EXHIBIT 10.5
EZENIA! LICENSE AGREEMENT
THIS LICENSE AGREEMENT is entered into and effective this 30th day of
October, 2002 (the "EFFECTIVE DATE") by and between Ezenia! Inc., a corporation
organized and existing under the laws of the State of Delaware, U.S.A
("LICENSEE"), and Tandberg Telecom AS, a corporation organized and existing
under the laws of the Kingdom of Norway ("LICENSOR").
W I T N E S S E T H:
WHEREAS, pursuant to the transactions contemplated under that certain
Asset Purchase Agreement entered into by Licensor and Licensee dated August 1,
2002 (as amended as of October 3, 2002, the "ASSET PURCHASE AGREEMENT"),
Licensor owns the patents and patent applications listed on EXHIBIT 1 attached
hereto; and
WHEREAS, Licensor desires to grant to Licensee the right to practice
under such patents and patent applications, and Licensee is willing to accept
such license on the terms set forth herein;
NOW THEREFORE, in consideration of the mutual covenants and promises
set forth herein and intending to be legally bound the Parties hereby agree as
follows:
1. DEFINITIONS. The following terms shall have the meaning ascribed to
them herein, unless the context otherwise requires:
1.1 "CHANGE OF CONTROL" shall mean the (i) closing of a sale,
transfer or assignment, in a single transaction or a series or related
transactions, of fifty percent (50%) or more of the outstanding shares of
capital stock of Licensee (including a sale of stock structured as a merger or
consolidation of Licensee with or into any other entity other than a wholly
owned subsidiary of Licensee) (ii) transfer, sale or assignment of the right or
proxy to vote fifty (50%) of the outstanding voting shares of capital stock of
Licensee or (iii) any agreement granting a party or parties the right to
collectively nominate, appoint or elect a majority of the members to the Board
of Directors of Licensee, which parties collectively do not own or control a
majority of the voting shares of capital stock of Licensee.
1.3 "EFFECTIVE DATE" shall mean the date first set forth above.
1.4 "FIELD" shall mean the design, development, manufacture,
import, export, servicing, support, marketing, distribution, use, and sale of
videoconferencing interface components and telecommunications bridging equipment
that facilitate multipoint audio and video conferencing.
1.5 "LICENSED PRODUCT" shall mean any product of Licensee, the
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manufacture, use or sale of which is covered by any claim of the Patents.
1.6 "MCU BUSINESS" shall mean the business conducted by Licensee
within the Field.
1.7 "PARTY" or "PARTIES" shall mean a party or the parties to
this Agreement.
1.8 "PATENTS" shall mean the issued patents and patent
applications set forth in EXHIBIT 1 attached hereto, and any foreign
counterparts, reissues, extensions, substitutions, confirmations, registrations,
revalidations, additions, or continuations, continuations-in-part, and divisions
thereof.
2. LICENSE
2.1 LICENSE GRANT. Subject to the terms and conditions set forth
in this Agreement, Licensor hereby grants to Licensee a non-transferrable
(except in accordance with Section 7.3), world-wide, non-exclusive license to
practice and use the rights in information or discoveries covered by the Patents
to, directly or indirectly, manufacture, have manufactured, import, export,
service, support, market, distribute, use, and sell Licensed Products (a) within
the Field, and/or (b) in connection with enterprise collaboration software.
Licensee shall be responsible for and liable to Licensor for any breach of this
Agreement by any of its sublicensees.
2.2 SUBLICENSES. Subject to the terms and conditions of this
Agreement, Licensor hereby grants to Licensee the right to grant sublicenses in
and to the Patents to its resellers, distributors, and contract manufacturers
for the sole purpose of enabling, and only to the extent necessary to enable,
Licensee to manufacture, have manufactured, import, export, service, support,
market, distribute, use and sell Licensed Products as permitted under Section
2.1, and to enable end users to use Licensed Products. All sublicenses permitted
hereunder must be in writing and at least as protective of the Patents as this
Agreement. All sublicenses must expressly name Licensor as an intended third
party beneficiary with the right to enforce such sublicense directly against
such sublicensee.
2.3 TITLE TO PATENTS. Licensee understands and agrees that the
license granted to Licensee under this Agreement does not confer on Licensee
title to, or ownership of, the Patents or any part thereof. All proprietary
rights in the Patents, whether created by statute or arising at common law or in
equity, will remain at all times in the Licensor. Subject to the foregoing, both
Parties acknowledge and agree that any modification, extension, improvement or
change of any kind of or to any of the Patents created by either Party as a
result of having had access to Patents shall be owned by the Party who created
it.
