<PAGE> 1
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON APRIL 3, 1996
REGISTRATION NO. 333-00703
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
------------------------
AMENDMENT NO. 4 TO
FORM S-1
REGISTRATION STATEMENT UNDER THE SECURITIES ACT OF 1933
------------------------
LUCENT TECHNOLOGIES INC.
(Exact name of registrant as specified in its charter)
<TABLE>
<S> <C> <C>
DELAWARE 3661 22-3408857
(State or other jurisdiction of (Primary Standard Industrial (I.R.S. Employer
incorporation or organization) Classification Code Number) Identification No.)
</TABLE>
600 MOUNTAIN AVENUE
MURRAY HILL, NJ 07974
(908) 582-8500
(Address, including zip code, and telephone number,
including area code, of registrant's principal executive offices)
RICHARD J. RAWSON
SENIOR VICE PRESIDENT & GENERAL COUNSEL
600 MOUNTAIN AVENUE
MURRAY HILL, NJ 07974
(908) 582-8500
(Name, address, including zip code, and telephone number,
including area code, of agent for service)
Copies to:
<TABLE>
<S> <C>
STEVEN A. ROSENBLUM CHARLES S. WHITMAN III
WACHTELL, LIPTON, ROSEN & KATZ DAVIS POLK & WARDWELL
51 WEST 52ND STREET 450 LEXINGTON AVENUE
NEW YORK, NY 10019 NEW YORK, NY 10020
</TABLE>
APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC:
As soon as practicable after this registration statement becomes effective.
If any of the securities being registered on this Form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933 check the following box. / /
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, please check the following box
and list the Securities Act registration statement number of the earlier
effective registration statement for the same offering. / /
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. / /
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. / /
THE COMPANY HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR DATES
AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL FILE
A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS REGISTRATION STATEMENT
SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(A) OF THE
SECURITIES ACT OF 1933 OR UNTIL THE REGISTRATION STATEMENT SHALL BECOME
EFFECTIVE ON SUCH DATE AS THE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(A),
MAY DETERMINE.
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- --------------------------------------------------------------------------------
<PAGE> 2
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION
The following table sets forth the various expenses in connection with the
sale and distribution of the securities being registered hereby, other than
underwriting discounts and commissions. All amounts are estimated except the
Securities and Exchange Commission (the "Commission") registration fee, the
National Association of Securities Dealers, Inc. ("NASD") registration fee and
the New York Stock Exchange listing fee.
<TABLE>
<CAPTION>
PAYABLE BY
THE REGISTRANT
--------------
<S> <C>
SEC registration fee............................................ $ 1,100,432
NASD registration fee........................................... 30,500
New York Stock Exchange listing fee............................. 455,600*
Blue Sky fees and expenses...................................... 20,000*
Accounting fees and expenses.................................... 2,800,000*
Legal fees and expenses......................................... 4,000,000*
Printing and engraving expenses................................. 3,500,000*
Miscellaneous fees and expenses................................. 93,468*
--------
Total................................................. $ 12,000,000*
</TABLE>
- ---------------
* Estimated.
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS
Section 145 of the Delaware General Corporation Law (the "DGCL") provides
that a corporation may indemnify directors and officers as well as other
employees and individuals against expenses (including attorneys' fees),
judgments, fines and amounts paid in settlement in connection with specified
actions, suits or proceedings, whether civil, criminal, administrative or
investigative (other than an action by or in the right of the corporation, a
"derivative action") if they acted in good faith and in a manner they reasonably
believed to be in or not opposed to the best interests of the corporation, and,
with respect to any criminal action or proceeding, if they had no reasonable
cause to believe their conduct was unlawful. A similar standard is applicable in
the case of derivative actions, except that indemnification only extends to
expenses (including attorneys' fees) incurred in connection with the defense or
settlement of such actions, and the statute requires court approval before there
can be any indemnification where the person seeking indemnification has been
found liable to the corporation. The statute provides that it is not exclusive
of other indemnification that may be granted by a corporation's bylaws,
disinterested director vote, stockholder vote, agreement or otherwise.
The Restated Certificate of Incorporation of the Company (the
"Certificate") provides that each person who was or is made a party or is
threatened to be made a party to or is involved in any action, suit or
proceeding, whether civil, criminal, administrative or investigative, by reason
of the fact that such person, or a person of whom such person is the legal
representative, is or was a director or officer of the Company or is or was
serving at the request of the Company as a director, officer, employee or agent
of another corporation or of a partnership, joint venture, trust or other
enterprise, including service with respect to employee benefit plans, whether
the basis of such proceeding is alleged action in an official capacity as a
director, officer, employee or agent or in any other capacity while serving as a
director, officer, employee or agent, will be indemnified and held harmless by
the Company to the fullest extent authorized by the DGCL, as the same exists or
may hereafter be amended (but, in the case of any such amendment, only to the
extent that such amendment permits the Company to provide broader
indemnification rights than said law permitted the Company to provide prior to
such amendment), against all expense, liability and loss reasonably incurred or
suffered by such person in connection therewith. Such right to indemnification
includes the right to have the Company pay the expenses incurred in defending
any such proceeding in advance of its final disposition, subject to the
II-1
<PAGE> 3
provisions of the DGCL. Such rights are not exclusive of any other right which
any person may have or thereafter acquire under any statute, provision of the
Certificate, By-Law, agreement, vote of stockholders or disinterested directors
or otherwise. No repeal or modification of such provision will in any way
diminish or adversely affect the rights of any director, officer, employee or
agent of the Company thereunder in respect of any occurrence or matter arising
prior to any such repeal or modification. The Certificate also specifically
authorizes the Company to maintain insurance and to grant similar
indemnification rights to employees or agents of the Company.
The DGCL permits a corporation to provide in its certificate of
incorporation that a director of the corporation shall not be personally liable
to the corporation or its stockholders for monetary damages for breach of
fiduciary duty as a director, except for liability for (i) any breach of the
director's duty of loyalty to the corporation or its stockholders, (ii) acts or
omissions not in good faith or which involve intentional misconduct or a knowing
violation of law, (iii) payments of unlawful dividends or unlawful stock
repurchases or redemptions, or (iv) any transaction from which the director
derived an improper personal benefit.
The Certificate provides that a director of the Company will not be
personally liable to the Company or its stockholders for monetary damages for
breach of fiduciary duty as a director, except, if required by the DGCL as
amended from time to time, for liability (i) for any breach of the director's
duty of loyalty to the Company or its stockholders, (ii) for acts or omissions
not in good faith or which involve intentional misconduct or a knowing violation
of law, (iii) under Section 174 of the DGCL, which concerns unlawful payments of
dividends, stock purchases or redemptions, or (iv) for any transaction from
which the director derived an improper personal benefit. Neither the amendment
nor repeal of such provision will eliminate or reduce the effect of such
provision in respect of any matter occurring, or any cause of action, suit or
claim that, but for such provision, would accrue or arise prior to such
amendment or repeal.
The Underwriting Agreements provide for indemnification by the Underwriters
of the registrant, its Directors and officers, and by the registrant of the
Underwriters, for certain liabilities, including liabilities arising under the
Act, and affords certain rights of contribution with respect thereto.
The Separation and Distribution Agreement by and among the Company, AT&T
Corp. ("AT&T") and NCR Corporation ("NCR") provides for indemnification by the
Company of AT&T and its directors, officers and employees for certain
liabilities, including liabilities under the Act.
ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES
Not applicable.
ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES
(a) Exhibits.
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
- ------ ------------------------------------------------------------------------------------
<C> <S>
1.1 Form of Underwriting Agreement.
3.1 Form of Restated Certificate of Incorporation of the Company.
3.2 Form of By-Laws of the Company.
4.1 Form of the Company's Common Stock certificate.
4.2 Form of Rights Agreement between the Company and First Chicago Trust Company of New
York, as Rights Agent, dated as of April 4, 1996.
5.1 Opinion of Richard J. Rawson re: legality of shares being registered.
5.2 Opinion of Wachtell, Lipton, Rosen & Katz re: legality of shares being registered.
10.1 Separation and Distribution Agreement by and among the Company, AT&T and NCR, dated
as of February 1, 1996 and amended and restated as of March 29, 1996.
10.2 Employee Benefits Agreement by and between AT&T and the Company, dated as of
February 1, 1996 and amended and restated as of March 29, 1996.
</TABLE>
II-2
<PAGE> 4
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
- ------ ------------------------------------------------------------------------------------
<C> <S>
10.3 General Purchase Agreement by and between AT&T and the Company, dated as of February
1, 1996 and amended and restated as of March 29, 1996.
10.4 Interim Services and Systems Replication Agreement by and among AT&T, the Company
and NCR, dated as of February 1, 1996.
10.5 Brand License Agreement by and between the Company and AT&T, dated as of February 1,
1996.
10.6 Tax Sharing Agreement by and among the Company, AT&T and NCR, dated as of February
1, 1996 and amended and restated as of March 29, 1996.
10.7 Patent License Agreement among AT&T, NCR and the Company, effective as of March 29,
1996.*
10.8 Amended and Restated Technology License Agreement among AT&T, NCR and the Company,
effective as of March 29, 1996.*
10.9 Form of Lucent Technologies Inc. 1996 Long Term Incentive Program.
10.10 Form of Lucent Technologies Inc. Deferred Compensation Plan for Non-Employee
Directors.
10.11 Form of Pension Plan for Non-Employee Directors of Lucent Technologies Inc.
10.12 Form of Lucent Technologies Inc. Stock Retainer Plan for Non-Employee Directors.
10.13 Form of Lucent Technologies Operating Agreement between the Company and AT&T Capital
Corporation, dated as of April , 1996.
10.14 Form of Lucent Technologies Inc. 1996 Employee Stock Purchase Plan.
21.1 Subsidiaries of the Company.
23.1 Consent of Coopers & Lybrand L.L.P.*
23.2 Consent of Richard J. Rawson (included in Exhibit 5.1).
23.3 Consent of Wachtell, Lipton, Rosen & Katz (included in Exhibit 5.2).
27.1 Financial Data Schedule.
99.1 Consent of Carla A. Hills to be named as a director nominee.
99.2 Consent of Drew Lewis to be named as a director nominee.
99.3 Consent of Richard A. McGinn to be named as a director nominee.
99.4 Consent of Donald S. Perkins to be named as a director nominee.
99.5 Consent of Henry B. Schacht to be named as a director nominee.
99.6 Consent of Franklin A. Thomas to be named as a director nominee.
99.7 Consent of Ephraim M. Brecher to be named as a director nominee.
99.8 Consent of Jim G. Kilpatric to be named as a director nominee.
99.9 Consent of Marc E. Manly to be named as a director nominee.
99.10 Consent of S. Lawrence Prendergast to be named as a director nominee.
99.11 Consent of Florence L. Walsh to be named as a director nominee.
99.12 Consent of Paul J. Wondrasch to be named as a director nominee.
</TABLE>
- ---------------
* Filed herewith. All other exhibits have been previously filed.
(b) Financial Statement Schedules.
The following financial statement schedules are filed herewith:
Schedule of Valuation and Qualifying Accounts.
Schedules not listed above have been omitted because the information
required to be set forth therein is not applicable or is shown in the financial
statements or notes thereto.
II-3
<PAGE> 5
ITEM 17. UNDERTAKINGS
The undersigned registrant hereby undertakes to provide to the Underwriters
at the closing of the Offerings specified in the Underwriting Agreement
certificates in such denominations and registered in such names as required by
the Underwriters to permit prompt delivery to each purchaser.
Insofar as indemnification for liabilities arising under the Act may be
permitted to directors, officers and controlling persons of the registrant
pursuant to the foregoing provisions, or otherwise, the registrant has been
advised that in the opinion of the Commission such indemnification is against
public policy as expressed in the Act and is, therefore, unenforceable. In the
event that a claim for indemnification against such liabilities (other than the
payment by the registrant of expenses incurred or paid by a director, officer or
controlling person of the registrant in the successful defense of any action,
suit or proceeding) is asserted by such director, officer or controlling person
in connection with the securities being registered, the registrant will, unless
in the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the Act and
will be governed by the final adjudication of such issue.
The undersigned registrant hereby undertakes that:
(1) For purposes of determining any liability under the Act, the
information omitted from the form of prospectus filed as part of this
Registration Statement in reliance upon Rule 430A and contained in a form
of prospectus filed by the registrant pursuant to Rule 424(b)(1) or (4) or
497(h) under the Act shall be deemed to be part of this Registration
Statement as of the time it was declared effective.
(2) For the purpose of determining any liability under the Act, each
post-effective amendment that contains a form of prospectus shall be deemed
to be a new Registration Statement relating to the securities offered
therein, and the offering of such securities at that time shall be deemed
to be the initial bona fide offering thereof.
II-4
<PAGE> 6
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, the registrant
has duly caused this amendment to the Registration Statement to be signed on its
behalf by the undersigned, thereunto duly authorized, in the City of New York,
State of New York, on the 3rd day of April, 1996.
LUCENT TECHNOLOGIES INC.
By /s/ HENRY B. SCHACHT
------------------------------------
Henry B. Schacht
Chief Executive Officer
Pursuant to the requirements of the Securities Act of 1933, this
Registration Statement has been signed below by the following persons in the
capacities and on the dates indicated.
<TABLE>
<CAPTION>
SIGNATURES TITLE DATE
- --------------------------------------------- ------------------------------- ---------------
<S> <C> <C>
/s/ HENRY B. SCHACHT Chairman of the Board and Chief April 3, 1996
- --------------------------------------------- Executive Officer
Henry B. Schacht
/s/ DONALD K. PETERSON Chief Financial Officer and April 3, 1996
- --------------------------------------------- Chief Accounting Officer
Donald K. Peterson
/s/ RICHARD A. MCGINN Director April 3, 1996
- ---------------------------------------------
Richard A. McGinn
/s/ CARLA A. Director April 3, 1996
HILLS
- ---------------------------------------------
Carla A. Hills
/s/ DREW Director April 3, 1996
LEWIS
- ---------------------------------------------
Drew Lewis
Director
- ---------------------------------------------
Donald S. Perkins
Director
- ---------------------------------------------
Franklin A. Thomas
/s/ EPHRAIM M. BRECHER Director April 3, 1996
- ---------------------------------------------
Ephraim M. Brecher
/s/ JIM G. Director April 3, 1996
KILPATRIC
- ---------------------------------------------
Jim G. Kilpatric
/s/ MARC E. MANLY Director April 3, 1996
- ---------------------------------------------
Marc E. Manly
/s/ S. LAWRENCE PRENDERGAST Director April 3, 1996
- ---------------------------------------------
S. Lawrence Prendergast
/s/ MAUREEN B. TART Director April 3, 1996
- ---------------------------------------------
Maureen B. Tart
/s/ FLORENCE L. WALSH Director April 3, 1996
- ---------------------------------------------
Florence L. Walsh
/s/ PAUL J. WONDRASCH Director April 3, 1996
- ---------------------------------------------
Paul J. Wondrasch
</TABLE>
II-5
<PAGE> 7
EXHIBIT INDEX
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
- ------ ------------------------------------------------------------------------------------
<C> <S>
1.1 Form of Underwriting Agreement.
3.1 Form of Restated Certificate of Incorporation of the Company.
3.2 Form of By-Laws of the Company.
4.1 Form of the Company's Common Stock certificate.
4.2 Form of Rights Agreement between the Company and First Chicago Trust Company of New
York, as Rights Agent, dated as of April 4, 1996.
5.1 Opinion of Richard J. Rawson re: legality of shares being registered.
5.2 Opinion of Wachtell, Lipton, Rosen & Katz re: legality of shares being registered.
10.1 Separation and Distribution Agreement by and among the Company, AT&T and NCR, dated
as of February 1, 1996 and amended and restated as of March 29, 1996.
10.2 Employee Benefits Agreement by and between AT&T and the Company, dated as of
February 1, 1996 and amended and restated as of March 29, 1996.
10.3 General Purchase Agreement by and between AT&T and the Company, dated as of February
1, 1996 and amended and restated as of March 29, 1996.
10.4 Interim Services and Systems Replication Agreement by and among AT&T, the Company
and NCR, dated as of February 1, 1996.
10.5 Brand License Agreement by and between the Company and AT&T, dated as of February 1,
1996.
10.6 Tax Sharing Agreement by and among the Company, AT&T and NCR, dated as of February
1, 1996 and amended and restated as of March 29, 1996.
