EXHIBIT 2.4
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
3COM CORPORATION
AND
PALM, INC.
Effective as of _____, 2000
MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
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ARTICLE 1 DEFINITIONS............................................................. 1
1.1 ALLOCATED PATENT ASSETS DATABASE................................ 1
1.2 ASSIGNED PATENTS................................................ 2
1.3 BLUETOOTH....................................................... 2
1.4 DISTRIBUTION DATE............................................... 3
1.5 FIRST EFFECTIVE FILING DATE..................................... 3
1.6 GALAHAD PATENTS................................................. 3
1.7 GALAHAD PROJECT................................................. 3
1.8 INVENTION DISCLOSURE............................................ 3
1.9 MASTER SEPARATION AND DISTRIBUTION AGREEMENT.................... 3
1.10 PALM PATENTS.................................................... 3
1.11 PALM PRODUCTS................................................... 4
1.12 PATENTS......................................................... 4
1.13 PERSON.......................................................... 4
1.14 SEPARATION DATE................................................. 4
1.15 SUBSIDIARY...................................................... 4
1.16 THIRD PARTY..................................................... 5
1.17 THIRD PARTY PATENTS............................................. 5
1.18 3COM PATENTS.................................................... 5
1.19 3COM PRODUCTS................................................... 5
ARTICLE 2 OWNERSHIP............................................................... 5
2.1 OWNERSHIP OF PATENTS............................................ 5
2.2 PRIOR GRANTS.................................................... 6
2.3 ASSIGNMENT DISCLAIMER........................................... 6
ARTICLE 3 LICENSES AND COVENANTS NOT TO XXX....................................... 7
3.1 LICENSE GRANTS TO PALM WITH RESPECT TO GALAHAD PATENTS.......... 7
3.2 RESTRICTION ON 3COM LICENSING OF GALAHAD PATENTS................ 7
3.3 RESTRICTION ON PALM'S "HAVE MADE" RIGHTS TO GALAHAD PATENTS..... 7
3.4 COMBINATION EXCLUSION........................................... 7
3.5 PALM'S SUBLICENSE RIGHTS WITH RESPECT TO GALAHAD PATENTS........ 8
3.6 DURATION........................................................ 8
3.7 ACQUISITION OF PALM OR TRANSFER OF A BUSINESS OR SUBSIDIARY
RELATED TO GALAHAD PATENTS...................................... 8
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TABLE OF CONTENTS
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3.8 COPIES OF PATENT APPLICATIONS AND INVENTION DISCLOSURES......... 10
3.9 THIRD PARTY PATENTS............................................. 10
3.10 3COM COVENANT NOT TO XXX........................................ 10
3.11 PALM COVENANT NOT TO XXX........................................ 12
ARTICLE 4 ADDITIONAL OBLIGATIONS.................................................. 13
4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS.......... 14
4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO GALAHAD PATENTS........... 14
4.3 STANDARDS BODIES................................................ 15
4.4 ASSIGNMENT OF PATENTS........................................... 15
4.5 RECORDATION OF LICENSES......................................... 15
ARTICLE 5 CONFIDENTIALITY......................................................... 16
ARTICLE 6 TERMINATION............................................................. 16
6.1 VOLUNTARY TERMINATION........................................... 16
6.2 SURVIVAL........................................................ 16
6.3 NO OTHER TERMINATION............................................ 16
ARTICLE 7 DISPUTE RESOLUTION...................................................... 17
7.1 MEDIATION....................................................... 17
7.2 ARBITRATION..................................................... 17
7.3 COURT ACTION.................................................... 17
7.4 CONTINUITY OF SERVICE AND PERFORMANCE........................... 18
ARTICLE 8 LIMITATION OF LIABILITY................................................. 18
ARTICLE 9 MISCELLANEOUS PROVISIONS................................................ 18
9.1 DISCLAIMER...................................................... 18
9.2 NO IMPLIED LICENSES............................................. 19
9.3 INFRINGEMENT SUITS.............................................. 19
9.4 NO OTHER OBLIGATIONS............................................ 19
9.5 ENTIRE AGREEMENT................................................ 19
9.6 GOVERNING LAW................................................... 19
9.7 DESCRIPTIVE HEADINGS............................................ 20
9.8 NOTICES......................................................... 20
9.9 NONASSIGNABILITY................................................ 20
9.10 SEVERABILITY.................................................... 21
9.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE........... 21
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TABLE OF CONTENTS
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9.12 AMENDMENT....................................................... 21
9.13 COUNTERPARTS.................................................... 21
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MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT
This Master Patent Ownership and License Agreement (the "Agreement") is
effective as of ________, 2000 (the "Effective Date"), between 3Com Corporation,
a Delaware corporation ("3Com"), having an office at 0000 Xxxxxxxx Xxxxx, Xxxxx
Xxxxx, Xxxxxxxxxx, 00000 and Palm, Inc., a Delaware corporation ("Palm"), having
an office at 0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx, 00000.
