Lucent Technologies - Insightful Proprietary
================================================================================
ASSIGNMENT AND LICENSE AGREEMENT
BETWEEN
LUCENT TECHNOLOGIES INC.
AND
INSIGHTFUL CORPORATION
EFFECTIVE AS OF JANUARY 19, 2004
RELATING TO SOFTWARE PRODUCT (AS DEFINED HEREIN)
================================================================================
ASSIGNMENT AND LICENSE AGREEMENT
TABLE OF CONTENTS
Article I. . . . . . . . . . Definitions
Article II . . . . . . . . . Assignment and Licenses Of Software
Article III . . . . . . . . .Patent Licenses
Article IV . . . . . . . . . Payment
Article V . . . . . . . . . .Export Control
Article VI . . . . . . . . . Term And Termination
Article VII. . . . . . . . . Assignability
Article VIII . . . . . . . . Licenses To Related Companies And Improvements
Article IX. . . . . . . . . .Warranty, Disclaimer And Covenants
Article X. . . . . . . . . . General Provisions
Article XI. . . . . . . . . .Dispute Resolution
Article XII. . . . . . . . . Notices And Statements
Appendix A . . . . . . . . . Definitions
i
ASSIGNMENT AND LICENSE AGREEMENT
THIS ASSIGNMENT AND LICENSE AGREEMENT (this "Agreement") is made by and
between Lucent Technologies Inc., a Delaware corporation ("Lucent"), having an
office at 000 Xxxxxxxx Xxxxxx, Xxxxxx Xxxx, Xxx Xxxxxx 00000, and Insightful
Corporation, a Delaware corporation ("Buyer"), having an office at 0000 Xxxxxxxx
Xxxxxx Xxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxxxx 00000. Lucent and Buyer are
sometimes referred to herein individually as a "Party" and collectively as the
"Parties".
This Agreement shall be executed by all Parties and shall become effective
on January 19, 2004 (the "Effective Date");
RECITALS
A. WHEREAS, Lucent is the owner of certain right, title and interest in and
to the Software Product as defined in Exhibit A; and
B. WHEREAS, Lucent wishes to sell and assign, and Buyer wishes to purchase,
all of Lucent's copyright right, title and interest in and to the Software
Product (as defined herein) and Buyer wishes to obtain certain patent licenses
related to the Software Product as described herein.
NOW, THEREFORE, in consideration of the mutual agreements and covenants herein
contained and intending to be legally bound thereby, the Parties agree as
follows:
ARTICLE I
DEFINITIONS
1.01 Unless defined in the body of this Agreement, as used in this Agreement
any term in initial capital letters shall have the meaning ascribed in Appendix
A attached hereto.
ARTICLE II
ASSIGNMENT AND LICENSES OF SOFTWARE
2.01 Assignment of Software Product. Subject to receipt of the first payment
-------------------------------
set forth in Section 4.01 and to the licenses granted to Lucent, Lucent hereby
irrevocably transfers and assigns to Buyer all of Lucent's present worldwide
right, title and interest in and to (i) the Software Product, including all
copyright, trade secret and other intellectual property rights (other than
patent rights which are specifically set forth in Article III) which are
specific thereto; and (ii) if any, the name and xxxx "S" to the extent
protectible as a trademark or service xxxx (the "Xxxx"), together with all
associated goodwill. The transfer and assignment of the Software Product and the
Xxxx shall be subject to all
Prior Lucent Agreements. Upon request of Buyer, Lucent agrees to execute an
assignment of copyright and/or of trademark, which assignment(s) shall reflect
the terms and conditions herein. Buyer agrees not to assert any claim or bring
any suit or proceeding against any third party based on Buyer's intellectual
property rights in or ownership of Software Product relating to use by such
third party of any software, documentation or other material contributed by
Lucent, its Subsidiaries or any of its employees to the R or Omegahat Projects
prior to January 1, 2004.