10.7 Patent License Agreement among AT&T, NCR and the Company, effective as of March 29,
1996.*
10.8 Amended and Restated Technology License Agreement among AT&T, NCR and the Company,
effective as of March 29, 1996.*
10.9 Form of Lucent Technologies Inc. 1996 Long Term Incentive Program.
10.10 Form of Lucent Technologies Inc. Deferred Compensation Plan for Non-Employee
Directors.
10.11 Form of Pension Plan for Non-Employee Directors of Lucent Technologies Inc.
10.12 Form of Lucent Technologies Inc. Stock Retainer Plan for Non-Employee Directors.
10.13 Form of Lucent Technologies Operating Agreement between the Company and AT&T Capital
Corporation, dated as of April , 1996.
10.14 Form of Lucent Technologies Inc. 1996 Employee Stock Purchase Plan.
21.1 Subsidiaries of the Company.
23.1 Consent of Coopers & Lybrand L.L.P.*
23.2 Consent of Richard J. Rawson (included in Exhibit 5.1).
23.3 Consent of Wachtell, Lipton, Rosen & Katz (included in Exhibit 5.2).
27.1 Financial Data Schedule.
99.1 Consent of Carla A. Hills to be named as a director nominee.
99.2 Consent of Drew Lewis to be named as a director nominee.
99.3 Consent of Richard A. McGinn to be named as a director nominee.
99.4 Consent of Donald S. Perkins to be named as a director nominee.
99.5 Consent of Henry B. Schacht to be named as a director nominee.
99.6 Consent of Franklin A. Thomas to be named as a director nominee.
99.7 Consent of Ephraim M. Brecher to be named as a director nominee.
99.8 Consent of Jim G. Kilpatric to be named as a director nominee.
99.9 Consent of Marc E. Manly to be named as a director nominee.
99.10 Consent of S. Lawrence Prendergast to be named as a director nominee.
99.11 Consent of Florence L. Walsh to be named as a director nominee.
99.12 Consent of Paul J. Wondrasch to be named as a director nominee.
</TABLE>
- ---------------
* Filed herewith. All other exhibits have been previously filed.
<PAGE> 1
Exhibit 10.7
PATENT LICENSE AGREEMENT
AMONG
AT&T CORP.
NCR CORPORATION
AND
LUCENT TECHNOLOGIES INC.
EFFECTIVE AS OF MARCH 29, 1996
<PAGE> 2
PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
<TABLE>
<S> <C>
ARTICLE I DEFINITIONS ............................................................ 2
1.1 AT&T's Limited Patents. .................................................. 2
1.2 AT&T's Patents .......................................................... 2
1.3 AT&T's Specified Patents.. ............................................... 3
1.4 Foreign Affiliate.. ...................................................... 3
1.5 Limited Period. .......................................................... 3
1.6 LUCENT's Limited Patents. ................................................ 3
1.7 LUCENT's Patents.. ....................................................... 3
1.8 Lucent's Specified Patents ............................................... 4
1.9 NCR's Limited Patents.. .................................................. 4
1.10 NCR's Patents ............................................................ 4
1.11 Related Companies of AT&T.. .............................................. 4
1.12 Related Companies of LUCENT.. ............................................ 5
1.13 Related Companies of NCR. ................................................ 5
ARTICLE II GRANTS OF LICENSES.. .................................................. 5
2.1 Grants to AT&T.. ........................................................ 5
2.2 Grants to NCR.. ......................................................... 6
2.3 Grants to LUCENT. ....................................................... 7
2.4 Duration and Extent.. ................................................... 8
2.5 Scope. .................................................................. 8
2.6 Exclusions of Patents ................................................... 11
2.7 Filings of Patent Applications.. ........................................ 11
2.8 Joint Inventions ........................................................ 11
2.9 Sales to the United States Government ................................... 12
2.10 Licensing of certain identified patents of AT&T necessary to implement
an adopted standard. .................................................... 12
2.11 LUCENT licensing of designated parties at AT&T's request................. 12
ARTICLE III TERMINATION .......................................................... 16
3.1 Voluntary Termination. .................................................. 16
3.2 Survival ................................................................ 16
3.3 Change of Control of or Certain Acquisitions by NCR...................... 16
</TABLE>
<PAGE> 3
<TABLE>
<S> <C>
ARTICLE IV MISCELLANEOUS PROVISIONS ...................................... 16
4.1 Disclaimer ....................................................... 16
4.2 Nonassignability ................................................. 16
4.3 Addresses ........................................................ 17
4.4 Choice of Law .................................................... 17
4.5 Integration ...................................................... 17
4.6 Outside the United States ........................................ 17
4.7 Arbitration and Dispute Resolution ............................... 18
4.8 Amendments and Changes ........................................... 18
Exhibit A List of Retained AT&T Patents and Patent Applications........ 21
Exhibit B List of Patents Assigned to NCR by AT&T...................... 26
Exhibit C List of AT&T's Specified Patents ............................ 28
Exhibit D List of LUCENT's Specified Patents .......................... 34
.
Exhibit E List of Patents Referenced in Section 2.11(d)................ 38
</TABLE>
-ii-
<PAGE> 4
PATENT LICENSE AGREEMENT
This Agreement is effective as of March 29, 1996, among AT&T CORP., a
New York corporation ("AT&T"), having an office at 32 Avenue of the Americas,
New York, New York 10013, NCR CORPORATION, a Maryland corporation ("NCR"),
having an office at 101 West Schantz Avenue, Dayton, Ohio 45479, and LUCENT
TECHNOLOGIES INC., a Delaware corporation ("LUCENT"), having an office at 600
Mountain Avenue, Murray Hill, New Jersey 07974 (each hereinafter referred to as
a "Party"). Capitalized terms used herein and not otherwise defined shall have
the respective meanings assigned to them in Article I hereof or as assigned to
them in the Separation and Distribution Agreement (as defined below).
WHEREAS, the Board of Directors of AT&T has determined that it is in the
best interests of AT&T and its shareholders to separate AT&T's existing
businesses into three independent businesses; and
WHEREAS, as part of the foregoing AT&T, NCR and LUCENT have entered into
a Separation and Distribution Agreement, dated as of February 1, 1996 (the
"Separation and Distribution Agreement") which provides, among other things, for
the Separation of the LUCENT Assets and LUCENT Liabilities, the IPO, the
Distribution and the execution and delivery of certain other agreements in order
to facilitate and provide for the foregoing; and
WHEREAS, as part of the foregoing, the Parties have assigned the patents
and patent applications owned or controlled by AT&T prior to the date hereof
among the three Parties; and
WHEREAS, the Parties desire to facilitate such transaction by exchanging
licenses among them under certain of the patents and patent applications owned
or controlled by them on or after the date hereof; and
WHEREAS, the Parties have entertained arm's-length patent cross-licensing
dialogues and negotiations between them assuming that the Parties were not
affiliated and that each Party was not previously licensed under inventions of
the other two Parties and their respective Related Companies; and
WHEREAS, AT&T desires to receive and NCR and LUCENT, respectively, are
each willing to grant to AT&T certain patent licenses and rights under patents
owned by NCR and LUCENT on or after the date hereof; and
<PAGE> 5
WHEREAS, NCR desires to receive and AT&T and LUCENT, respectively, are
each willing to grant to NCR certain patent licenses and rights under patents
owned by AT&T and LUCENT on or after the date hereof; and
WHEREAS, LUCENT desires to receive and AT&T and NCR, respectively, are
each willing to grant to LUCENT certain patent licenses and rights under patents
owned by AT&T and those patents owned by NCR on or after the date hereof.
NOW, THEREFORE, in consideration of the mutual promises of the Parties,
and of good and valuable consideration, it is agreed by and between the Parties
as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following terms in capital letters are
defined in this Article I and shall have the meaning specified herein:
1.1 AT&T'S LIMITED PATENTS means only those AT&T's Patents issued
on patent applications having an effective filing date on or before December 31,
1996.
1.2 AT&T'S PATENTS means:
(1) the patents listed in Exhibit "A" and all patents issuing on the
patent applications listed in Exhibit "A", as well as all their corresponding
foreign patents and patent applications, and all other patents and patent
applications jointly owned by AT&T under the respective Patent Assignments
executed as of this date; and
(2) every patent (including utility models but excluding design patents
and design registrations) issued in any country of the world which claims or is
otherwise directed to an invention disclosed in any patent application in that
country, or in any other country, having an effective filing date in the period
beginning on the date hereof and ending on the last day of the Limited Period,
but only if, at any time after the earliest filing of any such application
disclosing such invention and prior to the expiration of the Limited Period,
AT&T (or any company while a Related Company of AT&T)
(i) has ownership or control of any such patent or
application, or
(ii) otherwise has the right under such patent to grant
any licenses of the type and on terms herein granted
by AT&T.
-2-
<PAGE> 6
Notwithstanding the foregoing, the term AT&T's Patents does not include NCR's
Patents or LUCENT's Patents, other than those LUCENT's Patents that are jointly
owned with AT&T under the Patent Assignments executed as of this date.
1.3 AT&T'S SPECIFIED PATENTS means those AT&T's Patents listed in
Exhibit "C" and all patents issuing on the patent applications listed in Exhibit
"C", as well as all their corresponding foreign patents and patent applications.
1.4 FOREIGN AFFILIATE of a company means a corporation or other
legal entity formed and doing business in any country other than the United
States, and in which the company, either directly or indirectly, holds, owns or
controls (i) at least forty percent (40%) of the equity or ownership interest in
such corporation or other legal entity or the maximum ownership interest allowed
by the foreign jurisdiction in which such corporation or other legal entity is
formed, whichever is lower; and (ii) sufficient voting rights required under
such foreign laws to enable the company to actively participate in the election
of directors or other managing authority and in the direction of the business
operations and strategies of such corporation or other legal entity; and (iii)
an active operational interest, not merely a passive investment interest, in
such corporation or other legal entity; but any such corporation or other legal
entity shall be deemed to be a Foreign Affiliate of such company only as long as
such ownership or ownership and control exists.
1.5 LIMITED PERIOD means the period commencing on the date
hereof and ending on December 31, 1999.
1.6 LUCENT's LIMITED PATENTS means only those LUCENT's Patents
issued on patent applications having an effective filing date on or before
December 31, 1996.
1.7 LUCENT's PATENTS means:
(1) all patents and patent applications previously owned respectively
by AT&T or NCR and owned by LUCENT, either solely or jointly, under the
respective Patent Assignments executed as of this date, other than the patents
and patent applications listed in Exhibits "A" and "B", and all their
corresponding foreign patents and patent applications; and
(2) every patent (including utility models but excluding design patents
and design registrations) issued in any country of the world which claims or is
otherwise directed to an invention disclosed in any patent application in that
country or in any other country having an effective filing date on or before the
last day of the Limited Period, provided that, at any time after the earliest
filing of any such application disclosing such invention and prior to the
expiration of the Limited Period, LUCENT (or any company while a Related
Company of LUCENT)
(i) has ownership or control of any such patent or
application, or
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(ii) otherwise has the right under such patent to grant
any licenses of the type and on the terms herein
granted by LUCENT.
1.8 LUCENT'S SPECIFIED PATENTS means only those LUCENT's Patents
listed in Exhibit "D", as well as all their corresponding foreign patents.
1.9 NCR's LIMITED PATENTS means only those NCR's Patents
issued on patent applications having an effective filing date on or before
December 31, 1996.
1.10 NCR'S PATENTS means:
(1) the patents listed in Exhibit "B" and all their corresponding foreign
patents and patent applications, and the patents and patent applications
jointly owned by NCR and LUCENT under the Patent Assignment from LUCENT to NCR
executed as of this date; and
(2) every patent (including utility models but excluding design patents
and design registrations) issued in any country of the world which claims or is
otherwise directed to an invention disclosed in any patent application in that
country or in any other country having an effective filing date on or before the
last day of the Limited Period, but only if, at any time after the earliest
filing of any such application disclosing such invention and prior to the
expiration of the Limited Period, NCR (or any company while a Related Company of
NCR)
(i) has ownership or control of any such patent or
application, or
(ii) otherwise has the right under such patent to grant
any licenses of the type and on the terms herein
granted by NCR.
1.11 RELATED COMPANIES OF AT&T means Subsidiaries of AT&T, for so
long as they remain Subsidiaries, and any other company so designated and agreed
to in a writing signed by AT&T and by NCR or LUCENT, as applicable. Solely for
purposes of this definition, LUCENT, its Subsidiaries, NCR and its Subsidiaries
shall be deemed not to be Related Companies of AT&T.
1.12 RELATED COMPANIES OF LUCENT means Subsidiaries of Lucent, for
so long as they remain Subsidiaries, and any other company so designated and
agreed to in a writing signed by Lucent and by NCR or AT&T, as applicable.
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1.13 RELATED COMPANIES OF NCR means NCR's Subsidiaries as of the
Distribution Date, for so long as they remain NCR's Subsidiaries, and any other
company so designated and agreed to in a writing signed by NCR and by AT&T or
Lucent, as applicable. Solely for purposes of the definition of NCR's Patents,
Related Companies of NCR also shall include any and all Subsidiaries of NCR
acquired or formed after the Distribution Date.
ARTICLE II
GRANTS OF LICENSES
2.1 GRANTS TO AT&T. (a)(1) NCR grants to AT&T, under NCR's
Patents, personal, nonexclusive, royalty-free and non-transferable licenses to
make (but not have made other than as specified in Section 2.1(a)(2)), use,
lease, sell and import any and all products and services of the businesses in
which AT&T or any of its Related Companies or Foreign Affiliates is now or
hereafter engaged.
(a)(2)(A) NCR grants to AT&T, under NCR's Limited Patents,
personal, nonexclusive, royalty-free and non-transferable (except as specified
herein) licenses to have made any and all items (i) to be used by AT&T for
internal business purposes (as such business may be conducted from time to
time); or (ii) to be used in the provisioning of services to AT&T's customers;
or (iii) to be sold or furnished to end user customers by AT&T either directly
or indirectly; or (iv) to be sold or furnished to a Related Company of AT&T, any
Foreign Affiliate of AT&T, or any other legal entity in which AT&T continually
holds at least a ten percent (10%) equity interest. As an attribute to the
foregoing have made rights under NCR's Limited Patents, NCR grants to AT&T the
right to grant to AT&T's suppliers or vendors of any item to be furnished to
AT&T, the right to use processes and equipment under NCR's Limited Patents in
the design, manufacturing and testing of such items.
(a) (2)(B) The have made rights hereunder granted to AT&T to
resell, either directly or indirectly, any items made by others under the
provisions of Section 2.1(a)(2)(A)(iii) or (iv) above shall not be exercised in
a manner such that the exercise of the have made rights is a sham to sublicense
NCR's Limited Patents to a third party and not for bona fide AT&T business
purposes.
(b) (1) Lucent grants to AT&T, under Lucent's Limited Patents,
personal, nonexclusive, royalty-free and non-transferable licenses to make (but
not have made other than as specified in Section 2.1(b)(2)), use, lease, sell
and import any and all products and services of the businesses in which AT&T or
any of its Related Companies or Foreign Affiliates is now or hereafter engaged.
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(b)(2)(A) LUCENT grants to AT&T, under LUCENT's Limited Patents,
personal, nonexclusive, royalty-free and non-transferable (except as specified
herein) licenses to have made any and all items (i) to be used by AT&T for
internal business purposes (as such business may be conducted from time to
time); or (ii) to be used in the provisioning of services to AT&T's customers;
or (iii) to be sold or furnished to end user customers by AT&T, either directly
or indirectly; or (iv) to be sold or furnished to a Related Company of AT&T, any
Foreign Affiliate of AT&T or any other legal entity in which AT&T continually
holds at least a ten percent (10%) equity interest. As an attribute to the
foregoing have made rights under LUCENT's Limited Patents, LUCENT grants to AT&T
the right to grant to AT&T's suppliers or vendors of any item to be furnished to
AT&T the right to use processes and equipment under LUCENT's Limited Patents in
the design, manufacturing and testing of such items.
(b)(2)(B) The have made rights hereunder granted to AT&T to
resell, either directly or indirectly, any items made by others under the
provisions of Section 2.1(b)(2)(A)(iii) or (iv) above shall not be exercised in
a manner such that the exercise of the have made rights is a sham to sublicense
LUCENT's Limited Patents to a third party and not for bona fide AT&T business
purposes.
2.2 GRANTS TO NCR. (a)(1) AT&T grants to NCR, under AT&T's
Patents, personal, nonexclusive, royalty-free and non-transferable licenses to
make (but not have made other than as specified in Section 2.2(a)(2)), use,
lease, sell and import any and all products and services of the businesses in
which NCR or any of its Related Companies is now or hereafter engaged.