2.4 PATENT MARKING. Licensee must permanently and legibly xxxx
all Licensed Products manufactured, imported, distributed, or sold by it under
this Agreement with a patent notice as may be permitted or required under the
law of each jurisdiction in which Licensed Products are manufactured,
distributed, imported, or sold.
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3. LICENSE FEE. Consideration having been received, the validity and
sufficiency of which is hereby acknowledged, Licensor shall not impose any fee
or royalty upon, or be entitled to receive any fee or royalty from, Licensee or
its sublicensees for the licenses granted herein, which Licensor acknowledges to
be fully paid-up.
4. REPRESENTATIONS AND WARRANTIES
4.1 LICENSOR REPRESENTATIONS. As of the Effective Date, Licensor
represents and warrants to Licensee the following:
(a) Licensor is a corporation organized and existing under
the laws of the Kingdom of Norway and has the authority
to enter into this Agreement.
(b) Execution of this Agreement by Licensor will constitute
the valid and binding agreement of Licensor
4.2 LICENSEE REPRESENTATIONS. As of the Effective Date, Licensee
represents and warrants to Licensor the following:
(a) Licensor is a corporation organized and existing under
the laws of the State of Delaware, U.S.A. and has the authority to enter into
this Agreement.
(b) Execution of this Agreement by Licensee will constitute
the valid and binding agreement of Licensee.
4.3 MUTUAL REPRESENTATIONS. Each Party agrees to comply with all
applicable regulatory, statutory and treaty requirements in any country in which
such Party conducts business, and not to place the other Party in jeopardy of
not complying with any such requirements.
6. TERM. This Agreement and the right and license granted to Licensee
hereunder shall commence on the date first set forth above (the "EFFECTIVE
DATE") and shall expire on a country-by-country basis upon expiration of the
Patents licensed hereunder, or if sooner, upon a Change in Control of Licensee.
The right and license granted to Licensee pursuant to Section 2.1(a) shall
terminate in the event that Licensee sells all or substantially all of its MCU
Business (and/or assets related thereto) or otherwise abandons the MCU Business
and does not resume such operations within a period of twelve months thereafter.
7. MISCELLANEOUS
7.1 NOTICE. Any and all notices, demands, and communications
provided for herein or made hereunder shall be given in writing and shall be
deemed given to a Party at the earlier of (i) when hand delivered to such Party,
(ii) when facsimile transmitted to such Party to the facsimile number indicated
for such Party below (or to such other facsimile number for a Party as such
Party may have substituted by notice pursuant to this Section 7.1), or (iii)
when
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received if sent by express courier, confirmed by receipt, and addressed to such
Party at the address designated below for such Party (or to such other address
for such Party as such Party may have substituted by notice pursuant to this
Section 7.1):
If to Licensor: Tandberg Telecom AS
Xxxxxx Xxxxxxxx'x Xxx 00
N-1324, Lysaker
NORWAY
Attention: President
With a copy to: Peri & Xxxxxxx, L.L.C.
000 Xxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Fax: 000-000-0000
Attention: Xxxxxx X. Xxxx, Esq.
If to Licensee: Ezenia!, Inc.
000 Xxxxxxxxx Xxxxxxxx
Xxxxxxxxxx, XX 00000
Fax: 000-000-0000
Attention: President
With a copy to: Xxxxxxx XxXxxxxxx LLP
000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
Fax: 000-000-0000
Attention: Xxxxx X. Xxxxx, Esq. and
Xxxxx X. Xxxxxxx, Esq.
7.2 INDEPENDENT PARTIES. This Agreement is intended solely as an
arm's length commercial agreement, and no partnership, franchise, joint venture,
agency, or other form of agreement or relationship is intended.
7.3 ASSIGNMENT. This Agreement may not be assigned by Licensee
without the prior written consent of Licensor. In the event of any such
permitted assignment, the assignee shall be subject to and shall agree in
writing to be bound by the terms and conditions of this Agreement.
7.4 GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the internal laws and decisions of the State of
Delaware without regard to its rules as to conflicts of laws; provided, however,
that the Patents subject to this Agreement shall be interpreted in accordance
with the laws of the country in which the Patent was granted. The Parties hereby
consent and submit to the exclusive jurisdiction of the respective federal and
state courts in and of the State of Delaware, and the Parties irrevocably waive
whatever rights they
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may have to challenge or dispute jurisdiction or venue therein. The Parties
further agree that if they do not have an office or registered agent in Delaware
to accept service of process, they may be served by U.S. Mail, postage prepaid,
registered or certified, return receipt requested. If so delivered, the Parties
irrevocably waive whatever right they may have to challenge the sufficiency of
process of service.
