Exhibit 10.14
LICENSE AGREEMENT ("Agreement") with an Effective Date of January 1,
1996 between INTERNATIONAL BUSINESS MACHINES CORPORATION, a New York
corporation ("IBM"), and ADAPTEC, INC., a Delaware corporation ("ADAPTEC").
Each of the parties (as "Grantee") desires to acquire a nonexclusive
license under patents of the other party (as "Grantor"). In consideration of the
premises and mutual covenants herein contained, IBM and ADAPTEC agree as
follows:
SECTION 1. DEFINITIONS
1.1 "Information Handling System" shall mean any instrumentality or aggregate
of instrumentalities primarily designed to compute, classify, process,
transmit, receive, retrieve, originate, switch, store, display, manifest,
measure, detect, record, reproduce, handle or utilize any form of
information, intelligence or data for business, scientific, control or other
purposes.
1.2 "IHS Product" shall mean an Information Handling System or any
instrumentality or aggregate of instrumentalities (including, without
limitation, any component, subassembly, computer program or supply) designed
for incorporation in an Information Handling System. Any instrumentality or
aggregate of instrumentalities primarily designed for use in the fabrication
(including testing) of an IHS Product licensed herein shall not be considered
to be an IHS Product.
1.3 "ADAPTEC Licensed Patents" shall mean all patents, including utility
models and typeface design patents and registrations (but not including any
other design patents or registrations):
(a) issued or issuing on patent applications entitled to an effective filing
date prior to July 1, 2004;
(b) which, but for this Agreement, would be infringed by IBM's making, using,
importing, offering for sale, or leasing, selling or otherwise transferring
an IBM Licensed Product in the country in which such patent exists; and
(c) under which patents or the applications therefor ADAPTEC or any of its
Subsidiaries now has, or hereafter obtains, the right to grant licenses to
IBM of or within the scope granted herein without such grant or the
exercise of rights thereunder resulting in the payment of royalties or
other consideration by ADAPTEC or its Subsidiaries to third parties (except
for payments among ADAPTEC and its Subsidiaries, and payments to third
parties for inventions made by said third parties while employed by ADAPTEC
or any of its Subsidiaries).
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ADAPTEC Licensed Patents shall include said patent applications, continuations
in part and foreign counterparts of said patent applications, and any reexamined
patents or patents reissuing on any of the aforesaid patents.
1.4 "Licensed Products" shall mean IHS Products.
1.5 "Integrated Circuit" shall mean an integral unit including a plurality
of active and/or passive circuit elements formed at least in part of
Semiconductor Material and associated on, or in, one substrate comprising the
first level of packaging for such elements; such unit forming or contributing to
the formation of a circuit for performing electrical or electronic functions.
1.6 "Semiconductor Material" shall mean material whose conductivity is
intermediate to that of metals and insulators at room temperature and whose
conductivity, over a temperature range, increases with increases in
temperature. Such materials shall include, but are not limited to refined
products, reaction products reduced products, mixtures and compounds.
1.7 "Subsidiary" of a party hereto or of a third party shall mean a
corporation, company or other entity:
(a) more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) are, now or hereafter, owned or controlled, directly or
indirectly, by a party hereto or such third party, but such corporation,
company or other entity shall be deemed to be a Subsidiary only so long as
such ownership or control exists; or
(b) which does not have outstanding shares or securities, as may be the case in
a partnership, joint venture or unincorporated association, but more than
fifty percent (50%) of whose ownership interest representing the right to
make the decisions for such corporation, company or other entity is now or
hereafter, owned or controlled, directly or indirectly, by a party hereto
or such third party, but such corporation, company or other entity shall be
deemed to be a Subsidiary only so long as such ownership or control exists.
1.8 "IBM Licensed Patents" shall mean the patents listed in Exhibit 1 and one
(1) more issued patent from the patents that IBM or any of its Subsidiaries has
prior to July 1, 2004 the right to grant licenses to ADAPTEC and designated as
an IBM Licensed Patent in writing by ADAPTEC to IBM prior to July 1, 2005 and
the license shall be in effect until June 30, 2004. ADAPTEC's designation of a
particular IBM patent as an IBM Licensed Patent pursuant to this Section 1.8
shall be irrevocable.
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SECTION 2. GRANTS OF RIGHTS
2.1 IBM, on behalf of itself and its Subsidiaries grants ADAPTEC, a
nonexclusive, worldwide license under IBM Licensed Patents:
(a) to make (including the right to use any apparatus and practice any method
in making), use, import, offer for sale, lease, sell and/or otherwise
transfer Licensed Products;
(b) to have Licensed Products made by another manufacturer anywhere in the
world for the use, importation, offer for sale, lease, sale and/or other
transfer by ADAPTEC only when the designs and specifications for such
Licensed Products were created by ADAPTEC (either solely or jointly with
one or more third parties); provided, however, the license under this
Section 2.1(b):
(i) with respect to Integrated Circuits shall only be under claims, other
than manufacturing method and manufacturing process claims of IBM
Licensed Patents, the infringement of which would be necessitated by
compliance with such designs and specifications; and
(ii) with respect to Licensed Products other than Integrated Circuits shall
only be under claims of IBM Licensed Patents, the infringement of
which would be necessitated by compliance with such designs and
specifications; and
(iii)shall not apply to any Licensed Products in the form manufactured or
marketed by said other manufacturer prior to ADAPTEC's furnishing of
said designs and specifications.