(a)(2) AT&T grants to NCR, under AT&T's Patents, personal,
nonexclusive, royalty-free and non-transferable (except as specified herein)
licenses to have made any and all items (i) to be used by NCR for internal
business purposes (as such business may be conducted from time to time); or (ii)
to be sold by NCR or incorporated into products of NCR; or (iii) to be used by
NCR in the engineering, installation and systems integration of NCR's products
for NCR's customers. As an attribute to the foregoing have made rights under
AT&T's Patents, AT&T grants to NCR the right to grant to NCR's suppliers or
vendors of any item to be furnished to NCR, the right to use processes and
equipment under AT&T's Patents in the design, manufacturing and testing of such
items. NCR's have made rights under AT&T's Patents to resell any item made by
others under this Section 2.2(a)(2) shall not be exercised in a manner such that
the exercise of the have made rights is a sham to sublicense AT&T's Patents to a
third party and not for bona fide NCR business purposes.
(b) (1) LUCENT grants to NCR, under LUCENT's Patents, personal,
nonexclusive and non-transferable licenses to make (but not have made other than
as specified in Section 2.2(b)(2)), use, lease, sell and import any or all
products and services of the businesses in which NCR or any of its Related
Companies is now or hereafter engaged.
(b)(2) LUCENT grants to NCR, under LUCENT's Patents, personal,
nonexclusive and non-transferable (except as specified herein) licenses to have
made any and all items (i) to be used by NCR for internal business purposes (as
such business may be conducted from time to
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time); or (ii) to be sold by NCR or incorporated into products of NCR; or (iii)
to be used by NCR in the engineering, installation and systems integration of
NCR's products for NCR's customers. As an attribute to the foregoing have made
rights under LUCENT's Patents, LUCENT grants to NCR the right to grant to NCR's
suppliers or vendors of any item to be furnished to NCR the right to use
processes and equipment under LUCENT's Patents in the design, manufacturing and
testing of such items. NCR's have made rights under LUCENT's Patents to resell
any item made by others under this Section 2.2(b)(2) shall not be exercised in a
manner such that the exercise of the have made rights is a sham to sublicense
LUCENT's Patents to a third party and not for bona fide NCR business purposes.
(b)(3) In consideration for the balance of LUCENT's and NCR's
licenses and rights exchanged hereunder by LUCENT and NCR, NCR shall pay to
LUCENT a lump sum amount of six million one hundred twenty thousand U.S. dollars
($6,120,000) within sixty (60) days of execution of this Agreement by all
Parties. Neither such sum nor any portion thereof shall be refundable or
creditable to NCR.
2.3 GRANTS TO LUCENT. (a)(1) AT&T grants to LUCENT, under AT&T's
Limited Patents, personal, nonexclusive, royalty-free and non-transferable
licenses to make (but not have made other than as specified in Section
2.3(a)(2)), use, lease, sell and import any and all products and services of the
businesses in which LUCENT or any of its Related Companies or Foreign Affiliates
is now or hereafter engaged.
(a)(2) AT&T grants to LUCENT, under AT&T's Limited Patents,
personal, nonexclusive, royalty-free and non-transferable (except as specified
herein) licenses to have made any and all items (i) to be used by LUCENT for
internal business purposes (as such business may be conducted from time to
time); or (ii) to be sold by LUCENT or incorporated into products of LUCENT; or
(iii) to be used by LUCENT in the engineering, installation and systems
integration of LUCENT's products for LUCENT's customers. As an attribute to the
foregoing have made rights under AT&T's Limited Patents, AT&T grants to LUCENT
the right to grant to LUCENT's suppliers or vendors of any item to be furnished
to LUCENT the right to use processes and equipment under AT&T's Limited Patents
in the design, manufacturing and testing of such items. LUCENT's have made
rights under AT&T's Limited Patents to resell any item made by others under this
Section 2.3(a)(2) shall not be exercised in a manner such that the exercise of
the have made rights is a sham to sublicense AT&T's Limited Patents to a third
party and not for bona fide LUCENT business purposes.
(b) (1) NCR grants to LUCENT, under NCR's Patents, personal,
nonexclusive, royalty-free and non-transferable licenses to make (but not have
made other than as specified in Section 2.3(b)(2)), use, lease, sell and import
any and all products and services of the businesses in which LUCENT or any of
its Related Companies or Foreign Affiliates is now or hereafter engaged.
(b) (2) NCR grants to LUCENT, under NCR's Patents, personal,
nonexclusive, royalty-free and non-transferable (except as specified herein)
licenses to have made any and all items (i) to be used by LUCENT for internal
business purposes (as such business may be
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conducted from time to time); or (ii) to be sold by LUCENT or incorporated
into products of LUCENT; or (iii) to be used by LUCENT in the engineering,
installation and systems integration of LUCENT's products for LUCENT's
customers. As an attribute to the foregoing have made rights under NCR's
Patents, NCR grants to LUCENT the right to grant to LUCENT's suppliers or
vendors of any item to be furnished to LUCENT the right to use processes and
equipment under NCR's Patents in the design, manufacturing and testing of such
items. LUCENT's have made rights under NCR's Patents to resell any item made by
others under this Section 2.3(b)(2) shall not be exercised in a manner such that
the exercise of the have made rights is a sham to sublicense NCR's Patents to a
third party and not for bona fide LUCENT business purposes.
2.4 DURATION AND EXTENT. All licenses granted herein as to any
Party's patent or patents shall continue for the entire unexpired term of such
patent, but for patents falling within subsection (2)(ii) of the definition of
AT&T's Patents, NCR's Patents or LUCENT's Patents, as the case may be, for as
much of such term as the grantor has the right to grant such licenses.
2.5 SCOPE. (a)(1)(A) The licenses granted herein to AT&T include
licenses to convey to any customer of AT&T, with respect to any product/service
furnished by AT&T, including any combination of products/services furnished by
AT&T, whether or not furnished at the same time to such customer, rights to use
such product/service as furnished by AT&T (whether or not as part of a larger
combination); provided, however, that no rights may be conveyed to customers
with respect to any invention which is directed to (i) a combination of such
product/service (as furnished) with any other item which is not a
product/service furnished by AT&T, or (ii) a method or process which is other
than the inherent use of such product/service itself (as furnished). As used in
this Section 2.5(a)(1)(A), the term "inherent use" means a use that would be
completely performed by a product/service as furnished by AT&T, or combination
of products/services as furnished by AT&T, without the need for any additional
product, service, development, modification or programming by AT&T's customer or
a third party.
(a)(1)(B) The licenses granted herein to NCR under AT&T's Patents include
licenses to convey to any customer of NCR, with respect to any product/service
furnished by NCR to such customer, rights to use such product/service as
furnished by NCR; provided, however, that no rights may be conveyed to customers
with respect to any invention which is directed to (i) a combination of such
product/service (as furnished) with any other item, including another item
previously or subsequently furnished by NCR, or (ii) a method or process which
is other than the inherent use of such product/service itself (as furnished). As
used in this Section 2.5(a)(1)(B), the term "inherent use" means a use that
would be completely performed by a product/service as furnished by NCR without
the need for any additional product, service, development, modification or
programming by NCR's customer or a third party.
(a)(1)(C) The licenses granted herein to NCR under LUCENT's Patents
include licenses to convey to any customer of NCR, with respect to any
product/service furnished by NCR (including any combination of products/services
furnished by NCR, whether or not furnished at the same time) to such customer,
rights to use such product/service as furnished by NCR (whether or not as part
of a larger combination); provided, however, that no rights may be rights may be
conveyed to customers with respect to any invention which is directed to (i) a
combination of such product/service (as furnished) with any other item,
including another item previously or subsequently furnished by NCR, or (ii) a
method or process which is other than the inherent use of such product/service
itself (as furnished). As used in this Section 2.5(a)(1)(B), the term "inherent
use" means a use that would be completely performed by a product/service as
furnished by NCR without the need for any additional product, service,
development, modification or programming by NCR's customer or a third party.
(a)(1)(C) The licenses granted herein to NCR under LUCENT's Patents
include licenses to convey to any customer of NCR, with respect to any
product/service furnished by NCR (including any combination of products/services
furnished by NCR, whether or not furnished at the same time) to such customer,
rights to use such product/service as furnished by NCR (whether or not as part
of a larger combination); provided, however, that no rights may be
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conveyed to customers with respect to any invention which is directed to (i) a
combination of such product/service (as furnished) with any other item which is
not a product/service furnished by NCR, or (ii) a method or process which is
other than the inherent use of such product/service itself (as furnished). As
used in this Section 2.5(a)(1)(C), the term "inherent use" means a use that
would be completely performed by a product/service as furnished by NCR (or
combination of products/services as furnished by NCR) without the need for any
additional product, service, development, modification or programming by NCR's
customer or a third party.
(a)(1)(D) The licenses granted herein to LUCENT under AT&T's Limited
Patents include licenses to convey to any customer of LUCENT, with respect to
any product/service furnished by LUCENT to such customer, rights to use such
product/service as furnished by LUCENT; provided, however, that no rights may be
conveyed to customers with respect to any invention which is directed to (i) a
combination of such product/service (as furnished) with any other item,
including another item previously or subsequently furnished by LUCENT, or (ii) a
method or process which is other than the inherent use of such product/service
itself (as furnished). As used in this Section 2.5(a)(1)(D), the term "inherent
use" means a use that would be completely performed by a product/service as
furnished by LUCENT without the need for any additional product, service,
development, modification or programming by LUCENT's customer or a third party;
and the term "furnish" or "furnished" shall include the provision of an entire
system of products and services, including components obtained from third-party
vendors, so long as the entire system was or is sold or contracted for under a
stand alone agreement or single purchase order for such entire system, and
further provided that LUCENT when furnishing the entire system is in direct
privity with the customer under the terms of such stand alone agreement or such
purchase order as to all components so furnished such that all representations
and warranties to the customer concerning the system and each of its relevant
components are provided by LUCENT and not by the third-party vendor.
(a)(1)(E) In addition to those rights provided by Section 2.5(a)(1)(D),
the licenses granted herein to LUCENT under AT&T's Specified Patents include
licenses to convey to any customer of LUCENT, with respect to any
product/service furnished by LUCENT (including any combination of
products/services furnished by LUCENT, whether or not furnished at the same
time) to such customer, rights to use such product/service as furnished by
LUCENT (whether or not as part of a larger combination); provided, however, that
no rights may be conveyed to customers with respect to any invention which is
directed to (i) a combination of such product/service (as furnished) with any
other item which is not a product/service furnished by LUCENT, or (ii) a method
or process which is other than the inherent use of such product/service itself
(as furnished). As used in this Section 2.5(a)(1)(E), the term "inherent use"
means a use that would be completely performed by a product/service as furnished
by LUCENT (or combination of products/services as furnished by LUCENT) without
the need for any additional product, service, development, modification or
programming by LUCENT's customer or a third party.
(a)(1)(F) The licenses granted herein to LUCENT under NCR's Patents
include licenses to convey to any customer of LUCENT, with respect to any
product/service furnished by LUCENT (including any combination of
products/services furnished by LUCENT, whether or not
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furnished at the same time) to such customer, rights to use such product/service
as furnished by LUCENT (whether or not as part of a larger combination);
provided, however, that no rights may be conveyed to customers with respect to
any invention which is directed to (i) a combination of such product/service (as
furnished) with any other item which is not a product/service furnished by
LUCENT, or (ii) a method or process which is other than the inherent use of such
product/service itself (as furnished). As used in this Section 2.5(a)(1)(F), the
term "inherent use" means a use that would be completely performed by a
product/service as furnished by LUCENT (or combination of products/services as
furnished by LUCENT) without the need for any additional product, service,
development, modification or programming by LUCENT's customer or a third party.
(a)(2)(A) The provision by one Party of certain pass-through rights under
any of the other Parties' Patents, as contemplated under Sections 2.5(a)(1)(A)
through (F), shall not be a sham to effect the sublicensing of a competitor of
the Party owning the respective patent subject to the pass through as opposed to
a pass through of necessary rights to permit the bona fide selling or
provisioning of products or services to customers of the Party that is directly
conveying the pass-through rights under the other Party's Patents.
(a)(2)(B) The exclusions numbered "(i)" and "(ii)" in each of Sections
2.5(a)(1)(B) through (F), as relevant, shall not apply to a replacing or
additional software or hardware product furnished by NCR or LUCENT to a customer
for use in a hardware product previously furnished by NCR or LUCENT,
respectively, but solely to the extent that such product is used in combination
only with such previously furnished hardware product.
(a)(3) The licenses granted herein to AT&T and to LUCENT include an
additional limited right to extend patent sublicenses to any Person, solely to
the extent necessary for AT&T and LUCENT, respectively, to fulfill any existing
patent licensing commitments or obligations to unaffiliated existing third party
licensees. Each Party to this Agreement hereby agrees and confirms that the
scope of such sublicenses shall not exceed these existing commitments or
obligations.
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(b) Licenses granted herein are not to be construed either (i)
as consent by the 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) except as otherwise specifically provided under Sections 2.1(a)(2)(A),
2.1(b)(2)(A), 2.2(a)(2), 2.2(b)(2), 2.3(a)(2), 2.3(b)(2) and 2.5(a), a waiver of
a Party's (or any of its Related Companies') rights against any third party with
respect to any infringement.
(c) In addition to the limited sublicensing rights of AT&T and
Lucent specified in Section 2.5(a)(3), AT&T and Lucent may each grant
sublicenses to their respective Foreign Affiliates within the scope of their
respective licenses hereunder. The grant of each license hereunder to each Party
to this Agreement includes the right to grant sublicenses within the scope of
such license to a Party's Related Companies for so long as they remain its
Related Companies. Any such sublicense may be made effective retroactively, but
not prior to the effective date hereof, nor prior to the sublicensee's becoming
a Related Company of such Party.
2.6 EXCLUSIONS OF PATENTS. The licenses and rights granted
hereunder by AT&T to NCR or Lucent under AT&T's Patents do not include any
license or right under (a) any patents or patent applications first filed prior
to February 1, 1996 which patents or applications are (i) owned or controlled by
AT&T Wireless Services, Inc, ("AWS") or any of its Subsidiaries, and (ii)
related to the business of wireless telecommunications services; or (b) any
patents or patent applications first filed on or after February 1, 1996 and
covering inventions made by employees of AWS or by third parties other than AT&T
or any of its Subsidiaries, which patents and applications (i) are owned or
controlled by AWS or any of its Subsidiaries, and (ii) relate to the business of
wireless telecommunications services. With respect to all patents issued as of
February 1, 1996 to AWS and to any of its Subsidiaries, the foregoing shall not
limit NCR's or Lucent's ability to continue providing products and services
embodying inventions covered by such patents and provided by each as of the date
of this Agreement.
2.7 FILINGS OF PATENT APPLICATIONS. Each Party agrees to file
patent applications during 1996 and 1999 in a timely manner as determined by
generally accepted good patent filing practices and as though this Agreement
were not in existence between the Parties. The dispute resolution provisions of
Section 4.7 shall apply to any allegation by one Party that another Party hereto
has purposely delayed its patent filings primarily to avoid providing the
licenses and rights granted hereunder.
2.8 JOINT INVENTIONS. (a) There are countries (not including the
United States) which require the express consent of all inventors or their
assignees to the grant of licenses or rights under patents issued in such
countries for joint inventions.
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(b) Each Party shall give such consent, or shall obtain such
consent from its Related Companies, its employees or employees of any of its
Related Companies, as required to make full and effective any such licenses and
rights respecting any joint invention granted to a grantee hereunder by such
Party and by another licensor of such grantee.
(c) Each Party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents are necessary
to make full and effective such licenses and rights respecting any joint
invention purported to be granted by it hereunder. If, in spite of such
reasonable steps, such Party is unable to obtain the requisite consents from
such third parties, the resulting inability of such Party to make full and
effective its purported grant of such licenses and rights shall not be
considered to be a breach of this Agreement.
2.9 SALES TO THE UNITED STATES GOVERNMENT. With respect to one
Party's bid or contract with the United States government, or any of its
component agencies, each of the other two Parties agrees to provide to such
first Party, on reasonable terms and conditions, including royalties, patent
licenses and rights under any and all of each of the other Parties' patents or
patent applications that are licensed hereunder. The scope of such patent
licenses and rights will be for the use of any and all products, services, or
combinations thereof sold to the United States government by such Party,
provided that use of the products or services is by the government, its
agencies, or employees, and not for use by or resell to other Persons or
governments.