WHEREAS, the Board of Directors of 3Com has determined that it is in the
best interest of 3Com and its stockholders to separate 3Com's existing
businesses into two independent businesses;
WHEREAS, as part of the foregoing, 3Com and Palm's predecessor, Palm
Computing, Inc., a California Corporation, have entered into a Master Separation
and Distribution Agreement (as defined below), which provides, among other
things, for the separation of certain Palm assets and Palm liabilities, the
initial public offering of Palm stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing;
WHEREAS, also as part of the foregoing, 3Com and Palm desire to confirm
Palm's ownership of all patents, patent applications and invention disclosures
invented by or for Palm and to record in Palm's name any such patents and patent
applications that are recorded in 3Com's name;
WHEREAS, Palm and 3Com desire to confirm 3Com's ownership of certain
jointly developed technology and Palm desires to receive and 3Com is willing to
grant to Palm certain licenses and rights under patents, patent applications and
invention disclosures covering such technology; and
WHEREAS, Palm and 3Com further desire to enter into reciprocal covenants
not to xxx for patent infringement.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 ALLOCATED PATENT ASSETS DATABASE. "Allocated Patent Assets Database"
means the mutually agreed Allocated Patent Assets Database as of the Separation
Date, as it may be updated by the parties upon mutual agreement to add Patents,
Patent applications and Invention Disclosures as of the Separation Date.
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1.2 ASSIGNED PATENTS. "Assigned Patents" means only those
(a) Patents, Patent applications and Invention Disclosures that are
recorded in 3Com's name and are allocated to Palm in the Allocated Patent Assets
Database;
(b) Patent applications filed on the foregoing Invention
Disclosures described in Section 1.2(a);
(c) continuations, continuations-in-part, divisions and
substitutions of any of the foregoing Patent applications described in Sections
1.2(a) and (b);
(d) Patents which may issue on any of the foregoing Patent
applications described in Sections 1.2(a)-(c);
(e) renewals, reissues, reexaminations and extensions of the
foregoing Patents described in Sections 1.2(a) and (d); and
(f) foreign Patent applications and Patents that are counterparts
of any of the foregoing Patent applications or Patents described in Sections
1.2(a)-(e), including any Patent application or Patent to the extent that it
claims priority from any of the foregoing Patent applications or Patents
described in Sections 1.2(a)-(e); but
(g) excluding from any Patent or Patent application described in
Sections 1.2(c)-(f) any claim (i) directed to subject matter that does not
appear in any Patent application having a First Effective Filing Date prior to
the Separation Date and (ii) of which neither Palm nor any person having a legal
duty to assign his/her interest therein to Palm is entitled to be named as an
inventor.
1.3 BLUETOOTH. "Bluetooth" means the short range wireless standard
currently being promulgated by the Bluetooth Special Interest Group, of which
3Com is an adopter.
1.4 CURRENT PALM PRODUCTS. "Current Palm Products" means Palm Products of
the businesses in which Palm or any of its Subsidiaries is engaged as of the
Separation Date, including any Palm Products under development as set forth in
3Com's High Level Product Plan for Fiscal Year 2000 or as otherwise agreed by
the parties, as well as future versions of such Palm Products, but only to the
extent that they use the same designs and/or technology as such Palm Products.
1.5 CURRENT 3COM PRODUCTS. "Current 3Com Products" means 3Com Products of
the businesses in which 3Com or any of its Subsidiaries is engaged as of the
Separation Date, including any 3Com Products under development as set forth in
3Com's High Level Product Plan for Fiscal Year 2000 or as otherwise agreed by
the parties, as well as future versions of such 3Com Products, but only to the
extent that they use the same designs and/or technology as such 3Com Products.
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1.6 DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in
the Master Separation and Distribution Agreement.
1.7 FIRST EFFECTIVE FILING DATE. "First Effective Filing Date" means the
earliest effective filing date in the particular country for any Patent or any
application for any Patent. By way of example, it is understood that the First
Effective Filing Date for a United States Patent is the earlier of (i) the
actual filing date of the United States Patent application which issued into
such Patent, (ii) the priority date under 35 U.S.C. (S) 119 for such Patent, or
(iii) the priority date under 35 U.S.C. (S) 120 for such Patent.
1.8 GALAHAD PATENTS. "Galahad Patents" means any Patents, Patent
applications and Invention Disclosures arising from the Galahad Project which
have at least one inventor employed by Palm and at least one inventor employed
by 3Com.
1.9 GALAHAD PROJECT. "Galahad Project" means the development effort
within 3Com's Wireless Connectivity Division (WCD) currently known internally as
the Galahad Project.
1.10 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of an
invention (i) written for the purpose of allowing legal and business people to
determine whether to file a Patent application with respect to such invention
and (ii) recorded with a control number in the owning party's records) with a
First Effective Filing Date before the Separation Date.
1.11 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation and
Distribution Agreement" means the Master Separation and Distribution Agreement
between the parties.
1.12 PALM PATENTS. "Palm Patents" means:
(a) the Assigned Patents;
(b) every Patent to the extent entitled to a First Effective Filing
Date prior to the Separation Date provided that, at any time after the First
Effective Filing Date of any such Patent and prior to the Separation Date, Palm
(or any Subsidiary of Palm) has ownership or control of any such Patent; and
(c) applications for the foregoing Patents described in Section
1.10(b), including without limitation any continuations, continuations-in-part,
divisions and substitutions.
1.13 PALM PRODUCTS. "Palm Products" means any and all products and
services of the businesses in which Palm or any of its Subsidiaries is engaged
now or in the future, in all cases which products are designed or created
primarily by Palm (or by any sublicensed Subsidiary) and/or by a subcontractor
for Palm (or for any sublicensed Subsidiary).
1.14 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions
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or industrial designs anywhere in the world and all reissues, renewals, re-
examinations and extensions of any of the foregoing.
1.15 PERSON. "Person" means an individual, a partnership, a corporation, a
limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization and a governmental entity or any
department, agency or political subdivision thereof.
