INTELLECTUAL PROPERTY AGREEMENT Between HARRIS CORPORATION and HARRIS STRATEX NETWORKS, INC.
EXHIBIT
10.4
Between
XXXXXX CORPORATION
and
XXXXXX STRATEX NETWORKS, INC.
Dated:
January 26, 2007
TABLE OF CONTENTS
ARTICLE 1 | DEFINITIONS |
1 | ||||
ARTICLE 2 | ASSIGNMENT
AND LICENSE BACK OF TRADE SECRETS |
1 | ||||
ARTICLE 3 | LICENSES TO TRADE SECRETS |
2 | ||||
ARTICLE 4 | PATENT ASSIGNMENT AND LICENSES |
3 | ||||
ARTICLE 5 | EXPORT CONTROL |
4 | ||||
ARTICLE 6 | TERM AND TERMINATION |
5 | ||||
ARTICLE 7 | ASSIGNABILITY |
6 | ||||
ARTICLE 8 | LICENSES TO SUBSIDIARIES AND IMPROVEMENTS |
6 | ||||
ARTICLE 9 | DISCLAIMER AND COVENANTS |
6 | ||||
ARTICLE 10 | GENERAL PROVISIONS |
9 | ||||
SCHEDULE A | CONTRIBUTED PATENTS |
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This
INTELLECTUAL PROPERTY AGREEMENT (this
“Agreement”), dated as of January 26,
2007,
is made by and between XXXXXX CORPORATION, a Delaware corporation (“Xxxxxx”), and XXXXXX
STRATEX NETWORKS, INC., a Delaware corporation (the “Company”).
RECITALS
WHEREAS, in connection with the combination of Xxxxxx’ Microwave Communications Division with
Stratex Networks, Inc., a Delaware corporation
(“Stratex”), Harris, the Company, Stratex,
and Stratex Merger Corp., a Delaware corporation and wholly owned
subsidiary of the Company,
have entered into an Amended and Restated Formation, Contribution and
Merger Agreement, dated as of December 18, 2006, as amended by
that certain letter agreement, dated January 26, 2007 (the “Formation Agreement”), among
the parties thereto, pursuant to which the Company was formed to acquire
Stratex pursuant to the Merger (as defined in the Formation Agreement) and to receive the
Contributed Assets (as defined in the Formation Agreement) from Xxxxxx in the Contribution
Transaction (as defined in the Formation Agreement), in each case on the terms and subject to the
conditions set forth in the Formation Agreement; and
WHEREAS, Harris and Stratex would not have entered into the Formation Agreement without the
undertakings contained in this Agreement and the execution and delivery of this Agreement is a
condition to closing under the Formation Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants in the Agreement
the parties agree as follows:
ARTICLE 1
DEFINITIONS
DEFINITIONS
1.01 Definitions. Unless otherwise defined in this Agreement, any term used but not
expressly defined in this Agreement shall have the meaning ascribed to such term in the Formation
Agreement. “Affiliate” shall have the meaning assigned to such term by Rule 405 under the
Securities Act; provided, however, that neither the Company nor any of its Subsidiaries
shall be deemed to be an Affiliate of Xxxxxx or any of its other Subsidiaries.
ARTICLE 2
ASSIGNMENT AND LICENSE BACK OF TRADE SECRETS
ASSIGNMENT AND LICENSE BACK OF TRADE SECRETS
2.01 Assignment of Contributed Trade Secrets. Subject to the licenses granted back to
Xxxxxx and its Subsidiaries pursuant to Section 2.02 and to any and all pre-existing
licenses granted by Xxxxxx or its Subsidiaries, Xxxxxx and its Subsidiaries hereby irrevocably
transfer and assign to the Company, all of their present worldwide right, title and interest in and
to the Trade Secrets included in the Contributed Intellectual Property together with all Copyrights
that are also Contributed Intellectual Property, along with all rights to xxx and recover for any
past infringements thereof (collectively, (“Contributed Trade Secrets”).
2.02 License Back to Xxxxxx and its Subsidiaries. In consideration for the transfer
and assignment of the Contributed Trade Secrets by Xxxxxx and its Subsidiaries to the Company
pursuant to Section 2.01, the Company grants to Xxxxxx and its Subsidiaries a personal,
nonexclusive, non-transferable (except as provided in Article 7), irrevocable (subject to
Article 6), worldwide, fully paid-up license to use, copy, execute and perform, and to
display and distribute (subject to confidentiality provisions at least as restrictive as those
contained in Section 9.02(c) and Section 9.02(d)), the Contributed Trade Secrets,
and to create, use, copy, execute and perform, and to display and distribute (subject to
confidentiality provisions at least as restrictive as those contained in Section 9.02(c)
and Section 9.02(d)), derivative works from the Contributed Trade Secrets.
