Exhibit 10.27
PATENT AND TECHNOLOGY LICENSE
AGREEMENT
This TECHNOLOGY AND PATENT LICENSE
AGREEMENT (this “Agreement” ) is
made and entered into as of the Closing Date (as defined below) by
and among Analog Devices, Inc., a Massachusetts corporation
( “Licensor” ), and Ikanos
Communications, Inc. a Delaware corporation (
“Licensee” ).
W I T N E S S E T
H:
WHEREAS, Licensor owns or is
licensed to certain valuable assets and technology related to the
Acquired Business (as defined below), which include integrated
circuit products, software, customer lists, technical expertise,
patents, mask works and other intellectual property and
assets;
WHEREAS, Licensor and its Affiliates
are, as of the Closing Date, assigning to Licensee all of
Licensor’s and such Affiliates’ respective right, title
and interest in certain assets owned by them relating exclusively
to the Acquired Business as set forth in the Asset Purchase
Agreement (the “ Acquired Assets
”).
WHEREAS, in connection with
Licensee’s purchase of the Acquired Assets, Licensor desires
to license to Licensee, and Licensee desires to obtain, certain
additional Intellectual Property Rights (as defined below) related
to the Acquired Business on the terms described in this Agreement;
and
NOW, THEREFORE, in consideration of
the covenants, representations, warranties and mutual agreements
hereinafter set forth, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, and intending to be legally bound hereby, the parties
hereto agree as follows:
1.
Definitions. Capitalized terms not
otherwise defined have that meaning given in the Asset Purchase
Agreement.
“Affiliate”
has that meaning given in the Asset
Purchase Agreement.
“Asset Purchase
Agreement” means that certain Asset Purchase Agreement
entered into by the parties to this Agreement dated
January 12, 2006.
“Closing
Date” means
“Closing Date”, as defined in the Asset Purchase
Agreement.
“Control”
means with respect to a Patent or
technology, possession of the right, whether arising by ownership,
license or otherwise, to grant the license, right or authorization
to Licensee provided for in this Agreement without violating the
terms of any written agreement between Licensor and any third
party.
“Deliverables ” means the items and materials described
on Appendix B .
“Intellectual Property
Rights” has
that meaning given in the Asset Purchase Agreement.
1
“Licensed
Patents” means
the Patents that are listed in Appendix A .
“Licensed
IP” means the
Licensed Patents and Other IP.
“Licensee Exclusive
Field of Use” means the use, reproduction, development
(including but not limited to design and modification), manufacture
(itself or through third parties), license, import, offer for sale,
sale or other distribution (direct or indirect) of the Products or
any other integrated circuits for wired communications which are:
wired DSL solutions and/or broadband network processors and/or
routers which have a primary purpose of providing network
processing and/or routing.
“Licensee Nonexclusive
Field of Use” means the use, reproduction, development
(including but not limited to design and modification), manufacture
(itself or through third parties), license, import, offer for sale,
sale or other distribution (direct or indirect) of the Licensed
AFEs.
“Other
IP” means the
Intellectual Property Rights (other than Licensed Patents and any
Trademarks) Controlled by Licensor that would be infringed by the
operation of the Acquired Business as currently conducted on the
Closing Date or as conducted following Closing Date if conducted in
substantially the same manner, including, without limitation, the
design, development, reproduction, distribution, marketing,
manufacture, use, import and sale or license of the Products
(including Products under development as of Closing
Date).
“Patents”
means “Patents” as
defined in the Asset Purchase Agreement.
“Products”
has that meaning given in the Asset
Purchase Agreement, and all predecessors, updates, upgrades,
improvements and substitutions thereto. For the avoidance of
doubt Products shall also include analog front end products and
materials described in Appendix B (the “
Licensed AFEs ”).
“Trademarks”
means “Trademarks” as
defined in the Asset Purchase Agreement.
2.