1.16 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
February 26, 2000, or such other date as may be fixed by the Board of Directors
of 3Com.
1.17 SUBSIDIARY. "Subsidiary" of any Person means a corporation or other
organization, whether incorporated or unincorporated, of which at least a
majority of the securities or interests having by the terms thereof ordinary
voting power to elect at least a majority of the board of directors or others
performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by such Person or by
any one or more of its Subsidiaries, or by such Person and one or more of its
Subsidiaries; provided, however, that no Person that is not directly or
indirectly wholly-owned by any other Person shall be a Subsidiary of such other
Person unless such other Person controls, or has the right, power or ability to
control, that Person. For the purposes of this Agreement, Palm shall be deemed
not to be a Subsidiary of 3Com.
1.18 THIRD PARTY. "Third Party" means a Person other than 3Com and its
Subsidiaries and Palm and its Subsidiaries.
1.19 THIRD PARTY PATENTS. "Third Party Patents" means all Third Party
Patents licensed by 3Com or any Subsidiary of 3Com that, as of the Effective
Date, may be sublicensed to Palm (e.g., because Palm is a Subsidiary of 3Com)
under the terms of this Agreement without the requirement to pay a royalty or
other consideration to a Third Party (unless 3Com has the right to grant such a
sublicense to Palm on payment of a royalty and Palm agrees to pay such royalty
to such Third Party).
1.20 3COM PATENTS. "3Com Patents" means:
(a) every Patent to the extent entitled to a First Effective Filing
Date prior to the Separation Date provided that, at any time after the First
Effective Filing Date of any such Patent and prior to the Separation Date, 3Com
(or any Subsidiary of 3Com) has ownership or control of any such Patent; and
(b) applications for the foregoing Patents described in Section
1.18(a), including without limitation any continuations, continuations-in-part,
divisions and substitutions.
1.21 3COM PRODUCTS. "3Com Products" means any and all products and
services of the businesses in which 3Com or any of its Subsidiaries is engaged
now or in the future, in all cases which products are designed or created
primarily by 3Com (or by any sublicensed Subsidiary) and/or by a subcontractor
for 3Com (or for any sublicensed Subsidiary), as well as future versions of such
3Com Products.
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ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF PATENTS.
(a) PALM PATENTS. The parties agree that Palm hereby retains
ownership of all right, title and interest in and to all Palm Patents.
(b) ASSIGNED PATENTS. Subject to Sections 2.2 and 2.3 below, 3Com
hereby grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Palm, by execution hereof (or,
where appropriate or required, by execution of separate instruments of
assignment), all its (and their) right, title and interest in and to the
Assigned Patents, to be held and enjoyed by Palm, its successors and assigns.
3Com further grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Palm all its (and their) right,
title and interest in and to any and all causes of action and rights of recovery
for past infringement of the Assigned Patents and the right to claim priority
from the Assigned Patents. 3Com will, without demanding any further
consideration therefor, at the request and expense of Palm (except for the value
of the time of 3Com employees), do (and cause its Subsidiaries to do) all lawful
and just acts, that may be or become necessary for prosecuting, sustaining,
obtaining continuations of, or reissuing said Assigned Patents and for
evidencing, maintaining, recording and perfecting Palm's rights to said Assigned
Patents, consistent with 3Com's general business practice as of the Separation
Date, including but not limited to execution and acknowledgement of (and causing
its Subsidiaries to execute and acknowledge) assignments and other instruments
in a form reasonably required by Palm for each Patent jurisdiction.
(c) GALAHAD PATENTS. Subject to Sections 2.2 and 2.3 below, Palm
hereby grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to 3Com, by execution hereof (or,
where appropriate or required, by execution of separate instruments of
assignment), all its (and their) right, title and interest in and to the Galahad
Patents, to be held and enjoyed by 3Com, its successors and assigns. Palm
further grants, conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to 3Com all its (and their) right,
title and interest in and to any and all causes of action and rights of recovery
for past infringement of the Galahad Patents and the right to claim priority
from the Galahad Patents. Palm will, without demanding any further consideration
therefor, at the request and expense of 3Com (except for the value of the time
of Palm employees), do (and cause its Subsidiaries to do) all lawful and just
acts, that may be or become necessary for prosecuting, sustaining, obtaining
continuations of, or reissuing said Galahad Patents and for evidencing,
maintaining, recording and perfecting 3Com's rights to said Galahad Patents,
consistent with Palm's general business practice as of the Separation Date,
including but not limited to execution and acknowledgement of (and causing its
Subsidiaries to execute and acknowledge) assignments and other instruments
in a form reasonably required by 3Com for each Patent jurisdiction.
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2.2 PRIOR GRANTS. Palm acknowledges and agrees that the foregoing
assignments are subject to any and all licenses or other rights that may have
been granted by 3Com or its Subsidiaries with respect to the Assigned Patents
prior to the Separation Date. 3Com shall respond to reasonable inquiries from
Palm regarding any such prior grants.
2.3 ASSIGNMENT DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS-IS," QUITCLAIM BASIS AND THAT NEITHER
PARTY NOR ANY SUBSIDIARY OF SUCH PARTY HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY, NON-INFRINGEMENT, OR VALIDITY OF PATENT CLAIMS (ISSUED OR
PENDING).