2.03 Sublicenses of Contributed Trade Secrets. The grant to Xxxxxx and its
Subsidiaries from the Company in Section 2.02 shall include a personal, non-transferable
(except as provided in Article 7) and nonexclusive right to communicate portions of and
grant nonexclusive sublicenses (subject to confidentiality provisions at least as restrictive as
those contained in Section 9.02(c) and Section 9.02(d)) to such Contributed Trade
Secrets to customers, suppliers, sublicensees or other third parties as necessary with respect to
any products or services sold by Xxxxxx or its Subsidiaries now or in the future.
2.04 Delivery of Contributed Trade Secrets. In the event that any Contributed Trade
Secret is not already in the possession of the MCD Business or MCD Employees transferred to the
Company, Xxxxxx agrees to deliver to the Company, within a commercially reasonable amount of time,
any missing parts of the Contributed Trade Secrets, to the extent such Contributed Trade Secrets
are available and can be so transferred.
2.05 Retained Copies of Contributed Trade Secrets. To the knowledge of Xxxxxx, Xxxxxx
has attempted to retain adequate copies of the Contributed Trade Secrets. However, the parties
hereto recognize that the best or only available copy of certain Contributed Trade Secrets may
reside, prior to or after the Closing Date, within the MCD Business, and that Xxxxxx may require
certain access to or copies of the Contributed Trade Secrets.Accordingly, the Company agrees, upon
receiving a reasonable written request from Xxxxxx, to make a good faith effort to locate and
provide, to the extent such Contributed Trade Secret is available, within a commercially reasonable
amount of time after receipt of Xxxxxx’ or its Subsidiary’s written request, copies of all or any
portion of the Contributed Trade Secrets.
ARTICLE 3
LICENSES TO TRADE SECRETS
LICENSES TO TRADE SECRETS
3.01 Trade Secrets Licensed to the Company. Xxxxxx and its Subsidiaries grant to the
Company a fully paid-up, worldwide, irrevocable (subject to Article 6), non-transferable
(except as provided in Article 7) and nonexclusive (subject to Section 3.02)
license, subject to any and all pre-existing licenses granted by Xxxxxx, to use any Trade Secrets
owned by Xxxxxx that are not Contributed Trade Secrets, but are otherwise used in connection with
the design, development, repair, manufacture, use, sale, offer for sale, lease, importation or
other distribution of products or services of the MCD Business immediately prior to the Closing
together with all Copyrights (collectively, the “Licensed Trade Secrets”).
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3.02 Right to Sublicense Licensed Trade Secrets. Subject to any and all pre-existing
licenses granted by Xxxxxx or its Subsidiaries, Xxxxxx and its Subsidiaries grant to the Company a
personal, non-transferable (except as provided in Article 7) and nonexclusive right to
communicate portions of and grant nonexclusive sublicenses (subject to confidentiality provisions
at least as restrictive as those in Section 9) to the Licensed Trade Secrets in connection
with the operation of the MCD Business or any products or services sold by the Company now or in
the future to suppliers to the extent necessary to produce products or components for such products
for the Company and to customers to the extent necessary to permit such customers to use any
product or service produced or provided by the Company for its intended purpose. The Company may
not under any circumstances grant sublicenses of such rights in connection with a general licensing
program, for settlement purposes or other purposes not directly related to its own operations.
3.03 Retained Copies of Licensed Trade Secrets. To the knowledge of Xxxxxx, Xxxxxx
has attempted to retain adequate copies of the Licensed Trade Secrets. However, the parties
recognize that the best or only available copy of certain Licensed Trade Secrets may reside, after
the Closing Date, within the MCD Business or the businesses retained by Xxxxxx following the
Closing, and Xxxxxx or the Company may require certain access to or copies of the Licensed Trade
Secrets. Accordingly, the Company and Xxxxxx each agree, upon receiving a reasonable written
request from the other party, to make a good faith effort to locate and provide, to the extent such
Licensed Trade Secrets is available, within a commercially reasonable amount of time after receipt
of the other party’s written request, copies of all or any portion of the Licensed Trade Secrets
reasonably deemed necessary by such other party.
ARTICLE 4
PATENT ASSIGNMENT AND LICENSES
PATENT ASSIGNMENT AND LICENSES
4.01 Assignment of Contributed Patents. Subject to the licenses granted back to
Xxxxxx and its Subsidiaries pursuant to Section 4.03 and to any and all pre-existing
licenses granted by Xxxxxx or its Subsidiaries, Xxxxxx and its Subsidiaries hereby assign and
transfer to the Company all of their right, title and interest in and to the contributed patents
listed in Schedule A, along with all rights to xxx and recover for any past infringements
thereof (collectively, the “Contributed Patents”).
