voting
interest or otherwise. For the purposes of this Agreement, GEMPLUS
INTERNATIONAL S.A. (which controls GEMPLUS S.A.) shall be deemed an
AFFILIATE and all business entities in which GEMPLUS INTERNATIONAL
S.A., directly or indirectly, owns or controls more than fifty
percent (50%) of the capital stock shall be deemed an AFFILIATE.
For the purpose of this Agreement, the definition of AFFILIATES
shall exclude CP8 Technologies SA, which shall be considered as one
of AXALTO’s OTHER ENTITIES. An entity shall be deemed to be
an AFFILIATE only so long as all requisite conditions of being an
AFFILIATE hereunder are met. A list of the AFFILIATES of AXALTO are
set forth in Annex 3 hereto. A list of the AFFILIATES of GEMPLUS
are set forth in Annex 4 hereto. Each Party will give prompt
written notice to the
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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CONFIDENTIAL
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PATENT CROSS LICENSE
AGREEMENT
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other Party when an AFFILIATE no
longer meets all requisite conditions of being an
AFFILIATE.
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1.10
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“ OTHER ENTITY ”
shall mean any legal entity (other than an AFFILIATE) in which
GEMPLUS or AXALTO directly or indirectly owns or controls between
thirty-three percent (33%) and fifty percent (50%) of the capital
stock of a corporation carrying the right to vote, or the power
effectively to direct or cause to be directed, the management and
policies of a company through the ownership of between thirty-three
percent (33%) and fifty percent (50%) of the voting securities or
voting interest or otherwise, shall be deemed to constitute
ownership or control thereof. For the purpose of this Agreement, as
an exception CP8 Technologies SA, Xiring SA and Shanghai Solaic IC
Cards Co Ltd, shall be considered as AXALTO’S OTHER ENTITIES.
An entity shall be deemed to be an OTHER ENTITY only so long as all
requisite conditions of being an OTHER ENTITY hereunder are met. A
list of the OTHER ENTITIES of AXALTO are set forth in Annex 5
hereto. A list of the OTHER ENTITIES of GEMPLUS are set forth in
Annex 6 hereto. Each Party will give prompt written notice to the
other Party when an OTHER ENTITY no longer meets all requisite
conditions of being an OTHER ENTITY.
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ARTICLE
2 - LICENSE GRANT AND MUTUAL RELEASES AND
NON-ASSERTIONS
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2.1
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GEMPLUS grants to AXALTO GROUP
(which accepts) a worldwide, fully paid up, royalty free,
non-exclusive direct license under the GEMPLUS PATENT RIGHTS to
make, sell, lease, use, or otherwise dispose of LICENSED PRODUCTS
and make, sell, lease or use any manufacturing equipment and
practice any method or process for the manufacture use, sale or
disposition thereof.
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AXALTO grants to GEMPLUS GROUP
(which accepts) a worldwide, fully paid up, royalty free,
non-exclusive direct license under the AXALTO PATENT RIGHTS to
make, sell, lease, use, or otherwise dispose of LICENSED PRODUCTS
and make, sell, lease or use any manufacturing equipment and
practice any method or process for the manufacture use, sale or
disposition thereof.
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2.2
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GEMPLUS grants to AXALTO GROUP
(which accepts) a worldwide, fully paid up, royalty free,
non-exclusive direct license under the GEMPLUS PATENT RIGHTS to
make, sell, lease, use, or otherwise dispose of MODULES, and make,
sell, lease or use any manufacturing equipment and practice any
method or process for the manufacture use, sale or disposition
thereof.
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AXALTO grants to GEMPLUS GROUP
(which accepts) a worldwide, fully paid up, royalty free,
non-exclusive direct license under the AXALTO PATENT RIGHTS to
make, sell, lease, use, or otherwise dispose of MODULES and make,
sell, lease or use any manufacturing equipment and practice any
method or process for the manufacture use, sale or disposition
thereof.
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2.3
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Subject to Annex 2B, Table 2B2,
neither Party shall assert any claim of infringement against the
other Party’s GROUP and OTHER ENTITIES under any patent
rights arising from patents or patent applications listed in
Annexes 1B and 2B. Each Party represents and warrants that it
disclosed to the other Party any patents or patent applications as
listed in respective Annexes 1B and 2B that are not available for a
license at the Effective Date. Each Party shall indemnify, hold
harmless and defend the other Party from any claims arising from
any patent rights or rights in patent applications that should have
been disclosed in their respective Annexes 1B and 2B pursuant to
this section 2.3.