2.02 License to Assigned Software. In partial consideration for the transfer
-----------------------------
and assignment of the Software Product by Lucent to Buyer, Buyer grants to
Lucent a personal, nonexclusive, nontransferable (except as provided in Article
VII), irrevocable (except as provided in Article VI), worldwide, fully paid-up
license to use, copy, perform or display the Software Product for internal use
and create, use, copy, perform or display derivative works (as defined by U.S.
copyright law) from the Software Product for internal use.
2.03 Additional Rights. In addition to the foregoing license to Lucent in
------------------
Section 2.02, it shall not be a breach of this Agreement or a violation of any
intellectual property right of Buyer if Lucent (including its employees, agents,
Subsidiaries and contractors), without copying any portion of Software Product,
develops software, which is (i) similar to Software Product, (ii) based on
information or descriptions that are either (A) available in the public domain
or (B) to which Lucent has rights other than through this Agreement, (iii)
provides similar or identical functionality as Software Product, (iv) written in
the S language and/or (v) has a similar or identical application program
interface as the Software Product. Subject to the restriction of Section 2.02
that the Software Product may only be used internally, Lucent shall not be
restricted in any way from licensing, selling, developing or exploiting any such
software.
2.04 Furnishing of Software Product. Buyer acknowledges and agrees that (i)
--------------------------------
it is already in possession of the Software Product and (ii) Lucent shall have
no obligations to furnish or deliver Software Product or any portions thereof.
ARTICLE III
PATENT LICENSES
3.01 Licensed Patents. Subject to the receipt of the first payment specified
-----------------
in Section 4.01, Lucent hereby grants to Buyer a personal, fully paid-up,
worldwide, non-transferable (except as provided in Article VII), irrevocable
(except as provided in Article VI), and nonexclusive license under the Licensed
Patents to make, have made, use, sell, offer to sell, lease and import Licensed
Products. The licenses in this Section include the right convey to any customer
of the Buyer, with respect to any Licensed Product which is sold or leased by
Buyer to such customer, rights to use and resell such Licensed Products as sold
or leased by Buyer (whether or not as part of a larger combination). This
license shall not be construed as a right to convey any rights under any patents
other than Licensed Patents to customers with respect to any invention which is
directed to (1) a combination of such Licensed Product (as sold or leased) with
any other product regardless of whether such other product is hardware, software
or another Licensed Product, (2) a method or process which is other than the
inherent use of such
2
Licensed Product itself (as sold or leased), or (3) any other product
manufactured (including associated testing) by or through the use of the
Licensed Product.
3.02 No Indirect Infringement License. Licenses granted herein to Buyer are
----------------------------------
not to be construed: (i) as consent by grantor to any act which may be performed
by the grantee, except to the extent impacted by a patent licensed herein to the
grantee or (ii) to include licenses to contributorily infringe any patent other
than a Licensed Patent or induce infringement under U.S. law or a foreign
equivalent thereof.
3.03 Term. The patent licenses granted herein under any patent shall
----
continue, unless otherwise terminated in accordance with this Agreement, for the
entire unexpired term of such patent, but if, upon commencement of the Effective
Date, the grantor has no rights, or less than full rights, with respect to any
of its patents included within the definitions hereunder, the license granted
herein under such patent shall be for as much of such term as, and to the
maximum extent that, the grantor has the right to grant.
3.04 No Sham. The "have made" rights granted hereunder to a Party shall not
--------
be exercised in a manner that the exercise of such have made rights is a sham to
sublicense the other Party's patents licensed hereunder to a third party and not
for bona fide business purposes of such Party.