Unless ADAPTEC informs IBM to the contrary, ADAPTEC shall be deemed to have
authorized said other manufacturer to make Licensed Products under the license
granted to ADAPTEC in this section when the conditions specified in Section
2.1(b) are fulfilled. In response to a written request identifying a product and
a manufacturer, ADAPTEC shall in a timely manner inform IBM of the quantity of
such product, if any, manufactured by such manufacturer pursuant to the license
granted in Section 2.1(b).
2.2 ADAPTEC, on behalf of itself and its Subsidiaries grants to IBM, a
nonexclusive, paid up, worldwide license under ADAPTEC's Licensed Patents:
(a) to make (including the right to use any apparatus and practice any method
in making), use, import, offer for sale, lease, sell and/or otherwise
transfer Licensed Products; and
(b) to have Licensed Products made by another manufacturer for the use,
importation, offer for sale, lease, sale and/or other transfer by IBM only
when the designs and specifications for such Licensed Products were
created by IBM (either
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solely or jointly with one or more third parties); provided, however, the
license under this Section 2.2(b):
(i) shall only be under claims of ADAPTEC's Licensed Patents, the
infringement of which would be necessitated by compliance with such
designs and specifications; and
(ii) shall not apply to any Licensed Products in the form manufactured or
marketed, by said other manufacturer prior to IBM's furnishing of said
specifications.
Unless IBM informs ADAPTEC to the contrary, IBM shall be deemed to have
authorized said other manufacturer to make IBM Licensed Products under the
license granted to IBM in this section when the conditions specified in
Section 2.2(b) are fulfilled. In response to a written request identifying a
product and a manufacturer, IBM shall in a timely manner inform ADAPTEC of
the quantity of such product, if any, manufactured by such manufacturer
pursuant to the license granted in Section 2.2(b).
2.3 Except as expressly provided herein, no license or immunity is granted
under this Agreement by either party, either directly or by implication,
estoppel or otherwise to any third parties acquiring items from either party
for the combination of such acquired items with other items (including items
acquired from either party hereto) or for the use of such combination unless
such items have no substantial use other than as part of such a combination.
2.4 Subject to Section 2.5, the licenses granted herein shall include the
right of each party to grant sublicenses to its Subsidiaries, which
sublicenses may include the right of sublicensed Subsidiaries to sublicense
other Subsidiaries of said party. No sublicense shall be broader in any
respect at any time during the life of this Agreement than the license held
at that time by the party that granted the sublicense.
2.5 A sublicense granted to a Subsidiary shall terminate on the earlier of:
(a) the date such Subsidiary ceases to be a Subsidiary; and
(b) the date of termination or expiration of the license of the party or
Subsidiary that granted the sublicense.
If a Subsidiary ceases to be a Subsidiary and holds any patents under which a
party hereto is licensed, such license shall continue for the term defined
herein.
2.6 In the event that neither a party nor any of its Subsidiaries has the
right to grant a license under any particular Licensed Patent of the scope set
forth in Section 2, then the license granted herein under said Licensed Patent
shall be of the
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broadest scope which said party or any of its Subsidiaries has the right to
grant within the scope set forth above.
2.7 If, after the Effective Date, a party or any of its Subsidiaries
("Acquiring Party") either acquires an entity or acquires substantially all
of the assets from an entity, and said entity is, as of the date of
acquisition, licensed by the other party ("Licensor") under one or more of
the Licensed Patents, the license and other rights granted herein to the
Acquiring Party with respect to said Licensed Patents shall apply to products
manufactured by said entity or through the use of said assets, provided that
any royalties or other payments required by such license shall continue to be
made by the Acquiring Party or said entity to the Licensor with respect to
such products notwithstanding that the Acquiring Party may have been
licensed for the same Licensed Products before the acquisition.
2.8 If, pursuant to a license granted by Grantee to a third party, copies
are made of all or part of a computer program provided by Grantee, such
copies will be treated for purposes of this Agreement as if they had been
transferred directly by Grantee.
2.9 During the license negotiations leading to the conclusion of this
Agreement, the parties could not agree on patent infringement issues
involving IBM Licensed Patents, U.S. Patent Nos. 4,258,418 and 5,491,804. The
parties have agreed to have this dispute adjudicated in an Alternate Dispute
Resolution (ADR) proceeding in accordance with the terms of the Dispute
Resolution Agreement attached hereto as Exhibit 2.