2.10 LICENSING OF CERTAIN IDENTIFIED PATENTS OF AT&T NECESSARY TO
IMPLEMENT AN ADOPTED STANDARD. With respect to the following six (6) AT&T's
Limited Patents (U.S.4,383,332; 5,410,538; 5,420,851 and 5,442,625; and patents
issued on U.S. Patent Applications Serial Nos. 08/504,481 and 08/234,197), if,
at any time more than five (5) years after the Closing Date, an official
standards body or organization adopts a standard that requires the use of all or
a portion of the claims of any of these six (6) patents, and the standards body
or organization so directs, then AT&T will license those patents (on reasonable
terms, conditions and for a reasonable royalty, if any is permitted pursuant to
the standard) to third parties at the request and direction of Lucent, but only
to the extent of the claims and fields of use covered by the standard.
2.11 LUCENT LICENSING OF DESIGNATED PARTIES AT AT&T'S REQUEST.
(a) Whenever AT&T desires that a third party be licensed under one or more of
Lucent's Specified Patents, AT&T will notify Lucent in a writing which shall
contain the following:
(i) The name and address of the third party and whether any affiliated
companies of the third party are to be included in the license;
(ii) The specific Lucent's Specified Patents to be included in the
license;
(iii)The date by which a license is to be granted;
(iv) The scope of the license to be granted; and
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(v) A rationale for the request to license such third party.
(b) Lucent, upon receipt of notification specified in
Section 2.11(a) will proceed as follows:
(i) If Lucent has any objection to the AT&T request, it will notify
AT&T in writing within ten (10) business days of its objection(s) and the
reasons therefor. Lucent and AT&T will then attempt to resolve the objection
and, if a resolution satisfactory to both parties is not achieved within ten
(10) additional business days, either AT&T or Lucent may submit the matter to
arbitration pursuant to Article IX of the Separation and Distribution Agreement
between the parties for resolution (without compliance with the escalation
provisions contemplated by Section 9.2 thereof or any waiting period related to
such escalation provisions); provided that the procedural provisions set forth
below shall apply in lieu of any conflicting provisions contained in Article IX
of the Separation and Distribution Agreement.
In submitting the matter to arbitration, a Party shall include all
documents which that Party needs to support its position in arbitration. The
other Party shall then have five (5) business days from the date it receives the
first Party's document to submit any and all documents which that Party needs to
support its position. Either Party may request a hearing to be conducted within
ten (10) business days from the conclusion of document submission. The
arbitrator shall render a ruling within a time period not to exceed two (2)
months from the date the matter is submitted to arbitration. In considering
whether an objection to a license is proper, the arbitrator shall consider all
relevant facts and positions offered by the Parties, including whether Lucent
has granted licenses to other companies with products comparable to those sold
or planned for sale by the third party and upon what terms such licenses were
granted, Lucent's competitive position in the relevant markets, any expressed
rationale for the request by AT&T, the impact of an adverse ruling against each
Party, and the reasonableness of the requested completion date. Should the
arbitrator rule in favor of AT&T, Lucent will have five (5) business days to
submit to the arbitrator a set of terms and conditions which Lucent would
propose be offered to the third party. AT&T shall have five (5) business days to
submit to the arbitrator its comments on Lucent's proposed terms and conditions
and may bring to the attention of the arbitrator any and all facts relevant to
the issue of appropriate terms and conditions of licensing the Lucent's
Specified Patents. The arbitrator, within five (5) business days, shall then
make a determination of an initial set of terms and conditions to be presented
to the third party by Lucent. Lucent shall present such terms and conditions to
the third party within three (3) business days of the arbitrator's
determination. If the arbitrator rules in favor of Lucent, or if the third party
is unwilling to accept the terms and conditions set by the arbitrator, Lucent
will have no obligation to license that third party and AT&T may not make a
similar request to license that third party for a period of one (1) year.
(ii) If Lucent has no objection to the request, it will attempt to
license the Lucent's Specified Patents selected by AT&T, within the period
referenced in Section 2.11(a)(iii), to the third party on reasonable terms and
conditions which may include a grantback license to Lucent. Such terms and
conditions will be established in accordance with ordinary
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<PAGE> 17
practices in the industry to which the patents pertain. Lucent's then normal
licensing practices, as measured by licenses granted to others of a scope
similar to that referenced in Section 2.11(b)(i) under such Lucent's Specified
Patents, will be considered as examples of such industry practices. If the third
party is unwilling to accept the terms and conditions of the license offered by
Lucent (which terms and conditions are other than those determined by the
arbitrator) within the time period referenced in Section 2.11(a)(iii), Lucent
shall provide to AT&T within five (5) business days a statement in writing as to
why Lucent believes that a license on the terms and conditions requested by the
third party is not advisable in its view. AT&T may then submit the matter to
arbitration pursuant to Article IX of the Separation and Distribution Agreement
between the Parties (modified as contemplated below) to determine whether
different terms and conditions should be offered to the third party.
In submitting the matter to arbitration, AT&T shall include all
documents which it needs to support its position. Lucent shall then have five
(5) business days to submit any and all documents which it needs to support its
position. In determining whether different terms and conditions should be
offered to the third party, the arbitrator shall consider all relevant facts and
positions offered by the Parties such as proposed terms and conditions,
including whether Lucent has granted licenses to other Persons with products
comparable to those sold or planned for sale by the third party and upon what
terms and conditions such licenses were granted, Lucent's competitive position
in the relevant markets, and any expressed rationale for such license by AT&T.
The arbitrator shall render a ruling within a time period not to exceed two (2)
months from the date AT&T submits the matter to arbitration. Should the
arbitrator rule that different terms and conditions should be offered to the
third party, Lucent shall, within three (3) business days, offer a license to
the third party on terms and conditions specified by the arbitrator. If the
arbitrator rules in favor of Lucent, or if the third party is unwilling to
accept the terms and conditions set by the arbitrator, Lucent will have no
obligation to license that third party and AT&T may not make a similar request
to license that third party for a period of one (1) year.
(c) With respect to requests by AT&T to grant licenses to
third parties under Lucent's Specified Patents, the number of such requests
shall be limited as follows:
(i) if the request is to grant a license to a third party for a product
and/or service developed by, with, or for AT&T, which product and/or service
results from either a specific custom development project or a specific joint
development project, then AT&T may request that up to eight (8) such licenses to
make, use and sell the developed products and/or services be granted in each
calendar year. In addition, for each of the eight (8) requested licenses in each
calendar year, AT&T may request that up to two (2) additional vendors be
licensed to make and sell such product and/or service (a total of three (3) such
vendors (an original and two (2) additional vendors) in the event AT&T develops
the product/service itself), provided that the additional vendors must accept
the identical terms and conditions entered into with the original third party
and provided further that no arbitration is permitted with respect to such
additional vendor requests.
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<PAGE> 18
(ii) if the request is to grant a license to a third party for products
and/or services other than specific products or services, developed by, with, or
for AT&T in a specific custom development project or a specific joint
development project, then AT&T may request up to five (5) licenses of this kind
be granted in each calendar year; and
(iii) if the request is to grant a license to a third party for
inventions implemented in software developed and created in whole or in part by
AT&T and furnished by AT&T to that third party for further distribution to end
user customers, then AT&T may request up to seven (7) licenses of this kind be
granted in each calendar year to such third parties:
The Parties agree, on an annual basis, to review the success and viability of
the licensing arrangement contemplated herein, with a view toward modifying the
current limits on license requests so as to meet the needs of both Parties.
Unless the Parties agree to modify the current limits, the current limits shall
remain in force.
(d) LUCENT further agrees to license, from time to time, on
reasonable and non-discriminatory terms and conditions the eight (8) patents
listed in Exhibit E to members of an undersea telecommunication system
consortium, when necessary pursuant to terms established by the consortium for
participation by AT&T in the consortium and for use in the consortium project.
(e) LUCENT shall be the sole recipient and beneficiary of any
and all royalties and grantback rights, if any, paid or provided under any
license agreement made pursuant to this Agreement.
(f) As soon as practical in advance of any dispute, the
Parties shall name an arbitrator who shall serve as a sitting sole arbitrator
for any and all arbitrations held pursuant to this Section 2.11. The Parties
shall use the arbitrator selection provisions of Article IX of the Separation
and Distribution Agreement to select the sitting sole arbitrator.
-15-
<PAGE> 19
ARTICLE III
TERMINATION
3.1 VOLUNTARY TERMINATION. By written notice to another Party,
each Party may voluntarily terminate all or a specified portion of the licenses
and rights granted to it hereunder by such other Party. Such notice shall
specify the effective date of such termination and shall clearly specify any
affected patent, invention, product or service.
3.2 SURVIVAL. (a) If a company ceases to be a Related Company of a
Party, licenses and rights granted to the other Parties hereunder with respect
to patents of such company on applications filed prior to the date of such
cessation shall not be affected by such cessation.
(b) Any voluntary termination of licenses and rights of a
Party under Section 3.1 shall not affect such Party's licenses, and rights with
respect to any licensed product made or service furnished prior to such
termination, and shall not affect the licenses and rights granted to the other
Parties hereunder.
3.3 CHANGE OF CONTROL OF OR CERTAIN ACQUISITIONS BY NCR. In the
event of a Change of Control of NCR, or in the event that NCR acquires any
Person that (i) competes with AT&T in the provision of telecommunications
services, or (ii) competes with Lucent in the provision of telecommunications
systems and equipment, or (iii) has a market value greater than fifty percent
(50%) of NCR's market value at the time of acquisition, then, all patent
licenses and rights granted to NCR hereunder shall extend only to a specific
annual volume of products and services which are of a kind comparable to those
offered by NCR prior to such Change of Control or acquisition. Such specific
volume of products and services shall not exceed the volume of corresponding
licensed products and services of NCR prior to such Change of Control or
acquisition.
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.1 DISCLAIMER. NO PARTY OR ANY OF ITS SUBSIDIARIES MAKES ANY
REPRESENTATIONS, EXTENDS ANY WARRANTIES OF ANY KIND, ASSUMES ANY RESPONSIBILITY
OR OBLIGATIONS WHATEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR
OTHERWISE, OTHER THAN THE LICENSES, RIGHTS AND WARRANTIES HEREIN EXPRESSLY
GRANTED.
4.2 NONASSIGNABILITY. 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 Related Companies (and only for so long as
any such Related Company remains a Related Company) without the other Party's
or Parties', as applicable, express written consent. Neither this Agreement
nor any licenses or rights hereunder shall be assignable or transferable by
any Party
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<PAGE> 20
to any other Person, except as expressly permitted hereunder, without the
express written consent of the other Parties, provided that such consent shall
not be unreasonably withheld in the event of a proposed assignment or transfer
of those licenses and rights relevant to any portion of any Party's business
that is or is to be spun off or otherwise distributed to such Party's
shareholders.
4.3 ADDRESSES. The Parties agree that any notice or other
communication hereunder shall be given as set forth in Section 12.5 of the
Separation and Distribution Agreement except that notice to AT&T shall be
addressed to F.J. Berry, Vice President-Law, 295 North Maple Avenue, Basking
Ridge, N.J. 07420.
4.4 CHOICE OF LAW. Except as otherwise provided in Section 9.9 of
the Separation and Distribution Agreement, this Agreement shall be governed by
and construed and interpreted in accordance with the laws of the State of New
York, irrespective of the choice of laws principles of the State of New York, as
to all matters, including matters of validity, construction, effect, performance
and remedies.
4.5 INTEGRATION. This Agreement sets forth the entire agreement
and understanding between the Parties as to the subject matter hereof and merges
all prior discussions between them. A Party shall not be bound by any
warranties, understandings or representations with respect to such subject
matter other than as expressly provided herein or in a writing signed with or
subsequent to execution hereof by an authorized representative of the Party to
be bound thereby.
4.6 OUTSIDE THE UNITED STATES. (a) There are countries in which
the owner of an invention is entitled to compensation, damages or other monetary
award for another's unlicensed manufacture, sale, lease, use or importation
involving such invention prior to the date of issuance of a patent for such
invention but on or after a certain earlier date, hereinafter referred to as the
invention's "protection commencement date" (e.g., the date of publication of
allowed claims or the date of publication or "laying open" of the filed patent
application). In some instances, other conditions precedent must also be
fulfilled (e.g., knowledge or actual notification of the filed patent
application). The Parties agree that (i) an invention which has a protection
commencement date in any such country may be used in such country pursuant to
the terms of this Agreement on and after any such date, and (ii) all such
conditions precedent are deemed satisfied by this Agreement.
(b) There may be countries in which a Party hereto may have, as a
consequence of this Agreement, rights against infringers of another Party's
patents licensed hereunder. Each Party hereby waives any such right it may have
by reason of such third party's infringement or alleged infringement of another
Party's patents.
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<PAGE> 21
(c) Each Party hereby agrees to register or cause to be
registered, to the extent that such Party reasonably determines that
registration or recordation is necessary under applicable law, and without
expense to the other Parties or any of their Related Companies, any agreements
wherein sublicenses are granted by it under the other Parties' patents licensed
hereunder. Each Party hereby waives any and all claims or defenses, arising by
virtue of the absence of such registration, that might otherwise limit or affect
its obligations to the other Parties.
4.7 ARBITRATION AND DISPUTE RESOLUTION. The Parties agree that the
procedures for discussion, negotiation and arbitration set forth in Article IX
of the Separation and Distribution Agreement, which Article IX is incorporated
herein by reference, shall apply to all disputes, controversies or claims that
may arise under or in connection with this Agreement, except as otherwise
provided in Section 2.11.
4.8 AMENDMENTS AND CHANGES. Subsequent to the execution of this
Agreement by all Parties, and solely to the extent that a change is desired by
and restricted to any two Parties without affecting the licenses and rights of
the third Party hereto, such two Parties may separately amend any provision of
this Agreement which governs the licenses and rights exchanged between them
without notifying, advising, consulting or requesting the concurrence of the
third Party hereto. Except as specifically provided herein, any other
modification affecting all three Parties shall require the written agreement and
signature of all the Parties.
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<PAGE> 22
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed
in triplicate originals by its duly authorized representatives on the respective
dates entered below.
AT&T CORP.
By: /s/
-------------------------------
Title:
-------------------------------
Date:
-------------------------------
NCR CORPORATION
By: /s/
-------------------------------
Title:
-------------------------------
Date:
-------------------------------
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<PAGE> 23
LUCENT TECHNOLOGIES INC.
By: /s/
-------------------------------
Title:
-------------------------------
Date:
-------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES.