ARTICLE IV
PAYMENT
4.01 Payments. In consideration for the assignment and licenses hereunder by
--------
Lucent to Buyer, Buyer shall pay to Lucent a sum of two million U.S. dollars
(U.S. $2,000,000.00) at the address specified in Section 4.05. For the
convenience of the Parties, Buyer has elected to pay such sum in two (2)
installments as follows:
------------------------------------------------------------------------
PAYMENT NUMBER AMOUNT DUE DATE
--------------------- ------------------ -----------------------------
1 $ 1,500,000.00 within five (5) business days
of the Effective Date hereof
--------------------- ------------------ -----------------------------
2 $ 500,000.00 Within one (1) year of the
Effective Date hereof
------------------------------------------------------------------------
In addition to the foregoing, to the extent Lucent or its Subsidiaries has any
payment, royalty or other monetary obligations to any third party as a result of
the grant of licenses under Licensed Patents in Article III, Buyer shall be
responsible for reimbursing Lucent or its Subsidiaries for such payment, royalty
or other monetary obligations.
4.02 No Refund. No refund, credit or other adjustment of payments hereunder
----------
shall be made by Lucent. Rights conferred by Section 4.01 shall not be affected
by any statement appearing on any check or other document, except to the extent
that any such right is expressly waived or surrendered by a Party having such
right and signing such statement.
3
4.03 Payment in U.S. Dollars. All payments under Section 4.01 shall be made
-------------------------
in United States dollars to Lucent at the address specified in Section 4.05. Any
conversion to United States dollars shall be at the prevailing rate for bank
cable transfers as quoted for the last day of such semiannual period by leading
United States banks in New York City dealing in the foreign exchange market.
4.04 Overdue Payments. Overdue payments hereunder shall be subject to a late
-----------------
payment charge calculated at an annual rate of three percentage points (3%) over
the prime rate or successive prime rates (as posted in New York City by leading
United States banks) during delinquency. If the amount of such charge exceeds
the maximum permitted by law, such charge shall be reduced to such maximum.
4.05 Payment Address. Payments by Buyer shall be made to Lucent at Lucent's
----------------
account. Payments may be made via wire transfers to the following address:
Lucent Technologies Inc., Account # 323861415, Chase Manhattan Bank, 0 Xxxxx
Xxxxx, Xxx Xxxx, XX 00000, Swift Code XXXXXX00, ABA Code 000000000.
Alternatively, payments made by check should be made payable to Lucent
Technologies Inc. and sent to: Lucent Technologies Inc., Bank of America, 0000
Xxxxxxxx Xxxx, Xxxxxxx Xxxx, XX 00000, Attn. Lock-Box 277078. Changes in such
address or account may be specified by written notice.
ARTICLE V
EXPORT CONTROL
5.01 (a) 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 any use or
transfer 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:
(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.
(b) This assurance will be honored even after any termination of this
Agreement.
4
ARTICLE VI
TERM AND TERMINATION
6.01 Term. This Agreement shall be effective during the term commencing on
----
the Effective Date hereof and shall continue, subject to the term of the patent
licenses granted in Article III, unless terminated (i) by mutual agreement
between the Parties; or (ii) pursuant to this Article VI. The Parties agree that
any breach other than as specified in Section 6.02 shall not be a basis for
termination of any rights or licenses granted hereunder but rather such breach
shall be resolved pursuant to Article XI.
6.02 Failure to Pay. If Buyer fails to make a payment called for in Article
----------------
IV, to the extent that any such failure is not attributable to any failure on
the part of the Seller to perform any of its obligations under this Agreement,
the Seller upon its election and in addition to any other remedies that it may
have, may at any time terminate the licenses (or any part thereof) granted under
this Agreement by not less than two (2) months written notice to the Buyer,
unless within the period of such notice such payment has been made or Buyer is
contesting in good faith its obligation to make such payment.
6.03 Survival. The rights and obligations of the Parties which, by their
--------
nature, would continue beyond termination of this Agreement shall survive and
continue after any termination of this Agreement. For example, the obligations
of the Parties under Sections 5.01 and 9.02, licenses to customers with respect
to products sold by a Party prior to any such termination, and in connection
with any termination under Section 6.02 licenses granted to the non-breaching
Party hereunder shall survive and continue.
ARTICLE VII
ASSIGNABILITY
7.01 No Assignability. 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's Subsidiaries without the other Party's express written
consent.