ARTICLE 3
LICENSES AND COVENANTS NOT TO XXX
3.1 LICENSE GRANTS TO PALM WITH RESPECT TO GALAHAD PATENTS. 3Com grants
(and agrees to cause its appropriate Subsidiaries to grant) to Palm, under the
Galahad Patents, an irrevocable, nonexclusive, worldwide, fully-paid, royalty-
free and non-transferable (except as set forth in Section 9.9) license to make
(including the right to practice methods, processes and procedures), have made
(except as restricted in Section 3.3 below), use, lease, sell, offer for sale
and import Palm Products.
3.2 RESTRICTION ON 3COM LICENSING OF GALAHAD PATENTS. 3Com agrees that it
will not license any of the Galahad Patents to any Third Party for use in
lightweight handheld mobile computing devices or operating systems for such
devices; provided, however, that 3Com retains the right to license the Galahad
Patents to Third Parties for such use for defensive purposes (i.e., to resolve a
claim of patent infringement brought against 3Com by a Third Party).
3.3 RESTRICTION ON PALM'S "HAVE MADE" RIGHTS TO GALAHAD PATENTS. The
license granted in Section 3.1 to have Palm Products made by a Third Party shall
(i) only apply when the portion of the "have made" Palm Product covered by the
Galahad Patents has been designed or created by Palm and/or one of Palm's
subcontractors (not such Third Party) who is not a direct competitor of 3Com in
the field of the Palm Product being designed or created and (ii) shall not apply
to (A) any methods used, or (B) any Palm Products or portions thereof that have
been manufactured or marketed, by a Third Party prior to Palm furnishing the
designs or creations to such Third Party.
3.4 COMBINATION EXCLUSION. Except as expressly provided herein, no
license or immunity is granted under this Agreement by 3Com, either directly or
by implication, estoppel or otherwise to any third parties acquiring Palm
Products from Palm for the combination of such Palm Products with other items or
for the use of such combination. Notwithstanding the previous sentence,
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3Com grants to the direct and indirect customers of Palm, an immunity from suit
under the Galahad Patents for the combination of any such Palm Products with
other Palm Products and their use in such combination where the Palm Products
have no other substantial noninfringing use aside from the combination with
other Palm Products sold or otherwise transferred by Palm directly or indirectly
to such customer.
3.5 PALM'S SUBLICENSE RIGHTS WITH RESPECT TO GALAHAD PATENTS.
(a) Palm may grant sublicenses to its Subsidiaries under the
license grant set forth in Section 3.1 within the scope of Palm's license
hereunder (with no right to grant further sublicenses other than, in the case of
a sublicensed Subsidiary, to another Subsidiary of Palm and as described in
Section 3.5(c) below).
(b) Any sublicense under Section 3.5(a) may be made effective
retroactively, but not prior to the sublicensee's becoming a Subsidiary of Palm.
(c) Any Palm Product for which a software license is granted by
Palm (or any sublicensed Subsidiary) to its distributors, resellers, OEM
customers, VAR customers, VAD customers, systems integrators and other channels
of distribution and to its end user customers (including, but not limited to,
the Palm operating system) shall be considered to be covered under the license
grant set forth in Section 3.1 within the scope of Palm's license hereunder, but
only to the extent that the Palm Product incorporates the technology covered by
the claims of the Galahad Patents.
(d) Palm shall have no rights to grant sublicenses to the Galahad
Patents, except as expressly provided in Section 3.5 (a), (b) and (c) above.
3.6 DURATION.
(a) All licenses granted herein with respect to each Patent shall
expire upon the expiration of the term of such Patent.
(b) All sublicenses granted pursuant to this Agreement to a
particular Subsidiary of Palm shall terminate the date that the Subsidiary
ceases to be a Subsidiary of Palm.
3.7 ACQUISITION OF PALM OR TRANSFER OF A BUSINESS OR SUBSIDIARY
RELATED TO GALAHAD PATENTS.
(a) If Palm, after the Separation Date, transfers all or
substantially all of its business or assets, or all or substantially all of the
business or assets to which the Galahad Patents relate, then regardless of
whether such transfer is part of (i) an asset sale to any Third Party, or (ii) a
sale of shares or securities in Palm or a Subsidiary to a Third Party (in each
case, any such Third Party shall be referred to herein as a "Transferee"), then
upon written request by Palm and the Transferee to 3Com within sixty (60) days
following the transfer, 3Com shall grant a royalty-free
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license to the Transferee with respect to the Galahad Patents under the same
terms of the license granted to Palm under this Agreement subject to the
following:
(i) the effective date of such license shall be the effective
date of transfer; and
(ii) the products and services of the Transferee that are
subject to such license shall be limited to the specific Palm Products in the
transferred business that are (A) commercially released as of the date of
transfer or which, prior to the transfer, (B) were planned for release within
three (3) months from the date of transfer and actually are commercially
released within three (3) months from the date of transfer and (C) for new
versions of such specific Palm Products covered by clauses (A) and (B) above
that have merely minor differences from such Palm Products with no additional
features; and
(iii) the Galahad Patents that are subject to such license shall
be limited to the Galahad Patents that are entitled to a First Effective Filing
Date before the date of such transfer; and
(iv) the Transferee shall have no right to grant sublicenses
(except as set forth in Section 3.5(c) above); and
(v) this Section 3.7 shall be excluded from such license in any
event and therefore 3Com shall have no obligation to grant a license to a
subsequent transferee;
(b) provided, that 3Com shall have no obligation to grant such
license unless the Transferee grants to 3Com a royalty-free license under a
comparable license grant as the license granted to Palm under this Agreement,
subject to the following:
(i) the effective date of such license shall be the effective
date of the transfer; and
(ii) the products and services of 3Com that are subject to such
license shall be all the 3Com Products; and
(iii) the Patents of the Transferee that are subject to such
license shall be the Patents owned or controlled by the Transferee claiming
inventions in the wireless field that are entitled to a First Effective Filing
Date on or before the date of such transfer and applications for such patents
(including without limitation any continuations, continuations-in-part,
divisions and substitutions); and
(c) provided, further, that in the event that 3Com and the Transferee
are engaged in litigation, arbitration or other formal dispute resolution
proceedings covering Patent infringement (pending in any court, tribunal, or
administrative agency or before any appointed or agreed upon arbitrator in any
jurisdiction worldwide), then 3Com shall have no obligation to grant such
license to the Transferee under this Section 3.7.