4.02 Patents Licensed to the Company. Xxxxxx and its Subsidiaries hereby grant to the
Company a personal, fully paid-up, worldwide, non-transferable (except as provided in Article
7), irrevocable (subject to Article 6) and nonexclusive license under the Licensed
Patents, subject to any and all pre-existing licenses granted by Xxxxxx or its Subsidiaries, to
make, have made, use, sell, offer to sell, lease, transfer, import, export or otherwise distribute
products or services of the Company now or in the future and to use and perform all processes and
methods claimed by the Licensed Patents. The licenses in this Section 4.02 include the
right to convey to any customer of the Company, with respect to any product which is sold or leased
by the Company to such customer, rights to use and resell such products as sold or leased by the
Company. “Licensed Patents” shall mean those Patents, other than Patents which are part of
the Contributed Intellectual Property (i.e., the “Contributed Patents”), which Xxxxxx or
its Subsidiaries own or control as of the Closing Date, which are used in the MCD Business
immediately prior to the Closing, and for which Xxxxxx or its Subsidiaries have the right to grant
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licenses hereunder without the payment of royalties (other than to an inventor thereof), loss
of rights or imposition of a penalty.
4.03 License Back to Xxxxxx and its Subsidiaries. The Company hereby grants to Xxxxxx
and its Subsidiaries a personal, fully paid-up, worldwide, non-transferable (except as provided in
Article 7), irrevocable (subject to Article 6) and nonexclusive license under the
Contributed Patents to make, have made, use, sell, offer to sell, lease, transfer, import, export
or otherwise distribute products or services sold by Xxxxxx or its Subsidiaries now or in the
future and to use and perform all processes and methods claimed by the Contributed Patents. The
licenses in this Section 4.03 include the right to convey to any customer of Xxxxxx or its
Subsidiaries, with respect to any product which is sold or leased by Xxxxxx and its Subsidiaries to
such customer, rights to use and resell such products as sold or leased by Xxxxxx and its
Subsidiaries now or in the future.
4.04 Term. The licenses granted under Section 4.02 and Section 4.03
shall extend until the applicable patent’s expiration or the expiration of as much of such term as
grantor has the right to grant unless otherwise terminated in accordance with the provisions of
this Agreement.
4.05 Right to Sublicense Licensed Patents. Subject to any and all pre-existing
licenses granted by Xxxxxx or its Subsidiaries, Xxxxxx and its Subsidiaries grant to the Company a
personal, non-transferable (except as provided in Article 7), irrevocable (subject to
Article 6) and nonexclusive right to grant nonexclusive sublicenses under the Licensed Patents in
connection with the operation of the MCD Business or any products or services sold by the Company
now or in the future to suppliers to the extent necessary to produce products or components for
such products for the Company and to customers to the extent necessary to permit such customers to
use any product or service produced or provided by the Company for its intended purpose. The
Company may not under any circumstances grant sublicenses of such rights in connection with a
general licensing program, for settlement purposes or other purposes not directly related to its
own operations.
4.06 No Sham. The “have made” rights granted hereunder to a party do not extend or
give rights to such party which would effectively create a sublicense to a third party for the
patents licensed hereunder and not for bona fide business purposes of the ordinary operations of
such party.
ARTICLE 5
EXPORT CONTROL
EXPORT CONTROL
5.01 The parties acknowledge that any information and software (including, but not limited to,
services and training) provided under this Agreement are subject to U.S. export laws and
regulations and export of such information and software must be authorized under those regulations.
Each party hereby assures the other that it will not without a license or license exception
authorized by the Bureau of Export Administration of the U.S. Department of Commerce, Xxxxxxxxxx,
X.X. 00000, Xxxxxx Xxxxxx of America, if required:
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(i) | export or release the information or software (including source code) obtained pursuant to this Agreement to a national of Country Groups D:1 or E:2 (15 C.F.R. Part 740, Supp. 1), Iran, Iraq, Sudan, or Syria; | ||
(ii) | export to Country Groups D:1 or E:2, or to Iran, Iraq, Sudan, or Syria, the direct product (including processes and services) of the information or software: or | ||
(iii) | if the direct product of the information is a complete plant or any major component of a plant, export to Country Groups D:1 or E:2, or to Iran, Iraq, Sudan, or Syria, the direct product of the plant or major component, |
subject to the U.S. export control laws and regulations applicable to such countries
changing over time so as to permit exports.
This assurance will be honored even after any termination of this Agreement or the Formation
Agreement.
ARTICLE 6
TERM AND TERMINATION
TERM AND TERMINATION
6.01 This Agreement and the licenses and rights granted herein shall be effective during the
term commencing on the Closing Date and shall continue in perpetuity, subject to the term of the
patent licenses granted in Article 4, unless terminated: (i) by mutual agreement between
the Parties; or (ii) pursuant to this Article 6.
