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DEVELOPMENT AND MARKETING AGREEMENT
This Agreement is made effective as of January 17, 2000 (the "Effective
Date") by and between Adaptec, Inc., a Delaware corporation with its
offices at 691 South Milpitas Blvd., Milpitas, California 95035,
Adaptec CI, Ltd. a Cayman Islands corporation with its place of
business at P.O. Box 265GT, Walker House, Georgetown, Grand Cayman,
Cayman Islands ("Adaptec" shall mean Adaptec Inc. and Adaptec CI, Ltd.
collectively), and Agilent Technologies, Inc., a Delaware corporation
with its offices at 370 W. Trimble Road, San Jose, California 95131
("Agilent").
RECITALS
WHEREAS, Agilent has developed and currently maintains certain Fibre
Channel hardware and software technologies.
WHEREAS, Agilent and Adaptec desire to cooperate in the further development
of the certain Fibre Channel hardware and software technologies.
WHEREAS, Adaptec, Inc. and Adaptec CI, Ltd. wish to acquire certain US
and non-US rights, respectively, to the certain Fibre Channel
hardware and software technologies and any developments to the
certain Fibre Channel hardware and software technologies made by
Adaptec and Agilent.
NOW, THEREFORE, Adaptec and Agilent agree as follows:
1. DEFINITIONS.
"Adaptec Field of Use" means (i) any product based on an IA-32 or
IA-64 compatible computer processor as operated exclusively with
widely commercially available, widely platform compatible
operating systems such as NT, Windows 2000, UnixWare, NetWare,
Solaris x86, Linux, Win95, Win98, and standard extensions of these
operating systems, (ii) any product based on a follow-on computer
processor that uses an operating system designated in subdivision
(i) above and which is IA-32 or IA-64 compatible, (iii) any
MacIntosh operating system compatible product, and (iv) Boards
that support only widely commercially available, widely platform
compatible operating systems such as NT, Windows 2000, UnixWare,
NetWare, Solaris x86, Linux, Win95, Win98, and standard extensions
of these operating systems, sold to Distributors.
"Agilent Field of Use" means (i) any product based on a computer
processor with a Sparc, MIPS, Power PC or PA-RISC architecture, or
other architecture that is not IA-32 or IA-64 compatible; (ii) any
product sold by a third party peripheral device or Fibre Channel
Infrastructure device manufacturer; (iii) any computer processor
that uses in any way an operating system not specified in the
definition for "Adaptec Field of Use", (iv) Boards that support
only operating systems other than the widely commercially
available, widely platform compatible operating systems such as
NT, Windows 2000, UnixWare, NetWare, Solaris x86, Linux, Win95,
Win98, sold to Distributors, and (v) any other product not in
conflict with the Adaptec Field of Use.
"Boards" means all versions developed prior to and during the term of
this Agreement of those add-in host cards, including but not
limited to those recited in Exhibit D, that (i) connect a
Peripheral Component Interconnect (PCI) or its extensions to a
Fibre Channel Infrastructure and (ii) are not RAID capable (an
add-in host card is considered RAID capable if (a) it has a
hardware XOR function on the card or (b) the RAID code is run on a
microprocessor on the add-in host card excepting RAID 0).
"Board Designs" means the schematic designs and/or tapeouts for any
and all Boards.
"Board and Chip Supply Agreement" means the Board and Chip Supply
Agreement substantially in the form attached as Exhibit A hereto.
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"Chips" means those semiconductor products listed in Exhibit B and any
additional standard product PCI Fibre Channel Protocol ICs
released by Agilent during the term of this Agreement.
"Distributor" means any non-OEM individual or entity that purchases any
product in order to resell without substantial modification to
another individual or entity.
"Fibre Channel Driver Software" means all versions, including but not
limited to all source code versions and those recited in Exhibit
C, developed prior to and during the term of this Agreement of (i)
the Fibre Channel Layer Code, (ii) the Fibre Channel O/S Layer
Driver Code, including firmware, and Chip-compatible BIOS code and
(iii) any and all associated documentation. This definition
excludes software developed for the Tachyon HHBA-5000 HBA, which
was derived from software licensed from a third party.
