This PATENT
LICENSE AGREEMENT (the “ Agreement ”), made and
entered into as of June 29, 2005 (the “ Effective
Date ”) by and between Tumbleweed Communications Corp., a
Delaware corporation with its principal offices located at 700
Saginaw Drive, Redwood City, California 94063 (fax: 650-216-2001)
(“Licensor”), and CyberGuard Corporation, a Florida
corporation with its principal offices located at 350 SW 12
th Avenue, Deerfield Beach, Florida 33442 (fax:
(954) 375-3501) (“Licensee”). Licensor and
Licensee are sometimes referred to herein individually as a
“Party” and collectively as the
“Parties.”
WHEREAS, Licensor
is the owner of certain United States patents as herein
identified;
WHEREAS, Licensee
desires to obtain, and Licensor is willing to grant Licensee, a
non-exclusive license as hereinafter defined and subject to all the
terms and conditions of this Agreement;
NOW, THEREFORE, in
consideration of the promises and the mutual covenants hereinafter
set forth, the Parties agree as follows:
Capitalized terms
shall have the following definitions, unless elsewhere defined in
the body of the Agreement:
|
|
1.
|
|
“ Licensed Product
” means any of Licensee’s past, present and future
software products, including updates and upgrades, that fall within
the scope of one or more claims of the Licensed Patents.
|
|
|
|
|
|
|
|
2.
|
|
“ Licensed Patents
” means United States Patent Nos. 6,609,196 and 6,393,568 and
any continuations, divisionals, reissues, reexaminations, or
foreign counterpart patents that may issue with respect to the
aforesaid patents.
|
|
|
|
|
|
|
|
3.
|
|
“ Territory ”
means the world.
|
|
|
1.
|
|
Licensor hereby grants to Licensee a
personal, non-exclusive license under the Licensed Patents, to
make, use, sell, offer for sale, import and/or export the Licensed
Product within the Territory during the Term, without rights of
sublicense (except that Licensee shall have the limited
|
|
|
|
|
right to sublicense to any of its
customers the right to use the Licensed Patents solely to the
extent needed to use the Licensed Products of the Licensee),
subject to the terms and conditions of this Agreement.
|
|
|
2.
|
|
This Agreement does not give, and
shall not be construed to give, Licensee any express or implied
rights in any intellectual property of Licensor other than as
expressly granted herein, including but not limited to the right to
sell products, other than the Licensed Products, that infringe on
the Licensed Patents.
|
|
|
|
|
|
|
|
3.
|
|
This Agreement and the rights
granted to Licensee hereunder may be assigned in whole, but not in
part, upon prior written notice from Licensee to Licensor. This
Agreement and the rights granted to Licensee hereunder may not,
however be sublicensed by Licensee without the prior written
approval of Licensor, except as provided in section B.1 above. Any
assignment, sublicense or other transfer contrary to the terms of
the Agreement shall be null and void, and Licensor may at its
option immediately terminate this Agreement and all rights granted
to Licensee hereunder by written notice to Licensee.
|
|
|
|
|
|
|
|
4.
|
|
Licensee acknowledges the validity
and enforceability of the Licensed Patents. To the fullest extent
permissible under applicable law, in the event Licensee elects to
challenge the validity of the Licensed Patents, for example, by
initiating reexamination, or declaratory judgment actions, or any
other type of court action, or any other legal or administrative
proceeding, including opposition proceedings in foreign patent
offices, or other foreign patent office administrative proceedings
or foreign court actions, Licensor will have the right to
immediately terminate the license granted herein.
|
|
C.
|
|
Payment of License
Fee.
|
|
|
1.
|
|
Nonrefundable Payment
. In consideration of
the license granted herein, Licensee shall pay to Licensor the
nonrefundable fee (“License Fee”) set forth on
Exhibit A by wire transfer on or before July 31, 2005 and
shall issue a purchase order reflecting the foregoing on or before
June 30, 2005. All payments shall be made by wire transfer
to
|
Silicon Valley
Bank
3003 Tasman Drive
Santa Clara, CA 95054
Phone: 408-654-7400
Account #3300045171
ABA # 121140399
For the credit of Tumbleweed Communications
(TIN: 94-3336053).
2
|
|
2.
|
|
Default Royalty Payments
. [This section has
intentionally been deleted.]
|
|
|
|
|
|
|
|
3.
|
|
Annual Royalty Payment Alternative
to Default Royalty Payments . [This section has intentionally
been deleted.]
|
|
|
|
|
|
|
|
4.
|
|
Option to Convert to a Fully-Paid-Up
License .