6.02 Xxxxxx may terminate, immediately upon notice, any of the licenses granted by it
hereunder in the event that the Company breaches any of its obligations hereunder in any material
respect; provided, however, that if such breach is capable of being cured, the Company
shall have 45 days during which it may cure such breach and avoid termination.
6.03 The Company may terminate, immediately upon notice, any of the licenses granted by it
hereunder in the event that Xxxxxx breaches any of its obligations hereunder in any material
respect; provided, however, that if such breach is capable of being cured, Xxxxxx shall
have 45 days during which it may cure such breach and avoid termination.
6.04 Section 2.01, Section 2.04, Section 2.05, Section 3.03
(but only to the extent a party is otherwise entitled to use the Licensed Trade Secrets),
Section 4.01, Section 4.04, Section 5, this Section 6.04,
Article 9 and Article 10 shall survive and continue after any termination of this
Agreement and other rights and obligations of the parties which, by their nature would continue
beyond termination of this Agreement (e.g., licenses to customers with respect to products sold by
a party prior to any such termination), but the ability to continue using any of the trade secrets,
Copyrights, or patents licensed hereunder would terminate.
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ARTICLE 7
ASSIGNABILITY
ASSIGNABILITY
7.01 The Parties hereto have entered into this Agreement in contemplation of personal
performance, each by the other, and intend that the licenses and rights granted hereunder to a
party not be extended to entities other than such party or its Subsidiaries without the other
party’s express written consent which shall not be unreasonably withheld.
7.02 Notwithstanding Section 7.01, all of a party’s rights, title and interest in this
Agreement and any licenses and rights granted to it hereunder may be assigned or transferred to any
direct or indirect successor or transferee to all or substantially all of the business of such
party, which successor or transferee shall thereafter be deemed substituted for such party as the
party hereto, effective upon such transfer or assignment.
ARTICLE 8
LICENSES TO SUBSIDIARIES AND IMPROVEMENTS
LICENSES TO SUBSIDIARIES AND IMPROVEMENTS
8.01 The grant of each license hereunder includes the right to grant sublicenses within the
scope of such license to a party’s Subsidiaries for so long as they remain its Subsidiary. Any and
all licenses or sublicenses granted to Subsidiaries pursuant to this Agreement may be made
effective retroactively, but not prior to the Effective Date hereof, nor prior to the sublicensee’s
becoming a Subsidiary of such party.
8.02 Unless otherwise expressly provided for in this Agreement, no license to, or rights
under, any party’s patents, copyrights, trademarks, trade secrets, or any other intellectual
property rights, is either granted or implied by such party’s conveying any information to the
other party.
8.03 Except as otherwise expressly provided for in this Agreement, no rights are granted to a
party under any improvements or derivative works of the information disclosed in the Licensed Trade
Secrets or the Licensed Patents to the extent conceived by the other party after the Closing.
ARTICLE 9
DISCLAIMER AND COVENANTS
DISCLAIMER AND COVENANTS
9.01 THE TRADE SECRETS, SOFTWARE, PATENTS AND OTHER INFORMATION CONTRIBUTED OR LICENSED UNDER
THIS AGREEMENT ARE CONTRIBUTED OR LICENSED “AS IS” WITH ALL FAULTS, LATENT AND PATENT AND WITHOUT
ANY WARRANTY OF ANY TYPE. NEITHER PARTY NOR ITS SUBSIDIARIES MAKE ANY REPRESENTATIONS OR
WARRANTIES, EXPRESSED OR IMPLIED. BY WAY OF EXAMPLE, BUT NOT OF LIMITATION, NEITHER PARTY NOR ITS
SUBSIDIARIES MAKE ANY REPRESENTATIONS OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR
THAT THE USE OF THE TRADE SECRETS, SOFTWARE OR OTHER INFORMATION WILL NOT INFRINGE ANY PATENT OR
OTHER INTELLECTUAL PROPERTY RIGHT OF ANY THIRD PARTY AND IT SHALL BE THE SOLE RESPONSIBILITY OF THE
OTHER PARTY TO MAKE SUCH DETERMINATION AS IS NECESSARY WITH
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RESPECT TO THE ACQUISITION OF LICENSES UNDER PATENTS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF
THIRD PARTIES.
EXCEPT AS OTHERWISE PROVIDED IN THE FORMATION AGREEMENT, NONE OF XXXXXX AND ITS SUBSIDIARIES
SHALL BE HELD TO ANY LIABILITY WITH RESPECT TO ANY PATENT INFRINGEMENT OR ANY OTHER CLAIM MADE BY
THE COMPANY OR ANY THIRD PARTY ON ACCOUNT OF, OR ARISING FROM THE USE OF, THE TRADE SECRETS,
PATENTS, SOFTWARE OR OTHER INFORMATION CONTRIBUTED OR LICENSED HEREUNDER.
