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Exhibit 2.3
LICENSE REFERENCE NUMBER________________
EXECUTION COPY
PATENT LICENSE AGREEMENT
LICENSE
AGREEMENT ("Agreement") dated December 30, 2003 ("Agreement
Date")
between INTERNATIONAL
BUSINESS MACHINES CORPORATION, a New York corporation
("IBM"), and Hifn, Inc., a
Delaware corporation ("BUYER").
WHEREAS,
IBM and BUYER have executed concurrently herewith an
"Intellectual Property
Agreement," and other ancillary agreements identified in
the "Asset Purchase
Agreement" as the "Operative Agreements" for the purpose
of
conveying certain assets and
licensing certain intellectual property from IBM to
BUYER in a divestiture and
acquisition transaction relating to Network
Processors;
WHEREAS,
the use of such assets and the exercise of such licenses
may
require a license under IBM
patents;
WHEREAS,
IBM has the right to license such patents, and BUYER desires
to
acquire a nonexclusive
license under such patents;
WHEREAS,
BUYER has the right to license its own patents, and IBM
desires
to acquire a nonexclusive
license under such patents;
NOW
THEREFORE, in consideration of the premises and mutual
covenants
herein contained, IBM and
BUYER (each as "Grantee" and "Grantor") agree as
follows:
SECTION 1.
DEFINITIONS
1.0 As used herein, the term
"Agreement" means this Patent License Agreement.
The following terms used in
this Agreement shall have the respective meanings
assigned in this Agreement
unless the context otherwise requires.
1.1 "Information Handling
System" shall mean any instrumentality or aggregate of
instrumentalities primarily
designed to compute, classify, process, transmit,
receive, retrieve, originate,
switch, store, display, manifest, measure, detect,
record, reproduce, handle or
utilize any form of information, intelligence or
data for business,
scientific, control or other purposes.
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1.2 "IHS Product" shall mean
an Information Handling System or any
instrumentality or aggregate
of instrumentalities (including, without
limitation, any component,
subassembly, computer program or supply) designed for
incorporation in an
Information Handling System. Any instrumentality or
aggregate of
instrumentalities primarily designed for use in the
fabrication
(including testing) of an IHS
Product shall not be considered to be an IHS
Product.
1.3 "Licensed Patents" shall
mean either IBM Licensed Patents or BUYER Licensed
Patents or both IBM Licensed
Patents and BUYER Licensed Patents as the context
indicates.
1.4 "Licensed Products" shall
mean either IBM Licensed Products or BUYER
Licensed Products as the
context indicates.
1.5 "IBM Licensed Patents"
shall mean all patents, including utility models and
typeface design patents and
registrations (but not including any other design
patents or
registrations):
(a) issued or issuing on patent
applications entitled to an effective filing
date prior
to the Effective Date ;
(b) which, but for this
Agreement, would be infringed by Grantee's having
made,
using, importing, offering for sale, leasing, licensing,
selling
and/or
otherwise transferring Grantee Licensed Products; and
(c) 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).
Notwithstanding the
foregoing, or any other provision of this Agreement or
any
other Operative Agreement,
IBM Licensed Patents shall expressly exclude any
claims of patents directed
to:
(i) a method or a process for
making (including methods of and processes for
testing)
Semiconductor Products and/or Licensed Products; and/or
(ii) a method or a process for bonding,
assembling or testing techniques used
in
attaching a Semiconductor Device to a Chip Carrier, a
Semiconductor
Device to
a card or a Semiconductor Device and Chip Carrier to a card,
and
with
respect to a method or process for making a Chip Carrier or
card;
even if
such method or process information is contained in information
or
expressly
disclosed by the other items provided to BUYER,
including
information or other items provided under any
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Operative Agreement. For the
purposes of this definition, Semiconductor
Products, Semiconductor
Device, and Chip Carrier have the meanings set forth in
the Intellectual Property
Agreement.
IBM Licensed Patents shall
include said patent applications,
continuations-in-part of said
patent applications, and any patents reissuing on
any of the aforesaid
patents.