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3.8 COPIES OF PATENT APPLICATIONS AND INVENTION DISCLOSURES. 3Com agrees,
at its own expense from time to time upon Palm's request, to provide to Palm
copies of (i) the Assigned Patents and (ii) the Galahad Patents.
3.9 THIRD PARTY PATENTS. 3Com confirms that it has granted, and hereby
grants (and agrees to cause its appropriate Subsidiaries to grant) to Palm,
under the Third Party Patents, a nonexclusive, worldwide sublicense to make
(including the right to practice methods, processes and procedures), have made,
use, lease, sell, offer for sale and import any products and services subject to
any and all terms and conditions set forth in the applicable agreement between
3Com and the Third Party Patent owner, but only to the extent and for the period
of time 3Com has the legal right to grant such a sublicense. 3Com shall respond
to reasonable inquires from Palm regarding any Third Party Patents.
3.10 3COM COVENANT NOT TO XXX.
(a) 3Com irrevocably grants, on behalf of itself and its
Subsidiaries, at no charge, an immunity from suit to Palm and its Subsidiaries,
and its or their direct or indirect customers and Third Party manufacturers
(subject to the restrictions set forth in the next sentence) for infringement of
any 3Com Patent by any Current Palm Product. The foregoing covenant with respect
to Third Party manufacturers (i) shall apply only when the portion of the "have
made" Current Palm Product covered by the 3Com Patents has been designed or
created by Palm and/or one of Palm's subcontractors (not the Third Party
manufacturer) who is not a direct competitor of 3Com in the field of the Current
Palm Product being designed or created and (ii) shall not apply to (A) any
methods used, or (B) any products or portions thereof that have been
manufactured or marketed, by any Third Party prior to Palm furnishing the
designs or creations to such Third Party. No immunity is granted under the
foregoing covenant by 3Com, either directly or by implication, estoppel or
otherwise to any Third Parties acquiring Current Palm Products from Palm for the
combination of such Current Palm Products with other items or for the use of
such combination; provided, however, that the foregoing covenant shall apply to
the direct and indirect customers of Palm for the combination of any such
acquired Current Palm Products with other Palm Products and their use in such
combination where the acquired Current Palm Products have no other substantial
noninfringing use aside from the combination with other Palm Products sold or
otherwise transferred by Palm directly or indirectly to such customer.
(b) The foregoing covenant shall continue with respect to each 3Com
Patent for the term of such 3Com Patent.
(c) If Palm, after the Separation Date, transfers all or
substantially all of its business or assets, or transfers a Subsidiary or
business unit, then regardless of whether such transfer is part of (i) an asset
sale to any Third Party, or (ii) a sale of shares or securities in Palm or a
Subsidiary to a Third Party (in each case, any such Third Party shall be
referred to herein as a "Transferee"), then upon written request by Palm and the
Transferee to 3Com within sixty (60) days following the transfer, 3Com shall
grant an immunity from suit to the Transferee under the same terms as the
covenant set forth in Section 3.10 (a) and (b) above subject to the following:
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(i) the effective date of such covenant shall be the effective
date of transfer; and
(ii) the products and services of the Transferee that are subject
to such covenant shall be limited to the specific Current Palm Products in the
transferred business that are (A) commercially released as of the date of
transfer or which, prior to the transfer, (B) were planned for release within
three (3) months from the date of transfer and actually are commercially
released within three (3) months from the date of transfer and (C) for new
versions of such specific Current Palm Products covered by Clauses (i) or (ii)
above that have merely minor differences from such Current Palm Products with no
additional features; and
(iii) 3Com Patents that are subject to such covenant shall be
limited to the 3Com Patents that are entitled to a First Effective Filing Date
before the date of such transfer and, in the event that the transfer is a
transfer of a Subsidiary or business unit and not all or substantially all of
Palm's business or assets, then the 3Com Patents that are subject to such
covenant shall be limited to the 3Com Patents in the field of use of the
transferred Subsidiary or business; and
(iv) this Section 3.10(c) shall be excluded from such covenant in
any event and therefore 3Com shall have no obligation to grant a covenant not to
xxx to any subsequent transferee;
(v) provided, however, that 3Com shall have no obligation to
grant such covenant unless the Transferee grants to 3Com and its customers and
suppliers a covenant not to xxx at no charge on the following terms:
(1) the effective date of such covenant shall be the
effective date of the transfer; and
(2) the products and services of 3Com that are subject to
such covenant shall be the 3Com Products; and
(3) the Patents of the Transferee that are subject to such
covenant shall be all the Patents owned or controlled by the Transferee that are
entitled to a First Effective Filing Date before the date of such transfer and
applications for such Patents (including without limitation any continuations,
continuations-in-part, divisions and substitutions); and
(vi) provided, further, that in the event that 3Com and any such
Transferee are engaged in litigation, arbitration or other formal dispute
resolution proceedings covering Patent infringement (pending in any court,
tribunal, or administrative agency or before any appointed or agreed upon
arbitrator in any jurisdiction worldwide), then 3Com shall have no obligation to
grant such covenant under this Section 3.10(c).