9.02 Xxxxxx and the Company agree:
(a) that the Company and its Subsidiaries will not, without Xxxxxx’ express written permission
or as provided herein or in the Formation Agreement and/or Ancillary Agreements, or as otherwise
agreed to in writing, (i) use in advertising, publicity, or otherwise any trade name, trademark,
trade device, service xxxx, symbol or any other identification or any abbreviation, contraction or
simulation thereof owned or used by Xxxxxx, or its Subsidiaries; provided, however, that
the Company and its Subsidiaries will not remove any Xxxxxx copyright or other notices from any
material provided to it pursuant to this Agreement under license, or (ii) represent, directly or
indirectly, that any product or service produced in whole or in part with the use of any of the
Contributed Trade Secrets or Licensed Patents is a product or service of Xxxxxx, or any of their
Subsidiaries;
(b) that except as otherwise expressly provided for in this Agreement, the Company and its
Subsidiaries will hold in confidence for Xxxxxx and its Subsidiaries all parts of the Licensed
Trade Secrets and any other Xxxxxx confidential information that the Company and its Subsidiaries’
personnel may unavoidably receive or have access to during the performance of this Agreement. The
Company and its Subsidiaries further agree that all such information shall remain the property of
Xxxxxx or its Subsidiaries and that neither the Company nor any of its Subsidiaries shall make any
disclosure of such information to anyone, except to employees, contractors and agents of the
Company and its Subsidiaries who have a need to know such information to give effect to and perform
this Agreement nor will the Company or any of its Subsidiaries make any use of such confidential
information except as permitted under this Agreement. The Company shall, and shall cause its
Subsidiaries to, appropriately notify all such employees, contractors and agents to whom any such
disclosure is made or who may receive disclosures directly from Xxxxxx that such disclosure is made
in confidence and shall be kept in confidence by them. The Company will be responsible for the
compliance of its employees, contractors and agents; and
(c) that except as otherwise expressly provided for in this Agreement, Xxxxxx and its
Subsidiaries will hold in confidence for the Company all parts of the Contributed Trade Secrets and
any other the Company confidential information that Xxxxxx and its Subsidiaries’ personnel may
unavoidably receive or have access to during the performance of this Agreement. Xxxxxx and its
Subsidiaries further agree that all such information shall remain the property of the Company and
that neither Xxxxxx nor any of its Subsidiaries shall make any disclosure of such information to
anyone, except to employees, contractors and agents of Xxxxxx and its Subsidiaries who have a need
to know such information to give effect to and perform this Agreement or to
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advise with respect to Xxxxxx’ investment in the Company, nor xxxx Xxxxxx or any of its
Subsidiaries make any use of such confidential information except as permitted under this
Agreement. Xxxxxx shall, and shall cause its Subsidiaries to, appropriately notify all such
employees, contractors and agents to whom any such disclosure is made or who may receive
disclosures directly from the Company that such disclosure is made in confidence and shall be kept
in confidence by them. Xxxxxx will be responsible for the compliance of its employees, contractors
and agents.
(d) The restrictions under this Section 9.02 on the use or disclosure of such
information shall not apply to such information:
(i) | which is independently developed by the receiving party without reference to the disclosing party’s information as established by sufficient and competent evidence or is lawfully received free of restriction from another source having the right to so furnish such information; | ||
(ii) | after it has become generally available to the public by acts not attributable to the receiving party or its employees, agents or contractors; | ||
(iii) | which at the time of disclosure to the receiving party was known to receiving party free of restriction and evidenced by sufficient and competent evidence in the receiving’s party possession; | ||
(iv) | which the disclosing party agrees in writing is free of such restrictions: | ||
(v) | which is inevitably disclosed by a sale of a product or performance of a service by a party in accordance with this Agreement; or | ||
(vi) | which is requested pursuant to a judicial or governmental request, requirement or order under law, provided that the receiving party provides the disclosing party with sufficient prior notice in order to contest such request, requirement or order or seek protective measures. |
Xxxxxx acknowledges that Sections 9.02(d)(i), (iii) and (iv) will not apply
with respect to the Contributed Trade Secrets by virtue of Xxxxxx, and its Subsidiaries, or
employees or contractors thereof having been involved with the design, manufacture, sale or
distribution of products of the Company.
9.03 Except for a party’s breach of Section 9.02, neither party or its Subsidiaries
will under any circumstance, whether as a result of breach of contract, breach of warranty, delay,
negligence, tort or otherwise, be liable to the other party or to any third party for any
consequential, incidental, special, punitive or exemplary damages and/or loss of profits, savings
or revenues of the other party or any third party arising out of this Agreement, whether or not the
applicable party or its Subsidiaries has been notified of the possibility or likelihood of such
damages.