"Fibre Channel Infrastructure" means the components used to create a
Storage Area Network, including switches, routers, and hubs, but
excluding fibre channel boards, chips, and any and all components
related to a main server.
"Fibre Channel Layer Code" means the code that resides below the
application program interface ("API") as described in the driver
architecture specification listed in Exhibit C.
"Fibre Channel Management Software" means all versions developed during
the term of this Agreement of (i) any code that resides above the
Fibre Channel Driver Software (e.g., management and control
software, zoning software), and (ii) any and all associated
documentation.
"Fibre Channel O/S Layer Driver Code" means the code that resides
above the API as described in the driver architecture
specification listed in Exhibit C.
"Parties" means Adaptec and Agilent collectively.
"Party" means either Adaptec or Agilent as indicated by the context.
"Start-Up Period" means the period of time commencing on the Effective
Date and continuing until Agilent completes the delivery of all
deliverables ordered within nine (9) months of the Effective Date
by Adaptec pursuant to Section 4.
2. CHIPS AND BOARDS.
2.1. MANUFACTURE AND SUPPLY OF CHIPS. Pursuant to the Board and Chip
Supply Agreement, Agilent will manufacture and supply Chips to
Adaptec at Agilent's then most favorable OEM pricing, excluding
strategic alliance partnership pricing as defined in Exhibit H,
for the purposes of (i) incorporating such Chips into Boards for
use in the Adaptec Field of Use, (ii) using such Chips in
activities related to such incorporation (including, but not
limited to, testing and certifying such Chips), and (iii)
marketing, distributing, selling, sublicensing, and supporting
customers in the use of the Chips as incorporated in such Boards.
Agilent is precluded from enabling new open market PCI Fibre
Channel Host Adapter vendors. Agilent customers who currently
offer open market PCI Fibre Channel Host Adapters consist of, and
for purposes of this Agreement are limited to, Interphase, JNI,
Prisa, Systran, and Compaq.
2.2. MANUFACTURE AND SUPPLY OF BOARDS. Pursuant to the Board and Chip
Supply Agreement, Agilent will manufacture and supply those Boards
listed in Exhibit D to Adaptec for use in the Adaptec Field of Use
at Agilent's then most favorable OEM pricing for the purposes of
(i) incorporating the Boards into products for use in the Adaptec
Field of Use, (ii) marketing, distributing, selling, sublicensing,
and supporting customers in the use of such Boards and products,
and (iii) using such Boards in related activities (including, but
not limited to, testing and certifying such Boards).
2.3. SALE OF STAND-ALONE CHIPS. Agilent appoints Adaptec to be
Agilent's Chip sales representative for the sale of Chips to
certain third parties. The certain third parties shall initially
comprise those companies, excluding Intel, that develop and/or
distribute technologies within the Adaptec Field of Use. A
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manufacturer's representation agreement (the "Manufacturer's
Representation Agreement") detailing this relationship will be
drafted and executed by the Parties. Additional third parties for
which Adaptec will act as Agilent's Chip sales representative will
be added to the Manufacturer's Representation Agreement by mutual
consent of the Parties at regularly scheduled conferences, which
will occur at least every six months.
2.4. IMPLEMENTATION OF PATENTED TECHNOLOGY; GRANT OF LICENSE.
For certain technologies used in the Chips, Agilent currently owns
patents or is seeking patent protection. Agilent grants to Adaptec
a non-exclusive, world-wide, royalty-free license to all such
technologies and any and all related patents for any and all
purposes contemplated by this Agreement. Agilent contemplates that
such technologies may, in the future, be implemented in firmware,
including the firmware portion of the Fibre Channel Driver
Software, and that Chips provided to Adaptec hereunder may embody
such firmware implementations. Agilent agrees that the license
grants made by Agilent to Adaptec in this Agreement, including but
not limited to those to the Chips and the Fibre Channel Driver
Software, shall cover such firmware implementations, and that such
license grants shall cover any Chips sold to Adaptec and any
products that incorporate the Chips during and after the term of
this Agreement, for the full lifetime of any such patents.