3.11 PALM COVENANT NOT TO XXX
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(a) Palm irrevocably grants, on behalf of itself and its Subsidiaries,
at no charge, an immunity from suit to 3Com and its Subsidiaries, and its or
their direct or indirect customers and manufacturers (subject to the
restrictions set forth in the next sentence) for infringement of any Palm Patent
by any Current 3Com Product. The foregoing covenant with respect to Third Party
manufacturers (i) shall apply only when the portion of the "have made" Current
3Com Product covered by the Palm Patents has been designed or created by 3Com
and/or one of 3Com's subcontractors (not the Third Party manufacturer) who is
not a direct competitor of Palm in the field of the Current 3Com Product being
designed or created and (ii) shall not apply to (A) any methods used, or (B) any
products or portions thereof that have been manufactured or marketed by any
Third Party prior to 3Com furnishing the designs or creations to such Third
Party. No immunity is granted under the foregoing covenant by Palm, either
directly or by implication, estoppel or otherwise to any Third Parties acquiring
Current 3Com Products from 3Com for the combination of such Current 3Com
Products with other items or for the use of such combination; provided, however,
that the foregoing covenant shall apply to the direct and indirect customers of
3Com for the combination of any such acquired Current 3Com Products with other
3Com Products and their use in such combination where the acquired Current 3Com
Products have no other substantial noninfringing use aside from the combination
with other 3Com Products sold or otherwise transferred by 3Com directly or
indirectly to such customer.
(b) The foregoing covenant shall continue with respect to each Palm
Patent, for the term of such Palm Patent.
(c) If 3Com, after the Separation Date, transfers all or substantially
all of its business or assets, or transfers a Subsidiary or business unit, then
regardless of whether such transfer is part of (i) an asset sale to any Third
Party, or (ii) a sale of shares or securities in 3Com or a Subsidiary to a Third
Party (in each case, any such Third Party shall be referred to herein as a
"Transferee"), then upon written request by 3Com and the Transferee to Palm
within sixty(60) days following the transfer, Palm shall grant an immunity from
suit to the Transferee under the same terms as the covenant set forth in Section
3.11(a) and (b) above subject to the following:
(i) the effective date of such covenant shall be the effective
date of transfer; and
(ii) the products and services of the Transferee that are
subject to such covenant shall be limited to the specific Current 3Com Products
in the transferred business that are (A) commercially released as of the date of
transfer or which, prior to the transfer, (B) were planned for release within
three (3) months from the date of transfer and actually are commercially
released within three (3) months from the date of transfer and (C) for new
versions of such specific Current 3Com Products covered by clauses (i) or (ii)
above, that have merely minor differences from such Current 3Com Products with
no additional features; and
(iii) the Palm Patents that are subject to such covenant shall
be limited to the Palm Patents that are entitled to a First Effective Filing
Date before the date of such transfer and, in the event that the transfer is a
transfer of a Subsidiary or business unit and not all or substantially
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all of 3Com's business or assets, then the Palm Patents that are subject to such
covenant shall be limited to the Palm Patents in the field of use of the
transferred Subsidiary or business; and
(iv) this Section 3.11(c) shall be excluded from such covenant
in any event and therefore, Palm shall have no obligation to grant a covenant
not to xxx to any subsequent transferee;
(v) provided, however, that Palm shall have no such obligation
to grant such covenant unless the Transferee grants to Palm and its customers
and suppliers a covenant not to xxx at no charge on the following terms:
(1) the effective date of such covenant shall be the
effective date of the transfer; and
(2) the products and services of Palm that are subject to
such covenant shall be the Palm Products; and
(3) the Patents of the Transferee that are subject to such
covenant shall be all the Patents owned or controlled by the Transferee that are
entitled to a First Effective Filing Date before the date of such transfer and
applications for such Patents including without limitation any continuations,
continuations-in-part, divisions and substitutions; and
(vi) provided, further, that in the event that Palm and any such
Transferee are engaged in litigation, arbitration or other formal dispute
resolution proceedings covering Patent infringement (pending in any court,
tribunal, or administrative agency or before any appointed or agreed upon
arbitrator in any jurisdiction worldwide), then Palm shall have no obligation to
grant such covenant under this Section 3.11(c).
ARTICLE 4
ADDITIONAL OBLIGATIONS
4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS.
(a) The parties will cooperate to effect a smooth transfer of the
responsibility for prosecution, maintenance and enforcement of the Assigned
Patents from 3Com to Palm. Until such transfer has been effected, 3Com agrees
to continue the prosecution and maintenance of, and ongoing litigation (if any)
with respect to, the Assigned Patents (including payment of maintenance fees),
and to maintain its files and records relating to the Assigned Patents using the
same standard of care and diligence that it uses with respect to 3Com's Patents.
Palm will reimburse 3Com for all actual and reasonable expenses (excluding the
value of the time of 3Com employees) to continue to prosecute and maintain the
Assigned Patents after the Separation Date until the transfer of
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responsibility for the Assigned Patents has been completed and to continue any
such ongoing litigation. The parties shall agree on a case by case basis on
compensation, if any, of 3Com for the value of time of 3Com's employees as
reasonably required in connection with any such litigation. 3Com will provide
Palm with the originals or copies of its files relating to the Assigned Patents
upon such transfer or at such earlier time as the parties may agree.