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ARTICLE 10
GENERAL PROVISIONS
GENERAL PROVISIONS
10.01 Consideration. The consideration for the transfers, assignments and grant of
rights and licenses under this Agreement is provided hereunder and in the Formation Agreement.
10.02 Relationship Between Parties. Xxxxxx has no authority (express, implied or
apparent) to represent the Company as to any matters or to incur any obligations or liability on
behalf of the Company, and Xxxxxx shall not be, act as, purport to act as, or be deemed to be, the
agent, representative, employee or servant of the Company. The Company has no authority (express,
implied or apparent) to represent Xxxxxx as to any matters or to incur any obligations or liability
on behalf of Xxxxxx, and the Company shall not be, act as, purport to act as, or be deemed to be,
the agent, representative, employee or servant of Xxxxxx. No partnership, joint venture,
association, alliance, syndicate, or other entity, or fiduciary, employee/employer, principal/agent
or any relationship other than that of independent contractors is created hereby, expressly or by
implication.
10.03 Governing Law and Venue; Waiver of Jury Trial.
(a) THIS AGREEMENT SHALL BE DEEMED TO BE MADE IN AND IN ALL RESPECTS SHALL BE INTERPRETED,
CONSTRUED AND GOVERNED BY AND IN ACCORDANCE WITH THE LAW OF THE STATE OF DELAWARE WITHOUT REGARD TO
THE CONFLICT OF LAWS PRINCIPLES THEREOF. The parties hereby irrevocably submit to the jurisdiction
of the courts of the State of Delaware and the Federal courts of the United States of America
located in the State of Delaware solely in respect of the interpretation and enforcement of the
provisions of this Agreement and of the documents referred to in this Agreement, and in respect of
the transactions contemplated hereby, and hereby waive, and agree not to assert, as a defense in
any action, suit or proceeding for the interpretation or enforcement hereof or of any such
document, that it is not subject thereto or that such action, suit or proceeding may not be brought
or is not maintainable in said courts or that the venue thereof may not be appropriate or that this
Agreement or any such document may not be enforced in or by such courts, and the parties hereto
irrevocably agree that all claims with respect to such action or proceeding shall be heard and
determined in such a Delaware State or Federal court; provided, however, that
notwithstanding the foregoing each party agrees that any claim which primarily seeks injunctive
relief and related monetary claims that cannot be brought in any such Delaware State or Federal
court for jurisdiction reasons may be commenced, heard and determined in any other court having
proper jurisdiction over such claim. The parties hereby consent to and grant any such court
jurisdiction over the person of such parties and, to the extent permitted by law, over the subject
matter of such dispute and agree that mailing of process or other papers in connection with any
such action or proceeding in the manner provided in Section 10.07 or in such other manner
as may be permitted by law shall be valid and sufficient service thereof.
(b) EACH PARTY ACKNOWLEDGES AND AGREES THAT ANY CONTROVERSY WHICH MAY ARISE UNDER THIS
AGREEMENT IS LIKELY TO
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INVOLVE COMPLICATED AND DIFFICULT ISSUES, AND THEREFORE EACH SUCH PARTY HEREBY IRREVOCABLY AND
UNCONDITIONALLY WAIVES ANY RIGHT SUCH PARTY MAY HAVE TO A TRIAL BY JURY IN RESPECT OF ANY
LITIGATION DIRECTLY OR INDIRECTLY ARISING OUT OF OR RELATING TO THIS AGREEMENT, OR THE TRANSACTIONS
CONTEMPLATED BY THIS AGREEMENT. EACH PARTY CERTIFIES AND ACKNOWLEDGES THAT (I) NO REPRESENTATIVE,
AGENT OR ATTORNEY OF ANY OTHER PARTY HAS REPRESENTED, EXPRESSLY OR OTHERWISE, THAT SUCH OTHER PARTY
WOULD NOT, IN THE EVENT OF LITIGATION, SEEK TO ENFORCE THE FOREGOING WAIVER, (II) EACH PARTY
UNDERSTANDS AND HAS CONSIDERED THE IMPLICATIONS OF THIS WAIVER, (III) EACH PARTY MAKES THIS WAIVER
VOLUNTARILY, AND (IV) EACH PARTY HAS BEEN INDUCED TO ENTER INTO THIS AGREEMENT BY, AMONG OTHER
THINGS, THE MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION 10.03.
10.04 Severability. If any provision of this Agreement shall be held to be illegal,
invalid or unenforceable, that provision will be enforced to the maximum extent permissible so as
to effect the intent of the parties, and the validity, legality and enforceability of the remaining
provisions shall not in any way be affected or impaired thereby. If necessary to effect the intent
of the parties, the parties will negotiate in good faith to amend this Agreement to replace the
unenforceable language with enforceable language which as closely as possible reflects such intent.