7.5 INTEPRETATION. Each of the Parties have been represented by
counsel and has had the opportunity to negotiate, review, revise and comment on
the terms set forth herein. As a result, the Parties acknowledge and agree that
in interpreting the provisions of this contract no weight shall be given to
which Party drafted or revised any provision of this Agreement, each provision
considered to have been the joint work product of both Parties.
7.6 SEVERABILITY. In the event any one or more of the provisions
of this Agreement should for any reasons be held by any court or authority
having jurisdiction over this Agreement or any of the Parties hereto, to be
invalid, illegal, or unenforceable, such provisions shall be reformed to
approximate the intent of the Parties as near as possible and, if unreformable,
shall be divisible and deleted in such jurisdiction. All other provisions of
this Agreement shall not be affected.
7.7 CAPTIONS. The captions of this Agreement are for convenience
only, and shall not be deemed of any force or effect whatsoever in construing
this Agreement.
7.8 WAIVER. The failure on the part of a Party to exercise or
enforce any right conferred upon it hereunder shall not be deemed to be a waiver
of any such right, nor operate to bar the exercise or enforcement thereof at any
time thereafter.
7.9 SURVIVAL. The terms of this Agreement which by their intent
or meaning have validity beyond the term of this Agreement shall survive the
termination or expiration of this Agreement.
7.10 COUNTERPARTS. This Agreement may be executed by the Parties
hereto in counterparts, each of which, when so executed and delivered, shall be
considered to be an original, but all such counterparts shall together
constitute but one and the same instrument.
7.11 INTEGRATION/MODIFICATION. This Agreement is the complete
agreement of the Parties and supersedes all previous understandings and
agreements relating to the subject matter hereof. Neither this Agreement nor any
of the terms hereof may be terminated, amended, supplemented, waived or modified
orally, but only by an instrument in writing signed by the Party against whom
enforcement of the termination, amendment, supplement, waiver or modifications
is sought.
7.12 NO THIRD PARTY BENEFICIARIES. Nothing herein expressed or
implied is intended or will be construed to confer upon or
to give any person, firm or corporation, other than the
Parties hereto, any rights or remedies under or by reason of
this Agreement.
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7.13 INDEMNIFICATION. Licensee will defend, indemnify and hold
harmless Licensor from, against and in respect of any and
all assessments, damages, deficiencies, judgments, losses,
obligations and liabilities (including costs of collection
and reasonable attorneys' fees and expenses) (collectively,
"INDEMNITY LOSSES") imposed upon or suffered or incurred by
Licensor arising from or related to any claim by any third
party that is based upon: (a) any claim that Licensee's (or
any of its resellers, distributors and contract
manufacturers) products or services infringe on the
intellectual property rights of a third party; or (b) the
death of or injury to any person or persons or from any
damage to property and against any other claim, proceeding,
demand, expense and liability of any kind whatsoever
resulting from the production, manufacture, sale, use,
lease, consumption or advertisement of the Licensed
Products; provided that Licensee will not be obligated to
indemnify Licensor for claims arising out of ownership of
the Patents.
7.14 PROCEDURE. To obtain the benefit of the indemnifications set
forth in Section 7.13 above, Licensor must (a) promptly
provide notification of the claim and reasonable cooperation
to Licensee; provided that failure to promptly notify
Licensee will not limit the claim for indemnification
hereunder except to the extent that such failure actually
prejudices Licensee; (b) tender to Licensee complete control
of the defense, settlement and compromise of the claim;
provided that Licensee will not settle any such claim
without the consent of Licensor unless a full release of
Licensor is obtained from all third party claimants; and (c)
not make any admissions to any third party regarding the
claim or settle any indemnified claim except as approved by
Licensee in writing or as required by applicable law.
Licensor may participate in its defense at its own cost and
expense and Licensee will consult with Licensor in
connection with defense and settlement.
IN WITNESS WHEREOF, the duly authorized representatives of the Parties
hereto have executed this Agreement as of the dates indicated below.
EZENIA! INC. TANDBERG TELECOM A/S
By: /s/ Xxxx Xxxxxx By: /s/ Per Xxxx Kogstad
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Title: President Title: President
Date: October 30, 2002 Date: October 30, 2002