7.02 Successors. Notwithstanding Section 7.01, all of a Party's rights,
----------
title, obligations and interest in this Agreement and any licenses and rights
granted to it hereunder may be assigned to any direct or indirect successor to
all or a portion of the business of the Party or its Subsidiaries, which
successor shall thereafter be deemed substituted as the Party hereto, effective
upon such assignment.
ARTICLE VIII
LICENSES TO RELATED COMPANIES AND IMPROVEMENTS
8.01 Licenses to Subsidiaries. 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
5
Subsidiaries. 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 No Other Licenses. Unless otherwise specifically expressed in this
-------------------
Agreement, no license to, or right of a Party, under any of such Party's patent,
copyright, trademark, trade secret, or any other intellectual property right, is
either granted or implied.
8.03 Improvements. No rights are granted to a Party under any improvements or
------------
derivative works (as defined by U.S. copyright law) of the information disclosed
in Software Product or any patent licensed hereunder to the extent made by the
other Party after the Effective Date.
ARTICLE IX
WARRANTY, DISCLAIMER AND COVENANTS
9.01 (a) Lucent represents and warrants that it is the sole owner of all
copyright rights, title, and interest in and to the Software Product worldwide,
and that it has the right, without violation of any law or third party interest
or agreement, to enter into this Agreement and to make and grant the assignments
and licenses herein without any liens, claims or encumbrances.
(b) Lucent warrants that, to the knowledge of its Intellectual Property
Business (a business unit of Lucent which in the ordinary course of its business
should be apprised of infringements or misappropriations of Lucent intellectual
property and of any licenses granted under Lucent intellectual property), it has
received no written claim or written notice from any third party alleging that
any of the Software Product in their current form, or any uses thereof,
constitute infringements or misappropriations of any third-party intellectual
properties or rights.
(c) Lucent represents that, to the knowledge of its Intellectual
Property Business Lucent is not a party to a written license between Lucent and
any of its Subsidiaries with respect to the Software Product.
(d) EXCEPT AS OTHERWISE SET FORTH IN THIS ARTICLE IX, THE SOFTWARE,
PATENTS, TRADEMARKS OR OTHER INFORMATION ASSIGNED OR LICENSED UNDER THIS
AGREEMENT IS ASSIGNED OR LICENSED "AS IS" WITH ALL FAULTS, LATENT AND PATENT,
AND WITHOUT ANY WARRANTY OF ANY TYPE. LUCENT AND ITS SUBSIDIARIES MAKE NO
REPRESENTATIONS OR WARRANTIES, EXPRESSED OR IMPLIED. BY WAY OF EXAMPLE, BUT NOT
OF LIMITATION, LUCENT AND ITS SUBSIDIARIES MAKE NO REPRESENTATIONS OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR THAT THE USE OF THE
SOFTWARE, PATENTS, TRADEMARKS 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 BUYER
6
TO MAKE SUCH DETERMINATION AS IS NECESSARY WITH RESPECT TO THE ACQUISITION OF
LICENSES UNDER PATENTS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
(e) LIMITATION OF REMEDIES; DISCLAIMER. THE ENTIRE LIABILITY OF LUCENT
-----------------------------------
FOR BREACH OF THE WARRANTY OBLIGATIONS IN THIS SECTION 9.01 SHALL NOT EXCEED THE
AMOUNT PAID BY BUYER TO LUCENT HEREUNDER (NOT TO EXCEED TWO MILLION UNITED
STATES DOLLARS (U.S. $2,000,000.00)). EXCEPT AS OTHERWISE DESCRIBED HEREIN,
LUCENT AND ITS SUBSIDIARIES SHALL NOT BE HELD TO ANY LIABILITY WITH RESPECT TO
ANY PATENT INFRINGEMENT OR ANY OTHER CLAIM MADE BY BUYER OR ANY THIRD PARTY ON
ACCOUNT OF, OR ARISING FROM THE USE OF, SOFTWARE, PATENTS, TRADEMARKS OR OTHER
INFORMATION ASSIGNED OR LICENSED HEREUNDER.