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2.4
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The
Parties and their AFFILIATE(S) are not entitled to sublicense, in
whole or in part, the rights granted to them hereunder except as
otherwise expressly provided herein.
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Notwithstanding Section 2.5,
the Parties grant to each other a worldwide, non-exclusive right to
subcontract the manufacturing and development of LICENSED PRODUCTS,
and/or parts thereof, to any third party for sale and other
disposition by the Parties in accordance with the licenses granted
under Section 2.1.
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GEMPLUS initials:
__________
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AXALTO initials:
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CONFIDENTIAL
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PATENT CROSS LICENSE
AGREEMENT
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2.5
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Subject to Section 2.4, this
Agreement shall not exhaust the right of either one of the Parties
to claim royalties from any third party, whether or not such third
party supplies the Parties, in relation to any value on part(s) of
the process(es) or product(s) created by said third
party.
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2.6
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The
Parties’ OTHER ENTITIES are granted by AXALTO and GEMPLUS,
respectively, a worldwide and non-assignable, non-transferable
immunity from suit under their respective PATENT RIGHTS until:
(i) termination of this Agreement; (ii) when such OTHER
ENTITIES cease to be OTHER ENTITIES; or (iii) such OTHER
ENTITY delivers a written threat to assert or asserts a patent with
respect to any LICENSED PRODUCT of a Party, or the use
thereof.
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2.7
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The
Parties and their AFFILIATES have no obligation to maintain or
enforce any of their PATENT RIGHTS, and have the sole discretion to
start, continue or abandon the maintenance or prosecution of any of
their PATENT RIGHTS at any time.
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2.8
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The
Parties intend that this Agreement shall extend to and bind all of
the AFFILIATES of AXALTO and GEMPLUS at the EFFECTIVE DATE that
hold any PATENT RIGHTS. To the extent that any of such AFFILIATES
are not automatically bound by this Agreement at the EFFECTIVE
DATE, the respective Party will promptly take all actions to cause
such AFFILIATES to become bound as of the EFFECTIVE DATE, and shall
indemnify and defend the other Party from any claims arising from
any AFFILIATE not being bound by this Agreement.
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2.9
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Each Party shall have the right to
extend the rights and obligations of this Agreement to an entity
created after the EFFECTIVE DATE by said Party, provided that said
entity meets all requirements of being an AFFILIATE of such Party
after the EFFECTIVE DATE and provided that such entity agrees to be
bound by all terms of this Agreement, with the other Party being a
beneficiary.
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2.10
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After the EFFECTIVE DATE, each Party
that acquires or takes control over, or merges with, another legal
entity or an OTHER ENTITY with substantial industrial activity (as
opposed to only a patent licensing activity), such that said other
legal entity or OTHER ENTITY consequently meets all requirements of
being an AFFILIATE of such Party, may notify the other Party of its
intent to extend the rights and obligations of this Agreement to
said legal entity or OTHER ENTITY. In such case, both Parties shall
enter into negotiations in good faith in order to settle any past
infringement claims at fair and reasonable conditions with respect
thereto as the case may be, and to decide in their sole discretion
by written agreement whether or not such legal entity or OTHER
ENTITY will become part of this Agreement with the rights and
obligations of an AFFILIATE.
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2.11
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After the EFFECTIVE DATE, each Party
that acquires an interest in a legal entity with substantial
industrial activity (as opposed to only a patent licensing
activity), such that said legal entity consequently meets all
requirements of being an OTHER ENTITY of such Party, may notify the
other Party of its intent to extend the rights and obligations of
this Agreement to said legal entity. In such case, both Parties
shall enter into negotiations in good faith in order to settle any
past infringement claims at fair and reasonable conditions with
respect thereto as the case may be, and to decide in their sole
discretion in writing whether or not such legal entity will become
part of this Agreement with the rights and obligations of an OTHER
ENTITY.