10.05 Amendment; Waiver. This Agreement may be amended or any performance, term or
condition waived in whole or in part only by a writing signed by Persons authorized to so bind each
party (in the case of an amendment) or the waiving party (in the case of a waiver). No failure or
delay by any party to take any action with respect to a breach by another party of this Agreement
or a default by another party hereunder shall constitute a waiver of the former party’s right to
enforce any provision of this Agreement or to take action with respect to such breach or default or
any subsequent breach or default. Waiver by any party of any breach or failure to comply with any
provision of this Agreement by another party shall not be construed as, or constitute, a continuing
wavier of such provisions, or a waiver of any other breach of or failure to comply with any other
provisions of this Agreement.
10.06 Third-Party Beneficiaries. To the extent expressly provided herein: (i)
Subsidiaries of a party are intended third party beneficiaries of this Agreement, and (ii) each
party shall cause its Subsidiaries to perform the duties and obligations of such party contained in
this Agreement, if applicable. Except as expressly provided herein, this Agreement is intended to
be for the sole and exclusive benefit of the parties hereto and their respective permitted
successors and permitted assigns. Except as expressly provided herein, nothing contained in this
Agreement is intended or shall be construed to give any other Person any legal or equitable right,
remedy, or claim under or in respect to this Agreement or any provision herein contained.
10.07 Notices. Any notice, request, instruction or other document to be given
hereunder by any party to the other party shall be in writing and delivered personally or sent by
registered or certified mail or by overnight courier, postage prepaid, or by facsimile:
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if to Harris: Xxxxxx Corporation 0000 Xxxx XXXX Xxxx. Xxxxxxxxx, XX 00000 Attn: Xxxxx X. Xxxxxx fax: (000) 000-0000 with a copy to (which shall not constitute notice): Xxxxxx Corporation 0000 Xxxx XXXX Xxxx. Xxxxxxxxx, XX 00000 Attn: Xxxxx Xxxxxxx fax: (000) 000-0000 if to the Company: Xxxxxx Stratex Networks, Inc. Research Triangle Park 000 Xxxxx Xxxxx Xxxxxxxxxxx, XX 00000 Attn: General Counsel fax: (000) 000-0000 with a copy to (which shall not constitute notice): Xxxxxxx XxXxxxxxx LLP 0000 Xxxxxxxxxx Xxxxxx Xxxx Xxxx Xxxx, XX 00000 Attn: Xxxx Xxxxxx fax: (000) 000-0000 |
or to such other Persons or addresses as may be designated in writing by the party to receive such
notice as provided above. Any notice, request, instruction or other document given as provided
above shall be deemed given to the receiving party upon actual receipt, if delivered personally;
five (5) Business Days after deposit in the mail, if sent by registered or certified mail; upon
confirmation of successful transmission if sent by facsimile (provided that if given by facsimile
such notice, request, instruction or other document shall be followed up within one (1) Business
Day by dispatch pursuant to one of the other methods described herein); or on the next Business Day
after deposit with a nationally-recognized overnight courier, if sent by nationally-recognized
overnight courier.
10.08 Entire Agreement. This Agreement and any Schedules and Exhibits attached
hereto, together with the Formation Agreement, constitute the entire agreement between the parties
relating to the subject matter hereof and thereof and any and all prior arrangements,
representations, promises, understandings and conditions in connection with said matters and any
representations, promises or conditions not expressly incorporated herein or therein or expressly
made a part hereof or thereof shall not be binding upon any party.
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10.09 Headings. The headings in this Agreement are included for convenience of
reference only and shall not in any way limit or otherwise affect the meaning or interpretation of
this Agreement.
10.10 Counterparts. This Agreement may be executed in any number of counterparts,
each of which shall be deemed to be an original, but all of which, taken together, shall constitute
one and the same instrument.
10.11 Construction. The table of contents and headings herein are for convenience of
reference only, do not constitute part of this Agreement and shall not be deemed to limit or
otherwise affect any of the provisions hereof. The parties and their respective counsel have
participated jointly in negotiating and drafting this Agreement. In the event that an ambiguity or
a question of intent or interpretation arises, this Agreement shall be construed as if drafted
jointly by the parties, and no presumption or burden of proof shall arise favoring or disfavoring
any party by virtue of the authorship of any provision of this Agreement. The following provisions
shall be applied wherever appropriate herein: (a) “herein,” “hereby,” “hereunder,” “hereof” and
other equivalent words shall refer to this Agreement as an entirety and not solely to the
particular portion of this Agreement in which any such word is used; (b) all definitions set forth
herein shall be deemed applicable whether the words defined are used herein in the singular or the
plural; (c) wherever used herein, any pronoun or pronouns shall be deemed to include both the
singular and plural and to cover all genders; (d) all accounting terms not specifically defined
herein shall be construed in accordance with GAAP; (e) any references herein to a particular
Section, Article, Exhibit or Schedule means a Section or Article of, or an Exhibit or Schedule to,
this Agreement unless another agreement is specified; and (f) the Exhibits and Schedules attached
hereto are incorporated herein by reference and shall be considered part of this Agreement.