SECTION 3. RELEASES
3.1 Each party (as "Releasor") on behalf of itself and its Subsidiaries
which are Subsidiaries as of January 1, 2000 ("Release Date"), irrevocably
releases the other party, its Subsidiaries which are Subsidiaries as of the
Release Date from any and all claims of infringement of Releasor's patents
which claims are based on acts prior to the Release Date. Such release shall
be under all Releasor's patents, whether or not such patents are Licensed
Patents and including the patents that were brought to each party's attention
during the period between January 1, 1996 and the Release Date. Such release
shall extend to customers of the other party for acts which would have been
licensed had the products purchased from such other party prior to the
Release Date been licensed under the Releasor's patents.
The release contained herein shall not apply to any person other than the
persons named in this Section 3 and shall not apply to the manufacture of any
items by any person other than the parties and their Subsidiaries. The
release granted by ADAPTEC to IBM is
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effective as of the Effective Date. The release granted by IBM to ADAPTEC
shall become effective upon receipt of payment specified in Section 4.1.1.
SECTION 4. PAYMENT
4.1 As additional consideration for the license, release and other rights
granted by IBM herein, ADAPTEC shall pay to IBM the sum of eleven million US
dollars ($11,000,000.00), no portion of which is refundable, but which shall
be paid in installments as follows:
4.1.1 three million six hundred thousand dollars ($3,600,000.00) within
30 days of the signing of this Agreement;
4.1.2 one million eight hundred fifty thousand dollars ($1,850,000.00) on
or before April 30, 2001;
4.1.3 one million eight hundred fifty thousand dollars ($1,850,000.00) on
or before April 30, 2002;
4.1.4 one million eight hundred fifty thousand dollars ($1,850,000.00) on
or before April 30, 2003.
4.1.5 one million eight hundred fifty thousand dollars ($1,850,000.00) on
or before April 30, 2004.
4.2 If the Adjudicator in the ADR proceeding provided for in Section 2.9
finds that ADAPTEC infringes at least one claim of only one (1) IBM Licensed
Patent involved in the ADR proceeding, then the payment that ADAPTEC must
make to IBM under Section 4.1 shall be increased by seven million dollars
($7,000,000.00) by increasing the installments as follows:
4.2.1 the payment under Section 4.1.2 shall be increased by the additional
amount of one million seven hundred fifty thousand dollars
($1,750,000.00);
4.2.2 the payment under Section 4.1.3 shall be increased by the additional
amount of one million seven hundred fifty thousand dollars
($1,750,000.00); and,
4.2.3 the payment under section 4.1.4 shall be increased by the additional
amount of one million seven hundred fifty thousand dollars
($1,750,000.00).
4.2.4 the payment under Section 4.1.5 shall be increased by the additional
amount of one million seven hundred fifty thousand dollars
($1,750,000.00).
4.3 If the Adjudicator finds that ADAPTEC product(s) infringe at least one
claim of each of the two (2) IBM Licensed Patents involved in the ADR
proceeding, then the payment under Section 4.1 shall be increased by fourteen
million dollars ($14,000,000.00) by increasing the installments as follows:
4.3.1 the payment under Section 4.1.2 shall be increased by the additional
amount of three million five hundred thousand dollars
($3,500,000.00);
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4.3.2 the payment under Section 4.1.3 shall be increased by the additional
amount of three million five hundred thousand dollars
($3,500,000.00);
4.3.3 the payment under section 4.1.4 shall be increased by the additional
amount of three million five hundred thousand dollars
($3,500,000.00); and,
4.3.4 the payment under section 4.1.5 shall be increased by the additional
amount of three million five hundred thousand dollars
($3,500,000.00).
4.4 If the Adjudicator finds that no ADAPTEC product infringe a claim of
either of the two (2) IBM Licensed Patents in the ADR proceeding, then no
further payments beyond the payments under Section 4.1 shall be required
under this Agreement.
4.5 The payments specified in Sections 4.1, 4.2 and 4.3 are based on a
projected cumulative gross revenue less than or equal to six billion U.S.
dollars ($6,000,000,000.00) (such amount to be referred to as the "Revenue
Cap") during the period commencing with the Release Date to and including
June 30, 2004 (the "Period"), from the sale, lease or other transfer by
ADAPTEC of ADAPTEC products.
If ADAPTEC's actual cumulative gross revenue exceeds the Revenue Cap during
the Period, ADAPTEC's sale or other transfer of Licensed Products shall be
unlicensed hereunder to the extent that such revenue exceeds the Revenue Cap
("Unlicensed Revenue"). In such event, the parties shall negotiate a new
agreement taking into account the Unlicensed Revenue of ADAPTEC during the
Period.
4.6 ADAPTEC shall be liable for interest on any overdue payment required to
be made pursuant to Section 4, commencing on the date such payment becomes
due, at an annual rate which is the greater of ten percent (10%) or one
percentage point higher than the prime interest rate as quoted by the head
office of Citibank N.A., New York, at the close of banking on such date, or
on the first business day thereafter if such date falls on a non-business
day. If such interest rate exceeds the maximum legal rate in the jurisdiction
where a claim therefore is being asserted, the interest rate shall be reduced
to such maximum legal rate.