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2.12
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Each Party that acquires from a
third party a patent or a patent application having a priority date
(pursuant to the Paris Convention) prior to January 1, 2005,
or acquires, takes control over, or merges with, another legal
entity having substantially only a licensing activity of such
patent(s) (as opposed to having only, or to having also, an
industrial activity), hereby covenants that the other Party will
not be sued until December 31, 2007, for infringement of said
patent or patent application solely in respect of the sale or other
disposition of LICENSED PRODUCTS or MODULES.
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2.13
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Each Party represents and warrants
that, to the best of its knowledge, the PATENT RIGHTS disclosed in
their respective Annexes 1A and 2A hereto include all of the
patents and patent applications that relate to the LICENSED
PRODUCTS that are solely held by it. Subject to
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GEMPLUS initials:
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AXALTO initials:
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CONFIDENTIAL
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PATENT CROSS LICENSE
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Sections 1.8.2 and 1.8.3, in
case PATENT RIGHTS exist that relate to the LICENSED PRODUCTS and
are not so listed in such Annexes 1A and 2A, they shall
automatically be deemed included in the respective
annex.
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2.14
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If
at any time an AFFILIATE that holds any PATENT RIGHTS licensed
hereunder ceases to meet all of the requirements of being an
AFFILIATE, the licenses granted by such AFFILIATE hereunder shall
continue for the life of such PATENT RIGHTS notwithstanding the
fact that it is no longer an AFFILIATE. The license granted to said
AFFILIATE under article 2 shall cease one (1) year after the
date at which it ceases to be an AFFILIATE.
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2.15
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Each Party (as
“RELEASOR”) on behalf of itself and its AFFILIATES that
are AFFILIATES on the EFFECTIVE DATE, irrevocably releases the
other Party, its AFFILIATES that are AFFILIATES on the EFFECTIVE
DATE and subcontractors from any and all claims of infringement of
RELEASOR’S PATENT RIGHTS which claims are based on acts prior
to the EFFECTIVE DATE, which, had they been performed after the
EFFECTIVE DATE would have been licensed under this Agreement. Such
release is granted only to the extent that such acts have been
performed by or instructed by the Parties or their
AFFILIATES.
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ARTICLE
3 - LIMITED WARRANTIES
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3.1
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Except as expressly set forth
herein, the Parties disclaim any and all representation or
warranty, expressed or implied, under the patent license it grants
to the other Party including but not limited to validity of the
patents/patent applications, non-infringement of third
parties’ rights, obligation to maintain patents/patent
applications in force, implied warranties of merchantability and
fitness for a particular purpose, arising out of this Agreement or
the rights provided hereunder.
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Nothing in this Agreement shall be
construed in any way to indicate that either Party agrees that any
PATENT RIGHTS of the other Party are valid, enforceable or
infringed.
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3.2
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In
no event shall GEMPLUS and/or its AFFILIATES and AXALTO and/or its
AFFILIATES respectively, be liable under this Agreement for any
indirect, special or consequential damages including, but not
limited to, lost revenue or profits or such demands against the
other Party by any person, or indirect commercial loss.
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3.3
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Provided that the assignee shall be
bound by all the applicable obligations under this Agreement,
including to license the PATENT RIGHTS it acquires, each Party
shall be free to transfer or assign to any third party (i) any
rights in any PATENT RIGHTS licensed hereunder; (ii) the
priority right (according to the Paris Convention) or any right to
further file a patent application with respect to an invention for
which a patent application included within their PATENT RIGHTS has
been filed. !
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ARTICLE
4 - TERM
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4.1
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This Agreement shall come into force
at the Effective Date, and continue until the expiration of the
last to expire of the patents or patent applications licensed
hereunder, unless this Agreement is terminated according to
Article 5.
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4.2
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The
termination of individual PATENT RIGHTS shall have no effect on the
duration of this Agreement.
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ARTICLE
5 - TERMINATION
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5.1
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Termination without prior
notice:
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Any
Party may terminate this Agreement by written notice without prior
advance notice to the other Party:
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GEMPLUS initials:
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AXALTO initials:
__________
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PATENT CROSS LICENSE
AGREEMENT
(i) in the event of
the other Party’s voluntary bankruptcy or
insolvency;
(ii) in the event
that the other Party shall make an assignment for the benefit of
creditors which has caused the other Party to have its business
effectively discontinued in its then present form; or
(iii) in the event
that a petition shall have been filed against the other Party under
a bankruptcy law, a corporate reorganization law or any other law
for relief of debtors (or other law similar in purpose or effect),
which has caused the other Party to have its business effectively
discontinued in its then present form.