9.02 Lucent and Buyer agree:
(a) that Buyer will not, without Lucent's express written permission or
as provided herein or in the Purchase Agreement, 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 Lucent or any
of its Subsidiaries, or (ii) represent, directly or indirectly, that any product
or service produced in whole or in part with the use of any of the Software
Product or patents licensed hereunder is a product or service of Lucent or any
of its Subsidiaries (other than truthful, factual and non-prominent statements
relating to the history of the development of the Software Product); and
(b) that except as otherwise expressly provided for in this Agreement,
Lucent will hold in confidence for Buyer all parts of the Software Product.
Lucent further agrees that Software Product shall remain the property of Buyer
and that Lucent shall not make any disclosure of such to anyone, except to
employees, contractors and agents of Lucent to whom such disclosure is necessary
to the use for which rights are granted hereunder.
(c) the restrictions under this Section 9.02 on the use or disclosure
of such information shall not apply to such information:
(i) which is publicly available as of the Effective Date;
(ii) which is independently developed by Lucent or is lawfully received
free of restriction from another source having the right to so furnish
such information; or
(iii) after it has become generally available to the public by acts not
attributable to Lucent or its employees, agents or contractors; or
(iv) which Buyer agrees in writing is free of such restrictions; or
7
(v) which is inevitably disclosed by licensed use of Software Product or a
Licensed Product; or
(vi) which is requested pursuant to a judicial or governmental request,
requirement or order under law, provided that Lucent provides buyer
with sufficient prior notice in order to contest such request,
requirement or order or seek protective measures.
9.03 No 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.
9.04 Buyer agrees to indemnify and save Lucent and its Subsidiaries harmless
from any claims or demand for personal injury or property damage (including
reasonable expense of litigation and settlement of such claims) by third persons
to the extent that such claims arise out of or in connection with the furnishing
or use of any information or software provided hereunder.
9.05 Lucent agrees to indemnify and save Buyer and its Subsidiaries harmless
from any claims or demand for personal injury or property damage (including
reasonable expense of litigation and settlement of such claims) by third persons
to the extent that such claims arise out of or in connection with the licenses
provided to Lucent hereunder.
9.06 The Party indemnified under section 9.04 or 9.05 shall promptly notify the
indemnifying Party of any third party claims and afford the indemnifying Party
the opportunity to control the defense and settlement thereof. The indemnifying
Party shall not be liable for admissions made or amounts paid or agreed to be
paid in settlement without the consent of the indemnifying Party.
ARTICLE X
GENERAL PROVISIONS
10.01 Consideration. The consideration, the sufficiency of which is acknowledged
-------------
by the Parties, for the transfers, assignments and grant of rights and licenses
under this Agreement is provided hereunder.
10.02 Agreement Prevails. This Agreement shall prevail in the event of any
-------------------
conflicting terms or legends, which may appear on documents, Software Product or
patents assigned or licensed hereunder.
10.03 Relationship Between Parties. Neither Party to this Agreement shall have
-----------------------------
the power to bind the other by any guarantee or representation that it may give,
or to incur any debts or liabilities in the name of or on behalf of the other
Party. The Parties acknowledge and agree that nothing contained in this
8
Agreement shall be deemed or construed to constitute or create between the
Parties hereto a partnership, association, joint venture or other agency.
10.04 Entire Agreement. This Agreement sets forth the entire agreement and
-----------------
understanding between the Parties as to the disposition, rights and licenses
with respect to the Software Product and merges all prior discussions between
them, and none of the Parties shall be bound by any conditions, definitions,
warranties, modifications, understandings or representations with respect to
such subject matter other than as expressly provided herein, or as duly set
forth on or subsequent to the Effective Date hereof in writing and signed by a
proper and duly authorized representative of the Party to be bound thereby.