1.6 "BUYER Licensed Patents"
shall mean all patents, including utility models
and typeface design patents
and registrations (but not including any other
design patents or
registrations):
(a) issued or issuing on patent
applications entitled to an effective filing
date prior
to the Effective Date that read on In Scope Products,
Licensed
Software
or Licensed Reference Platforms as defined in the IPA and
any
patents
issued or issuing on patent applications on derivative
works
created in
completing the NP4GX as defined in the IPA ;
(b) which, but for this
Agreement, would be infringed by Grantee's making,
having
made, using, importing, offering for sale, leasing,
licensing,
selling
and/or otherwise transferring Grantee Licensed Products;
and
(c) 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).
BUYER Licensed Patents shall
include said patent applications,
continuations-in-part of said
patent applications, and any patents reissuing on
any of the aforesaid
patents.
1.7 "IBM Licensed Products"
shall mean IHS Products.
1.8 "BUYER Licensed Products"
shall mean In Scope Products as of the Effective
Date of this
transaction.
1.9 "Subsidiary" of a party
hereto or of a third party shall mean a corporation,
company or other
entity:
(a) 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,
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company or
other entity shall be deemed to be a Subsidiary only so long
as
such
ownership or control exists; or
(b) 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.
1.10 "Closing" and "Closing
Date" shall have the meanings set forth in the Asset
Purchase
Agreement.
1.11 "Assigned Product
Copyrights", "Assigned Product Know-how", "Licensed
Product Copyrights", "Chip
Carrier", "Semiconductor Device", "Semiconductor
Material", "In Scope Product"
and "Licensed Product Know-how" shall have the
meanings set forth in the
Intellectual Property Agreement.
1.12 "Derivative Work" shall
mean a work which is based upon one or more
preexisting works, including,
but not limited to, a revision, modification,
translation, abridgement,
condensation, expansion or any other form which such
preexisting work may be
recast, transformed or adapted.
1.13 "Effective Date" shall
mean Closing Date as identified in the Asset
Purchase
Agreement.
SECTION 2.
GRANTS OF RIGHTS
2.1 IBM as Grantor on behalf
of itself and its Subsidiaries grants to the BUYER,
as Grantee, a nonexclusive,
and worldwide license under Grantor's Licensed
Patents:
(a) to use, import, offer for
sale, lease, license, sell and/or otherwise
transfer Grantee Licensed
Products; and
(b) 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 2.3 are
met.
A particular Licensed Product
shall be licensed under only those claims of
Grantor's Licensed Patents
which, but for the license granted herein, would have
been infringed (including
contributory infringement) if Grantee had Grantee
Licensed Products made by
another manufacturer, used, imported, offered for
sale, leased, sold and/or
otherwise transferred such product in the country
where such Licensed Patents
exist.
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2.2 BUYER as Grantor on
behalf of itself and its Subsidiaries grants to IBM, as
Grantee, a nonexclusive, and
worldwide license under Grantor's Licensed Patents:
(a) to make, use, import, offer
for sale, lease, license, sell and/or
otherwise
transfer Grantee Licensed Products; and
(b) 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 2.3 are
met.
A particular Licensed Product
shall be licensed under only those claims of
Grantor's Licensed Patents
which, but for the license granted herein, would have
been infringed (including
contributory infringement) if Grantee had made, used,
imported, offered for sale,
leased, sold and/or otherwise transferred such
product in the country where
such Licensed Patents exist.
2.3 The licenses granted in
Sections 2.1(b) and 2.2(b) to Grantee to have
products made by another
manufacturer:
(a) shall only apply to products
sold to Grantee after the Agreement Date;
(b) shall only apply when the
specifications for such Grantee's Licensed
Products
were created by Grantee (either solely or jointly with one
or
more third
parties);
(c) shall only be under claims
of Grantor's Licensed Patents, the infringement
of which
would be necessitated by compliance with such
specifications;
(d) shall not apply to (i) any
methods used, or (ii) any products in the form
manufactured or marketed, by said other manufacturer prior to
Grantee's
furnishing
of said specifications; and
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 c