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5.2
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Termination with prior
notice:
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If
either Party (the “Defaulting Party”) shall fail to
substantially perform any of its material obligations under this
Agreement, the other Party (the “Aggrieved Party”) may
give written notice to the Defaulting Party specifying the respects
in which the Defaulting Party has so failed to perform its
obligations under this Agreement, and stating that the Aggrieved
Party intends to terminate this Agreement in the event of continued
default. In the event that any default so specified is not remedied
within forty five (45) days after the giving of such written
notice (the “cure period”), the Aggrieved Party may
forthwith terminate this Agreement by giving written notice of
termination to the Defaulting Party. Such termination shall be
effective thirty (30) days after the date of such notice of
termination. Failure of the Aggrieved Party to so terminate this
Agreement shall be without prejudice to the rights of the Aggrieved
Party to terminate for a later breach, and any termination or
failure to terminate hereunder shall be without prejudice to any
other rights the Aggrieved Party may have under this
Agreement.
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Any
right to terminate arising from a default under this
Section 5.2 shall be stayed until finally resolved under
Article 15, unless no arbitration is commenced within six
(6) months of the end of the cure period in respect of the
alleged default, and either Party shall have standing to initiate
arbitration with respect to the alleged default. Any termination of
licenses granted under this Agreement shall not relieve either
Party of any obligations hereunder accrued prior to the date of
such termination.
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ARTICLE
6 - ASSIGNMENT - INTUITU PERSONAE
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6.1
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The
Agreement is entered into by Parties with all due authority to
enter into this Agreement.
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6.2
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This Agreement shall be binding upon
and inure to the benefit of any legal entity with which a Party may
be merged or consolidated, or to the benefit of the assignee of all
or substantially all of the assets (“de facto merger”
or consolidation) of the Party to which this Agreement relates, but
the benefit shall only inure to the extent of the Parties’
business lines marketing LICENSED PRODUCTS as existing on the date
of such merger, consolidation or assignment, and cannot be extended
to any other business lines of such third party. Otherwise, except
as set forth in section 3.3, this Agreement may not be assigned or
transferred without the prior written consent of the other
Party.
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ARTICLE
7 - COMPLIANCE WITH LAWS
Nothing
herein shall be construed to require the Parties to take any action
contrary to any export or import control regulation or other
applicable laws or regulations of all countries having competent
jurisdiction. Each Party shall comply with all applicable laws in
its performance hereunder.
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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CONFIDENTIAL
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PATENT CROSS LICENSE
AGREEMENT
ARTICLE
8 - NOTICES - COMMUNICATIONS - AUTHORIZATIONS
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8.1
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Any
and all notices, authorizations or other communications, required
or permitted pursuant to this Agreement shall be sufficiently given
only if written in English language and hand delivered or sent by
registered or certified airmail, return receipt requested, postage
prepaid sent to the addresses set forth in Section 8.2
. below.
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8.2
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All
the notices or communications shall be addressed to the
following
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If to
AXALTO:
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AXALTO
S.A.
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IP and
Licensing Department
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50, avenue Jean
Jaures
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92120
Montrouge,
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FRANCE
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Atten. :
Licensing Manager
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If to GEMPLUS:
GEMPLUS S.A.
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Legal
Department
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IP Licensing
Group
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Avenue du Pic
de Bertagne
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BP
100
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13881
GEMENOS
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FRANCE
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Atten.: IP
Licensing Manager
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or at such
other addresses and to such other persons as shall be furnished
from time to time in writing by the party entitled to receive such
notices and communications, and such communications shall be deemed
to have been given as of the date so delivered or
mailed.
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ARTICLE
9 - DISCLAIMER OF AGENCY
This
Agreement shall not constitute either Party the legal
representative or agent of the other, nor shall either Party have
the right, or authority, to assume, create or incur any liability
or any obligation of any kind, express or implied against or in the
name of or on behalf of the other Party.