10.05 Agreement Confidentiality. The terms, but not the existence, of this
--------------------------
Agreement shall be treated as confidential information by the Parties, and no
Party shall disclose such terms to any third party without the prior written
consent of the other Party; provided, however, that each Party may (i) represent
to third parties that such Party is licensed for the products and patents as
provided by this Agreement; and (ii) disclose this Agreement and its terms to
potential acquirers of, investors in or lenders to such Party (and to the
representatives of the parties in such a transaction), or in disclosures
reasonably necessary in connection with the divestiture of all or any portion of
a Party's respective businesses, provided such disclosure is made pursuant to a
written confidentiality agreement binding upon such potential acquirer, investor
or lender which contains confidentiality obligations which are no less
protective than at least the same degree of care the disclosing Party normally
exercises to protect its own proprietary information of a similar nature. In
addition, this Section 10.05 shall not prevent a Party from making disclosures
reasonably required by law or as required by a stock exchange.
10.06 Headings. Section and subsection headings contained in this Agreement are
--------
inserted for convenience of reference only, shall not be deemed to be a part of
this Agreement for any purpose, and shall not in any way define or affect the
meaning, construction or scope of any of the provisions hereof.
10.07 Further Actions. Each Party 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.
10.08 Governing Law. The Parties agree that this Agreement shall be governed by
-------------
and construed and interpreted in accordance with the laws of the State of New
York, excluding the choice of law rules thereof.
10.09 Force Majeure. A Party shall not lose any rights hereunder or be liable to
-------------
the other Party for damages or losses on account of failure of performance by
the defaulting Party if the failure is occasioned by government action, war,
fire, explosion, flood, strike, lockout, embargo, act of God, or other cause
beyond the reasonable control of the defaulting Party, provided that the Party
claiming force majeure has exerted commercially reasonable efforts to avoid or
remedy such force majeure.
10.10 Waiver. Except as specifically provided for herein, the waiver from time
------
to time by a Party of any of their rights or their failure to exercise any
remedy shall not operate or be construed as a
9
continuing waiver of the same or of any other of such Party's rights or remedies
provided in this Agreement.
10.11 Severability. If any term, covenant or condition of this Agreement or the
------------
application thereof to any Party or circumstances shall, to any extent, be held
to be invalid or unenforceable, then the remainder of this Agreement, or the
application of such term, covenant or condition to parties or circumstances
other than those as to which it is held invalid or unenforceable, shall not be
affected thereby and each term, covenant or condition of this Agreement shall be
valid and be enforced to the fullest extent permitted by law.
10.12 No Obligation. Except as otherwise agreed in this Agreement or in the
--------------
Settlement Agreement, the Parties 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 Settlement Agreement. Nothing in this Agreement shall be construed to
obligate any Party to a specified level of effort in its promotion and marketing
of any product.
10.13 Execution in Counterparts. This Agreement may be executed in any number of
-------------------------
counterparts, each of which shall be deemed an original (including facsimile
copies), but all of which together shall constitute one and the same instrument.
ARTICLE XI
DISPUTE RESOLUTION
11.01 Notice of default or breach shall be tendered in writing and the Party
receiving such notice shall have sixty (60) days from receipt of such notice to
cure the default or breach before invoking the balance of this section 11.01. If
after such period the default or breach remains uncured, the Parties agree:
(a) If a dispute arises out of or relates to this Agreement, or the breach,
termination or validity thereof, the Parties agree to submit the dispute to a
sole mediator selected by the Parties or, at any time at the option of a Party,
to mediation by the American Arbitration Association ("AAA"). If not thus
resolved, it shall be referred to a sole arbitrator selected by the Parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United States Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for or
against a Party and affording such remedy as is deemed equitable, just and
within the scope of the Agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or infringement) or a
statement of the reasoning on which the award rests; (iii) may in appropriate
circumstances (other than patent disputes) include injunctive relief; (iv) shall
be made within four (4) months of the appointment of the arbitrator; and (v) may
be entered in any court.
10
(c) The requirement for mediation and arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the arbitrator is
not empowered to act or make any award other than based solely on the rights and
obligations of the Parties prior to any such termination.