Grant of Rights
2.01
Patent License
Grant . Licensor hereby
grants to Licensee a royalty-free (except as provided below),
fully-paid, world-wide, perpetual, irrevocable, non-terminable,
transferable (subject to Section 5.05) right and license, with
the right to grant and authorize sublicenses, under the Licensed
Patents to conduct and exploit the Acquired Business in the
Licensee Exclusive Field of Use and the Licensee Nonexclusive Field
of Use, to make, have made, use, import, offer for sale, sell and
otherwise exploit Products in the Licensee Exclusive Field of Use
and the Licensee Nonexclusive Field of Use. Such license
shall continue until expiration, revocation, invalidation or
abandonment of the last Patent within the Licensed Patents. The
foregoing license shall be exclusive in the Licensee Exclusive
Field of Use (other than Licensed AFEs) and nonexclusive in the
Licensee Nonexclusive Field of Use, including for Licensed
AFEs.
2.02
Other
IP . Licensor hereby
grants to Licensee a royalty-free (except as provided below),
fully-paid, world-wide, perpetual, irrevocable, non-terminable,
transferable (subject to
2
Section 5.05) right and
license, with the right to grant and authorize sublicenses, under
the Other IP to conduct and exploit the Acquired Business in the
Licensee Exclusive Field of Use and the Licensee Nonexclusive Field
of Use, to use, reproduce in whole or in part, modify, create
derivative works of design, develop, manufacture, reproduce,
support, market, sell, license and /or lease Products in the
Licensee Exclusive Field of Use and the Licensee Nonexclusive Field
of Use. The foregoing license shall be exclusive in the
Licensee Exclusive Field of Use (other than Licensed AFEs) and
nonexclusive in the Licensee Nonexclusive Field of Use, including
for Licensed AFEs.
2.03
Sublicense
.
Licensee’s rights and licenses granted under this Agreement
include the right to grant multiple sublicenses of Other IP and
Licensed Patents in the Licensee Exclusive Field of Use to
Licensee’s Affiliates, customers, distributors and
sublicensees, including the right to grant sublicensees the right
to grant sublicenses of Other IP and Licensed Patents in the
Licensee Exclusive Field of Use, within the scope of the licenses
granted above, and provided that such sublicensees are subject to
Section 2.07. Licensee’s rights and licenses
granted under this Agreement include the right to grant multiple
sublicenses of Licensed Patents and Other IP in the Licensee
Non-Exclusive Field of Use in connection with the distribution of
Products, within the scope of the licenses granted above, and
provided that such sublicensees are subject to
Section 2.07.
2.04
Exclusivity
Covenant . Licensor agrees not
to exercise, authorize or assist any third parties to exercise, any
of the exclusive rights granted to Licensee under Sections 2.01 and
2.02. Notwithstanding anything to the contrary herein (but
subject to Article IX of the Asset Purchase Agreement),
(1) Licensor shall have the right to grant licenses to the
Licensed Patents, as part of a cross license of all or
substantially all of Licensor’s and its Affiliates’
Patents in substantially all fields of use; and (2) Licensor
shall have the right to make, have made and use individual stand
alone components (e.g. converters, analog front ends, digital
signal processors, mixed signal components) and bundles thereof
that do not substantially comprise a product in the Licensee
Exclusive Field of Use, and may offer to sell, sell, and import
such components and bundles thereof to third parties.
2.05
Consideration
. In
consideration for Licensor’s grant of rights as set forth in
this Section 2 (other than the sublicense granted in
Section 2.06), Licensee shall pay Licensor the amounts as set
forth in the Asset Purchase Agreement. In addition but
subject to the terms of the Asset Purchase Agreement, in the event
that any agreement between Licensor and a third party requires the
payment of any royalties or other amounts for the exploitation of a
license to any Licensed Patents or Other IP (“Third Party
Agreement(s)”), Licensee shall pay the amounts specified in
such Third Party Agreement to Licensor in the manner specified in
such Third Party Agreement but only if Licensor provides Licensee
with accurate and complete copies of Third Party Agreements prior
to or on the Effective Date of this Agreement. In the event
Licensor fails to comply with the obligations of Section 2.05,
Licensee shall have no such obligations to pay for third party
Licensed Patents or Other IP, and Licensor shall bear all such
costs.
2.06
Limitation
.
Notwithstanding the foregoing, and subject to the payment of the
fees set forth below, Licensor’s grant above includes
sublicensed rights from Licensor under its Agreement with Qualcore
(formerly Virtual IP Group, Inc.) dated July 31,
2002 (“
Qualcore Agreement
”)
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