[This section has intentionally been deleted.]
|
|
|
|
|
|
|
|
5.
|
|
Late Payments, Recordkeeping, and
Audits . Any
amount not paid when due shall thereafter accrue daily interest at
an annual rate of 2% over the prime rate or the maximum rate
allowable by law, whichever is less.
|
|
D.
|
|
Maintenance, Use and Enforcement of
Patent Rights.
|
|
|
1.
|
|
Licensor shall be under no
obligation to file, prosecute or maintain any patent rights,
including the Licensed Patents in any given country.
|
|
|
|
|
|
|
|
2.
|
|
Licensee shall promptly notify
Licensor if in the ordinary course of its business Licensee obtains
actual and non-confidential knowledge that any third party is
infringing the Licensed Patents. Licensee shall provide to Licensor
the information Licensee has in support of such belief.
|
|
E.
|
|
Representations and
Warranties.
|
|
|
(a)
|
|
Organization . Licensor is a corporation duly
organized, validly existing and in good standing under the law of
the state of its incorporation as set forth in the first recital
paragraph of this Agreement.
|
|
|
|
|
|
|
|
(b)
|
|
Authorization; Validity of
Agreement; Licensor’s Action . Licensor has the corporate power
and authority to execute and deliver this Agreement and to
consummate the transactions contemplated hereby. The execution,
delivery and performance by Licensor of this Agreement, and the
consummation by it of the transactions contemplated hereby, have
been duly authorized and no other corporate action on the part of
Licensor is necessary to authorize the execution and delivery by
Licensor of this Agreement and the consummation by it of the
transactions contemplated hereby. This Agreement has been duly
executed and delivered by Licensor and, assuming due and valid
authorization, execution and delivery hereof by Licensee, is a
valid and binding obligation of Licensor, enforceable against
Licensor in accordance with its terms, except
|
3
|
|
|
|
that (i) such enforcement may
be subject to applicable bankruptcy, insolvency, reorganization,
moratorium or other similar laws, now or hereafter in effect,
affecting creditors’ rights generally, and (ii) the remedy of
specific performance and injunctive and other forms of equitable
relief may be subject to equitable defenses and to the discretion
of the court before which any proceeding therefore may be
brought.
|
|
|
(c)
|
|
Consents and Approvals; No
Violations .
Neither the execution, delivery or performance of this Agreement by
Licensor nor the consummation by Licensor of the transactions
contemplated hereby nor compliance by Licensor with any of the
provisions hereof shall (i) conflict with or result in any
breach of any provision of the certificate of incorporation or
by-laws or similar organizational documents of Licensor,
(ii) require on the part of Licensor any filing with, or
permit, authorization, consent or approval of, any governmental
entity, (iii) result in a violation or breach of, or
constitute (with or without due notice or lapse of time or both) a
default (or give rise to any right of termination, cancellation or
acceleration) under, any of the terms, conditions or provisions of
any material note, bond, mortgage, indenture, lease, license,
contract, agreement or other instrument or obligation to which
Licensor is a party or by which it or any of its properties or
assets may be bound or (iv) violate any order, writ,
injunction, decree, statute, rule or regulation applicable to
Licensor or any of its properties or assets; excluding from the
foregoing clauses (ii) (iii) or (iv) any acts omissions
that would not, individually or in the aggregate, have a material
adverse change in, or effect on, the business, financial condition
or operations of Licensor.
|
|
|
|
|
|
|
|
(d)
|
|
Disclaimers . Nothing herein shall constitute a
representation or warranty by Licensor (i) as to the scope of
the Licensed Patents, or (ii) that the Licensed Patents are
valid or enforceable, or (iii) that the exercise of the rights
granted hereunder does not and will not infringe upon the
proprietary rights of any third party. Nothing herein shall
constitute (i) an undertaking to bring or prosecute actions or
suits against any third party for infringement, or (ii) a
grant or creation by implication, estoppel, or otherwise, of any
license or right under any patents (other than the Licensed
Patents) of Licensor or any third party.
|
4
|
|
(a)
|
|
Organization . Licensee is a duly organized,
validly existing and in good standing under the law of the
jurisdiction of its incorporation as set forth in the first recital
paragraph of this Agreement.
|
|
|
|
|
|
|
|
(b)
|
|
Authorization; Validity of
Agreement; Licensee’s Action . Licensee has the corporate power
and authority to execute and deliver this Agreement and to
consummate the transactions contemplated hereby. The execution,
delivery and performance by Licensee of this Agreement, and the
consummation by it of the transactions contemplated hereby, have
been duly authorized and no other corporate action on the part of
Licensee is necessary to authorize the execution and delivery by
Licensee of this Agreement and the consummation by it of the
transactions contemplated hereby. This Agreement has been duly
executed and delivered by Licensee and, assuming due and valid
authorization, execution and delivery hereof by Licensor, is a
valid and binding obligation of Licensee, enforceable against
Licensee in accordance with its terms, except that (i) such
enforcement may be subject to applicable bankruptcy, insolvency,
reorganization, moratorium or other similar laws, now or hereafter
in effect, affecting creditors’ rights generally, and
(ii) the remedy of specific performance and injunctive and
other forms of equitable relief may be subject to equitable
defenses and to the discretion of the court before which any
proceeding therefore may be brought.
|
|
|
|
|
|
|
|
(c)
|
|
Consents and Approvals; No
Violations. Neither the execution, delivery or
performance of this Agreement by Licensee nor the consummation by
Licensee of the transactions contemplated hereby nor compliance by
Licensee with any of the provisions hereof shall (i) conflict
with or result in any breach of any provision of the certificate of
incorporation or by-laws or similar organizational documents of
Licensee, (ii) require on the part of Licensee any filing
with, or permit, authorization, consent or approval of, any
governmental entity, (iii) result in a violation or breach of,
or constitute (with or without due notice or lapse of time or both)
a default (or give rise to an
|
|
