1
EXHIBIT 10.30
AVANEX CORPORATION
LICENSE AND SUPPLY AGREEMENT
This License and Supply Agreement (the "Agreement") is made and entered
into by and between Avanex Corporation, a California corporation with principal
offices at 00000 Xxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000 ("Avanex"), and
Concord Micro-Optics, Inc. a California corporation with principal offices at
_____________________________ ("CMI"). The parties hereby agree as follows:
1. Scope. In order to avoid repetitive negotiations, this Agreement
shall apply to all purchase orders placed by Avanex and accepted by CMI (or the
JV Co., as defined below) during the Term (as defined below) for the Products
described in Exhibit A attached hereto ("Product(s)"), as such Exhibit may be
amended from time to time to add products upon the mutual agreement of the
parties. This Agreement shall apply to all current or future divisions,
subsidiaries, affiliates, locations and operations of Avanex, wherever located.
It is acknowledged and agreed by the parties that as soon as practicable after
the execution of this Agreement, CMI will establish and control a Sino-foreign
joint venture company in Tianjin, China (the "JV Co.") organized under the laws
of the People's Republic of China ("PRC") and that CMI shall, within ten (10)
days of the establishment of the JVCo, cause the JV Co. to execute, and its
board of directors to ratify, the Acknowledgment and Agreement, in the form set
out in Exhibit B attached hereto, pursuant to which the JV Co. shall become a
party hereto. CMI and the JV Co. shall be jointly and severally liable for all
obligations of CMI contained herein.
2. Term. The term of this Agreement shall commence upon execution of
this Agreement by Avanex and CMI (the "Effective Date") and shall continue for
five (5) years (the "Initial Term"). Subject to a maximum aggregate of ten (10)
years), this Agreement shall be automatically renewed for additional one (1)
year period (the "Extended Term") unless either party gives written notice of
termination at least sixty (60) days before the end of the Initial Term or any
anniversary thereof or unless sooner terminated in accordance with the
provisions hereof (collectively the "Extended Term"). "Term" shall mean the
Initial Term and the Extended Term, if applicable.
3. Terms and Conditions.
(a) This Agreement contains the exclusive terms and conditions
which apply to all purchases, notwithstanding any purchase order, acknowledgment
or other business forms transmitted by CMI, the JV Co. or Avanex. All CMI and JV
Co. acknowledgments and invoices must reference this Agreement and the
applicable Avanex purchase order.
(b) This Agreement does not constitute a purchase order.
Purchases hereunder shall be made only by Avanex's purchase orders issued by
Avanex's purchasing department. Avanex shall be liable under this Agreement only
for those Products covered by such purchase orders. CMI agrees to provide
Avanex with complete access to the JV Co.'s cost accounting books and records
relating to Avanex during normal business hours, to prepare reports reasonably
requested by Avanex, and to take all other reasonable actions to assist Avanex
in performing Avanex's accounting responsibilities under U.S. generally
accepted accounting principles.
4. Products and Prices.
1
2
(a) The Products covered by this Agreement and the prices for
such Products are as specified in Exhibit A. Prices are set forth in United
States Dollars.
(b) CMI represents that to the best of its knowledge this
Agreement does not violate provisions of the Xxxxxxxx-Xxxxxx Act.
(c) [*]
(d) The prices set forth in Exhibit A are inclusive of any and
all applicable taxes including any PRC and U.S. federal, state and local VAT
sales, use and like taxes and any such applicable taxes shall be detailed on
CMI's invoice. If Avanex complies with the U.S. statutory resale tax certificate
requirements of states where appropriate, no sales, use or like taxes shall be
included in the price.
(e) The parties agree that any new or modified Products will be
priced based upon assumed volumes and complexity factors employed in the pricing
model of that Product that most closely resembles the new or modified Products
to be priced.
5. F.O.B. Point. Unless otherwise specifically provided on the face of
the purchase order, Products shall be delivered on an F.O.B. destination basis
to the Avanex's designated plant in Fremont, California, at which time title
shall pass to Avanex. CMI shall insure and ship such items at Avanex's expense.
Orders which are to be drop shipped to Avanex's customers will be designated on
the purchase order as F.O.B. CMI, at CMI's manufacturing facility. Avanex will
specify carrier, insurer and freight terms.
6. Invoices.
(a) Upon shipment of Products ordered, CMI will submit to Avanex
an invoice showing invoice number and date, remit to address, the purchase order
number, Avanex part number and revision, quantity of each Product, unit prices,
each applicable tax and extended totals.
(b) Avanex shall pay each invoice by the later of:
(i) Payment Due Date which is defined as thirty (30)
days after the receipt of invoice, or
(ii) thirty (30) days after receipt of the shipment.
7. Ordering and Delivery.
(a) Avanex shall provide CMI with a non-binding rolling twelve
(12) month forecast on a [*] basis of the quantity of each Product desired.
Actual Avanex orders shall be submitted by telecopier or in writing on Avanex's
standard purchase order form and shall
2
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
3
specify the purchase order number, Avanex part number for each Product, quantity
of Product desired, the locations to which the Product is to be delivered, and
the date or dates desired for delivery of the ordered Product to such locations.
(b) CMI agrees to accept each order for the full quantity of
Product ordered. After receipt of an order from Avanex, CMI shall notify Avanex
within seventy-two (72) hours if CMI cannot meet the desired delivery date(s)
and will propose alternative delivery date(s). If, within seven (7) business
days after notification of any proposed alternative delivery date(s), Avanex
does not notify CMI of Avanex's rejection of CMI's alternative delivery date(s),
or otherwise reach agreement with CMI on the agreed delivery date, then the
order shall be considered confirmed with the alternative delivery date(s)
becoming the agreed delivery date. CMI's failure to so notify Avanex shall
constitute CMI's agreement to Avanex's desired delivery date(s), which will then
become the agreed delivery date. CMI shall send Avanex a formal written
acknowledgment of each Avanex purchase order within five (5) business days. All
delivery dates and the terms "deliver" and "delivery" as used herein, shall
refer to delivery to Avanex's designated plant in Fremont, California, or in the
instance of any order to be drop shipped to Avanex's customer, delivery by CMI
to the freight carrier specified in such order, or if no carrier is specified,
to the carrier selected by CMI.
(c) Notwithstanding anything set forth above to the contrary,
all Avanex requested delivery dates providing the minimum number of business
days lead time specified in Exhibit A of this Agreement for a Product (the "Lead
Time") shall be the Agreed delivery date. The Lead Time set forth on Exhibit A
may be adjusted by CMI: (i) upon thirty (30) days written notice with respect to
increases in Lead Times; or immediately upon written notice to Avanex with
respect to decreases in Lead Times. CMI agrees to use its best efforts to
minimize the Lead Times set forth on Exhibit A.