(b) 3Com shall provide continuing reasonable support to Palm with
respect to the Assigned Patents, including by way of example the following:
(i) executing all documents prepared by Palm necessary for
prosecution, maintenance, and litigation of the Assigned Patents,
(ii) making available to Palm or its counsel, inventors and other
persons employed by 3Com for interviews and/or testimony to assist in good faith
in further prosecution, maintenance or litigation of the Assigned Patents,
including the signing of documents related thereto,
(iii) forwarding copies of all correspondence sent and received
concerning the Assigned Patents within a reasonable period of time after receipt
by 3Com, and
(iv) making all relevant documents in the possession or control
of 3Com and corresponding to the Assigned Patents, or any licenses thereunder,
available to Palm or its counsel.
Any actual and reasonable out-of-pocket expenses associated with any such
assistance shall be borne by Palm, expressly excluding the value of the time of
such 3Com employees; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of 3Com for the value of the time of 3Com's employees as reasonably
required in connection with such litigation.
4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO GALAHAD PATENTS.
Palm shall provide continuing reasonable support to 3Com with respect to the
Galahad Patents, including by way of example the following:
(a) executing all documents prepared by 3Com necessary for
prosecution, maintenance, and litigation of the Galahad Patents,
(b) making available to 3Com or its counsel, inventors and other
persons employed by Palm for interviews and/or testimony to assist in good faith
in further prosecution, maintenance or litigation of the Galahad Patents,
including the signing of documents related thereto,
(c) forwarding copies of all correspondence sent and received
concerning the Galahad Patents within a reasonable period of time after receipt
by Palm, and
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(d) making all relevant documents in the possession or control of Palm
and corresponding to the Galahad Patents, or any licenses thereunder, available
to 3Com or its counsel.
Any actual and reasonable out-of-pocket expenses associated with such
assistance shall be borne by 3Com, expressly excluding the value of the time of
such Palm personnel; provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on compensation, if
any, of Palm for the value of the time of Palm's employees as reasonably
required in connection with such litigation.
4.3 STANDARDS BODIES.
For a period of five (5) years from the Separation Date, the parties
agree to cooperate reasonably and in good faith with each other with respect to
the licensing of each party's Patents in the context of Bluetooth related
standards bodies, to the extent consistent with each party's own business
objectives.
4.4 ASSIGNMENT OF PATENTS.
3Com shall not assign or grant any rights under any of the Galahad
Patents unless such assignment or grant is made subject to the licenses granted
in this Agreement.
4.5 RECORDATION OF LICENSES.
(a) For any country, now or in the future, that requires the express
consent of all inventors or their assignees to the grant of licenses or rights
under Patents issued in such countries for joint inventions:
(i) each party shall give such consent, or shall obtain such
consent from its employees, its Subsidiaries or employees of any of its
Subsidiaries, as required to make full and effective any such licenses and
rights respecting any joint invention granted to a grantee hereunder by such
party; and
(ii) each party shall take steps that are reasonable under
the circumstances to obtain from Third Parties whatever other consents are
necessary to make full and effective such licenses and rights respecting any
joint invention purported to be granted by it hereunder. If, in spite of such
reasonable steps, such party is unable to obtain the requisite consents from
such Third Parties, the resulting inability of such party to make full and
effective its purported grant of such licenses and rights shall not be
considered to be a breach of this Agreement.
(b) Each party agrees, without demanding any further consideration,
to execute (and to cause its Subsidiaries to execute) all documents reasonably
requested by the other party to effect recordation of the license relationship
between the parties created by this Agreement.
ARTICLE 5
CONFIDENTIALITY
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The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information (as defined therein) which
is the subject matter of this Agreement.
ARTICLE 6
TERMINATION
6.1 VOLUNTARY TERMINATION. By written notice to 3Com, Palm may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by 3Com. Such notice shall specify the effective date of
such termination and shall clearly specify any affected Patent, Patent
application, Invention Disclosure, product or service.
6.2 SURVIVAL. Any voluntary termination of licenses and rights of
Palm under Section 6.1 shall not affect Palm's licenses and rights with respect
to any licensed product made or service furnished prior to such termination, and
shall not affect the licenses and rights granted to 3Com hereunder.
6.3 NO OTHER TERMINATION. Each party acknowledges and agrees that its
remedy for breach by the other party of the licenses granted to it hereunder or
of any other provision hereof, shall be, subject to the requirements of Article
7, to bring a claim to recover damages subject to the limits set forth in this
Agreement and to seek any other appropriate equitable relief, other than
termination of the licenses or covenants not to xxx granted by it in this
Agreement.
ARTICLE 7
DISPUTE RESOLUTION
7.1 MEDIATION. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement, or the grounds for the termination hereof, appropriate senior
executives (e.g. director or V.P. level) of each party who shall have the
authority to resolve the matter shall meet to attempt in good faith to negotiate
a resolution of the Dispute prior to pursuing other available remedies. The
initial meeting between the appropriate senior executives shall be referred to
herein as the "Dispute Resolution Commencement Date." Discussions and
correspondence relating to trying to resolve such Dispute shall be treated as
confidential information developed for the purpose of settlement and shall be
exempt from discovery or production and shall not be admissible. If the senior
executives are unable to resolve the Dispute within thirty (30) days from the
Dispute Resolution Commencement Date, and either party wishes to pursue its
rights relating to such Dispute, then the Dispute will be mediated by a mutually
acceptable mediator appointed pursuant to the mediation rules of JAMS/Endispute
within thirty (30) days after written notice by one party to the other demanding
non-binding mediation. Neither party may unreasonably withhold consent to the
selection of a mediator or the location of the mediation. Both parties will
share the costs of the mediation equally, except that each party shall bear its
own costs
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and expenses, including attorney's fees, witness fees, travel expenses, and
preparation costs. The parties may also agree to replace mediation with some
other form of non-binding or binding ADR.