However, Agilent retains full and complete ownership of all such
patents, and makes no transfer of any ownership, part or full, of
any such patents to Adaptec.
3. FIBRE CHANNEL DEVELOPMENT COMMITTEE.
A panel comprised of one (1) engineering representative and one
(1) marketing representative from each Party (the "Fibre Channel
Development Committee") will meet every six (6) months to develop
and audit a rolling twelve (12) month development schedule for all
Fibre Channel technologies contemplated by this Agreement (the
"Fibre Channel Development Schedule"). The Initial Fibre Channel
Development Schedule is attached hereto as Exhibit E. The Fibre
Channel Development Committee will determine which modifications
to the existing technology are mandatory, and to which Party and
by what schedule such mandatory modifications are to be developed.
4. INITIAL DELIVERABLES. Agilent will use commercially reasonable efforts
to provide the deliverables and services as scheduled in the
Deliverables Schedule attached hereto as Exhibit F.
5. FIBRE CHANNEL DRIVER SOFTWARE.
5.1. DELIVERY BY AGILENT. Within 30 days after the Effective Date,
Agilent shall deliver to Adaptec copies of the then most current
version(s) of the Fibre Channel Driver Software. The Fibre Channel
Driver Software must conform to the Fibre Channel Driver Software
Specifications attached hereto as Exhibit C. Agilent shall deliver
the Fibre Channel Driver Software in a form and format mutually
agreed upon by the Parties.
5.2. LICENSE GRANT TO FIBRE CHANNEL DRIVER SOFTWARE.
Agilent hereby grants to Adaptec:
(i) a license, exclusive except with respect to Agilent, to (x)
use, copy, test, modify, and certify the Fibre Channel O/S
Layer Driver Code, (y) market, distribute, sell, price, and
sublicense the right to use the Fibre Channel O/S Layer Driver
Code as used with Chips, and (z) support customers in the use
of the Fibre Channel O/S Layer Driver Code as used with Chips,
to the extent necessary for any and all purposes contemplated
by this Agreement; and,
(ii)a license, exclusive except with respect to Agilent and those
Agilent customers who require the Fibre Channel Layer Code for
use in embedded designs, to (x) use, copy, test, modify,
certify the Fibre Channel Layer Code, (y) market, distribute,
sell, price, sublicense the right to use the Fibre Channel
Layer Code as used with Chips, and (z) support customers in the
use of the Fibre Channel Layer Code as used with Chips to the
extent necessary for any and all purposes contemplated by this
Agreement.
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5.3. ENFORCEMENT OF RIGHTS. Adaptec, as licensee of the Fibre Channel
Driver Software, shall have power and right, in the event that
Agilent, (i) having actual notice of an infringement,
misappropriation, or any other violation of any and all
intellectual property rights, excluding Agilent's trademark
rights, associated with the Fibre Channel Driver Software
(collectively, "Fibre Channel Driver Software Infringement"),
gives formal notice to Adaptec of its decision not to take any
action in response to such Fibre Channel Driver Software
Infringement, or (ii) fails to give such formal notice to Adaptec
within 10 business days of receiving actual notice of such
violation, (x) to institute and prosecute at its own expense suits
for such Fibre Channel Driver Software Infringement, (y) to enjoin
such Fibre Channel Driver Software Infringement and to collect
damages, profits, and awards of whatever nature recoverable for
such Fibre Channel Driver Software Infringement, and (z) to settle
any claim or suit for such Fibre Channel Driver Software
Infringement by granting to the alleged Infringer a sublicense to
the Fibre Channel Driver Software. Agilent will assist Adaptec and
provide reasonably necessary cooperation to Adaptec in such suits
and settlements, including but not limited to assigning Adaptec
power of attorney and any other rights necessary for the
prosecution of such suits and/or joining as party plaintiff in
such suits if required by law for the prosecution of such suits.