(d) CMI shall meet the agreed delivery dates and understands
that time is of the essence with respect to its performance of its obligations
hereunder. CMI agrees that its obligations to use its best efforts include an
obligation to diligently monitor its performance against its delivery
obligations hereunder and agrees that any failure to perform such monitoring
obligations shall constitute a material default of this Agreement.
(e) CMI agrees to maintain safety stock of component parts for
the quantities of Products set forth on Exhibit C hereto as amended by Avanex
from time to time by written notice to CMI.
(f) Certain long lead time components (the "Long Lead
Components") are set forth on Exhibit D. Avanex shall update Exhibit D from time
to time by written notice to CMI. CMI agrees to use Avanex's forecast of
Products volumes and its material planning system to calculate the quantities of
such Long Lead Components which should be ordered in advance of Avanex's
issuance of a purchase order for Products hereunder in order for CMI to meet the
Lead Times set forth on Exhibit A. CMI shall prepare a report setting forth the
quantities of such Long Lead Components which must be ordered, the quantities
already on order in advance of Avanex's issuance of purchase orders.
8. Avanex Requested Changes.
(a) Avanex may, at any time, make changes in writing to any of
the following:
(i) applicable drawings, designs or specifications,
(ii) method of shipment or packing, and
3
4
(iii) place of delivery.
If the change causes an increase in the cost or the time required by CMI for
performance of any purchase order issued under this Agreement and CMI so
notifies Avanex in writing, then if Avanex wishes such change to be made, an
equitable adjustment will be made in the price or delivery schedule or both and
the Agreement and/or any applicable purchase order will be modified accordingly
in writing. With respect to rework orders, the parties shall negotiate in good
faith to determine the price of such changes. Claims by CMI for adjustment due
to an Avanex change order must be made within fifteen (15) days from the date of
CMI's receipt of the change order; such period may be extended upon the written
approval of Avanex.
(a) If Avanex decides to cancel any definitive purchase order,
Avanex must give CMI forty-five (45) days' notice before CMI's committed
delivery date. If the time period remaining between the then current date and
CMI's committed delivery date for a Product is less than forty-five (45) days,
Avanex must pay CMI [*] of the canceled amount.
(b) If the time period remaining between the then current date
and CMI's committed delivery date for a Product is more than forty-five (45)
days, then Avanex may with respect to each purchase order and at no charge make
any changes to delivery dates and unit quantities for such Product.
9. Over Shipments. Avanex will pay only for maximum quantities ordered,
unless Avanex has issued a change order authorizing an over shipment prior to
such delivery by CMI.
10. Early Shipments and Late Shipments. For Products delivered five (5)
or more days before or seven (7) or more days after the agreed delivery date,
Avanex may:
(a) Return such Products to CMI (or to the JV Co., as the case
may be) freight collect,
(b) Accept such Products with payment based upon the agreed
delivery date and not the date of receipt by Avanex, or
(c) In the event of late shipments, charge CMI (or the JV Co.,
as the case may be) a late delivery fee equal to [*] of the agreed delivery
amount for each full week of delay.
11. Modifications to Agreed Delivery Dates. CMI shall at all times use
its best efforts to deliver the unit quantity of Products to be delivered to
Avanex on the agreed delivery date. If, after employing such best efforts, CMI
first determines that it will be unable to deliver the unit quantity of Products
to be delivered to Avanex on the Agreed delivery date, then CMI shall notify
Avanex within twenty-four hours of such determination, and the parties will
negotiate in good faith new agreed delivery date, predicated on CMI's continued
use of such best efforts, for such Product(s). Any partial deliveries resulting
from such re-scheduling shall be separately invoiced by CMI and paid for by
Avanex without regard to subsequent deliveries.
12. [*] to Capacity; Scarce Material.
(a) CMI grants to Avanex [*] with respect to the JV Co.'s
capacity to manufacture Products and fill purchase orders. Avanex shall be
entitled to exercise [*] if at all, upon submission to CMI of every [*]
forecast, but in no event more than [*] times per year, measured from the date
Avanex first exercises [*]. CMI covenants to use its best efforts to produce the
Products efficiently and in significant quantity.
(b) In the event that any material is in such short supply such
that CMI is unable to fill Avanex's orders for Products in full ("Scarce
Material"), at a minimum CMI agrees to allocate Scarce Material to Avanex and
to utilize any materials in short supply to make Products under whichever of
the following formulas would allocate to Avanex the greatest amount of Scarce
Material:
(i) In the proportion of Avanex's orders for Products
containing such Scarce Material to all of CMI's customers' orders for product
containing such Scarce Material for the month in question;
(ii) In the proportion of Avanex's forecast for Products
containing such Scarce Material to all of CMI's customers' forecasts for
products containing such Scarce Material for the month in question; or
(iii) The most favorable allocation formula which CMI
utilizes with any other customer.
4
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
5
13. Packing, Shipping Documents and Markings.
(a) Shipping materials and practices must meet or exceed general
industry standards and must be adequate to protect the Products from damage,
contamination, or degradation during shipment and during unpacking at the
destination. Electrostatic Discharge (ESD) protection must extend to
intermediate container level. Intermediate containers shall contain no loose
packing materials or Styrofoam.
(b) Shipments of Product having multiple date codes at the
intermediate container level must have the unit containers organized to afford
easy identification and separation, Therefore:
(i) unit containers may not contain mixed date
codes;
(ii) intermediate containers may not contain more
than two (2) date codes; and
(iii) shipments may not contain more than five (5)
date codes.
(c) Intermediate containers shall be marked with a label on the
end listing:
(i) CMI's name, part number, part description;
(ii) total quantity of Product in the container, date
code(s) by quantity; and
(iii) Avanex's part number and purchase order number
(d) The maximum acceptable weight for the shipping container is
45 pounds. Skids or pallets must be used with containers that are unsuitable for
manual handling.
14. Acceptance and Quality.
(a) Avanex may inspect the Products, materials and components
held by JV Co. for Avanex at JV Co.'s facilities during JV Co.'s regular
business hours. Avanex and its representatives shall observe all reasonable
security and handling measures of the JV Co. while on JV Co.'s premises.
5
6
(b) CMI covenants to Avanex that Products sold to Avanex will
meet or exceed Avanex's product qualification requirements. Subject to the
provisions of Section 14(f) below, CMI will provide the following types of
quality inspections in accordance with its own published manual and, when
applicable, Avanex provided specifications, drawings and other such
documentation:
(i) incoming material inspections;
(ii) in-process inspections;
(iii) vendor control; and
(iv) final inspection.
(c) CMI may not make parts substitutions without the prior
written approval of Avanex. CMI shall direct all such requests for parts
substitutions to Avanex's Contract Administrator, as set forth below.
(d) Avanex may inspect, and based upon the results of such
inspection, reject or accept Products delivered hereunder in a reasonable period
of time. Any Products rejected shall be returned to CMI (or JV Co.) upon
Avanex's receipt of a return materials authorization ("RMA") for such return.