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<PAGE> 24
EXHIBIT "A"
LIST OF RETAINED AT&T'S PATENTS
AND PATENT APPLICATIONS
<TABLE>
<CAPTION>
<S> <C> <C> <C>
Hanson 2-3 mailed 1/25/96 Benveniste 9 08/581694
Ball 3-5-2-3 mailed 2/23/96 Mayer 10 08/581693
Arora 1-1-7 mailed 3/19/96 Otto 1 08/581683
Bruno 10-11-10-8-38 mailed 3/13/96 Cox 1 08/581651
Brotman 1-2-1 mailed 12/29/95 Lubachevsky 6 08/581078
Jones 3 mailed 12/29/95 Feiertag 3 08/580909
Jones 4 mailed 12/29/95 Brotman 2-2 08/580702
Jones 5 mailed 12/29/95 Foladare 17-23-1 08/580679
Atal 9Re Re32580 Silverman 32 08/580671
Friedes 9-3 (DROPPED) IDS103523 Benveniste 7 08/580570
Bergano 14 (Mail 12/29/95) filed Benveniste 8 08/580568
Evangelides 2-2-1-4-7 (Mail filed Chaturvedi 1-10 08/580478
11/27/95) Wild 5 08/579709
Slusky 4 07/969679 Foladare 19-20-25-29 08/579540
Harris 3-4 07/966787 Foladare 11-13-17-19 08/579539
Clitherow 1 07/956709 Foladare 18-19-24-28 08/579188
Black 1-3-3-1-1-1-1-1-1-1-1 07/953040 Foladare 13-15-19-21 08/579184
Hou 3-3 07/935082 Goldman 31-2-37-4-2 08/579173
Bauer 4 (Eric) 07/932151 Furman 6-9-7 08/578362
Friedes 6 (ABANDONED) 07/905056 Jain 3-13 08/577892
Fodale 1 (US ABANDONED) 06/771557 Martinez 1 08/577891
Carlsen 1-2-1 07/843685 Garberg 2-3 08/576740
Darcie 23-8-13 08/613307 Cirelli 1-1 08/576733
Fuentes 10 08/608232 Aykin 2-5-2-4-4-3-3 08/576430
Rubin 6-4-1 08/606256 Lubachevsky 5 08/576388
Eslambochi 7 08/606122 Foladare 28-28-35 08/576387
Foladare 31-33-40-39 08/600690 Clancy 1-3-11-4-7-1 08/575789
Relyea 3-2 08/596791 Rahim 2 08/575378
Joseph 1-1-1-10 08/594552 Hill 1 08/574476
Amin 1-1 08/592945 Concepcion 1-3-1-2-4-3-2-3 08/574419
Lee 13 08/592814 Foladare 24-29-36-35 08/573839
Blahut 41-4-11-16 08/592783 Allen 16 08/573743
Foladare 26-26-33-33 08/590237 DeMont 1 08/573046
Grampp 1-6 08/587868 Chen 10-14 08/572982
Ricciardi 1-1 08/587079 Dalton 1-1-1-1 08/572826
Ragauram 2-3-2 08/587062 Krishnamurthy 5 08/571322
Jones 2 08/586021 Swanson 5 08/570879
Sahni 12-1 08/586009 Bossi 3-2-2 08/570146
Papanicolaou 3-3Re 08/585338 Bossi 2-1-1 08/570145
Gaulke 3-4-3 08/584417 Benedikt 2-3-2 08/569046
Gaulke 2-3-2 08/584416 Norris 1-8 08/562678
August 7 08/583144 Jankowitz 1-2-3-1 08/562229
Penzias 17 08/582006 Furman 5-9-6-2 08/560147
Maxemchuk 18 08/581717 Furman 4-8-5-1 08/559900
Foladare 30-32-39-37 08/581710 Dagdeviren 11-1-3-3 08/556726
August 8-18 08/581707 Kasday 12-1-1-2-6 08/555555
</TABLE>
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<PAGE> 25
<TABLE>
<CAPTION>
<S> <C> <C> <C>
Mishra 3 08/555534 Foladare 9-11-15 08/497060
Gupta 6 08/554957 Jaczak 1-1 08/497040
Cathey 1-1-1-1-1 08/553117 Eslambolchi 5 08/496786
Milito 4 08/552899 Bruno 5-6-5-6-5-7-5-23 08/495747
Ball 2-1 08/549359 Mayer 5 08/494610
Bruno 9-7-10-8-7-1-1 08/547216 Foladare 15-17-9-21-4-25 08/487357
Story 9 08/542482 August 6 08/479541
Atkins 3 08/539384 Eisdorfer 7-9-5 08/476811
Rosenthal 4-30-1 08/538679 Partridge 16 08/460398
Foladare 22-23-28 08/538331 Blonder 76-6-2-3 08/455939
Backaus 4-3-8-4-3-8-3 08/538109 Wynn 5 08/455932
Hall 2-3-3-2-2 08/536914 Faust 1 08/451298
Bulfer 4 08/536296 Faust 2 08/451248
Eslambolchi 6-1 08/534750 Cerciello 1-1-1 08/449984
Busche 1 08/534151 Carlsen 7-8-4 08/449377
Aykin 1-4-1-3-3-2-2 08/533045 Carlsen 8 08/447670
Ronen 2 08/532336 Civanlar 2-2 08/447666
Penzias 16-13 08/531508 Allen 14 08/443509
Glance 37 08/530551 Carlsen 6-7-3 08/442943
Javitt 2 08/529704 Bhusri 2 08/442529
Zave 1 08/528900 Hodges 2-3 08/440183
Buhrke 3-6-4 08/528821 Alesio 5-17-3-11 08/439615
Gorin 6-1-1-18 08/528578 DeJager 2 08/431607
Foladare 20 08/528292 Foladare 10-12-68-16-22 08/431351
Mumick 5-8 08/527241 Foladare 14-16-20 08/431228
Buck 1-1 08/527117 Eslambolchi 4 08/430652
Cross 1-1-1-3-1-1 08/526794 Chu 4 08/430643
Cross 1-1-1-3-1-1 08/526794 Chu 5 08/430634
Bodeep 5 08/526736 Miska 4-5 08/424825
Benedikt 1-2-1 08/526609 Mark 1 08/421709
Jagadish 13-4-7 08/525931 Funkhouser 1 08/418338
Bruno 8-5-6-6-9-2-6-6-7 08/525440 Corrigan 1-9-4-3 08/414848
Bruno 08/524551 Burns 1-7-1-2-6-1 08/414555
Foladare 23-24-10-29-5-31 08/524360 Akinpelu 4-5-4-2-2-2-2-7-4-2 08/410585
Foladare 21-22-27-30 08/520425 Farber 1-6-2-1-1 08/409579
Baker 6-4 08/519268 Eisdorfer 3-8-1 08/408429
Feldman 2-2-2 08/515471 Ash 9-2-1-1-10-1-2 08/407171
Greenspan 8 08/512609 Civanlar 10-42 08/402664
Civanlar 5-5 08/511430 Chang 1-1-1 08/402235
Ehrlich 2-2 08/511034 Bruno 3-2-2-4-1 08/401315
Civanlar 3-3 08/509308 Bruno 4-3-3-5 08/401314
Civanlar 6-6 08/509307 Velardo 1-4 08/398272
Gillon 5-3-3 08/509004 Kapsales 7-7 08/395009
Foladare 16-18-22 08/508373 Kapsales 6 08/391803
Byrd 1-1-1 08/508143 Faynberg 1 08/385013
Bruno 6-7-24 08/507868 Foladare 8-10-6-14-8 08/385004
Buhler 1-1-1 08/505507 Foladare 2-13-13-17 08/379425
Gitlin 38-11 08/504481 Creswell 3-5-2-3 08/376501
Akinpelu 5-6-5 08/503254 Foladare 3-14-8-13 08/374430
Weber 26 08/502783 Schlanger 7 08/367386
Mayer 7-9 08/502268 Markowitz 3 08/365611
Kochanski 24 08/499077 Carr 1-6 08/364650
</TABLE>
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<PAGE> 26
<TABLE>
<CAPTION>
<S> <C> <C> <C>
Mayer 4 08/364563 Gabin 1-6 08/175021
Rudrapatna 2-2-20-15-20 08/361355 Bish 1-1-3-1-1 08/172374
Chen 1-4-4-2-1-4-4-4 08/357473 Garland 1-1 08/171311
Bergano 12-1 08/355798 Darcie 1 08/170624
Bergrano 13-2 08/355788 Friedes 11-7-1 08/167596
Fernandez 1-1-15 08/355384 Kenney 1 08/166496
Barber 1-1-1-1 08/355382 Holterman 1 08/166413
Blaze 2 08/351918 La Porta 4-4 08/164521
Glance 38 (ABANDONED) 08/350864 Wynn 2 08/160770
Eisdorfer 2-5-7-9-4-11 08/346655 Rubin 1 08/156557
Eisdorfer 1-4 08/346654 Hall 1-1-2-1-1 08/155614
Chakrin 3 08/344394 Rangachar 1 08/152993
Kapsales 4 08/344307 Kapsales 3 08/144061
Kapsales 5 08/344306 Raguram 1-1-1 08/140780
Cannon 8 08/333908 Gibilisco 2 08/115366
Buczny 1-1-2 08/333668 Chandra 1-1-1-2-1-1-10-6 08/092970
August 5-10 08/333183 Partridge 3 08/086956
Blyler 38 08/332227 Ehrlich 3-3 08/085225
Baechle 1-3-1-1-4-2 08/332225 Kochanski 7 (ABANDONED) 08/071133
Kocan 2-2-1-1 08/330418 Blahut 33-6 08/056973
Freedman 1 08/324942 Ahuja 7-2-3-1-1-1-7 08/051724
Akinpeltu 3-3-3-1-1-1-6-3-1 08/324825 Relyea 2-1 08/040785
Gorham 1-3-4-3 08/324642 Penzias 6-2-2 08/006333
Mollenauer 28 08/323949 Das 1-1 mailed 3/19/96
Chanda 2-1-2 08/323303 Hill 2-4 mailed 3/15/96
Paulus 2-2-1 08/323294 Helfman 6 60/011435
Basu 1-2-3-1 08/323197 Franklin 1-1 60/010993
Foladare 6-7-1-1-8-3-16 08/316613 August 9-8 60/009363
Bergano 11 08/312848 Baker 7 60/004670
Allen 10-1 08/311647 Ahamed I 11-11 08/000421
Charalambous 2-2-3 08/309361 Mondello 4156104
Leunc, 2 08/305003 Mearns 1 4162377
Asthana 4-3 08/293857 Weber 1 4191860
Foladare 5-15-6-3-7-3-15 08/282697 Jordan 1-2 4313035
Bass 1-1-1-1-8-1-1 08/282450 Ash 1-1 4345116
Kravitz 3-4-2 08/279764 Asmuth 1 4348554
Foladare 4-5-2-6-2-14 08/264651 Glance 7-9 4383332
D'Ambrogio 3-2-4-4-5 08/261626 Pecon 4388710
Andruska 2-4 08/258197 Boivie 1 4453217
Gordon 8-1-2 08/251827 Wehr 4470115
Blahut 35-2-6-8 08/236286 Johnson 4530051
Vasquez 2 08/234731 Anctil 4538881
Gitlin 34-12-21-5 08/234197 Pike 1 4555775
Bruno 1-1 08/215069 Decker 4557556
Salimando 4 08/214341 Everhart 3-1 4578531
Akinpelu 2-2-2 (ABANDONED) 08/203102 Anderson 4586186
Katseff 2-3 08/201863 Lee 1-1 4899373
Amarant 2-1-4-4-1-2-1-1 08/176006 Asmuth 3-1-1-1-1-1 4611094
Feiertag 1-2-1 08/176005 Asmuth 4 4611096
Feiertag 2-5-1-1-2 08/176002 Fontenot 4616359
Wert 1 08/175092 Anderson 4633464
Merritt 1-1 08/175022 Hayden 4653090
</TABLE>
-23-
<PAGE> 27
<TABLE>
<CAPTION>
<S> <C> <C> <C>
Ash 2-2 4669113 Gupta 1-1-1 5206899
Gordon 4700339 Bowker 4 5206902
Frauenthal 1-1-1-3 4737983 Pula 1 5208848
Fodale 2 4756020 Ramkumar 1 5212727
Gordon, et al 4763191 Creswell 1-1-1-1-1-1-1-1 5222125
Day l 4763356 Flynn 1-1 5223699
Bauer 1-1-1-1 4776004 Funk 5226075
McNabb 1-1 4788718 Bissell 1-1 5243645
Else 2-2 4811378 Heizer 5249290
Binkerd et al 3-1-3-4 4827500 Frey 9-22 5253288
Adl 4834479 Blake 1-1 5270919
Franco 1 4893330 McNair 4 5276444
Bauer 1 (Eric) 4899377 Papanicolaou 3-3 5278889
Johannes 4914655 Dabbaghi 2-2-8-2-5-2-2-3-8-6 5282243
Kordahi 4914960 Shaw 1 5283824
Gillon 3-2-4 4922348 Zoccolillo 4 5287199
Scanlon 3 4922522 Atkins 1-2-3-2 5287403
Bauer 3-2-1-3-1 4930154 Kasday 5-1 (Vasile) 5289523
Baral 3-1-1-7-7-1-6-1-3-1 4932042 Levy 2-3 5291550
Brown 4-2-1-2-2-8-2-2-5-3 4939771 Conn 2-3-2-2 5291551
Shepard 2 4953203 Bergano 5309530
Bhusri 1 4959849 Bergano 5309535
Daudelin 5 4959855 Friedes 4-2 5311572
Brown 3-1-1-1-7-1-4-2 4972461 Friedes 7-1-7-1 5311583
Kordahi 5000619 Penzias 8 5311594
Benyacar 1-1-2-1-1-1-1-1-1-1 5003584 Hou 1-1-1 5325421
Catron 3-1-5-2-3-2-1-1-2 5018191 Binns 1-2-2-2-2-2 5329308
Chang 5027110 Friedes 5-1-4-5 5329581
Catron 2-4-1-2-1-1 5033079 Fraser 17-5-11 5329589
Mollenauer 5035481 Brown 6-5-4-4-10-4-7-5 5333180
Mollenauer 5039199 Doherty 1-1-1 5333184
Bauer 4-3-2-4-2 5056134 Gurpta 2 5333186
Mansour 1-1 5058105 Bowker, et al 5-2-2 5333195
Mollenauer 5058974 Ananthanpillal 12 5333308
Marcuse 5063559 Cole 5335224
Farel 1-1 5067074 Anderson 5343320
Ash 5-2-1 5086460 Bergano 5345331
Ash 6-3-7-1 5101451 D'Urso 1-1-1-1-1 5353335
Bergano 5111322 Hou 2-2 5353336
Desurvire 5117303 Scobee l 5353339
Ash 7-2 5130982 Gordon 5357364
Wegrzynowicz 1 5136636 Gupta 2-1-6 5357564
Kaplan 1 5163087 Gnauck 5365362
Brown 5 5164983 Chakravarti 1-1-1-1-1-1 5369695
Bergano 5173957 Campbell 1-1-1-1-3 5373550
Dowden 5-5-8-2-3-6-4-3-3 5181237 D'Ambrogio 1-1-1-2-2 5375124
Medamanna 1-1-4 5181238 Rosinski 1-2 5381467
Askew 1-1-1-4-1-2-4-2-2-1 5182744 Creswell 2-2-1-2 5384831
Sahni-3 5184345 Ahmad 1 5386467
Chau 4-2-2-2-2-1 5187710 Bauer 7 (Eric) 5388257
Rosenberg 5191631 Freeman 2-1-3-1 5390232
Bowker, et al. 3-1-1 5195132 Casselman 2-2-2 5390243
</TABLE>
-24-
<PAGE> 28
<TABLE>
<CAPTION>
<S> <C> <C> <C>
Chang 1-3-13-2 5392336 Messina 5462389
Rosenthal 3 5392342 Bash 1-1-1-1 5463677
Davitt 5392343 Collins 2-1-1 5463683
Ash 8-4-8-3 5392344 Gaechter 3-11-4 5463685
Otto 6 5392345 Chu 5463711
Fischell 1-1-2-1-5 5394463 Chiller 1-1-1 5465293
Alger 5396542 Furman 3 5465295
Entenmann 2-2-8-2-5-2-2-3-8-6 5403999 Mukherjee 1 5465387
Pei l 5406620 Brown 2-2-4-2-2-3 5471877
McFarland 1-1 5408526 Mamyshev 3-32 5473458
Roche l-4 5410538 Hansen 5-19 5473625
Bauer 5 (Eric) 5412808 Partridge 6 5473671
Lee 5 5416835 Partridge 2 5473681
Seshadri 19-11-3 5420851 D'Amato 1-2-1-1-2-4 5473677
Guzman 1 5420917 La Porta 3-3 5473679
Low 2-16-2 5420926 Miller 6-5 5475746
Freeman 6-2-2-3 5428608 Akinpelu 1-1-1 5475749
Brady 1-1 5430782 Eskildsen 1-6 5477368
Feit 1-1-1-3-3-4 5430791 Alesio 4 5481600
Burd 2-2-1-2-4-1-4 5432845 Griffiths 1-1-2-1 5481602
Fraser 16 5434914 Gutierrez 1-1-2-5 5481603
Cox 7-4 5434920 Colbert 5 5485510
Isidoro 3-9 5440563 Allen 8-1 5485515
Slusky 3 5440620 Atkins 2-4-6-4 5487107
Bergano 5440659 Slusky 6 5487111