SECTION 5. TERM OF AGREEMENT; ACQUISITION OF A PARTY
5.1 The term of the licenses granted under this Agreement shall be from the
Effective Date until July 1, 2004, unless earlier terminated under the
provisions of this Agreement.
5.2 IBM shall have the right to terminate the license and any other rights
granted to ADAPTEC granted under this Agreement if ADAPTEC fails at any time
to make any payment required herein,
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and if ADAPTEC does not cure such failure (including the payment of any
interest) within sixty (60) days after written notice from IBM to ADAPTEC
specifying the nature of such failure.
5.3 If one party (the "Acquired Party") is acquired by a third party:
(a) the Acquired Party shall promptly give notice of such acquisition to
the other party; and
(b) the Acquired Party shall be entitled to continue operating under this
Agreement by continuing to make any outstanding payments to the other
party as they become due. Such continuing license shall be limited in
the twelve (12) months immediately following such acquisition to a
volume of licensed products having an aggregate selling price equal to
no more than the aggregate selling price of such products by said
Acquired Party in the twelve (12) months preceding such acquisition
plus fifteen percent (15%); and shall be limited, in each of the
subsequent years following such acquisition during the term of the
Agreement, to a volume of Licensed Products having an aggregate
selling price equal to no more than the limit for the immediately
preceding twelve month period plus fifteen percent (15%).
SECTION 6. MEANS OF PAYMENT AND COMMUNICATION
6.1 Payment shall be made by electronic funds transfer. Payments shall be
deemed to be made on the date credited to the following account:
IBM, Director of Licensing
The Bank of New York
0 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Xxxxxx Xxxxxx of America
Credit Account No. 000-0000-000
ABA No. 0000-0000-0
6.2 Notices and other communications shall be sent by facsimile or by
registered or certified mail to the following addresses and shall be
effective upon mailing:
For IBM: For ADAPTEC:
Director of Licensing General Counsel
IBM Corporation Adaptec, Inc.
North Castle Drive 691 S. Milpitas Blvd.
Armonk, New York 10504-1785 Xxxxxxxx, Xxxxxxxxxx 00000
Facsimile: (000) 000-0000 Facsimile: (000) 000-0000
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SECTION 7. MISCELLANEOUS
7.1 Neither party shall assign or grant any right under any of its Licensed
Patents that may affect the other party's rights under this Agreement unless
such assignment or grant is made subject to the terms of this Agreement.
7.2 Subject to the provisions of Section 5.3, neither party shall assign any
of its rights (other than the right to receive payments) or delegate any of
its obligations under this Agreement. Any attempt to do so shall be void.
However, a party which undergoes reorganization may assign such rights and
delegate such obligations to its legal successor, provided that after the
reorganization, the successor and its Subsidiaries will have essentially the
same assets as such party and its Subsidiaries had prior to the
reorganization.
7.3 Neither party shall use or refer to this Agreement or any of its
provisions in any promotional activity.
7.4 Each party represents and warrants that it has the full right and power
to grant the license and release set forth in Sections 2 and 3. ADAPTEC
further represents and warrants that to the best of its knowledge prior to
the execution of this Agreement, it has informed the other party of any
patent originating from inventions made by its employees or its
Subsidiaries, which patent is now owned by ADAPTEC or its subsidiaries and
which patent, owing to prior arrangements with third parties, does not
qualify as an ADAPTEC Licensed Patent under which licenses are granted in
Section 2. Neither party makes any other representation or warranty, express
or implied, nor shall either party have any liability in respect of any
infringement of patents or other rights of third parties due to the other
party's operation under the license herein granted.
7.5 Nothing contained in this Agreement shall be construed as conferring any
rights by implication, estoppel or otherwise, under any non-patent
intellectual property right, or any patents or patent applications, other
than the Licensed Patents. Neither party is required hereunder to furnish or
disclose to the other any technical or other information (including copies of
Licensed Patents) except as specifically provided herein.
7.6 Neither party shall have any obligation hereunder to institute any
action or suit against third parties for infringement of any of its Licensed
Patents or to defend any action or suit brought by a third party which
challenges or concerns the validity of any of its Licensed Patents. Neither
party shall have any right to institute any action or suit against third
parties for infringement of any of the other party's Licensed Patents.
Neither party, nor any of its Subsidiaries, is required to file
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any patent application, or to secure any patent or patent rights, or to
maintain any patent in force.
7.7 Each party shall, upon a request from the other party sufficiently
identifying any patent or patent application, inform the other party as to
the extent to which said patent or patent application is subject to the
licenses and other rights granted hereunder. If such licenses or other rights
under said patent or patent application are restricted in scope, copies of
all pertinent provisions of any contract or other arrangement creating such
restrictions shall, upon request, be furnished to the party making such
request, unless such disclosure is prevented by such contract, and in such
event, a statement of the nature of such restriction shall be provided.