CMI shall issue RMA numbers within two (2) business days. Avanex shall return
Products in the original shipping container, if possible; otherwise Avanex shall
use a similar shipping container and such container shall be marked with the RMA
number. CMI shall repair or replace such rejected Products within five (5)
business days. With respect to Products to be repaired or replaced, the date
determined in the prior sentence shall be deemed an Agreed Delivery Date for
purposes of this Agreement, subject to modification in accordance with Section
11 hereof.
(e) Personnel designated by Avanex may freely communicate with
designated personnel of CMI (or JV Co.) with respect to technical assistance and
exchanges of information. Avanex's designated personnel shall, as reasonable,
provide technical assistance and answer questions for JV Co. personnel from time
to time, provided, however, that such communication shall not permit CMI to
deviate from any of its obligations under this Agreement.
15. End of Term Orders. Purchase orders placed by Avanex prior to the
termination of this Agreement for which the Agreed delivery date are after the
termination of this Agreement but not more than sixty (60) days after the end of
this Agreement shall continue to be governed by the terms and conditions of the
Agreement.
16. [Intentionally Omitted]
17. [Intentionally Omitted]
18. Risk of Loss or Damage. CMI shall be responsible for any loss or
damage to Product due to CMI's failure to properly preserve, package, or handle
the Product. In addition, notwithstanding any prior inspection, and only with
respect to Products delivered to Avanex's designated plant in Fremont,
California: (i) CMI will bear all risk of loss, damage or destruction to the
ordered Products until delivery to Avanex; and (ii) CMI will also bear the risk
of loss with respect to any Products rejected by Avanex and returned to CMI,
except that Avanex will be responsible for any damage to rejected or unaccepted
Product occasioned by the willful misconduct or negligence of its employees
acting within the scope of their employment.
19. Import/Export and Product Licenses.
6
7
(a) CMI shall provide all information under its control which is
necessary or useful for Avanex to obtain any export or import licenses required
for Avanex to ship or receive Product(s), including, but not limited to, U.S.
customs certificates of delivery, affidavits of origin, and U.S. Federal
Communications Commissions identifier, if applicable.
(b) With respect to Product(s), each party shall comply with
export laws enacted by its respective government, and the regulations
thereunder.
(c) CMI shall be solely responsible for obtaining any and all
licenses required for production of Products in China, and CMI covenants to use
its best efforts to obtain such licenses in a prompt manner. CMI shall be
responsible for submitting executed versions of this Agreement to the relevant
government authorities in the PRC for approval under the Regulations of the
People's Republic of China for the Administration of Technology Import Contracts
and for registration under the Provisional Measures for the Administration of
Trade in Connection with the Import of Technology and Equipment. CMI shall
promptly deliver to Avanex satisfactory evidence that the approval and
registration have been obtained.
20. New Process Inclusion. CMI agrees to keep Avanex informed of any new
process(es) or improvements to existing process(es) involved in the production
of Products.
21. Qualification. CMI shall ensure that all Products delivered
hereunder meet Avanex's Product and test specifications as set forth in Exhibit
E and the Bellcore standard, as applicable. CMI shall ensure that the JV Co.
shall receive ISO 9002 certification within [*] months of its establishment, but
in no event later than [*]. CMI shall also ensure that the JV Co. complies with
all PRC law in its operations including, without limitation, the Labor Law of
the PRC and other employment regulations.
22. Correlation. At Avanex's option, correlation of test
programs/procedures between Avanex and CMI shall be completed prior to Avanex's
first customer shipment ("FCS") of an Avanex product containing Product. In the
event of a conflict between test results, Avanex's test method, programs and
analysis shall prevail. Details and specific procedures of the correlation plan
between Avanex and CMI will be as mutually defined and agreed to by the parties.
23. Programs and Services. It is the intention of the parties hereto to
negotiate in good faith and to enter into an agreement for the programs and
services described hereunder.
(a) Avanex wishes to develop with CMI a Dock to Stock Program.
Such program shall be designed to supply Avanex with Products that meets
established quality levels and to eliminate incoming inspection.
(b) Avanex wishes to develop with CMI a Just In Time delivery
program ("JIT"). The JIT shall be designed to supply Avanex with the Products at
the time at which Avanex requires such Products so as to reduce the inventory
which Avanex and/or CMI are required to retain in order to meet Avanex's
Products needs.
24. CMI's Communication and Report to Avanex. CMI shall establish an
information infrastructure that allows Avanex freely assess the JV Co's cost,
production and inventory information via electronic data exchange as soon as CMI
commences production for Avanex. CMI shall prepare and deliver to Avanex a
Quarterly Report containing the following information for each Product by
ordering location:
(a) Product;
(b) quantity ordered during the quarter;
7
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
8
(c) total quantity shipped;
(d) date of each shipment with quantity, dollar amount, ship to;
and
(e) quantity on back order.
Such Quarterly Reports shall be delivered to Avanex within thirty (30) days
after the end of each calendar quarter during the term of this Agreement.
25. Transfer of Information. In connection with this Agreement, Avanex
shall provide CMI with information necessary to produce the Products. Such
information transfer shall take place in the manner set forth in Exhibit F
attached hereto. CMI acknowledges that all information to be transferred to it
by Avanex pursuant to this Section 25 is Proprietary and Confidential
Information (as defined below) of Avanex subject to the obligations of
Confidentiality in Section 26.
26. Confidential Information.
(a) CMI acknowledges that information which Avanex may disclose
to CMI (or JV Co.) in a tangible form marked "Confidential," "Proprietary" (or
with similar legend), or that is disclosed orally and confirmed in writing as
confidential within a reasonable time, comprises proprietary and confidential
information of Avanex ("Confidential Information"). In addition, Confidential
Information shall include all designs, engineering details, schematics,
drawings, and specifications developed by CMI (or JV Co.) with respect to the
Products. If Confidential Information is orally disclosed it shall be identified
as such at the time of disclosure and a confirmation of the confidential nature
of the information shall be sent to the CMI (or JV Co.) within thirty (30) days
after the disclosure.
(b) CMI agrees not to use Confidential Information or disclose,
distribute or disseminate such Confidential Information to any third person
except as expressly permitted under this Agreement or as expressly agreed in
writing by Avanex. CMI agrees to restrict access to such Confidential
Information to those employees, contractors or consultants of CMI or JV Co. who
have agreed to be bound by and have duly executed a Confidentiality Undertaking
in the form set forth in Exhibit G. CMI shall not use such materials at a
location other than at the JV Co.'s registered address in Tianjin, China without
Avanex's prior written consent. CMI agrees to establish adequate internal
safeguards and otherwise use reasonable care in restricting the use and
dissemination of any Confidential Information in order to protect against its
unauthorized use or disclosure to any third party. CMI shall exercise the same
degree of care to prevent unauthorized use or disclosure of the Confidential
Information to others as it takes to preserve and safeguard its own confidential
information, but in any event, no less than a reasonable degree of care.