7.2 ARBITRATION. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days of the Dispute Resolution Commencement Date,
unless otherwise mutually agreed, shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), by three (3) arbitrators in Santa Xxxxx County,
California. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall be
entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior negotiation or mediation). The decision
of the arbitrator shall be final and non-appealable and may be enforced in any
court of competent jurisdiction. The use of any ADR procedures will not be
construed under the doctrine of laches, waiver or estoppel to adversely affect
the rights of either party.
7.3 COURT ACTION. Any Dispute regarding the following is not required to
be negotiated, mediated or arbitrated prior to seeking relief from a court of
competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute shall make a good faith effort to negotiate and mediate such
Dispute, according to the above procedures, while such court action is pending.
7.4 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement during the course of dispute resolution
pursuant to the provisions of this Article 7 with respect to all matters not
subject to such dispute, controversy or claim.
ARTICLE 8
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE OTHER
PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL
OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY THEORY OF
LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT,
WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT DAMAGES FOR
INFRINGEMENT AVAILABLE TO EITHER PARTY UNDER APPLICABLE LAW IN THE EVENT OF
BREACH BY THE OTHER PARTY OF SECTIONS 3.1, 3.2, 3.3 OR 3.5(a) OR FOR
INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS NOT LICENSED OR COVENANTED
HEREIN AND
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SHALL NOT LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE
MASTER SEPARATION AND DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE
EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT.
ARTICLE 9
MISCELLANEOUS PROVISIONS
9.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL PATENTS AND
ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE LICENSED
OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER,
EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION
ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of
the foregoing, neither party nor any of its Subsidiaries makes any warranty or
representation as to the validity and/or scope of any Patent licensed by it to
the other party hereunder or any warranty or representation that any
manufacture, use, importation, offer for sale or sale of any product or service
will be free from infringement of any Patent or other intellectual property
right of any Third Party.
9.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Galahad Patents and Assigned Patents. Neither
party is required hereunder to furnish or disclose to the other any technical or
other information except as specifically provided herein.
9.3 INFRINGEMENT SUITS. Neither party shall have any obligation hereunder
to institute any action or suit against Third Parties for infringement of any
Patent or to defend any action or suit brought by a Third Party which challenges
or concerns the validity of any Patent. Unless the parties otherwise agree in
writing, neither party shall have any right to institute any action or suit
against Third Parties for infringement of any Patent owned by the other party.
9.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries is obligated to (i) file any Patent application, or
to secure any Patent or Patent rights, (ii) to maintain any Patent in force, or
(iii) provide any technical assistance, except for the obligations expressly
assumed in this Agreement.
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9.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements (as defined in the
Master Separation and Distribution Agreement) and the Exhibits and Schedules
referenced or attached hereto and thereto constitute the entire agreement
between the parties with respect to the subject matter hereof and thereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof and
thereof. To the extent there is a conflict between this Agreement and the Master
Assignment and Assumption Agreement between the parties, the terms of this
Agreement shall govern.
9.6 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Santa Xxxxx County and/or the United States District Court for the Northern
District of California shall have jurisdiction and venue over all Disputes
between the parties that are permitted to be brought in a court of law pursuant
to Article 7 above.
9.7 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in
any Exhibit or Schedule hereto and in the table of contents to this Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
9.8 NOTICES. Notices, offers, requests or other communications required
or permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to 3Com:
3Com Corporation
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
Fax: (000) 000-0000
if to Palm:
Palm, Inc.
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
Fax: (000) 000-0000
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
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sent via certified mail, return receipt requested. All other notices may also
be sent by fax, confirmed by first class mail. All notices shall be deemed to
have been given and received on the earlier of actual delivery or three (3) days
from the date of postmark.
9.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its successive assignees or transferees hereunder)
may, without such consent, assign or transfer this Agreement, to a Person that
succeeds to all or substantially all of its business or assets of such party as
long as such Person agrees to accept all of the terms set forth herein;
provided, however, that the licenses and covenants not to xxx set forth in
Article 3 may not be assigned or transferred in any event (except in the case of
a reincorporation of such party in another state); and provided, further, that
the prohibition on assignment or transfer of the licenses and covenants not to
xxx set forth in Article 3 shall not limit 3Com's or Palm's obligations in
Sections 3.7, 3.10(c) and 3.11(c) to grant licenses and/or covenants not to xxx
to a Transferee. Without limiting the foregoing, this Agreement will be binding
upon and inure to the benefit of the parties and their permitted successors and
assigns.
9.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
9.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
9.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
9.13 COUNTERPARTS. This Agreement, including the Ancillary Agreement and
the Exhibits and Schedules hereto and thereto and the other documents referred
to herein or therein, may be executed in counterparts, each of which shall be
deemed to be an original but all of which shall constitute one and the same
agreement.
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WHEREFORE, the parties have signed this Master Patent Ownership and License
Agreement effective as of the date first set forth above.
3COM CORPORATION PALM, INC.
By:_____________________________ By:_____________________________________
Name:___________________________ Name:___________________________________
Title:__________________________ Title:__________________________________
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