7.8 If a third party has the right to grant licenses under a patent to a
party hereto (as a "Licensee") with the consent of the other party hereto,
said other party shall provide said third party with any consent required to
enable said third party to license said Licensee on whatever terms such third
party may deem appropriate. Each party hereby waives any right it may have to
receive royalties or other consideration from said third party as a result of
said third party's so licensing said Licensee within the scope of the
licenses granted under Section 2 of this Agreement.
7.9 This Agreement shall not be binding upon the parties until it has been
signed herein below by or on behalf of each party. No amendment or
modification hereof shall be valid or binding upon the parties unless made in
writing and signed as aforesaid, except that IBM may amend Section 6.1 and
either party may amend its address in Section 6.2 by written notice to the
other party.
7.10 If any section of this Agreement is found by competent authority to be
invalid, illegal or unenforceable in any respect for any reason, the
validity, legality and enforceability of such section in every other respect
and the remainder of this Agreement shall continue in effect so long as the
Agreement still expresses the intent of the parties. However, if the intent
of the parties cannot be preserved, this Agreement shall be either
renegotiated or terminated.
7.11 This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the law of the State
of New York, USA, as such law applies to contracts signed and fully performed
in New York.
7.12 The headings of sections are inserted for convenience of reference only
and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
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7.13 Until July 1, 2004, each party agrees not to disclose this Agreement or
any information provided to either party pursuant to any provision of the
Agreement (including, but not limited to disclosures made under Section 7.7)
to any third party (other than its Subsidiaries) without the prior written
consent of the other party. This obligation is subject to the following
exceptions:
(a) disclosure is permissible if required by government or court order,
provided the party required to disclose first gives the other prior written
notice to enable it to seek a protective order;
(b) disclosure is permissible if otherwise required by law in the disclosing
party's reasonable judgment;
(c) disclosure is permissible if required to enforce rights under this
Agreement;
(d) each party may use similar terms and conditions in other agreements; and
(e) each party may disclose this Agreement or its contents to the extent
reasonably necessary, on a confidential basis, to its accountants,
attorneys, financial advisors, its present or future providers of venture
capital and/or potential investors in or acquirers of such party or product
lines which qualify under Section 2.7 and 5.3 except for the Agreement's
payment provisions.
The nondisclosure obligation shall be satisfied by a party if it treats this
Agreement in the same manner as it treats its other similar confidential
contracts.
7.14 The patent license agreement dated as of January 1, 1985 between IBM and
ADAPTEC is terminated on the Effective Date of this Agreement.
This Agreement and its Exhibits embody the entire understanding of the
parties with respect to the Licensed Patents, and replaces any prior oral or
written communications between them.
AGREED TO: AGREED TO:
ADAPTEC, INC. INTERNATIONAL BUSINESS
MACHINES CORPORATION
By:/s/ XXXXXX X. XXXXXXXX By:/s/ XXXXXX XXXXXXXXX
------------------------------ ----------------------------
Name: Xxxxxx X. Xxxxxxxx Xxxxxx Xxxxxxxxx
Title: President & CEO Vice President
May 8, 2000
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EXHIBIT 1
"IBM Licensed Patents" shall mean the following patents and all patents which
are reissues, divisions, continuations, continuations in part, foreign
counterparts or reexamined patents or extensions of any of the following
patents:
Patent Number
4,373,181
4,965,772
4,970,678
5,491,804
4,814,746
4,486,739
4,953,209
4,586,035
5,572,659
4,258,418
4,761,785
5,278,838
5,285,327
5,373,512
4,218,742
4,256,514
4,366,613
4,492,717
5,071,714
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EXHIBIT 2 March 29, 2000
DISPUTE RESOLUTION AGREEMENT
AGREEMENT made MAY 8, 2000 between IBM Corporation
---------------------------------
("IBM") and Adaptec, Inc. ("Adaptec").
A patent infringement dispute has arisen between the parties. The parties
wish to have the dispute adjudicated in an Alternative Dispute Resolution
(ADR) proceeding, as described in this Agreement.
Accordingly, the parties agree as follows:
1. THE DISPUTE
1.1 ISSUES. The issues relate to infringement by Adaptec of three claims
of U.S. Patent Numbers 4,258,418 ("the '418 patent") and 5,491,804 ("the '804
patent") ("the Patents"). Claim 43 of the '804 patent and claims 1 and 16 of
the '418 patent are the only claims that IBM is asserting against Adaptec and
are collectively referred to as "Claims."
1.2 APPLICABILITY OF LAW. The proceeding is an arbitration pursuant to
35 U.S.C. Section 294, to the extent applicable, and the decisions of the
Adjudicator are to be made in accordance with U.S. Patent Law.
1.3 INVALIDITY AND DOCTRINE OF EQUIVALENTS. Adaptec agrees not to assert
any defenses that the Patents involved in this arbitration are invalid. This
arbitration shall be solely based upon infringement of the Patents. The prior
art and validity under 35 U.S.C. Section 112 may be asserted by Adaptec only
as required so that the Adjudicator may properly construe the claims. IBM
agrees to assert only literal infringement and not infringement under the
doctrine of equivalents.