(c) CMI (or JV Co.) shall be permitted to disclose to any
government, regulatory authority or court, any Confidential Information if CMI
(or JV Co.) is required by law or judicial decree to do so for the express
purposes of obtaining their approval to make Licensed Products in the PRC. Such
disclosure shall not constitute a breach of this Agreement provided that CMI
promptly notifies Avanex when such obligation of disclosure arises to enable CMI
to seek an appropriate protective order and to make known to the said
government, regulatory authority or court the proprietary nature of the
Confidential Information to be disclosed and to make any applicable claim of
confidentiality prior to the disclosure being made and provided CMI has first
informed Avanex of any requirement that exists in Chinese laws, regulations or
judicial decrees for that government, regulatory authority or court to make
further disclosures of the information to any third party.
8
9
(d) CMI shall be relieved of this obligation of confidentiality
to the extent any Avanex information:
(i) was in the public domain at the time it was
disclosed or has become in the public domain through no fault of CMI;
(ii) CMI can prove was known to CMI, without
restriction, at the time of disclosure as shown by the files of the CMI in
existence at the time of disclosure;
(iii) is disclosed by CMI with the prior written
approval of Avanex;
(iv) CMI can prove was independently developed by CMI
without any use of the Confidential Information and by employees or other agents
of (or independent contractors hired by) CMI who have not had access to any
Confidential Information; or
(v) becomes known to CMI, without restriction, from a
source other than Avanex without breach of this Agreement by CMI and otherwise
not in violation of Avanex's rights.
(e) CMI acknowledges that breach of the confidentiality
obligation would cause irreparable harm to Avanex, the extent of which would be
difficult to ascertain. Accordingly, CMI agrees that Avanex may seek immediate
injunctive relief in the event of breach of the confidentiality obligation by
CMI or JV Co.
(f) Within seventy-five (75) business days after termination of
this Agreement, CMI shall promptly return all tangible materials containing such
Confidential Information to Avanex. Concurrently with the return of such
materials, CMI agrees to confirm in writing that all materials containing
Confidential Information have been returned to Avanex by CMI.
27 License, Intellectual Property Rights
(a) For so long as this license remains in effect under PRC law,
Avanex hereby grants to CMI and JV Co. (i) a [*] restrictive, nontransferable,
license with no right to sublicense under which CMI may (A) make Licensed
Products (as set forth on Exhibit H) in the PRC (excluding the Hong Kong SAR,
Macau, and Taiwan) and in the United States and use and sell Licensed Products
worldwide, and (ii) use the Licensed Information (as set forth on Exhibit H) in
China and the United States. This license shall be exclusive with respect to the
manufacture of Licensed Products in the PRC (excluding the Hong Kong SAR, Macau,
and Taiwan) and the use of Licensed Information in the PRC (excluding the Hong
Kong SAR, Macau, and Taiwan), but shall be nonexclusive with respect to all
other rights and purposes and territories. The parties agree that until the [*]
of this Agreement (unless earlier terminated), each party shall provide the
other party information related to any revision or improvement of Licensed
Products or Licensed Information.
(b) Notwithstanding the foregoing, Avanex retains for itself all
proprietary and intellectual property rights including all patent rights in and
to all designs, engineering details, schematics, drawings, specifications and
other similar data and Confidential Information which:
(i) pertain to the Products; and are
(ii) provided to CMI or JV Co. under this Agreement or
developed by CMI or JV Co. for Avanex. CMI hereby assigns to Avanex all
proprietary and intellectual
9
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
10
property rights, including all patent rights, in and to such designs,
engineering details, schematics, drawings, specifications and other similar data
and Confidential Information. Avanex shall have the sole right to file any
patent applications thereon. CMI agrees to cooperate with Avanex and take all
reasonable additional actions and execute such agreements, instruments, and
documents as may be necessary or desirable to perfect Avanex's ownership
interests in accordance with the intent of this Section 27(b), including, but
not limited to, the execution of necessary and appropriate instruments of
assignment.
(c) Any such information and materials which Avanex may furnish
to CMI (or JVCo) shall be in CMI's (or JV Co.'s) possession pursuant only to a
restrictive, nontransferable, nonexclusive license with no right to sublicense
under which CMI may use such information and materials solely for the purposes
of manufacturing, operating, servicing and repairing the Products for Avanex's
purposes pursuant to this Agreement. Within seventy-five (75) business days
after termination of this Agreement, CMI shall promptly return all tangible
materials containing such Confidential Information to Avanex. Concurrently with
the return of such materials, CMI agrees to confirm in writing that all
materials containing Confidential Information have been returned to Avanex by
CMI.
(d) CMI shall inform Avanex in writing immediately upon becoming
aware of any use, suspected use, of the Licensed Information, or any party of
it, by any other party. In the event of any actual, any threatened or potential
litigation against Avanex alleging infringement of a third party's patent or any
other rights of such third party arising from the use of the Licensed
Information, CMI shall give immediate written notice to Avanex. Avanex shall
bear all legal and economic responsibilities for defending or otherwise dealing
with such actual or threatened litigation and CMI shall in a timely manner
provide Avanex with all assistance as may be reasonably requested by Avanex from
time to time. CMI agrees not to be involved in any discussions with any third
party relating to nor to take any steps relating to or to compromise any
litigation or threatened or potential litigation relating to the Licensed
Information, without the prior written consent of Avanex.
28. Documentation Reproduction
Subject to CMI's strict compliance with Sections 26 and 27 of
this Agreement, CMI may reproduce documentation, including Confidential
Information, in the performance of its obligations under this Agreement.
29. Avanex-unique Components. Except in accordance with Section 27, CMI
will not ship any Product that is developed by, in conjunction with, or in
accordance with specifications from Avanex ("Avanex-unique Components"), to any
third party without the express, prior written consent of Avanex.
30. Inventions.
(a) All discoveries, improvements and inventions, whether or not
patentable, conceived or first reduced to practice, as those terms are used
before the U.S. Patent and Trademark Office, in the performance of this
Agreement by Avanex personnel shall be the sole and exclusive property of Avanex
and Avanex shall retain any and all rights to file any patent applications
thereon.
(b) Subject to the provisions of Section 27(b) hereof, all
discoveries, improvements and inventions conceived or first reduced to practice,
as those terms are used before the U.S. Patent and Trademark Office, whether or
not patentable, in the performance of this Agreement by CMI's personnel shall be
the sole and exclusive property of CMI and CMI shall retain any and rights to
file any patent applications thereon.