Gitlin 33-9 5442625 Kaplan 4-1-1 5488569
Blahut 30-2 5446490 lyob 1-2-1-3-2-2 5448632
Smith 2 5450123 Bergano I 0 5491576
Amarant 3-2-3-2 5450477 Gupta 5-2-2-10 5506890
Alesio 1-10-2-3 5450479 Billings 2-3-3 5506894
Leung 3 5457408
</TABLE>
-25-
<PAGE> 29
EXHIBIT B
LIST OF CERTAIN PATENTS ASSIGNED TO NCR BY AT&T
<TABLE>
<CAPTION>
NAME OF NAME OF
FIRST INVENTOR PATENT NUMBER FIRST INVENTOR PATENT NUMBER
<S> <C> <C> <C>
Ritchie 4135240 Auer 4725694
Pirz 4149242 Chang 4725834
Freeman 4195338 Waggner 4733823
Gabbe 4255796 Afshar 4734854
Christian 4279020 Welsch 4744023
Ahuja 4281381 Blanset 4744048
Draper 4295219 Blanset 4747040
Ahuja 4384323 Kumpati 4774661
Brown 4430526 Restrepo 4779088
Gabbe 4459658 Geis 4787759
York 4462077 Bogatin 4816811
Forson 4481577 Agrawal 4825354
Ahuja 4514728 Bishop 4849877
Durkee 4516140 Taska 4856091
Durkee 4538156 Beck 4893270
DeBruler 4539637 Lubachevsky 4901260
Alles 4542375 Bishop 4914653
Reddington 4554631 Agrawal 4930072
Linderman 4611280 Hopfield 4937872
Keverian 4613987 Huang 4943909
Bednar 4630196 Gansner 4953106
Teng 4642758 Clarey 4975829
Eng 4652733 Moshenberg 5020003
Aranguren 4674085 Chou 5020112
Grinn 4675808 Thompson 5020123
Zave 4685125 Krishnakumar 5067104
MacDonald 4697175 Denker 5067164
Goldstein 4698752 Selzer 5075843
Jacobs 4704675 Bishop 5093913
DiPiazza 4707689 Kiang 5101439
Kasday 4710760 Laggis 5109515
</TABLE>
-26-
<PAGE> 30
<TABLE>
<S> <C> <C>
Fan 5111512 Thomas 10
Bishop 5115505 IDS 110434
Holtzmann 5129013 Evans 21-27-3
Piepho 5179707 LeCun 14
Black 5184115 Denker 21-1
Civanlar 5187660 Evans 15-1-1
Kautz 5259067 Borgida 2-2-1-2-2
McNair 5278905 Graf 15-6
Huh 5396612 Nohl 2-3
Evans 25-5-17-3
Thomas 9
</TABLE>
-27-
<PAGE> 31
EXHIBIT C
LIST OF AT&T'S SPECIFIED PATENTS
<TABLE>
<CAPTION>
<C> <C> <C>
1 Mondello 4156104
2 Jordan 1-2 4313035
3 Ash 1-1 4345116
4 Pecon 4388710
5 Anctil 4538881
6 Decker 4557556
7 Everhart 3-1 4578531
8 Anderson 4586186
9 Lee 1-1 4599373
10 Asmuth 4 4611096
11 Fontenot 4616359
12 Anderson 4633464
13 Ash 2-2 4669113
14 Gordon 4700339
15 Frauenthal 1-1-1-3 4737983
16 Gordon, et al 4763191
17 Bauer 1-1-1-1 4776004
18 McNabb 1-1 4788718
19 Binkerd et al 3-1-3-4 4827500
20 Adl 4834479
21 Franco 1 4893330
22 Bauer 1 (Eric) 4899377
23 Johannes 4914655
24 Kordahi 4914960
25 Gillon 3-2-4 4922348
26 Scanlon 3 4922522
27 Bauer 3-2-1-3-1 4930154
28 Baral 3-1-1-7-7-1-6-1-3-1 4932042
29 Brown 4-2-1-2-2-8-2-2-5-3 4939771
30 Shepard 2 4953203
31 Bhusri 1 4959849
32 Daudelin 5 4959855
33 Brown 3-1-1-1-7-1-4-2 4972461
34 Kordahi 5000619
35 Benyacar 1-1 -2-1-1-1-1-1-1-1 5003584
36 Catron 3-1-5-2-3-2-1-1-2 5018191
</TABLE>
-28-
<PAGE> 32
<TABLE>
<C> <C> <C>
37 Catron 2-4-1-2-1-1 5033079
38 Mollienauer 5035481
39 Mollenauer 5039199
40 Bauer 4-3-2-4-2 5056134
41 Mansour l-1 5058105
42 Mollenauer 5058974
43 Marcuse 5063559
44 Farel 1-1 5067074
45 Ash 5-2-1 5086460
46 Ash 6-3-7-1 5101451
47 Bergano 5111322
48 Desurvire 5117303
49 Ash 7-2 5130982
50 Wegrzynowicz 1 5136636
51 Kaplan 1 5163087
52 Brown 5 5164983
53 Bergano 5173957
54 Dowden 5-5-8-2-3-6-4-3-3 5181237
55 Medamanna 1-1-4 5181238
56 Askew 1-1-1-4-1-2-4-2-2-1 5182744
57 Sahni 3 5184345
58 Chau 4-2-2-2-2-1 5187710
59 Rosenberg 5191631
60 Bowker, et al. 3-1-1 5195132
61 Gupta 1-1-1 5206899
62 Bowker 4 5206902
63 Pula 1 5208848
64 Ramkumar l 5212727
65 Creswell 1-1-1-1-1-1-1-1 5222125
66 Flynn 1-1 5223699
67 Funk 5226075
68 Bissell 1-1 5243645
69 Frey 9-22 5253288
70 Blake 1-1 5270919
71 McNair 4 5276444
72 Papanicolaou 3-3 5278889
73 Dabbaghi 2-2-8-2-5-2-2-3-8-6 5282243
74 Shaw 1 5283824
75 Zoccolillo 4 5287199
76 Atkins 1-2-3-2 5287403
77 Kasday 5-1 (Vasile) 5289523
78 Levy 2-3 5291550
79 Conn 2-3-2-2 5291551
</TABLE>
-29-
<PAGE> 33
<TABLE>
<C> <C> <C>
80 Bergano 5309530
81 Bergano 5309535
82 Friedes 4-2 5311572
83 Friedes 7-1-7-1 5311583
84 Penzias 8 5311594
85 Hou 1-1-1 5325421
86 Binns 1-2-2-2-2-2 5329308
87 Friedes 5-1-4-5 5329581
88 Fraser 17-5-11 5329589
89 Brown 6-5-4-4-10-4-7-5 5333180
90 Doherty 1-1-1 5333184
91 Gupta 2 5333186
92 Bowker, et al 5-2-2 5333195
93 Ananthanpillai 2 5333308
94 Cole 5335224
95 Anderson 5343320
96 Bergano 5345331
97 D'Urso 1-1-1-1-1 5353335
98 Hou 2-2 5353336
99 Scobee 1 5353339
100 Gordon 5357364
101 Gupta 2-1-6 5357564
102 Gnauck 5365362
103 Chakravarti 1-1-1-1-1-1-1-1 5369695
104 Campbell 1-1-1-1-3 5373550
105 D'Ambrogio 1-1-1-2-2 5375124
106 Rosinski 1-2 5381467
107 Creswell 2-2-1-2 5384831
108 Ahmad 1 5386467
109 Bauer 7 (Eric) 5388257
110 Freeman 2-1-3-1 5390232
111 Casselman 2-2-2 5390243
112 Chang 1-3-13-2 5392336
113 Rosenthal 3 5392342
114 Davift 5392343
115 Ash 8-4-8-3 5392344
116 Ofto 6 5392345
117 Fischell 1-1-2-1-5 5394463
118 Alger 5396542
119 Entenmann 2-2-8-2-5-2-2-3-8-6 5403999
120 Peil 5406620
121 McFarland 1-1 5408526
122 Lee 5 5416835
</TABLE>
-30-
<PAGE> 34
<TABLE>
<C> <C> <C>
123 Guzman l 5420917
124 Freeman 6-2-2-3 5428608
125 Brady 1-1 5430782
126 Feit 1-1-1-3-3-4 5430791
127 Burd 2-2-1-2-4-1-4 5432845
128 Fraser 16 5434914
129 Cox 7-4 5434920
130 Isidoro 3-9 5440563
131 Slusky 3 5440620
132 Bergano 5440659
133 Blahut 30-2 5446490
134 Smith 2 5450123
135 Amarant 3-2-3-2 5450477
136 Alesio 1-10-2-3 5450479
137 Messina 5462389
138 Collins 2-1-1 5463683
139 Gaechter 3-11-4 5463685
140 Furman 3 5465295
141 lyob 1-2-1-3-2-2 5488632
142 Fodale 1 (US ABANDONED) 06771557
143 Carisen 1-2-1 07/843685
144 Friedes 6 (ABANDONED) 07/905056
145 Bauer 4 (Eric) 07/932151
146 Hou 3-3 07/935082
147 Black 1-3-3-1-1-1-1-1-1-1-1 07/953040
148 Clitherow 1 07/956709
149 Harris 3-4 07966787
150 Slusky 4 07/969679
151 Ahamed 11 -11 08/000421
152 Penzias 6-2-2 08/006333
153 Relyea 2-1 08/040785
154 Ahuja 7-2-3-1-1-1-7 08/051724
155 Blahut 33-6 08/056973
156 Bash 1-1-1-1 08/068355
157 Kochanski 7 (ABANDONED) 08/071133
158 D'Amato 1-2-1-1-2-4 08/081504
159 Ehrlich 3-3 08/085225
160 Partridge 3 08/086956
161 Partridge 2 08/086975
162 Chandra 1-1-1-2-1-1-10-6 08/092970
163 Slusky 6 08/099114
164 Gibilisco 2 08/115366
165 Gutierrez 1-1-2-5 08/127864
</TABLE>
-31-
<PAGE> 35
<TABLE>
<C> <C> <C>
166 Mukherjee 1 08/134358
167 Raguram 1-1-1 08/140780
168 Kapsales 3 08/144061
169 Rangacharl 08/152993
170 Gupta 5-2-2-1 0 08/153526
171 Hall 1-1-2-1-1 08/155614
172 Rubin 1 08/156557
173 Wynn 2 08/160770
174 La Porta 3-3 08/164514
175 La Porta 4-4 08/164521
176 Holterman 1 08/166413
177 Kenney l 08/166496
178 Friedes 1 1 -7-1 08/167596
179 Kaplan 4-1-1 08/170139
180 Darcie 1 08/170624
181 Garland 1-1 08/171311
182 Bish 1-1-3-1-1 08/172374
183 Bergano 1 0 08/173288
184 Gabin 1-6 08/175021
185 Merrift 1-1 08/175022
186 Wert 1 08/175092
187 Allen 8-1 08/175095
188 Chiller 1-1-1 08/175875
189 Feiertag 2-5-1-1-2 08/176002
190 Feiertag 1-2-1 08/176005
191 Amarant 2-1-4-4-1-2-1 -1 08/176006
192 Atkins 2-4-6-4 08/195414
193 Billings 2-3-3 08/241817
194 Brown 2-2-4-2-2-3 08/260164
195 D'Ambrogio 3-2-4-4-5 08/261626
196 Kravitz 3-4-2 08/279764
197 Miller 6-5 08/291316
198 Leung 3 08/305004
199 Chakrin 3 08/344394
200 Creswell 3-5-2-3 08/376501
201 Alesio 4 08/383907
202 Miska 4-5 08/424825
203 Alesio 5-17-3-11 08/439615
204 Hodges 2-3 08/440183
205 Carisen 6-7-3 08/442943
206 Allen 14 08/443509
207 Carlsen 8 08/447670
208 Carisen 7-8-4 08/449377
</TABLE>
-32-
<PAGE> 36
<TABLE>
<C> <C> <C>
209 Wynn 5 08/455932
210 Kochanski 24 08/499077
211 Mayer 7-9 08/502268
212 Gillon 5-3-3 08/509004
213 Ehrlich 2-2 08/511034
214 Greenspan 8 08/512609
215 Feldman 2-2-2 08/515471
216 Backaus 4-3-8-4-3-8-3 08/538109
</TABLE>
-33-
<PAGE> 37
EXHIBIT D
LIST OF LUCENT'S SPECIFIED PATENTS
<TABLE>
<CAPTION>
CASE NAME PAT/APP NUMBER
<S> <C>
Brandenburg 1 5040217
Dorward 1 5463641
Johnston 13 5285498
Johnston 14 5227788
Hall 4-25 5341457
Allen 12-3-1 08/384049
Allen 13-5-37-2 08/384097
Brandenburg 4-34 application
Dorward 4-36 08/381056
Dorward 6-28-39-3-9 application
Ferreira 2-33 08/334889
Hall 5-31 08/284324
Johnston 23 5481614
Johnston 27-1 5488665
Johnston 29-2 08/524198
Johnston 32 08/310898
Adelmann 2-2 4726019
Buhrke 6-4-3-7-1 5280470
Buhrke 3-6-4 08/528821
Caram 2-1-14 5163045
Eckberg 2-2-2-2 4769811
Eckberg 1-1-1-1 4769810
Franklin 3 4677616
Fraser 10 4821258
Fraser 14-4-1 5272697
Hahne 2-3-9 5014265
Kanakia 2 5309432
Hahne 4-10 5163046
Fraser 6 4499576
Leung 9-4 5103444
Leung 6-1-1 4905231
Punj 5-1 5150358
Kanakia 6-1 08/311079
Keshav 3 08/287018
</TABLE>
-34-
<PAGE> 38
<TABLE>
<S> <C>
Keshav 5-1 08/297209
Keshav 4 08/333829
Kalampoukas l-l-l 08/460965
(Ramakrishknan)
Lund 1-1-1 08/350347
Pirz 4-10-2-1 4348550 (RE32012)
Levinson 4-18-7 4587670 (RE33597)
Jayant 9-1 4617676
Juang 2-5-21-8 4783804
Church 1 4829580
Chen 2 5233660
Kleijn 14 08/195221
Chen 14 08/530980
Ackenhusen 4 4847906
Alesio 3 08/279962
Allen 12-3-1 08/384049
Allen 13-5-37-2 08/384097
Amitay 14 5371780
Amitay 15 5384826
Atal 13-1 4709390
Atal 15-1 4827517
Atal 16 4764963
Atal 7 4220819
Atal 8 4354057
Baker 1-1-2-1-1.1-1-1 4680786
Bales 20-15:
Bales 29-14-2 08/371652)
Benveniste 5345499
Benveniste 4-4-11-3-3 08/238138
Bi 1-1 5134709
Bicknell 1-2-1 4754479
Boccuzzi 3 5438592
Bollinger 1-1-1 5226071
Bronson 1-8-1-7 4797926
Bronson 2-9-1-1-2 4771465
Carioni 1-38-4-12 08/404406
Chen 10 08/212435
Chen 11-8-20 08/263212
Chen 12-2 08/324283
Chen 13-3 08/389390
Chen 2 5233660
Chen 6 08/057068
Chen 7 5339384
</TABLE>
-35-
<PAGE> 39
<TABLE>
<S> <C>
Chen 8 08/212408
Chen 9-1 08/212475
Cimini 7-4-3 5276730
Cosentino 1 5097499
Cyr 1-1-1 4974156
DeSantis 1-2-3 08/304319
Doshi 13-16-11-10-4-9-9 08/392600
Driessen 1 08/247172
Driessen 2-8-13
Eng 31-24-11 08/490981
Fortune 3-1-4-1-1-1:
Fortune 4-2:
Fuentes 3 5353333
Fuentes 5 5440613
Giannoglou 1-1 08/276080
Gitlin 37-17-1:
Gokcen 2-2-4 5125024
Goodman 7 4916691
Greenstein 9-6-12 08/374381
Grimes 28-12:
Grimes 50:
Grimes 53:
Grimes 65: 5479482
Grimes 66 5481590
Haas 15:
Hanly 1 08/281956
Kasper 1-1:
Kasper 3:
Ketchum 2-3-1 4899385
Ketchum 4 5313554
Kleijn 10 07/990309
Kleijn 12 08/083426
Kleijn 15 08/227845
Kleijn 18-1 08/430676
Kleijn 9-1 07/911850
Kroon 2 5450449
Kroon 4 08/482715
Kroon 5-10 08/482708
La Porta 10-8-8-8
La Porta 7-1-6 08/324427
Lee 1-1 4899373
Mailhot 1 5061924
Pirz 4-10-2-IRe RE32012
</TABLE>
-36-
<PAGE> 40
<TABLE>
<S> <C>
Ramesh 1 08/216371
Regis 1-1 15442679
Samadi 1-2
Seshadri 11 5479448
Shoham 08/482709
Shoham 8 08/485420
Solondz 1 08/346805
Swaminathan 1 4956871
Thomson 6 5179626
Thomson 7 5023910
Thomson 9 4972490
Urata 1:
Vannucci 8 08/092379
Weinman 1 5461379
Yun 1 08/508574
</TABLE>
-37-
<PAGE> 41
EXHIBIT E
LIST OF PATENTS REFERENCED IN SECTION 2.11(D)
<TABLE>
<CAPTION>
CASE NAME U.S. PATENT/APPLICATION NUMBER
<S> <C>
Chraplyvy 6-1-5 5,225922
DiGiovanni 3-7 5,050949
DiGiovanni 4-21 5,058976
Giles 13-19 5,241414
Grubb 2 5,323404
Hasegawa 3 4,406516
Hasegawa 6-2 4,558921
Hasegawa 8-3-19 5,140656
</TABLE>
-38-
<PAGE> 1
Exhibit 10.8
AMENDED AND RESTATED
TECHNOLOGY LICENSE AGREEMENT
among
AT&T CORP.
