Exhibit 10.35
INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT
This INTELLECTUAL PROPERTY CROSS LICENSE AGREEMENT (this "Agreement")
is made as of the 16th day of May, 1997 by and between Magellan International,
Inc. ("Magellan") and Xxxxxx Electronics Corporation ("Xxxxxx").
Recitals
WHEREAS, under an Agreement and Plan of Reorganization (the
"Reorganization Agreement") dated September 20, 1996, Xxxxxx Communications Inc.
agreed to contribute certain intellectual property assets of its Galaxy Business
(as defined in the Reorganization Agreement) to Magellan;
WHEREAS, pursuant to an Assurance Agreement entered into on even date
with the Reorganization Agreement, Xxxxxx and Magellan agreed to cross-license
certain intellectual property rights;
WHEREAS, this agreement is entered into by the parties on the Closing
Date (as defined in the Reorganization Agreement);
NOW, THEREFORE, for good and valuable consideration, the parties hereto
agree as follows:
DEFINITIONS
1.1 "HE Licensed Intellectual Property" means all domestic, foreign, common law,
registered and pending applications for patents, copyrights, trade secrets,
know-how, confidential information, computer programs (including source code),
documentation, engineering and technical drawings, processes, methodologies, and
technology (excluding any intellectual property owned and developed by the
Galaxy Business which was transferred to Magellan) of Xxxxxx and its Affiliates
(as defined in the Reorganization Agreement) that was used in the Galaxy
Business on or before Closing but not conveyed to Magellan pursuant to the
Reorganization Agreement.
1.2 "Galaxy Licensed Intellectual Property" means all Magellan owned domestic,
foreign, common law, registered and pending applications for patents,
copyrights, trade secrets, know-how, confidential information, computer programs
(including source code), documentation, engineering and technical drawings,
processes, methodologies, and technology that were conveyed to Magellan pursuant
to Section 1.1 of the Reorganization Agreement.
LICENSES
2.1 Xxxxxx and its Subsidiaries hereby grant Magellan and its successors a
nonexclusive, royalty-free, perpetual license to use any HE Licensed
Intellectual Property that was used in the Galaxy Business on or before the
Closing Date. Xxxxxx and its Subsidiaries further grant Magellan and its
successors the right to sublicense the HE Licensed Intellectual Property solely
to their customers in connection with the use of products or services purchased
from Magellan or its successors.
2.2 Magellan hereby grants to Xxxxxx and its Subsidiaries (as defined in the
Reorganization Agreement) and their successors a non-exclusive, royalty-free,
perpetual license to use any Galaxy Licensed Intellectual Property that was used
in the business of Xxxxxx or any of its Subsidiaries on or before the Closing
Date. Magellan further grants Xxxxxx and its Subsidiaries and their successors
the right to sublicense such Galaxy Licensed Intellectual Property solely to
their customers in connection with the use of products or services purchased
from Xxxxxx or its Subsidiaries or their successors.
ASSIGNMENT
3.1 In the event that Magellan transfers its business, or a portion of its
business, to a third party, Magellan may assign its rights under this Agreement
to such third party only to the extent that HE Licensed Intellectual Property is
used in the business being transferred by Magellan.
3.2 In the event that Xxxxxx or one of its Subsidiaries transfers its business,
or a portion of its business, to a third party, Xxxxxx may assign its rights
under this Agreement to such third party only to the extent that Magellan
Licensed Intellectual Property is used in the business being transferred by
Xxxxxx or its Subsidiary.
3.3 Except as provided for in Sections 3.1 and 3.2, neither party may assign any
of its rights under this Agreement without the prior written consent of the
other party.
DISCLAIMERS
4.1 XXXXXX AND ITS SUBSIDIARIES EXPRESSLY DISCLAIM ALL WARRANTIES, EXPRESS OR
IMPLIED, IN CONNECTION WITH THE HE LICENSED INTELLECTUAL PROPERTY AND THIS
AGREEMENT, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND AGAINST PATENT,
COPYRIGHT, SEMICONDUCTOR MASK WORK OR TRADEMARK INFRINGEMENT.
4.2 MAGELLAN AND ITS SUBSIDIARIES EXPRESSLY DISCLAIM ALL WARRANTIES, EXPRESS OR
IMPLIED, IN CONNECTION WITH THE GALAXY LICENSED INTELLECTUAL PROPERTY AND THIS
AGREEMENT, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND AGAINST PATENT,
COPYRIGHT, SEMICONDUCTOR MASK WORK OR TRADEMARK INFRINGEMENT.