10
11
(c) Subject to the provisions of Section 27(b) hereof, all
discoveries, improvements and inventions conceived or first reduced to practice,
as those terms are used before the U.S. Patent and Trademark Office, whether or
not patentable, in the performance of this Agreement jointly by CMI personnel
and Avanex personnel (the "Joint Inventions"), shall be the property jointly of
CMI and Avanex, each party having [*] interest therein. Each party shall be
entitled to use, exploit, transfer, and grant licenses with respect to its
interest in Joint Inventions without notice or accounting to the other party.
31. CMI's Process Changes. CMI agrees that it will not invoke any
changes in process, design or method of manufacturing that might affect form,
fit or function of the Products, including without limitation, changes in
performance, maintenance procedures, interchangeability, interconnectability,
reliability or manufacture compatibility of Products during the term of this
Agreement without Avanex's prior written consent. CMI further agrees that any
contemplated changes in process or method of manufacturing will be submitted to
Avanex in writing, (the original notification to be provided to the
Administrator and copies to Avanex personnel as may be required), in sufficient
time to enable Avanex a reasonable opportunity in which to evaluate such
changes. If said design change, in Avanex's opinion, necessitates evaluation by
Avanex of compatibility with Avanex's systems, CMI, upon request from Avanex,
will provide Avanex prototype units of Product for evaluation. Such design
change, once approved by Avanex, shall cause the revision level of the Product
to be rolled. CMI WILL NOT IMPLEMENT SUCH CHANGES WITHOUT THE PRIOR WRITTEN
CONSENT OF AVANEX.
32. Discontinuance or Reduction of Production of a Product. CMI may
reduce or discontinue its production of a Product upon [*] prior written notice
to Avanex, so long as CMI does not offer such Product to any other of its
customers after it stops offering such Product to Avanex. Within sixty (60) days
after receipt by Avanex of written notice of such discontinuance ("Notice
Date"), Avanex may place and CMI shall accept all orders unless otherwise
precluded by any law, regulation, court judgment, order or permit, for delivery
over a [*] period following Notice Date with respect to any Product adversely
affected by such Product discontinuance. As a material inducement to entering
into this Agreement, CMI represents to Avanex that after diligent inquiry CMI is
aware of no Product or process involved in the production of any Product which
violates any law, regulation, judgment, order or permit.
33. Safety Standards and Legal Compliance.
(a) CMI will use its best efforts to provide information,
participate in inspections and perform all other actions reasonably requested by
Avanex to receive and/or maintain safety certifications by governmental
agencies, to the extent required or applicable.
(b) CMI agrees to notify Avanex of any post-sale warnings,
retrofits or recalls which CMI implements with respect to any suppliers,
materials, and processes that are used by or for, or included in the Product(s).
(c) CMI will promptly notify Avanex with respect to any matter
to which CMI receives or develops knowledge with respect to the safe and
reliable operation of the Product(s).
34. Insurance. During the Term of this Agreement, CMI, at its sole cost
and expense, shall carry and maintain insurance adequate to cover its
manufacturing operations, product liability (naming Avanex as loss payee) and
its other obligations under this Agreement. CMI shall provide Avanex with a
Certificate of Insurance stating that such insurance policies are in full force
and effect. CMI shall require its insurer(s) to give Avanex thirty (30) days
written notice before the policy or policies are canceled or materially altered.
11
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
12
35. Warranty.
(a) CMI represents and warrants to Avanex that for a period of
[*] from the quality assurance date stamped on each Product delivered hereunder,
all Products delivered: (i) are new, unused, will be free from defects in
workmanship and manufacture; and (ii) will conform to the product and test
specifications incorporated by reference in Exhibit D and the Bellcore
standards, as applicable. CMI shall assign to Avanex any warranties with respect
to material. CMI MAKES NO OTHER REPRESENTATIONS OR WARRANTIES, EXPRESS OR
IMPLIED WITH RESPECT TO PRODUCT(S), AND EXPRESSLY DISCLAIMS ANY IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. All
warranties run to the benefit of Avanex. Avanex's approval of CMI's materials
will not relieve CMI of any warranties.
(b) Defective or non-conforming Products shall be returned to
CMI (or JV Co.) upon Avanex's receipt of a RMA for such return. CMI shall issue
RMA numbers within two (2) business days. Avanex shall return Products in the
original shipping container, if possible, otherwise Avanex shall use a similar
shipping container and such container shall be marked with the RMA number. CMI
shall repair or replace such rejected Products within five (5) business days.
With respect to Products to be repaired or replaced, the date determined in the
prior sentence shall be deemed an Agreed Delivery Date for purposes of this
Agreement, subject to modification in accordance with Section 11 hereof.
(c) CMI shall not unreasonably withhold its approval of Avanex's
offer to correct itself, or to reimburse a third party to correct, the defective
or non-conforming Products and charge CMI with the cost of such correction.
(d) Any repaired or replaced Products shall be subject to the
warranty set forth above. Out of warranty service shall be provided at CMI's
standard terms, conditions, and rates.
(e) Subject to Avanex's rights with respect to Section 35(c) and
Section 36 hereof such repair or replacement shall be Avanex's exclusive remedy
and CMI's sole liability for any breach of the warranty set forth in this
Section.
36. Indemnification and Hold Harmless. Subject to the limitations
provided in Section 39 of this Agreement, in connection with the transactions
contemplated by this Agreement CMI agrees to indemnify and hold Avanex harmless
from and against any claims, actions, losses, damages, costs and expenses
(including without limitation, reasonable attorneys' fees) arising from any of
the following:
(a) breach or violation of any import or export laws of China or
the United States;
(b) breach of any representation or warranty made by CMI in this
Agreement;
(c) claim brought by any third party that CMI's (or the JV
Co.'s) (i) manufacture of Products or Licensed Products or (ii) use of the
Licensed Technology, violates any intellectual property rights of such party or
another third party; or
(d) claim brought by any third party against Avanex for any
loss, damage, cost, expense or liability arising from defects in the Products
manufactured by CMI (or the JV Co.).
37. Cancellation for CMI's Default.
12
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
13
(a) Avanex may, at any time prior to delivery, by written
notice, cancel this Agreement in whole or in part, or any purchase order issued
hereunder if, in Avanex's good faith opinion, CMI has:
(i) failed to make delivery of Product on an Agreed
Delivery Date as such date may be modified under Section 11 hereof;
(ii) other than as provided in the previous clause,
failed to replace or correct defective items in accordance with the provisions
of Sections 14 or 35 above;
(iii) failed to provide adequate assurance of
performance within five (5) business days of having received Avanex's notice of
a failure by CMI to make progress under this Agreement so as to endanger
performance in accordance with its terms;
(iv) becomes bankrupt or insolvent, suffers a receiver
to be appointed or makes an assignment for the benefit of creditors; or
(v) is in material default of any obligations, except as
set forth in Section 37(a)(i), (ii), (iii) and (iv), above, under this
Agreement, and such default is not cured within thirty (30) days of Avanex's
notice of such default.