(d) The arbitrator shall determine issues of arbitrability but may not
limit, expand or otherwise modify the terms of the Agreement.
(e) The place of mediation and arbitration shall be New York City.
(f) Each Party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne equally.
(g) A request by a Party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive,
consequential, incidental, special, exemplary or other damages in excess of
compensatory damages and each Party irrevocably waives any claim thereto.
(i) Except as reasonably required by law or as required by a stock
exchange, the Parties, their representatives, other participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
ARTICLE XII
NOTICES AND STATEMENTS
12.01 Until further notice in writing, any notice or other communication
hereunder shall be deemed to be sufficiently given to the addressee and any
delivery hereunder deemed made when sent by certified mail to the addresses set
out below.
For Lucent: Contract Administrator
Intellectual Property Business
Lucent Technologies Inc.
00000 X.X. 00xx Xxxxxx, Xxxxx 000
Xxxxx Xxxxx, Xxxxxxx 00000
With Copy to: Lucent Technologies Inc.
Intellectual Property Law Department
000 Xxxxxxxx Xxxxxx
Xxxxxx Xxxx, Xxx Xxxxxx 00000
11
For Buyer: General Counsel
Insightful Corporation
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxxxx 000
Xxxxxxx, Xxxxxxxxxx 00000
With Copy to President
Insightful Corporation
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxxxx 000
Xxxxxxx, Xxxxxxxxxx 00000
12
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed
by its duly authorized representative on the respective dates entered below.
LUCENT TECHNOLOGIES INC.
By: /s/ Xxxxxxx Xxxxxx
-----------------------------------------------------------------
X. Xxxxxx
Managing Corporate Counsel
Date: 1/16/04
---------------------------------------------------------------
INSIGHTFUL CORPORATION
By: /s/ Xxxxxxx Xxxxxx
-----------------------------------------------------------------
X. Xxxxxx
President and CEO
Date: 1/19/04
---------------------------------------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES
13
APPENDIX A
DEFINITIONS
"Licensed Patents" means every patent anywhere in the world issued as of the
-------------------
Effective Date or which issues from an application having an effective first
filing date prior to the Effective Date under which Lucent or its Subsidiaries,
as of the Effective Date, has the right to grant (with or without thereby
generating any payment or other monetary obligation to any third party, but not
including instances wherein a non-monetary obligation by Lucent or its
Subsidiaries is generated, other than reporting and auditing obligations related
to monetary obligations) any licenses of the type herein granted by Lucent
(whether or not royalty-bearing), but only to the extent of such right, and but
for the licenses granted herein would be infringed by the execution of the
inherent functionality of Software Product.
"Licensed Products" means any product incorporating portions of Software Product
-------------------
or that is a derivative work (as defined by U.S. copyright law) of Software
Product.
"Prior Lucent Agreements" means all prior written agreements (or replacement
---------------------------
agreements thereof) between (on the one hand) Lucent, its predecessors
(including AT&T Corp. and AT&T's Subsidiaries) and/or Lucent's Subsidiaries, and
(on the other hand) one or more third parties (other than Lucent affiliates)
that have an effective date prior to the Effective Date of this Agreement.
"SLA" means the Software License Agreement, effective as of February 8, 1996,
-----
relating to Lucent's S Software, as amended by subsequent agreements, between
Lucent Technologies Inc. and Statistical Sciences, Inc.
"Software Product" shall have same meaning as in the SLA.
-----------------
"Subsidiary" of a company means a corporation or other legal entity (i) more
------------
than fifty percent (50%) of whose shares or other securities entitled to vote
for election of directors (or other managing authority) is now or hereafter
controlled by such company either directly or indirectly; or (ii) which does not
have outstanding shares or securities but more than fifty percent (50%) of whose
ownership interest representing the right to manage such corporation or other
legal entity is now or hereafter owned and controlled by such company either
directly or indirectly; but any such corporation or other legal entity shall be
deemed to be an Subsidiary of such company only as long as such control or
ownership and control exists.
14