Exhibit 2.9
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Certain
confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities
and Exchange Commission pursuant to Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
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Execution Copy
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License
Reference Number
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Patent License Agreement
PATENT LICENSE
AGREEMENT (“Agreement”) dated April 10, 2004
(“Agreement Date”) between INTERNATIONAL BUSINESS
MACHINES CORPORATION, a New York corporation (“IBM”),
and APPLIED MICROCIRCUITS CORPORATION
(“LICENSEE”).
WHEREAS, IBM and LICENSEE have
executed concurrently herewith an agreement entitled “Asset
Purchase Agreement” (APA), and other Operative Agreements as
defined in the APA, for the purpose of conveying certain assets and
licensing certain intellectual property from IBM to LICENSEE in
connection with a divestiture and acquisition transaction relating
to standard products development operations;
WHEREAS, each of the parties (as
“Grantee”) desires to acquire a [ * ]
license under patents of the other party (as
“Grantor”); and
NOW THEREFORE, in consideration of
the premises and mutual covenants herein contained, IBM and
LICENSEE agree as follows:
Section 1. Definitions
“Effective Date” shall mean the
Closing Date, as the same such term is defined in the
APA.
“Grantee Licensed Product” shall
mean IBM Licensed Product or LICENSEE Licensed Product, as the
context requires.
“IBM Licensed Patents” shall mean
[ * ] .
Notwithstanding the foregoing, or any other
provision of this Agreement or any other Operative Agreement, IBM
Licensed Patents shall expressly exclude any [*]
.
IBM Licensed Patents shall include said
[*] .
“IBM Licensed Products” shall mean
[*] .
“IHS Product” shall mean an
[*] .
“Information Handling System” shall
mean [*] .
“Intellectual Property Agreement”
(IPA) shall mean that certain agreement relating to the assigning
and licensing of intellectual property by IBM to LICENSEE, the same
such agreement being executed between IBM and LICENSEE on or about
the date of the execution of this Agreement.
“Licensed Patents” shall mean either
IBM Licensed Patents or LICENSEE Licensed Patents as the context
indicates.
“LICENSEE Licensed Patents” shall
mean [*] .
Notwithstanding the foregoing, or any other
provision of this Agreement or any other Operative Agreement,
LICENSEE Licensed Patents shall expressly exclude [*]
.
LICENSEE Licensed Patents shall include said
[*] .
“Licensee Licensed Products” shall
mean [*] .
“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
2.1.1 IBM, as Grantor, on behalf of itself and
its Subsidiaries grants to LICENSEE, as Grantee, a [*]
.
2.1.2 LICENSEE, as Grantor, on behalf of itself
and its Subsidiaries grants to IBM, as Grantee, a [*]
.
2.2 The license granted in Sections 2.1.1(b) and
2.1.2(b) [*] .
Unless Grantee informs Grantor to the contrary,
[*] . In response to a written request identifying a product
and a manufacturer, where such request shall not be made unless
Grantor has placed such manufacturer on notice of infringement,
Grantee shall in a timely manner inform, (to the extent permitted
under Grantor’s agreement with said manufacturer), Grantor
that such manufacturer is authorized by Grantee to manufacture such
product pursuant to the license granted in Sections 2.1.1(b) and
2.1.2(b).
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 or services from either party for
the combination of such acquired items or services with other items
or services (including items or services acquired from either party
hereto) or for the use of such combination.
2
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Certain
confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities
and Exchange Commission pursuant to Rule 24b-2 of the Securities
Exchange Act of 1934, as amended.
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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; or
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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
has the right to grant within the scope set forth above.
2.7 If, after the Agreement Date, a party or any
of its Subsidiaries (“Acquiring Party”) either acquires
an entity or acquires substantially all of the assets from an
entity, and said entity is, immediately prior to the date of
acquisition, licensed by the other party (“Licensor”)
under one or more Licensed Patents through an existing agreement
pursuant to which royalties or other payments are made by said
entity to Licensor, then the license and other rights granted
herein to the Acquiring Party with respect to said Licensed Patents
shall apply to products manufactured or services rendered by said
entity or through the use of said assets, provided that such
royalties or other payments shall continue to be made by the
Acquiring Party or said entity to the Licensor with respect to such
products or services notwithstanding that