(b) If this Agreement or any purchase order under this Agreement
is canceled for CMI's default, Avanex may, in addition to all legal and
equitable remedies that may be available to Avanex, procure upon such terms and
in such manner as Avanex may deem appropriate, goods or services similar or
substantially similar to those canceled. CMI will then be liable to Avanex for
any excess costs occasioned thereby.
(c) If all or a portion of this Agreement or any purchase order
is canceled for CMI's default, Avanex may, in addition to all other remedies
that may be available to Avanex, require CMI to transfer title and to deliver to
Avanex, in the manner and to the extent directed by Avanex, provided that Avanex
pays for such property pursuant to Section 37(e), below:
(i) any completed items not yet delivered; and/or
(ii) any partially completed items and materials that
CMI (or JV Co.) has produced or acquired for the performance of the terminated
portion.
(d) CMI will, upon direction of Avanex, protect and preserve the
property listed in this Section that is in the possession of CMI or JV Co.
Nothing in this Section 37 is intended to excuse CMI from proceeding with any
uncanceled portion of this Agreement or purchase order(s) under this Agreement.
(e) Avanex will pay CMI the following amounts for property for
which title has been transferred and delivery completed under Section 37(c),
and/or for any services performed under Section 37(d), above:
(i) the contract price for any completed Products or
services rendered in accordance with this Agreement;
(ii) the actual costs incurred by CMI which are properly
allocable under recognized commercial accounting practices to the terminated
portion of this Agreement, plus a fair and reasonable profit on such costs (as
reasonably agreed to by the parties) with respect to partially completed
Products and materials that CMI has produced or acquired for the performance of
the terminated portion of this Agreement. With respect to work in progress, if
it
13
14
appears that CMI would have sustained a loss on the order, no profit will be
allowed, and an adjustment will be made reducing the amount of the settlement to
reflect the indicated rate of loss; or
(iii) the reasonable costs incurred by CMI in protecting
property in which Avanex has or may acquire an interest under this Section 37.
(f) Payments made under this Section 37 may not exceed the
aggregate price specified in this Agreement or purchase order(s) under this
Agreement less payments otherwise made or to be made. Any amounts payable for
property lost, damaged, stolen or destroyed prior to delivery to Avanex will be
excluded from amounts otherwise payable to CMI under this Section 37.
(g) Both parties agree to negotiate in good faith the settlement
of any dispute that may arise under this Agreement. Pending settlement of any
dispute, CMI agrees to continue to fabricate and deliver Products under the
terms of this Agreement as directed by Avanex.
38. Termination for Convenience.
(a) At any time for convenience, Avanex may terminate work under
this Agreement in whole or in part, by [*] written notice to CMI specifying the
extent to which performance of work is terminated and the time at which such
termination becomes effective. Upon such termination, CMI will to the extent and
at the times specified by Avanex, stop all work under this Agreement or purchase
order under this Agreement, place no further orders for materials to complete
the work, assign to Avanex all CMI's interests under terminated subcontracts and
orders, settle all claims thereunder after obtaining Avanex's approval, protect
all property in which Avanex has or may acquire an interest, and transfer title
and make delivery to Avanex of all articles, materials, work in process, and
other things held or acquired by CMI in connection with the terminated portion
of this Agreement. CMI will proceed promptly to comply with Avanex's
instructions respecting each of the foregoing without awaiting settlement or
payment of its termination claim. Within thirty (30) days after such
termination, CMI may submit to Avanex its written claim for termination charges,
in the form and with the certifications prescribed by Avanex. Failure to submit
such a claim within thirty days will constitute an unconditional and absolute
waiver of all claims and a release of all Avanex's liability arising out of the
termination. The parties may agree upon the amount to be paid CMI for such
termination. If they fail to agree, Avanex will pay CMI the following amounts:
(i) the contract price for any completed Products or
services rendered in accordance with this Agreement;
(ii) the actual costs incurred by CMI which are properly
allocable under recognized commercial accounting practices to the terminated
portion of this Agreement, plus a fair and reasonable profit on such costs (as
reasonably agreed to by the parties) with respect to partially completed
Products and materials that CMI has produced or acquired for the performance of
the terminated portion of this Agreement. With respect to work in progress, if
it appears that CMI would have sustained a loss on the order, no profit will be
allowed, and an adjustment will be made reducing the amount of the settlement to
reflect the indicated rate of loss; or
(iii) the reasonable costs incurred by CMI in making
settlement and in protecting property in which Avanex has or may acquire an
interest.
(b) Payments made under this Section 38 may not exceed the
aggregate price specified in this Agreement or purchase order(s) under this
Agreement less payments otherwise
14
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
15
made or to be made. Any amounts payable for property lost, damaged, stolen or
destroyed prior to delivery to Avanex will be excluded from amounts otherwise
payable to CMI under this Section 38.
(c) Cancellation by Avanex under this Section 38 of any purchase
order shall not excuse CMI's performance with respect to any other Agreement or
Purchase order.
39. LIMITATION OF LIABILITY. IN NO EVENT WILL EITHER AVANEX OR CMI OR JV
CO. BE LIABLE FOR ANY SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES ARISING OUT
OF THIS AGREEMENT, WHETHER UNDER THEORY OF CONTRACT, TORT (INCLUDING
NEGLIGENCE), PRODUCT LIABILITY OR OTHERWISE, EVEN IF ADVISED OF THE POSSIBILITY
OF SUCH DAMAGES AND EVEN IF SUCH DAMAGES COULD HAVE BEEN REASONABLY FORESEEN.
NOTWITHSTANDING THE FOREGOING, NOTHING IN THIS AGREEMENT IS MEANT TO ALTER THE
RIGHTS OR REMEDIES OF EITHER PARTY AGAINST THE OTHER PARTY IN ANY ACTION IN LAW
OR EQUITY BROUGHT BY A THIRD PARTY WITH REGARD TO ANY CLAIM MADE BY SUCH THIRD
PARTY.
40. Force Majeure. Neither party shall be liable for any delay or
failure in performance hereunder caused by acts of God or other causes beyond
the parties' control and without fault or negligence. In the event CMI fails to
deliver Product due to such causes, Avanex may suspend this Agreement in whole
or in part for the duration of the delaying cause, and at Avanex's option, buy
the Products elsewhere and deduct from any purchase order to CMI the quantity so
purchased. CMI shall resume performance under this Agreement immediately after
the delaying cause ceases and, at Avanex's option, extend the Initial Term
and/or Term for a period equivalent to the length of time the excused delay
endured.
41. Equal Opportunity. The "Equal Opportunity Clause" set forth in 41
C.F.R. section 60-1.4(a), the clause labeled "Affirmative Action of Disabled
Veterans and Veterans of the Vietnam Era" set forth in 41 C.F.R. section
60-250.4 and the clause labeled "Affirmative Action for Handicapped Workers" set
forth in 41 C.F.R. section 60-741.4 are hereby incorporated by reference and all
references in such clauses to "the contractor" shall be deemed to be references
to CMI.