ARTICLE
10 - CONFIDENTIALITY AND PUBLICITY
The
existence of this Agreement is not confidential. The Parties shall
not disclose any of the terms or conditions of this Agreement to
any third party, except as required by law or by governmental
regulation, requirement or court order, or for the purpose of
Section 3.3, provided, however, that each Party shall promptly
notify the other Party of any such requirement and any assignee
pursuant to section 3.3 shall undertake to comply with and shall
comply with such confidentiality and non-disclosure
provisions.
Notwithstanding the above,
GEMPLUS could issue a press release regarding this Agreement, the
text of which is set out in Annex 7 or, as the case may be, as
further modified as agreed upon in writing by the Parties. Except
for the information disclosed in such GEMPLUS press release,
neither Party shall use the name of the other Party in any
publicity or advertising without the prior written approval of the
other Party.
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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CONFIDENTIAL
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PATENT CROSS LICENSE
AGREEMENT
ARTICLE
11 - EFFECT OF HEADINGS
The
Articles and Article headings appearing on this Agreement are
inserted only as a matter of convenience and in no way define,
limit, construe or describe the scope or intent of an Article, nor
in any way affect this Agreement, except with respect to the
definitions.
ARTICLE
12 - FORCE MAJEURE
Neither
Party shall be liable to the other or deemed to be in breach of any
obligation hereunder if its performance is prevented or delayed by
causes such as war, riots, acts of civil or military authorities,
flood, storm, and acts of God, if those events are beyond its
control, provided that the affected Party exercises diligence in
promptly notifying the other Party of conditions which will result
in delay or prevention of performance and will cure such prevention
of performance as soon as and to the extent that it is able
reasonably to do so.
ARTICLE
13 - NON WAIVER
The failure
of either Party at any time to require performance by the other
Party of any provision hereof shall not affect in any way the full
right to require such performance at any time thereafter. Nor shall
the waiver by either Party of a breach of any provision hereof be
taken or held to be a waiver of the provision itself or of any
subsequent breach.
ARTICLE
14 - SEVERABILITY
If any
term, provision, covenant or condition of this Agreement is held
invalid or unenforceable for any reason, the remainder of the
provisions shall continue in full force and effect as if this
Agreement had been executed with the invalid or unenforceable
portion thereof eliminated, and the Parties shall endeavour to
replace such invalid or unenforceable portion by a similar but
valid and enforceable one.
ARTICLE
15 - GOVERNING LAW AND ARBITRATION
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15.1
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This Agreement, its validity,
interpretation, construction and performance shall at all times be
governed by the laws of France. The controlling text of this
Agreement shall be in English and any interpretation or
construction of this Agreement shall be based solely on the English
language text.
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15.2
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Any
dispute or controversy arising out of or in connection with the
interpretation or performance of this Agreement during its term or
thereafter that cannot be resolved by a mutually amicable
arrangement between the Parties, will be finally settled according
to the Rules of Conciliation and Arbitration of the International
Chamber of Commerce by three arbitrators appointed in accordance
with said Rules. The arbitration proceedings shall be conducted in
the English language and shall take place in the city of Paris as
the situs of the arbitration. Any Party shall have the right
to have recourse to and shall be bound by the Pre-Arbitral Referee
Procedure of the International Chamber of Commerce in accordance
with its Rules for a Pre-Arbitral Referee Procedure.
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ARTICLE
16 - ENTIRE AGREEMENT
This
Agreement and its annexes contain the entire Agreement and
understanding of the Parties with respect to the subject matter of
this Agreement and supersede any and all prior agreements and
understandings, written or oral, of the Parties with respect
thereto. There are no representations,
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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CONFIDENTIAL
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PATENT CROSS LICENSE
AGREEMENT
warranties,
covenants or agreements, except as herein set forth. No
modification, alteration, or waiver of any term or covenant of this
Agreement shall be valid unless in writing signed by an authorized
representative of each Party. This Agreement may be signed in
counterparts, which together shall be deemed one original. Delivery
of copies of original signatures by facsimile or electronic
transmission shall be deemed of equal force as the delivery of
original signatures.