4.3 Xxxxxx and its Subsidiaries and Affiliates shall have no liability arising
directly or indirectly from the use by Magellan and its Subsidiaries of the HE
Licensed Intellectual Property.
4.4 Magellan and its Subsidiaries and Affiliates shall have no liability arising
directly or indirectly from the use by Xxxxxx and its Subsidiaries of the Galaxy
Licensed Intellectual Property.
4.5 Xxxxxx shall indemnify, defend and hold harmless Magellan from all actions,
claims, liabilities and expenses, including reasonable attorneys' fees and
disbursements, arising out of or in connection with Xxxxxx' use of the Galaxy
Licensed Intellectual Property.
4.6 Magellan shall indemnify, defend and hold harmless Xxxxxx from all actions,
claims, liabilities and expenses, including reasonable attorneys' fees and
disbursements, arising out of or in connection with Magellan's use of the HE
Licensed Intellectual Property.
GENERAL PROVISIONS
5.1 This Agreement is deemed to be executed and delivered within the State of
California and shall be construed, interpreted and applied in accordance with
the laws of the State of California.
5.2 This Agreement sets forth the entire agreement and understanding between the
parties as to the subject matter of this Agreement and merges and supersedes all
prior discussions between them relative to such subject matter, and none of the
parties shall be bound by any conditions, definitions, warranties or
representations other than as expressly provided in this agreement or as duly
set forth or subsequent to the date hereof in writing and signed by a proper and
duly authorized officer of the party to be bound thereby.
5.3 This Agreement inures to the benefit of and is binding upon each party and
their respective Subsidiaries and Affiliates.
5.4 All notices, requests, approvals, consents and other communications required
or permitted under this Agreement shall be in writing and shall be sent by
telecopy to the telecopy number specified below. A copy of any such notice shall
also be sent by registered express air mail on the date such notice is
transmitted by telecopy to the address specified below:
In the case of Magellan to:
PanAmSat Corporation
Xxx Xxxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxxxxx 00000
Attention Xxxxx X. Xxxxxxxx
Senior Vice President and General Counsel
Telephone (000) 000-0000
Telecopy (000) 000-0000
In the case of Xxxxxx to:
Xxxxxx Electronics Corporation
0000 Xxxxxx Xxxxxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Attention: General Patent Counsel
Telephone: (000) 000-0000
Telecopy: (000) 000-0000
Either party may change its address or telecopy number for notification purposes
by giving the other party notice of the new address or telecopy number and the
date upon which it will become effective.
5.5 This Agreement may be executed in any number of counterparts, all of which
taken together shall constitute one single agreement between Xxxxxx and
Magellan.
5.6 The article and section headings are for reference and convenience only and
shall not be considered in the interpretation of this Agreement.
5.7 Unless otherwise specified in this Agreement, all consents, approvals,
acceptance or similar actions to be given by either party under this Agreement
shall be in writing and shall not be unreasonably withheld or delayed and each
party shall make only reasonable requests under this Agreement.
5.8 If any provision of this Agreement is held by a court of competent
jurisdiction to be contrary to law, then the remaining provisions of this
Agreement will remain in full force and effect.
5.9 No delay or omission by either party to exercise any right or power it has
under this Agreement shall impair or be construed as a waiver of such right or
power. A waiver by any party of any breach or covenant shall not be construed to
be a waiver of any succeeding breach or any other covenant. All waivers must be
in writing and signed by the party waiving its rights.
5.10 In the event of a conflict between this Agreement and any amendment the
terms of such amendment shall prevail.
5.11 No amendment to, or change, waiver or discharge of, any provision of this
Agreement shall be valid unless in writing and signed by an authorized
representative of the party against which such amendment, change, waiver or
discharge is sought to be enforced.
5.12 The terms of Section 4.1, Section 4.2, Section 4.5, Section 4.6, Section
5.1 and this Section 5.12 shall survive the expiration or termination of this
Agreement for any reason.
5.13 This Agreement shall be binding on each party and their respective
successors.
IN WITNESS WHEREOF, the parties have caused two (2) copies of this
agreement to be executed by their duly authorized officers as of the date first
specified above.
XXXXXX ELECTRONICS CORPORATION
By:/s/Xxxxxxx X. Xxxxx
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Xxxxxxx X. Xxxxx
Vice Chairman and Chief Financial Officer
MAGELLAN INTERNATIONAL,
INC., soon to be known as
PANAMSAT CORPORATION
By:/s/Xxxxxxx X. Xxxxxx
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Xxxxxxx X. Xxxxxx
Treasurer