42. Government Contracts. If any purchase order under this Agreement is
issued for any purpose that is either directly or indirectly connected with the
performance of a prime contract with the U.S. government or a subcontract
thereunder, the terms that the Federal Acquisition Regulations or other
appropriate regulations required to be inserted in contracts or subcontracts,
except for those terms pertaining to cost and pricing data and cost accounting
standards, will be deemed to apply to any purchase order under this Agreement.
CMI will promptly notify Avanex if CMI becomes, or with the passage of time will
become, ineligible to perform contracts or subcontracts under U.S. Federal
Acquisition Regulations. Avanex shall use its best efforts to notify CMI of any
provision that is so passed on.
43. Survival. Notwithstanding the termination or expiration of the
Initial Term of this Agreement or any Extended Term thereof, it is acknowledged
and agreed that those rights and obligations which by their nature are intended
to survive such expiration or earlier termination shall survive including,
without limiting the foregoing, following Sections: 26, 27(b) and (c), 28, 29,
30, 35, 39, 44, 45, 47 and 48, for a period of ten (10) years. All obligations
to return information and materials shall survive the termination of this
Agreement.
44. Relationship of Parties.
15
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
16
(a) Neither party shall have, or shall represent that it has,
any power, right or authority to bind the other party, or to assume or create
any obligation or responsibility, express or implied, on behalf of the other
party or in the other party's name.
(b) Nothing stated in this Agreement shall be construed as
constituting CMI (or JV Co.) and Avanex as partners, joint venturers, or as
creating the relationships of employer and employee, franchiser and franchisee,
master and servant, or principal and agent.
45. Publicity. Neither Avanex or CMI shall publicize or disclose the
existence or terms and conditions of this Agreement, or any transactions
hereunder, without the express, prior written consent of the other, except as
may be required under the rules and regulations of the United States Securities
Exchange Commission.
46. Administration.
(a) Avanex and CMI shall each assign an individual to administer
this Agreement throughout this term:
Avanex's Administrator shall be:
Xx. Xxxxx Xxxx
Avanex Corporation
00000 Xxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
(000) 000-0000
CMI's Administrator shall be:
--------------------------
--------------------------
--------------------------
(b) Each party shall inform the Administrator of the other in
writing of a change of Administrator or such Administrator's address or
telephone number.
(c) Any notice required or permitted to be given under this
Agreement shall be given in writing and shall be addressed to Avanex or CMI, as
the case may be, at the address set forth above or at such other address as may
be given in writing and: (i) by airmail, postage prepaid, certified mail, return
receipt requested; (ii) transmitted by facsimile with a confirming copy
immediately mailed thereafter; or (iii) delivered by a messenger or overnight
delivery service.
47. General. This Agreement and all of its referenced Exhibits, which
are incorporated herein by reference as if set forth in full, together with all
purchase orders, but not the preprinted terms and conditions thereof, constitute
the entire agreement between the parties with respect to the subject matter
hereof and supersede all prior proposals, negotiations and communications, oral
or written, between the parties with respect to the subject matter hereof. No
deviation from these provisions shall be binding unless in writing and signed by
an authorized representative of the party to be charged.
Except as specifically set forth herein, all rights and remedies
conferred under this Agreement or by any other instrument or law shall be
cumulative and may be exercised singularly or concurrently. Failure by either
party to enforce any provision shall not be deemed a waiver of future
enforcement of that or any other provision. In the event that any portion of
this
16
17
Agreement shall be held to be unenforceable, the remaining portions of this
Agreement shall remain in full force and effect and the parties shall negotiate
substitute provisions for those provisions held to be unenforceable that most
nearly effect the parties intent in entering into this Agreement. In the event
any provisions of this Agreement shall be held unenforceable against the JV Co.
under PRC law, CMI shall nevertheless be obligated to perform such obligation
unless the same shall be unenforceable under California law.
48. Governing Law and Dispute Resolution. This Agreement is entered into
at Fremont, California and shall be governed by and construed in accordance with
the laws of the State of California, USA, except that body of law of California
law concerning conflicts of law. Any dispute, controversy or claim arising out
of or relating to this Agreement shall be finally and exclusively resolved by
submission to a single arbitrator in San Francisco, California in accordance
with the commercial arbitration rules of the American Arbitration Association.
The prevailing party shall be entitled to reasonable attorneys' fees and costs.
The arbitrator shall set a limited time period and establish procedures designed
to reduce the cost and time for discovery while allowing the parties an
opportunity, adequate in the sole judgment of the arbitrator, to discover
relevant information from the opposing parties about the subject matter of the
dispute. The arbitrator shall rule on motions to compel or limit discovery and
shall have the authority to impose sanctions, including attorneys' fees and
costs, to the same extent as a court of competent law or equity, should the
arbitrator determine that the discovery was refused or objected to without
substantial justification. The arbitrator shall have the authority to grant any
equitable and legal remedies that would be available in any judicial proceeding
instituted under California substantive law to resolve a dispute. Any award
issued by the arbitrator shall be final and binding on the parties and
enforceable against them. Any award issued against the JV Co. shall be
enforceable by any competent court having jurisdiction over the JV Co. in
accordance with the terms of the NEW YORK (UN) CONVENTION FOR THE RECOGNITION,
AND ENFORCEMENT OF FOREIGN ARBITRAL AWARDS.
49. Assignments.
(a) The rights, duties and obligations of CMI (or JV Co.) under
this Agreement may not be assigned in whole or in part by operation of law or
otherwise without the prior express written consent of Avanex, and any attempted
assignment of any rights, duties or obligations hereunder without such consent
shall be null and void. This Agreement shall be binding on the parties and their
respective successors and permitted assigns.
(b) Avanex shall not assign its rights duties and obligations
under this Agreement without the prior written approval of CMI, which approval
CMI shall not unreasonably withhold, provided, however, that Avanex may assign
this Agreement without the prior written approval of CMI to a person or entity
into which Avanex has merged or which has otherwise succeeded to all or
substantially all of its business and assets, and which has assumed in writing
or by operation of law its obligations under this Agreement.
50. Exhibits. The following is the list of Exhibits which are attached
hereto and hereby incorporated into this Agreement by reference:
A. Product Description, Production Pricing and Lead Times
B. Form of Acknowledgement and Agreement
C. Safety Stock
D. Long Lead Components
E. Product and Test Specifications
F. Method of Information Transfer
G. Confidentiality Undertaking
17
18
H. Licensed Products and Licensed Information
51. Language. For purposes of submission of this Agreement to the
relevant PRC authorities, this Agreement may be translated into Chinese. Such a
transaction shall be for this purpose only and the English text shall be only
the authoritative and binding text.
52. CMI Board Seat. During the period that this Agreement is in effect,
CMI shall offer Avanex the option of appointing its designee to the board of
directors of the CMI and the JV Co.