1.4 APPLICABILITY OF ARBITRATION ACT. The proceeding is an arbitration
pursuant to the United States Arbitration Act, 9 U.S.C. Section 1-14.
1.5 POWERS OF ADJUDICATOR. The Adjudicator shall have all powers granted
to arbitrators pursuant to the applicable arbitration law for the purpose of
deciding the issues submitted for decision and in accordance with the terms
of this Dispute Resolution Agreement. Any dispute which may arise under or
relating to this agreement shall be submitted to the Adjudicator, whose
decision thereon shall be final and binding upon the parties.
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EXHIBIT 2 March 29, 2000
2. THE ADJUDICATOR
2.1 SINGLE ADJUDICATOR. The proceeding shall be conducted before a
single Adjudicator, selected by mutual agreement of the parties, who is a
reputable intellectual property attorney or retired judge with experience in
patents in relevant computer technology and having no conflicts of interest
with either of the parties or their attorneys, and who has agreed to serve
and whose compensation has been agreed upon by the parties.
2.2 SELECTION PROCEDURE. No later than 10 days from the date of this
agreement the parties will exchange suggested names for the Adjudicator.
Within 5 days following the name exchange, each party will determine whether
any name suggested by the other party is acceptable. If so, that person is
the Adjudicator. If the parties don't agree on an Adjudicator, as set forth
above, within 3 additional days from the initial name exchange, each party
will name its own nominator. The two nominators will meet immediately, and
within 10 days, agree upon and select an Adjudicator who meets the above
criteria.
2.3 EX-PARTE COMMUNICATION WITH ADJUDICATOR. Except as the parties may
otherwise agree, no party or anyone acting on its behalf shall have any
private or ex-parte communication with the Adjudicator after he has been
selected on any matter related to this proceeding.
2.4 ADJUDICATOR'S FEES. The fees and expenses for the Adjudicator shall
be divided equally between the parties. Each party shall bear its own costs
and attorney's and expert fees, if any.
3. INFORMATION EXCHANGE AND DISCOVERY
3.1 SELECTION OF ADAPTEC PRODUCT. Within 10 days of the selection of the
Adjudicator, Adaptec agrees to provide to IBM a list of all Adaptec products
having aggregate sales exceeding $10M per annum during the last 3 years that
are of the type against which IBM has been asserting infringement of the
Patents, along with data sheets therefor to the extent still available to
Adaptec. Within 10 days following Adaptec's submission, IBM will elect and
notify Adaptec which product(s) (and version, if applicable) ("the
Product(s)") against which it wishes to assert infringement of a Patent.
3.2 FURNISHING OF SCHEMATICS. Within 5 days of IBM's election of the
Product(s), Adaptec will provide IBM with detailed schematics of the
Product(s), samples of the Product(s), and all other relevant technical
information regarding the Product(s) available to Adaptec.
3.3 FACT DEPOSITIONS. If IBM needs additional help understanding
Adaptec's materials, it may take the depositions of Adaptec's appropriate
technical employees. If Adaptec needs information from the inventors of the
Patents or other technical employees of IBM relating to the inventions,
Adaptec may take the depositions of the inventors and/or the other technical
employees of IBM. Notwithstanding the aforementioned provisions in this
Section 3.3: (a)
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EXHIBIT 2 March 29, 2000
Adaptec may not depose IBM attorneys (in-house and outside attorneys), IBM
licensing negotiators, and those IBM employees, except for the inventors of
the Patents, that prepared any material relating to the Patents at the
request of an IBM attorney; and (b) IBM may not depose Adaptec attorneys
(in-house and outside attorneys), Adaptec licensing negotiators, and those
Adaptec employees, except for designers of the features of the Products
relevant to the Claims, that prepared any material relating to the Patents at
the request of an Adaptec attorney. The parties agree to cooperate to resolve
any disputes regarding who may be deposed in accordance with this Section
3.3, and if they cannot resolve the dispute among themselves, to submit such
disputes to the Adjudicator for immediate resolution. Depositions will begin
within 3 weeks after Adaptec has furnished the material in Section 3.2 (such
date shall hereinafter be called the "commencement date"). Each party will be
entitled to a maximum of 16 hours of fact depositions. Each party will try to
arrange its depositions on two consecutive days. All fact depositions shall
be completed within 6 weeks after the commencement date unless a delay is
unavoidable because a witness is not available.
3.4 EXPERT DEPOSITIONS. If either party desires to rely on expert
testimony, such party shall submit an expert report of a single expert not to
exceed 20 pages. IBM shall submit its report within 3 weeks following the
completion of the depositions in Section 3.3 and Adaptec shall submit its
report 3 weeks thereafter. Each party may take the deposition of the other
party's expert, who must be made available by the party using him or her
within 1 week of the submission of the expert report. Each such expert
deposition shall not exceed four hours in length and shall be subject to the
deposition limitations set forth in Section 3.5.