NCR CORPORATION
and
LUCENT TECHNOLOGIES INC.
Effective as of March 29, 1996
<PAGE> 2
AMENDED AND RESTATED
TECHNOLOGY LICENSE AGREEMENT
Table of Contents
<TABLE>
<S> <C>
ARTICLE I DEFINITIONS....................................................... 2
1.1 Applied Corporate Technology........................................ 2
1.2 AT&T's Network Technology........................................... 2
1.3 AT&T's Proprietary Feature.......................................... 2
1.4 AT&T's Restricted Technology....................................... 2
1.5 AT&T Services Business.............................................. 2
1.6 AT&T's Technology................................................... 2
1.7 AT&T's Wireless Services Technology................................. 2
1.8 Common Support Function Software.................................... 2
1.9 Copyrights.......................................................... 3
1.10 Corporate Technology................................................ 3
1.11 Enterprise Technology............................................... 3
1.12 LUCENT Business..................................................... 3
1.13 LUCENT's Product Realization Technology............................. 3
1.14 LUCENT's Restricted Technology...................................... 3
1.15 LUCENT's Specified Technology....................................... 3
1.16 LUCENT's Technology................................................. 3
1.17 Mask Works.......................................................... 3
1.18 NCR's Product Realization Technology................................ 3
1.19 NCR's Restricted Technology......................................... 4
1.20 NCR's Specified Technology.......................................... 4
1.21 NCR's Technology.................................................... 4
1.22 Related Companies of AT&T........................................... 4
1.23 Related Companies of NCR............................................ 4
1.24 Related Companies of LUCENT......................................... 4
1.25 Technology.......................................................... 4
ARTICLE II ACCESS AND USE OF ENTERPRISE TECHNOLOGY.......................... 5
2.1 Access to Enterprise Technology.................................... 5
2.2 Export Control..................................................... 5
2.3 AT&T's Rights to Use Enterprise Technology......................... 5
2.4 NCR's Rights to Use Enterprise Technology......................... 6
2.5 LUCENT's Rights to Use Enterprise Technology...................... 6
2.6 Procurement........................................................ 8
2.7 Exclusion of AT&T's Wireless Services Technology................... 8
ARTICLE III TERMINATION..................................................... 8
3.1 Voluntary Termination.............................................. 8
3.2 Survival........................................................... 9
3.3 Change of Control of or Certain Acquisitions by NCR................ 9
</TABLE>
<PAGE> 3
<TABLE>
<S> <C>
ARTICLE IV MISCELLANEOUS PROVISIONS......................................... 9
4.1 Agreement Prevails.................................................. 9
4.2 Nothing Construed................................................... 9
4.3 Disclaimer.......................................................... 9
4.4 No Patent Licenses.................................................. 9
4.5 Confidentiality..................................................... 9
4.6 Nonassignability................................................... 10
4.7 Addresses.......................................................... 10
4.8 Choice of Law...................................................... 10
4.9 Integration........................................................ 10
4.10 Arbitration and Dispute Resolution................................. 11
4.11 Amendments and Changes............................................. 11
Exhibit A List of AT&T's Network Technology................................ 14
[Exhibit B Intentionally Left Blank]....................................... 15
Exhibit C List of AT&T's Restricted Technology............................. 16
Exhibit D List of NCR's Product Realization Technology..................... 17
Exhibit E List of NCR's Restricted Technology.............................. 18
Exhibit F List of NCR's Specified Technology............................... 19
Exhibit G List of LUCENT's Product Realization Technology.................. 20
Exhibit H List of LUCENT's Restricted Technology........................... 21
Exhibit I List of Applied Corporate Technology............................. 22
</TABLE>
<PAGE> 4
AMENDED AND RESTATED
TECHNOLOGY LICENSE AGREEMENT
This Agreement is effective as of March 29, 1996, among AT&T CORP., a
New York corporation ("AT&T"), having an office at 32 Avenue of the Americas,
New York, New York 10013, NCR CORPORATION, a Maryland corporation ("NCR"),
having an office at 101 West Schantz Avenue, Dayton, Ohio 45479, and LUCENT
TECHNOLOGIES INC., a Delaware corporation ("LUCENT"), having an office at 600
Mountain Avenue, Murray Hill, New Jersey 07974 (each hereinafter referred to as
a "Party"). Capitalized terms used herein and not otherwise defined shall have
the respective meanings assigned to them in Article I hereof or as assigned to
them in the Separation and Distribution Agreement (as defined below).
WHEREAS, the Board of Directors of AT&T has determined that it is in the
best interests of AT&T and its shareholders to separate AT&T's existing
businesses into three independent businesses; and
WHEREAS, as part of the foregoing AT&T, NCR and LUCENT have entered into
a Separation and Distribution Agreement, dated as of February 1, 1996 (the
"Separation and Distribution Agreement"), which provides, among other things,
for the Separation of the LUCENT Assets and LUCENT Liabilities, the IPO, the
Distribution and the execution and delivery of certain other agreements in order
to facilitate and provide for the foregoing; and
WHEREAS, AT&T desires to receive and NCR and LUCENT, respectively, are
each willing to grant to AT&T certain rights to use technology which is owned by
NCR and LUCENT, respectively, on or after the date hereof; and
WHEREAS, NCR desires to receive and AT&T and LUCENT, respectively, are
each willing to grant to NCR certain rights to use technology retained and owned
by AT&T and technology owned by LUCENT on or after the date hereof; and
WHEREAS, LUCENT desires to receive and AT&T and NCR, respectively, are
each willing to grant to LUCENT certain rights to use technology retained and
owned by AT&T and technology owned by NCR on or after the date hereof.
NOW, THEREFORE, in consideration of the mutual promises of the Parties,
and of good and valuable consideration, it is agreed by and between the Parties
as follows:
<PAGE> 5
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following terms in capital letters are
defined in this Article I and shall have the meaning specified herein:
1.1 APPLIED CORPORATE TECHNOLOGY means the Technology listed in
Exhibit "I". By separate Technology Assignment and Joint Ownership Agreement of
even date herewith, AT&T has assigned to LUCENT and NCR equal undivided
one-third (1/3) interest in the Technology listed in Exhibit "I".
1.2 AT&T'S NETWORK TECHNOLOGY means Technology related to the
infrastructure of the AT&T Global Network as listed in Exhibit "A".
1.3 AT&T'S PROPRIETARY FEATURE means any AT&T network feature
currently committed and/or deployed which LUCENT exclusively provides to AT&T
pursuant to a separate existing development or procurement agreement between
AT&T and LUCENT.
1.4 AT&T'S RESTRICTED TECHNOLOGY means only those items of AT&T's
Technology listed in the attached Exhibit "C".
1.5 AT&T SERVICES BUSINESS shall have the meaning set forth in the
Separation and Distribution Agreement.
1.6 AT&T'S TECHNOLOGY means any and all portions of Enterprise
Technology existing as of the Closing Date, which were developed by or for, or
purchased by the AT&T Services Business. The term includes AT&T's Restricted
Technology, AT&T's Network Technology and AT&T's Wireless Services Technology
but shall not include Applied Corporate Technology, NCR's Technology, LUCENT's
Technology, Common Support Function Software or Corporate Technology.
1.7 AT&T'S WIRELESS SERVICES TECHNOLOGY means all Technology
developed solely by or for the AT&T Wireless Services business, or by AT&T or a
third party for the AT&T Wireless Services business, without any substantial
involvement by LUCENT or NCR and related to the business of AT&T Wireless
Services Inc., an AT&T Subsidiary, including both cellular and PCS technology,
both mobile and fixed.
1.8 COMMON SUPPORT FUNCTION SOFTWARE means those computer programs
in source and object code forms, including their respective associated
documentation, listed on Schedule "A" of the Technology Assignment and Joint
Ownership Agreement of even date herewith.
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<PAGE> 6
1.9 COPYRIGHTS mean any original works of authorship fixed in any
tangible medium of expression as set forth in 17 U.S.C. Section 101 et. seq.
1.10 CORPORATE TECHNOLOGY means any and all portions of Enterprise
Technology other than Applied Corporate Technology, AT&T's Technology, NCR's
Technology, LUCENT's Technology, and Common Support Function Software. The term
includes, but is not limited to, basic research. By separate Technology
Assignment and Joint Ownership Agreement of even date herewith, AT&T has
assigned to LUCENT an equal undivided one-half (1/2) interest in Corporate
Technology.
1.11 ENTERPRISE TECHNOLOGY means any and all Technology existing
as of the Closing Date which is owned by, and was developed by or for, or
purchased by AT&T and its Subsidiaries, including any of its business units and
divisions. The term includes any and all Technology owned or controlled by any
of AT&T's Subsidiaries under which AT&T has the right to grant any of the
right-to-use licenses of the type and on the terms herein granted.
1.12 LUCENT BUSINESS shall have the meaning set forth in the
Separation and Distribution Agreement.
1.13 LUCENT'S PRODUCT REALIZATION TECHNOLOGY means any and all
portions of LUCENT's Technology specifically related to the planning, design,
development and manufacture of LUCENT's products as listed in Exhibit "G".
1.14 LUCENT'S RESTRICTED TECHNOLOGY means only those items of
LUCENT's Technology listed in the attached Exhibit "H".
1.15 LUCENT'S SPECIFIED TECHNOLOGY means only those items of
LUCENT's Product Realization Technology which are specifically directed to any
AT&T Proprietary Feature.
1.16 LUCENT'S TECHNOLOGY means any and all portions of Enterprise
Technology existing as of the Closing Date which were developed by or for, or
purchased by the LUCENT Business. The term includes LUCENT's Restricted
Technology, LUCENT's Product Realization Technology and LUCENT's Specified
Technology but shall not include Applied Corporate Technology, AT&T's
Technology, NCR's Technology, Common Support Function Software or Corporate
Technology.
1.17 MASK WORKS means any mask work, registered or unregistered,
as defined in 17 U.S.C. Section 901.
1.18 NCR'S PRODUCT REALIZATION TECHNOLOGY means any and all
portions of NCR's Technology specifically related to the planning, design,
development and manufacture of NCR's products as listed in Exhibit "D".
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<PAGE> 7
1.19 NCR'S RESTRICTED TECHNOLOGY means only those items of NCR's
Technology listed in the attached Exhibit "E".
1.20 NCR'S SPECIFIED TECHNOLOGY means only those items of NCR's
Product Realization Technology newly developed by NCR for AT&T as listed in
Exhibit "F".
1.21 NCR'S TECHNOLOGY means any and all portions of Enterprise
Technology existing as of the Closing Date which is owned by NCR or any of its
Subsidiaries, or was developed by or for, or purchased by NCR or any of its
Subsidiaries, or any portion of Enterprise Technology assigned by AT&T to NCR
under a separate Technology Assignment. The term includes NCR's Restricted
Technology, NCR's Product Realization Technology and NCR's Specified Technology
but shall not include Applied Corporate Technology, AT&T's Technology, LUCENT's
Technology, Corporate Technology or Common Support Function Software.
1.22 RELATED COMPANIES OF AT&T means Subsidiaries of AT&T, only
for so long as they remain Subsidiaries, and any other company so designated and
agreed to in a writing signed by AT&T and by NCR or LUCENT, as applicable.
Solely for purposes of this definition, LUCENT, its Subsidiaries, NCR and its
Subsidiaries shall be deemed not to be Related Companies of AT&T.
1.23 RELATED COMPANIES OF NCR means NCR's Subsidiaries as of the
Distribution Date, only for so long as they remain NCR's Subsidiaries, and any
other company so designated and agreed to in a writing signed by NCR and by AT&T
or LUCENT, as applicable.
1.24 RELATED COMPANIES OF LUCENT means Subsidiaries of LUCENT,
only for so long as they remain Subsidiaries, and any other company so
designated and agreed to in a writing signed by LUCENT and by NCR or AT&T, as
applicable.
1.25 TECHNOLOGY means any and all technical information, computer
or other apparatus programs, specifications, drawings, records, documentation,
works of authorship or other creative works, ideas, knowledge or data. The term
Technology includes Copyrights, Mask Works and any other intellectual property
right, but does not include any trademark, trade name, trade dress or service
mark, or any patent applications on inventions, discoveries or improvements, or
any patents that may be granted or have been granted thereon.
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<PAGE> 8
ARTICLE II
ACCESS AND USE OF ENTERPRISE TECHNOLOGY
2.1 ACCESS TO ENTERPRISE TECHNOLOGY. During a period beginning on
the effective date hereof and ending on the Distribution Date, each Party shall
have the right to access and to copy any and all portions of the Enterprise
Technology in possession of any of the other two Parties. Such access and
copying shall be in accordance with a reasonable request and schedule to be
mutually agreed upon between the Party in possession of the Technology which is
requested and the requesting Party. All costs associated with the assembling,
copying and delivering of such Technology shall be borne by the requesting
Party. No later than March 1, 1996 AT&T and LUCENT shall jointly establish a
mutually acceptable process for providing copies of AT&T's Network Technology in
LUCENT's possession.
2.2 EXPORT CONTROL. Each Party agrees fully to comply with all
applicable Export Control laws, rules and regulations with respect to any and
all portions of Enterprise Technology owned by the other Party or Parties.
2.3 AT&T'S RIGHTS TO USE ENTERPRISE TECHNOLOGY. (a) Subject to the
restrictions specified in this Section 2.3, AT&T and its Related Companies shall
each have a personal, worldwide, nonexclusive, royalty-free, and
non-transferable right to use the Enterprise Technology for the businesses in
which AT&T or any of its Related Companies are now or hereafter engaged.
(b) Until January 1, 2002, neither AT&T nor any of its Related
Companies shall use without NCR's prior written consent any of NCR's Restricted
Technology for making or having others make for it any product of the kind made,
sold or developed by NCR or any of its Related Companies as of the Closing Date.
(c) Until January 1, 2002, neither AT&T nor any of its Related
Companies shall use without LUCENT's written consent any of LUCENT's Restricted
Technology for making or having others make for it any telecommunications
equipment of the kind made, sold or developed by LUCENT or any of its Related
Companies as of the Closing Date.
(d) AT&T's right to use includes the right of AT&T and its Related
Companies to copy, modify and improve any portion of Enterprise Technology. No
right is granted hereunder to AT&T or its Related Companies to sublicense any of
NCR's Technology or LUCENT's Technology to any third party.
(e) Notwithstanding any other provision, neither AT&T nor any of
its Related Companies shall have the right to access, copy or use, in whole or
in part, for any purpose, any of NCR's Product Realization Technology or
LUCENT's Product Realization Technology without the prior written consent of NCR
or LUCENT, respectively.
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<PAGE> 9
2.4 NCR'S RIGHTS TO USE ENTERPRISE TECHNOLOGY. (a) Subject to the
restrictions specified in this Section 2.4 and in Section 2.7, NCR and its
Related Companies shall each have a personal, worldwide, nonexclusive,
royalty-free and non-transferable right to use the Enterprise Technology for the
businesses in which NCR or any of its Related Companies are now or hereafter
engaged.
(b) Until January 1, 2002, neither NCR nor any of its Related
Companies shall use without AT&T's prior written consent any of AT&T's
Restricted Technology to provide or to enable the provision by anyone of
services of the kind sold, offered or developed by AT&T or any of its Related
Companies as of the Closing Date.
(c) Until January 1, 2002, neither NCR nor any of its Related
Companies shall use without LUCENT's written consent any of LUCENT's Restricted
Technology for making or having others make for it any telecommunications
equipment of the kind made, sold or developed by LUCENT or any of its Related
Companies as of the Closing Date.
(d) NCR's right to use includes the right of NCR and its Related
Companies to copy, modify and improve any portion of Enterprise Technology. No
right is granted hereunder to NCR or its Related Companies to sublicense any of
AT&T's Technology or LUCENT's Technology or Common Support Function Software or
Corporate Technology to any third party.
(e) Until January 1, 2002, neither NCR nor any of its Related
Companies (i) shall use, in whole or in part, any NCR's Specified Technology in
connection with the development of substantially the same feature as any AT&T's
Proprietary Feature for customers other than AT&T, or (ii) shall provide copies
of or disclose any portion of NCR's Specified Technology to any such other
customers. Notwithstanding the above, the use prohibition associated with NCR's
Specified Technology will extend for a period of nine (9) years from first
deployment for that NCR's Specified Technology associated with any AT&T's
Proprietary Features which is committed but not yet deployed on the effective
date hereof.