IN WITNESS WHEREOF, the parties have caused this Agreement to executed
by their duly authorized representatives.
Accepted for Avanex:
AVANEX CORPORATION
By: /s/ Xxxxxx Xxxxxxxxxxxx
Name: Xxxxxx Xxxxxxxxxxxx
-------------------
Title: CEO
---
Date: 5/8/1999
--------
Accepted for CMI:
CONCORD MICRO-OPTICS, INC.
By: /s/ Xxxxxxxx X. Xxxx
Name: Xxxxxxxx X. XXXX
----------------
Title: CEO
---
Date: 05/24/99
--------
18
19
Exhibit A
Products:
[*]
Price:
The prices for the Products shall be based on the JV Co.'s direct manufacturing
costs plus a markup subject to good faith negotiations and agreement between
the parties, and shall be reviewed [*]. CMI shall guarantee Avanex a [*]
discount to the lowest prices at which it offers Products to third parties. CMI
shall use reasonable commercial efforts to continually reduce the unit pricing
and discount pricing of the Products.
Avanex shall be allowed the full benefit of any and all lower prices, after
giving effect to Avanex's [*] discount, contained in any other agreement that
may hereafter be entered into by CMI. CMI shall notify Avanex immediately of
any such lower prices, and shall make the same available to Avanex at [*]
discount for as long as such prices are made available to such other similar
customers.
CMI shall allow Avanex to review its JV Co.'s production cost information, if
requested by Avanex. Avanex shall have the right to demand a refund or credit
toward future purchases if it finds any price discrepancy. [*] shall be [*]
responsible for all costs and expenses relating to an inspection of cost
information, including travel, lodging and meals.
Lead Times:
To be determined on a product-by-product basis.
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
20
Exhibit B
Form of
Acknowledgment and Agreement
to the Terms of the
Avanex Corporation License and Supply Agreement
______________________________, a Sino-foreign joint venture organized and
existing under the laws of the People's Republic of China, with a principal
place of business at Tianjin, People's Republic of China ("JV Co."), hereby
agrees to fully comply with all obligations of Concord Micro-Options, Inc.
("CMI") as set out under the Avanex Corporation License and Supply Agreement
(the "Agreement"), entered into between Avanex Corporation and CMI and duly
executed by said parties on ___________, 1999, including without limitation the
provisions relating to protection of Confidential Information set forth in
Section 26 of the Agreement.
JV Co. acknowledges receipt of an executed copy of the Agreement and agrees to
deliver an executed original of this Acknowledgment and Agreement to Avanex
within seven (7) days after the execution hereof.
Accepted for JV Co. by its duly authorized legal representative:
By:
----------------------------------
Name:
--------------------------------
Title: Legal Representative
-------------------------------
Date:
--------------------------------
21
Exhibit C
Safety Stock:
To be determined subsequently.
22
Exhibit D
Long Lead Components:
[*]
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
23
Exhibit E
Product and test Specifications:
[To be provided subsequently by Avanex]
24
Exhibit F
Method of Information Transfer:
Avanex will furnish two copies, in the English language, of the Licensed
Information to CMI, to the extent such information exists in tangible form.
Avanex will provide [*] engineers and/or technicians dispatched by CMI up to [*]
hours of theoretical and practical training at Avanex's facilities. The parties
shall make a good faith effort to ensure that this training shall be adequate to
ensure that qualified CMI engineers and technicians can manufacture, at Avanex's
facilities, samples of the Licensed Products that meet current standards.
Upon the reasonable request of CMI, Avanex will dispatch one engineer or
technician for up to two weeks to inspect the production process at MCI's
facility and to provide further training.
If CMI requires further training or consultation beyond the above allowable
time, CMI will pay Avanex at [*] per hour per trainer.
CMI shall be solely responsible for all costs and expenses relating to the
travel, lodging and meals for the purpose of technical transfer.
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
25
Exhibit G
Confidentiality Undertaking
In consideration of my employment and/or the continuance of my employment by the
JV Co. [or engagement by the JV Co. in the event of a consultant], I hereby
undertake to Avanex Corporation ("Avanex"), which has provided certain
Confidential Information (as defined below) to the JV Co. as follows:
1. I hereby recognize that unpublished patentable or unpatentable items of
technical or non-technical information such as, but not limited to,
materials, tooling, equipment, designs, processes, formulae, projects,
products, costs, financial data, software programs and subroutines,
source and object code, algorithms, trade secrets, designs, technology,
know-how, processes, data, ideas, techniques, utility models,
inventions, works of authorship, formulas, business and product
development plans, customer lists, research or development, production,
manufacturing and engineering processes, prices and pricing structures,
marketing and sales information, product lines and any information and
materials relating thereto, or which is received in confidence by or for
the JV Co. or used by Avanex in its business constitute valuable trade
secrets or confidential information (referred to hereafter collectively
as "Confidential Information") which are the property of Avanex and I
agree not to disclose or use the same other than in the business of the
JV Co. Specifically, I agree:
(a) not to, directly or indirectly, disclose or make available to
anyone or use outside of the JV Co. during and after my
employment, any Confidential Information without the prior
written consent of an authorized official of Avanex;
(b) to safeguard all Confidential Information at all times so it is
not exposed to, or taken by, unauthorized persons, and when
entrusted to me will exercise my best efforts to assure its
safe-keeping;
(c) upon termination of my employment, to deliver all materials,
including personal notes and reproductions relating to the JV
Co. or Avanex business in my possession or control, with full
understanding that compensation and benefits may be withheld if
I fail to comply; and
(d) to prevent any non-employees from viewing those portions of the
JV Co. plant on which any Confidential Information is in use
without the prior express written consent of an authorized
official of Avanex.
2. With respect to all work done by me in relation to the JV Co., I hereby
agree that all right, title and interest in and to all ideas which I
have conceived or may conceive and all inventions, improvements or
discoveries which I have made or may make, whether
26
conceived or made during working hours or otherwise and whether alone or
jointly with others, are the sole property of the JV Co. or Avanex (as
they have agreed between them). With respect to all patent conceptions
and implementing projects, I also agree that during and after
termination of my employment, I and my heirs or representatives, shall,
as requested, assist in the preparation and execution of all patent
applications and other instruments, as well as execute all requested
assignments and do all other things which Avanex deems necessary to
obtain or to maintain Chinese, and foreign patents and to protect Avanex
rights and interests.
---------------------------- --------- -------------------------------------
Name of Employee/Consultant Date Signature of Employee/Consultant
ACCEPTED BY OFFICER OF THE JV CO. ON BEHALF OF AVANEX
By:
----------------------------------
Title:
-------------------------------
Date:
--------------------------------
27
Exhibit H
Licensed Products:
[*]
Licensed Information:
Technical information and manufacturing process deemed by Avanex (in its
discretion) to be necessary or desirable for the production of the Licensed
Products
----------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