3.5 DEPOSITION LIMITATIONS. Depositions shall be limited to those for
which a party has a reasonable need, and shall be conducted in the San
Francisco Bay Area in the most expeditious and cost effective manner. If
witnesses (other than experts) are elsewhere, the party requesting the
testimony will defray the witness's travel expenses. Deposition requests are
to be communicated directly between the parties without involvement of the
Adjudicator except in the case of a disagreement. Each party will make
reasonable efforts to make requested witnesses available in the San Francisco
Bay Area. The Adjudicator shall resolve any disagreements, and his/her
decisions with respect to the scope, manner, place and timing of discovery
shall be final and binding. Objections at depositions are limited to
attorney-client privilege issues and are automatically reserved and may be
argued in the briefs and oral arguments (if any) of the parties. Federal
Rules of Civil Procedure shall apply with respect to instructions not to
answer questions in a deposition. The parties agree to cooperate to get
issues of instructions not to answer resolved immediately by a prompt
telephone call to the Adjudicator, who shall be empowered to rule over the
phone.
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EXHIBIT 2 March 29, 2000
3.6 DOCUMENT DISCOVERY: At any time after the Commencement Date, a party
may make not more than 2 document requests of the other party for the
discovery of a limited number of essential documents, and the documents shall
be provided within 2 weeks of receiving the request, or a sufficient reason
will be given why they are unavailable. Any documents upon which a party
intends to rely upon must be included with the briefs. After depositions,
counsel will meet to discuss the adequacy of the documents produced. Any
disputes shall be resolved by Adjudicator.
4. BRIEFS
4.1 GENERAL. All briefs and expert reports shall be submitted by next
day courier to the adversary party and to the Adjudicator. Briefs and expert
reports are to be letter size pages, double-spaced, using 12-point type.
There shall be two sets of briefs, a first set regarding each party's
proposed claim construction of the Claims, and a second set setting forth
each party's respective position regarding infringement or non-infringement
of the Claims by the Product(s). Either party may append exhibits or
attachments which shall not count in the page limit.
4.2 FIRST BRIEF OF THE FIRST SET. Within 2 weeks after the completion of
discovery, Adaptec shall submit its first brief, not to exceed 15 pages
setting forth its proposed construction of the Claim.
4.3 REPLY BRIEF. Within 2 weeks after the submission of Adaptec's first
brief, IBM shall submit its reply brief, not to exceed 20 pages.
4.4 REBUTTAL BRIEF. Within 1 week after the submission of IBM's reply
brief, Adaptec may, at its discretion, submit its rebuttal brief, not to
exceed 5 pages, or, in the alternative, inform the Adjudicator and IBM that
it elects not to do so.
4.5. CLAIM CONSTRUCTION DECISION. Within 2 weeks of the submittal of the
rebuttal brief (or election not to file one) on claim construction, the
Adjudicator will issue his or her ruling ("the Ruling") on the correct
construction of the Claims. The ruling shall be in letter form delivered to
the parties by facsimile.
4.6 FIRST BRIEF OF THE SECOND SET. Within 2 weeks after the Ruling, IBM
shall submit its first brief on infringement of the Claims by the Product(s),
not to exceed 20 pages.
4.7 REPLY BRIEF IN THE SECOND SET. Within 2 weeks after the submission
of IBM's first brief, Adaptec shall submit its reply brief, not to exceed 25
pages.
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EXHIBIT 2 March 29, 2000
4.8 REBUTTAL BRIEF OF SECOND SET. Within 1 week after the submission of
Adaptec's reply brief (the "Final Brief Date"), IBM may, at its discretion,
submit its rebuttal brief, not to exceed 5 pages, or, in the alternative,
inform the Adjudicator and Adaptec that it elects not to do so.
5. THE HEARING
5.1 HEARING REQUIREMENT. Within 2 weeks following the Final Brief Date,
the Adjudicator will inform the parties whether he or she believes a hearing
would be helpful to him or her, or whether he or she will render a decision
on the briefs. If the Adjudicator informs the parties that he or she is not
going to hold a hearing, then either party may, within one week after the
Adjudicator's decision not to hold a hearing, request a hearing and such
request shall be granted by the Adjudicator. The hearing shall commence on a
date and at a place in the San Francisco Bay Area to be fixed by the
Adjudicator upon consultation with the parties, no later than 3 weeks
following the Adjudicator's decision to hold one or either party's request
for a hearing. There shall be no live witnesses unless the Adjudicator
desires to hear live testimony from each party's expert, which he may so
request. Such testimony of each expert shall not exceed two hours in length,
1.5 hours for direct and rebuttal testimony and 0.5 hours for cross. The
entire hearing shall last no more than one day.