Nothing in
this Agreement or any related agreement connected herewith shall be
construed as: (i) creating any obligation or any expectation on the
part of either Party to enter into a business relationship with the
other Party; (ii) creating any partnership or any other legal
entity between the Parties; (iii) creating an obligation to
furnish any manufacturing or technical information or assistance;
(iv) prohibiting or discouraging any Party from filing or
supporting oppositions or any similar proceedings against any
PATENT RIGHTS or other patents of the other Party or challenging
the validity thereof; (v) restraining or discouraging
competition among the Parties or any other entities in any market;
or (vi) creating any obligation to include future patent
rights within the rights licensed hereunder except as specifically
and expressly stated herein.
IN WITNESS
THEREOF, the Parties hereto have duly executed this Agreement in
duplicate, by their respective duly authorized officers or
representatives to be effective as of the Effective
Date.
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For and on
behalf of
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For and on
behalf of
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AXALTO
Holding N.V.
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GEMPLUS
S.A.
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By: Olivier
Piou
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By: Stephen
Juge
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Title: Chief
Executive Officer
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Title:
Executive Vice President & General Counsel
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Date:
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Date:
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Signature:
/s/ Olivier
Piou
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Signature:
/s/ Stephen
Juge
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GEMPLUS initials:
__________
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AXALTO initials:
__________
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10/124
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CONFIDENTIAL
|
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Exhibit 4.5(b)
PATENT LICENSE AGREEMENT
For Terminals
CP8 Technologies –
GEMPLUS
PATENT LICENSE AGREEMENT
For Terminals
This Patent
License Agreement (hereinafter referred to as the “
Agreement ”), is made and entered into by and between
the parties below effective as of January 1, 2005 upon the
latest signature by the parties (“ EFFECTIVE DATE
”):
CP8
Technologies a “
Société Anonyme “ organized and existing
under the laws of France, registered at the “Registre du
Commerce et des Sociétés in Versailles” under the
number B 404 736 415 and having its principal place of business at
36-38, rue de la Princesse, 78431 Louveciennes, France (hereinafter
referred to as “ LICENSOR ”),
and,
GEMPLUS
S.A. , a corporation existing
and organized under the laws of France, and having its principal
place of business at Avenue du Pic de Bertagne, BP 100, 13881
Gémenos, France (hereinafter referred to as “
LICENSEE ”).
Both being
hereinafter individually referred to as the “Party” and
collectively as the “Parties”.
WHEREAS
, LICENSOR
represents that it is the owner of certain registered patents and
patent applications listed in Exhibit 1 (hereinafter defined
as the “CP8 TECHNOLOGIES PATENTS”),
WHEREAS
, LICENSEE
desires to undertake the manufacturing, marketing and distribution
of LICENSED ASSOCIATED DEVICES (as hereafter defined) and to obtain
therefore a license under the CP8 TECHNOLOGIES PATENTS,
and
WHEREAS
, LICENSOR is
desirous to grant to LICENSEE and LICENSEE desires to receive a
license of the CP8 TECHNOLOGIES PATENTS pursuant to the Terms and
conditions hereinafter set forth,
NOW
THEREFORE , in consideration of the
mutual covenants hereafter set forth, LICENSOR and LICENSEE hereby
agree as follows:
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LICENSEE initials :
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LICENSOR initials :
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CP8
Technologies – GEMPLUS
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- Page 1/55
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CONFIDENTIAL
|
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PATENT LICENSE AGREEMENT
For Terminals
ARTICLE
1 - DEFINITIONS
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Terms in this Agreement which are
capitalized shall have the meanings set forth below or as defined
elsewhere in this Agreement. Any term, whether used in a plural or
a singular form, shall have the same meaning.
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1.1
|
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“ CP8 TECHNOLOGIES
PATENTS ” means the portfolio solely held by CP8
TECHNOLOGIES at the EFFECTIVE DATE of registered patents and patent
applications, their divisions, continuations, continuations in part
of such patents issuing therefrom and all reissues or renewals of
the same in existence by the time of signing of this Agreement, as
listed in Annex 1.
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1.2
|
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“ MICRO ” means a
device comprising a maximum of one micro-chip, either a
microprocessor combined with memory or a micro-chip not capable of
executing a command, said micro-chip being able to store
information and / or perform tasks specified in a pr
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