(f) Notwithstanding any other provision, neither NCR nor any of
its Related Companies shall have the right to access, copy or use, in whole or
in part, for any purpose, any of AT&T's Network Technology or AT&T's Wireless
Services Technology, or any of LUCENT's Product Realization Technology or
LUCENT's Specified Technology, without the prior written consent of AT&T or
LUCENT, respectively, and only to support work for or on behalf of AT&T or
LUCENT, respectively.
2.5 LUCENT's RIGHTS TO USE ENTERPRISE TECHNOLOGY. (a) Subject to
the restrictions specified in this Section 2.5 and in Section 2.7, LUCENT and
its Related Companies shall each have a personal, worldwide, nonexclusive,
royalty-free and non-
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<PAGE> 10
transferable right to use the Enterprise Technology for the businesses in
which LUCENT or any of its Related Companies are now or hereafter engaged.
(b) Until January 1, 2002, neither LUCENT nor any of its Related
Companies shall use without AT&T's prior written consent any of AT&T's
Restricted Technology to provide or to enable the provision by anyone of
services of the kind sold, offered or developed by AT&T or any of its Related
Companies as of the Closing Date.
(c) Until January 1, 2002, neither LUCENT nor any of its Related
Companies shall use without NCR's prior written consent any of NCR's Restricted
Technology for making or having others make for it products of the kind made,
sold or developed by NCR or any of its Related Companies as of the Closing Date.
(d) LUCENT's right to use includes the right of LUCENT and its
Related Companies to copy, modify and improve any portion of Enterprise
Technology. No right is granted hereunder to LUCENT or its Related Companies to
sublicense any of AT&T's Technology or NCR's Technology to any third party.
(e) Notwithstanding any other provision, neither LUCENT nor any of
its Related Companies shall have the right to access, copy or use, in whole or
in part, for any purpose, any of AT&T's Network Technology or AT&T's Wireless
Services Technology or NCR's Product Realization Technology, without the prior
written consent of AT&T or NCR, respectively, and only to support work for or on
behalf of AT&T or NCR, respectively.
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<PAGE> 11
2.6 PROCUREMENT. (a) As an attribute to each Party's rights to use
Enterprise Technology and subject to the restrictions specified in Sections 2.3,
2.4 and 2.5, each Party may disclose to any of its suppliers or prospective
suppliers only those portions of Enterprise Technology that are necessary for
the procurement by such Party of components, subsystems, subassemblies, products
and/or services of the businesses of such Party.
(b) Each Party agrees that it will not make any portion of
Enterprise Technology available to any such supplier or prospective supplier
except under procurement terms and conditions (including confidentiality, use
and disclosure restrictions) normally used by such Party to protect its own
proprietary information of a similar nature.
(c) The procurement rights granted hereunder to each one of the
Parties under this Section 2.6 shall not be exercised by one Party in a manner
such that the exercise of such one Party's procurement rights is a sham to
effect the licensing of another Party's Technology or any portion thereof, or of
the Enterprise Technology or any thereof, to a third party and not for bona fide
business purposes of such one Party.
(d) Each Party agrees that prior to the disclosure of any portion
of Enterprise Technology under this Section 2.6, all proprietary information of
the other two Parties shall be expunged. No later than March 1, 1996, the
Parties will agree on acceptable procedures to achieve such expungement.
2.7 EXCLUSION OF AT&T'S WIRELESS SERVICES TECHNOLOGY. The licenses
and rights to use Enterprise Technology granted hereunder to NCR or LUCENT do
not include any license or right under any AT&T's Wireless Services Technology
existing as of the Closing Date. With respect to any such AT&T's Wireless
Services Technology in commercial use as of the Closing Date by AT&T Wireless
Services, Inc., the foregoing exclusion shall not limit NCR's or LUCENT's
ability to continue providing products and services of the kind they each
provide as of the date of this Agreement.
ARTICLE III
TERMINATION
3.1 VOLUNTARY TERMINATION. By written notice to another Party,
each Party may voluntarily terminate all or a specified portion of the rights
granted to it hereunder. Such notice shall specify the effective date of such
termination and shall clearly specify the portion of the other Party's
Technology for which rights to use are being terminated.
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<PAGE> 12
3.2 SURVIVAL. Any voluntary termination of rights of a Party under
Section 3.1 shall not affect such Party's rights with respect to any use prior
to such termination, and shall not affect the rights of the other two Parties
hereunder.
3.3 CHANGE OF CONTROL OF OR CERTAIN ACQUISITIONS BY NCR. In the
event of a Change of Control of NCR or in the event that NCR acquires any Person
that (i) competes with AT&T in the provision of telecommunications services, or
(ii) competes with LUCENT in the provision of telecommunications systems and
equipment, or (iii) has a market value greater than fifty percent (50%) of NCR's
market value at the time of such acquisition, then all rights granted to NCR
hereunder shall extend only to a specific annual volume of products which are of
a kind comparable to those offered by NCR prior to such Change of Control or
acquisition. Such specific volume of products shall not exceed the volume of
corresponding products of NCR prior to such Change of Control or acquisition.
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.1 AGREEMENT PREVAILS. This Agreement shall prevail in the event
of any conflicting terms or legends which may appear on any portion of the
Enterprise Technology.
4.2 NOTHING CONSTRUED. Neither the execution of this Agreement nor
anything in it or in the Enterprise Technology shall be construed as an
obligation upon any Party or its Related Companies to furnish to any other Party
or its Related Companies, any assistance of any kind whatsoever, or any
information other than the portion of Enterprise Technology requested pursuant
to Section 2.1, or to revise, supplement or elaborate upon the Enterprise
Technology.
4.3 DISCLAIMER. NO PARTY OR ANY OF ITS RELATED COMPANIES MAKES ANY
REPRESENTATIONS, EXTENDS ANY WARRANTIES OF ANY KIND, ASSUMES ANY RESPONSIBILITY
OR OBLIGATIONS WHATEVER, OR CONFERS ANY RIGHT BY IMPLICATION, ESTOPPEL OR
OTHERWISE, OTHER THAN THE RIGHTS AND WARRANTIES HEREIN EXPRESSLY GRANTED.
4.4 NO PATENT LICENSES. Nothing contained in this Agreement shall
be construed as conferring to any Party by implication, estoppel or otherwise
any license or right under any patent, whether or not the exercise of any right
herein granted necessarily employs an invention of any existing or later issued
patent.
4.5 CONFIDENTIALITY. The confidentiality obligations of each Party
under Article VIII of the Separation and Distribution Agreement shall apply to
such Party's handling and treatment of those portions of Enterprise Technology
in such Party's possession which are owned by any of the other Parties.
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<PAGE> 13
4.6 NONASSIGNABILITY. The Parties hereto have entered into this
Agreement in contemplation of personal performance, each by the other, and
intend that the rights granted hereunder to a Party not be extended to entities
other than such party's Related Companies (and only for so long as they remain
Related Companies) without the other Party's or Parties', as applicable, express
written consent. Neither this Agreement nor any rights hereunder shall be
assignable or transferable by any Party to any other Person, except as expressly
permitted hereunder, without the express written consent of the other Parties,
provided that such consent shall not be unreasonably withheld in the event of a
proposed assignment or transfer of those licenses and rights relevant to any
portion of any Party's business that is or is to be spun off or otherwise
distributed to such Party's shareholders.
4.7 ADDRESSES. The Parties agree that any notice or other
communication hereunder shall be given as set forth in Section 12.5 of the
Separation and Distribution Agreement, except that notice to AT&T shall be
addressed to F. J. Berry, Vice President-Law, 495 North Maple Avenue, Basking
Ridge, N.J. 07920.
4.8 CHOICE OF LAW. Except as otherwise provided in Section 9.9 of
the Separation and Distribution Agreement, this Agreement shall be governed by
and construed and interpreted in accordance with the laws of the State of New
York, irrespective of the choice of laws principles of the State of New York, as
to all matters, including matters of validity, construction, effect, performance
and remedies.
4.9 INTEGRATION. (a) Except as expressly provided hereunder, this
Agreement does not amend, cancel, terminate or replace any preexisting
agreements or arrangements between all three Parties, or any two Parties, or any
of their respective units, divisions or organizations of their respective
businesses before the AT&T's restructuring. Except as otherwise provided in the
Separation and Distribution Agreement, all terms and conditions under such
preexisting agreements or arrangements shall continue to apply as between the
Parties thereto in accordance with their respective terms and conditions.
(b) Except as otherwise provided in the Supplemental General
Purchase Agreement between AT&T and Lucent dated as of February 1, 1996 (which
supplemental agreement specifically relates to development and support for the
4ESS switch, Next Network Switch, and related products and development), this
Agreement sets forth the entire agreement and understanding between the Parties
as to the subject matter hereof and merges all prior discussions between them
other than preexisting agreements or arrangements as specified in Section
4.9(a). A Party shall not be bound by any warranties, understandings or
representations with respect to such subject matter other than as expressly
provided herein or in a writing signed with or subsequent to execution hereof by
an authorized representative of the Party to be bound thereby.
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<PAGE> 14
4.10 ARBITRATION AND DISPUTE RESOLUTION. The Parties agree that
the procedures for discussion, negotiation and arbitration set forth in Article
IX of the Separation and Distribution Agreement, which Article IX is
incorporated herein by reference, shall apply to all disputes, controversies or
claims that may arise under or in connection with this Agreement.
4.11 AMENDMENTS AND CHANGES. Subsequent to the execution of this
Agreement by all Parties, and solely to the extent that a change is desired by
and restricted to any two Parties without affecting the rights of the third
Party hereto, such two Parties may separately amend any provision of this
Agreement which governs the rights exchanged between them without notifying,
advising, consulting or requesting the concurrence of the third Party hereto.
Except as specifically provided herein, any other modification affecting all
three Parties shall require the written agreement and signature of all the
Parties.
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<PAGE> 15
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed
in triplicate originals by its duly authorized representatives on the respective
dates entered below.
AT&T CORP.
By: /s/
-------------------------------------
Title:
-------------------------------------
Date:
-------------------------------------
LUCENT TECHNOLOGIES INC.
By: /s/
-------------------------------------
Title:
-------------------------------------
Date:
-------------------------------------
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<PAGE> 16
NCR CORPORATION
By: /s/
-------------------------------------
Title:
-------------------------------------
Date:
-------------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF ALL PARTIES.
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<PAGE> 17
Exhibit A
LIST OF AT&T'S NETWORK TECHNOLOGY
Proprietary Information (whether created by AT&T, LUCENT or jointly) about the
infrastructure of AT&T's global network
- - office drawings
- - equipment assignment records
- - data and paper records
- - customer records
- - Information resident in network elements, for example, customer network
and speech data
- - AT&T generated FSD-like requirements documents
- - network/service architecture documents
- - network design documents
- - software/code listings developed by AT&T associated with infrastructure
- - network testing specifications
- - manufacturing specifications
- - service provisioning documents
- - installation and engineering handbooks other than those provided by LUCENT
with its products
- - performance analysis and engineering rules associated with the AT&T and
customer network
- - all memoranda document the planning, design and implementation of the
technology associated with AT&T services
Proprietary practices used for operating the AT&T global network
- - Maintenance practices
- - Engineering practices
- - Power/infrastructure practices
Technology developed by AT&T Services Business or by a third party for AT&T
Services Business, without any substantial involvement by LUCENT
<PAGE> 18
Exhibit B
[Intentionally Left Blank]
<PAGE> 19
Exhibit C
LIST OF AT&T'S RESTRICTED TECHNOLOGY
Operation Support Systems and product realization developed by AT&T Services
Business
Technology owned by AT&T Services Business resulting from an agreement between
AT&T and Stratacom related to feature development for Stratacom's packet switch
Technology owned by AT&T Services Business resulting from an agreement between
AT&T and a third party communications equipment provider, dated September 1,
1993.
SSI-related Technology (excluding any LUCENT's Restricted Technology as set
forth in Exhibit H) retained by AT&T Services Business, including Technology
related to the following developments:
- - Undersea repeater assembly
- - Lightwave Terminating Unit for submarine applications
- - Nonrepeatered terminal equipment for submarine applications
- - Transmission terminal equipment for submarine applications
- - Submarine Lightwave Terminating Equipment
- - Lightwave Monitoring Equipment for submarine applications
- - System for Assembly, Laying and Testing submarine equipment and
subassemblies
<PAGE> 20
Exhibit D
LIST OF NCR'S PRODUCT REALIZATION TECHNOLOGY
Proprietary Information (whether created by NCR or jointly with LUCENT and/or
AT&T) relating to NCR product realization and support and that includes:
- - NCR generated functional specifications and similar requirements documents
- - product architecture documents
- - design documents
- - software/code listings developed by NCR associated with product
realization
- - testing specifications
- - engineering drawings
- - NCR practices
- - manufacturing specifications
- - ordering and pricing documents
- - installation and engineering handbooks
- - performance analysis and engineering rules
- - all memoranda documenting the planning, design and implementation of the
technology associated with NCR products
<PAGE> 21
Exhibit E
LIST OF NCR'S RESTRICTED TECHNOLOGY
NONE
<PAGE> 22
Exhibit F
LIST OF NCR'S SPECIFIED TECHNOLOGY
NONE
<PAGE> 23
Exhibit G
LIST OF LUCENT'S PRODUCT REALIZATION TECHNOLOGY
Proprietary Information (whether created by LUCENT or jointly with AT&T)
relating to LUCENT product realization and support and that consists of:
- - LUCENT generated FSD-like requirements documents
- - product/network element architecture documents
- - design documents
- - software/code listings developed by LUCENT associated
with product realization
- - testing specifications
- - drawings such as J, T, H, ED, NE, NJ, SD, NS, NT, ETC.
- - LUCENT practices
- - manufacturing specifications
- - ordering documents
- - installation and engineering handbooks
- - performance analysis and engineering rules
- - all memoranda documenting the planning, design and implementation of the
technology associated with LUCENT products
Product realizations developed by LUCENT for AT&T Proprietary Features
comprising but not limited to product design documents, such as circuit
diagrams, schematics, and source and object code.
Technology developed by LUCENT or by a third party for LUCENT, without any
substantial involvement by AT&T.
<PAGE> 24
EXHIBIT H
LIST OF LUCENT'S RESTRICTED TECHNOLOGY
LUCENT designates as LUCENT's Restricted Technology the unique component
adaptations and the unique component modifications (both, as opposed to the
component itself) which are used solely in the specific AT&T Submarine Systems,
Inc. ("SSI") equipment and SSI subassemblies listed below:
- - Undersea Repeater Assembly
- - Lightwave Terminating Unit for submarine applications
- - Nonrepeatered Terminal Equipment for submarine applications
- - Transmission Terminal Equipment for submarine applications
- - Submarine Lightwave Terminating Equipment
- - Lightwave Monitoring Equipment for submarine applications
- - System of Assembly, Laying and Testing submarine equipment and
subassemblies
<PAGE> 25
EXHIBIT I
LIST OF APPLIED CORPORATE TECHNOLOGY
- - Increment of Electronic Signage Technology jointly funded by NCR and Bell
Labs Research for Electronic Shelf Label retail applications. This
specifically excludes technology to provide broadband uplink capability,
caller ID, and tracking capability
- - Produce Identification Technology involving optical spectroscopy, gas
sampling and the associated identification algorithms
- - Increment of POS scanner technology (HW/SW) jointly funded by NCR and Bell
Labs Research to improve performance of scanners located in sunlight in
retail applications
- - Increment of movement detection technology jointly funded by NCR and Bell
Labs Research for tracking customers in retail establishments to determine
their shopping characteristics (e.g. where they lingered)
- - Increment of Management Discovery Tool (MDT) technology jointly funded by
NCR and Bell Labs Research
- - Increment of object storage technology that was jointly funded by NCR and
Bell Labs Research and resulted in becoming a part of NCR's
Moonbase/Prospector Multimedia Data Base
<PAGE> 1
EXHIBIT 23.1
CONSENT OF INDEPENDENT AUDITORS
We consent to the inclusion in this registration statement on Form S-1 (File No.
333-00703) of our report dated January 25, 1996 (Note 14 is dated February 1,
1996), on our audits of the consolidated financial statements and financial
statement schedule of Lucent Technologies Inc. and subsidiaries. We also consent
to the reference to our firm under the caption "Experts."
Coopers & Lybrand L.L.P.
1301 Avenue of the Americas
New York, New York
April 2, 1996