5.2 ADJUDICATOR PRESIDES. The Adjudicator shall preside at the hearing.
5.3 TYPE OF HEARING. Unless the parties' experts are requested by the
Adjudicator, the hearing will consist of the presentation of arguments by the
parties. Arguments by each party in the aggregate shall be limited to 2
hours, divided as each party desires.
5.4 ORDER OF PRESENTATIONS. The order of oral arguments shall be first
IBM's presentation, then Adaptec's presentation, and then IBM's rebuttal.
5.5 OATHS. The Adjudicator shall sign or otherwise take an oath of office.
6. THE AWARD
6.1 TIME AND FORM. Within 4 weeks after the Final Brief Date or within 4
weeks after the hearing if there is one, the Adjudicator shall complete and
sign Exhibit A and deliver copies to each party. If, for reasonable cause,
the Adjudicator cannot render his decision within this period, he may extend
the period by notifying the parties, but in no case beyond an additional 2
weeks. No written opinion is required, but the Adjudicator will explain his
or her decision to the parties. There shall be no judicial review or any
other appeal of the award, and the parties agree to be bound thereby.
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EXHIBIT 2 March 29, 2000
6.2 CONFIRMATION OF AWARD. Any party to this proceeding may apply to any
court having jurisdiction for an order confirming the award in accordance
with Section 9 of the United States Arbitration Act, 9 U.S.C., provided that
such application is made within three (3) months of the award.
6.3 JURISDICTION OF COURT. The parties agree to make themselves subject
to the jurisdiction of the U.S. District Court for the Northern District of
California solely for the purpose of enforcing any aspect of this agreement,
including without limitation, enforcement of any order, confirmation of the
award, and enforcement of the award.
7. CONFIDENTIALITY
7.1 CONFIDENTIAL INFORMATION. Any designated confidential material of a
party obtained in this proceeding shall permanently be maintained in
confidence by the attorneys, the Adjudicator, any technical consultants or
experts of the parties, and any employees of the parties who agree in writing
to use the information only for this proceeding and in any Federal Court
action pursuant to this proceeding. All materials shall be used only for
purposes of this proceeding. After completion, all materials shall be
returned to the party who produced them. All Adjudicator's rulings and Award
shall be kept in confidence by all the parties mentioned in this section 7.1.
The Adjudicator shall destroy all the materials provided to him by either
party as well as his notes relating to this proceeding within six months
after the close of any Federal Court proceeding which may result from this
proceeding.
8. MISCELLANEOUS
8.1 TIME EXTENSIONS. The parties may extend any period of time by mutual
agreement. The Adjudicator may extend any period of time for good cause
except the final deadline for issuance of the award.
8.2 DISAGREEMENTS BETWEEN THE PARTIES. All disagreements between the
parties shall be resolved by the Adjudicator, whose decision shall be final.
8.3 ACTIONS AGAINST ADJUDICATOR. The parties agree not to make any claim
against the Adjudicator based on any act or omission in his role as
Adjudicator in this proceeding.
8.4 FINALITY OF THE DECISION. The decision of the Adjudicator shall be
final and there shall be no appeal.
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EXHIBIT 2 March 29, 2000
8.5 NOTICES. In the absence of special circumstances, notices to the
parties should be directed to the following individuals:
ADAPTEC
Xxxxx X. Xxxxxxx
Fish & Xxxxxxxxxx
0000 Xxxx Xxxx Xxxx, Xxxxx 000
Xxxxx Xxxx, XX 00000
(000) 000-0000
Fax: (000) 000-0000
IBM
Xxxxx X. Xxxxxxxxx
Sughrue Mion Xxxx Macpeak & Seas
0000 Xx Xxxxxx Xxxx, Xxxxx 000
Xxxxx Xxxx, XX 00000
(000) 000-0000
Fax: (000) 000-0000
9. GOOD FAITH
9.1 CONTENT AND PURPOSE OF SUBMISSIONS. The parties expressly agree to
make only good faith, legally supportable and factually accurate submissions
to the Adjudicator. No submission to another party or to the Adjudicator
shall be interposed for any improper purpose, such as to harass or to cause
unnecessary delay or to needlessly increase in the cost of this adjudication.
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EXHIBIT 2 March 29, 2000
9.2 CODE OF PROFESSIONAL RESPONSIBILITY. Counsel for the parties agree
that the California Code of Professional Responsibility shall apply to this
proceeding.
IN WITNESS WHEREOF, the parties by their attorneys have executed this
Agreement as of the date first above written.
IBM
by /s/ Xxxxxx Xxxxxxxxx
------------------------------
Adaptec, Inc.
by /s/ Xxxxxx X. Xxxxxxxx
------------------------------
CONSENTED TO:
______________________
Adjudicator
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EXHIBIT 2 March 29, 2000
EXHIBIT A
DECISION
The Product(s)
Doesn't infringe claim 43 of the '804 patent
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Infringes claim 43 of the '804 patent
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Doesn't infringe either of the claims 1 or 16 of the '418 patent
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Infringes either claim 1 or claim 16 of the '418 patent
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Adjudicator
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