10.12 Management of Enforcement by the Company. Xxxxxx agrees that a majority of the
Class A Directors (as defined in the Investor Agreement) shall have the sole and exclusive right to
exercise and enforce any rights under this Agreement which the Company or any of its Subsidiaries
are entitled to enforce against Xxxxxx after the Closing. In addition, any amendment to or waiver
of the terms of this Agreement by the Company in accordance with Section 10.05 shall
require the approval of a majority of the Class A Directors.
10.13 Effectiveness. This Agreement shall become effective only when one or more
counterparts shall have been signed by each party and delivered to each other party.
10.14 Fees. In any action or proceeding related to or arising out of the enforcement
of, or defense against, any provision of this Agreement, the non-prevailing party in such action or
proceeding shall pay, and the prevailing party shall be entitled to, all reasonable out-of-pocket
costs and expenses (including reasonable attorneys’ fees) of the prevailing party incurred in
connection with such action or proceeding.
10.15 Force Majeure. Neither party hereto shall be liable in any matter for failure
or delay of performance of all or part of this Agreement (other than payment obligations), directly
or indirectly, owing to any acts of God; acts, orders, restrictions or interventions of any civil,
military or government authority; wars (declared or undeclared); hostilities; invasions;
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revolutions; rebellions; insurrections; terrorist acts; sabotages; embargoes; epidemics;
strikes or other labor disturbances; civil disturbances; riots; fires; floods; storms; explosions;
earthquakes; nuclear accidents; power or other utility failures; disruptions or other failures in
internet and/or other telecommunication lines, networks and backbones; delay in transportation;
loss or destruction of property; changes in Laws, or any other causes or circumstances, in each
case to the extent beyond the reasonable control of such party (each, a “Force Majeure
Event”). Upon the occurrence of a Force Majeure Event, the party whose performance is
prevented or delayed shall provide written notice to the other party, and the parties shall
promptly confer, in good faith, on what action may be taken to minimize the impact, on both
parties, of such Force Majeure Event.
10.16 Compliance with Law. Each party shall comply with applicable requirements of
Law applicable to its activities in connection with this Agreement (including, without limitation,
import and export control).
10.17 No Set-Off. The obligations of the parties under this Agreement shall not be
subject to set-off for non-performance or any monetary or non-monetary claim by any party or any of
their respective Affiliates under any other agreement between the parties or any of their
respective Affiliates.
10.18 Controlling Provisions. This Agreement shall prevail in the event of any
conflicting terms or legends, which may appear on documents, the Contributed Patents, Licensed
Patents, Contributed Trade Secrets or Licensed Trade Secrets hereunder, provided however,
that in the event of a conflict or inconsistency between the terms and conditions of this Agreement
and the Formation Agreement, the provisions of the Formation Agreement shall control.
10.19 Further Actions. Each party hereto agrees to execute, acknowledge and deliver
such further instruments, and to do all such other acts, as may be necessary or appropriate in
order to carry out the purposes and intent of this Agreement.
10.20 No Obligation. Except as otherwise agreed in this Agreement, in the Formation
Agreement, or in an Ancillary Agreement, Xxxxxx and the Company shall have no right or interest
whatsoever in any product of the other party whether such product is conceived or developed by the
other party, during or after the course of performance of this Agreement or the Formation Agreement
or any Ancillary Agreement. Nothing in this Agreement shall be construed to obligate the Company
or Xxxxxx to a specified level of effort in its promotion and marketing of any product.
[Signature pages Follow]
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IN WITNESS WHEREOF, the parties hereto have caused their duly authorized respective
representatives to execute this Agreement as of the date first set forth above.
XXXXXX CORPORATION |
||||
By: | /s/ R. Xxxx Xxxxxxxx | |||
Name: | R. Xxxx Xxxxxxxx | |||
Title: | Vice President, Corporate Technology and Development | |||
XXXXXX STRATEX NETWORKS, INC. |
||||
By: | /s/ Xxx X. Xxxxxxxx | |||
Name: | Xxx X. Xxxxxxxx | |||
Title: | Chief Executive Officer and President |
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SCHEDULE
A
CONTRIBUTED PATENTS
See Registered Patents identified in Section 7.2m(m) of the Xxxxxx Disclosure Letter*
CONTRIBUTED PATENTS
See Registered Patents identified in Section 7.2m(m) of the Xxxxxx Disclosure Letter*
* | As updated by the Formation Agreement pursuant to the letter agreement, dated January 26, 2007, among the parties thereto. |