Adaptec explicitly retains all rights and powers associated with
its trademarks, regardless of whether any or all of such
trademarks are associated with the Fibre Channel Driver Software.
5.4. RESERVATION OF RIGHTS. Any rights to the Fibre Channel Driver
Software that are not expressly granted to Adaptec in this
Agreement are reserved by Agilent.
6. MODIFICATIONS TO FIBRE CHANNEL DRIVER SOFTWARE.
6.1. MODIFICATIONS BY AGILENT. Agilent shall use reasonable efforts to
develop the Agilent mandatory modifications to the Fibre Channel
Driver Software as identified in the Initial Fibre Channel
Development Schedule attached hereto as Exhibit E and as
determined by the Fibre Channel Development Committee, and may
from time to time during the term of this Agreement make
additional modifications to the Fibre Channel Driver Software
(collectively, the "Agilent Fibre Channel Driver Software
Modifications"). Any and all Agilent Fibre Channel Driver Software
Modifications shall be presented on a timely basis by Agilent to
the Fibre Channel Driver Software Panel, as defined below, in a
form and format specified by the Fibre Channel Driver Software
Panel for its consideration.
6.2. MODIFICATIONS BY ADAPTEC. Adaptec shall use its reasonable efforts
to develop the Adaptec mandatory modifications to the Fibre
Channel Driver Software as identified in the Fibre Channel Driver
Software Modification Schedules as determined by the Fibre Channel
Development Committee, and may from time to time during the term
of this Agreement make additional modifications to the Fibre
Channel Driver Software (collectively, the "Adaptec Fibre Channel
Driver Software Modifications"). Any and all Adaptec Fibre Channel
Driver Software Modifications shall be presented on a timely basis
by Adaptec to the Fibre Channel Driver Software Panel, as defined
below, in a form and format specified by the Fibre Channel Driver
Software Panel for its consideration.
6.3. DELIVERY AND ACCEPTANCE OF MODIFICATIONS. A panel of two (2)
engineering representatives from each Party (the "Fibre Channel
Driver Software Panel") will meet on a regular basis to present
and discuss Agilent Fibre Channel Driver Software Modifications
and Adaptec Fibre Channel Driver Software Modifications and to
recommend which, if any, of such modifications should be
incorporated into the Fibre Channel Driver Software. The Fibre
Channel Driver Software Panel shall give priority to and consider
in a timely manner all modifications submitted to it by the
Parties in accordance with a Fibre Channel Driver Software
Modification Schedule. In the event that the Fibre Channel Driver
Software Panel recommends that a given Agilent Fibre Channel
Driver Software Modification or a given Adaptec Fibre Channel
Driver Software Modification be incorporated into the Fibre
Channel Driver Software, the Fibre Channel Driver Software Panel
may, in its sole discretion, either (i) formally accept such a
modification for incorporation into the Fibre Channel Driver
Software or (ii) stipulate the test(s), if any, that should be
performed on such modification prior to a determination of whether
the modification should be formally accepted for incorporation
into the Fibre Channel Driver Software. In the event that the
Fibre Channel Driver Software Panel formally accepts the
modification, the appropriate Party shall deliver the modification
to Agilent in accordance with the schedule, if any, drafted by the
Fibre Channel Driver Software Panel with respect to such delivery.
Agilent shall then use its reasonable efforts to incorporate the
modification into the Fibre
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Channel Driver Software. In the event that the Fibre Channel
Driver Software Panel stipulates that certain test(s) are to be
performed on the modification, the appropriate Party shall
deliver the modification to Agilent in accordance with the
schedule, if any, drafted by the Fibre Channel Driver Software
Panel with respect to such delivery. Upon receiving the
modification, Agilent shall perform such test(s) in a timely
manner and provide any and all results of such test(s) to the
Fibre Channel Driver Software Panel for review and
consideration. In addition to the above activities, the Fibre
Channel Driver Software Panel may engage in activities
reasonably related to the Fibre Channel Driver Software and the
Fibre Channel Driver Software Modifications, including but not
limited to developing a common reporting and documentation
process, ensuring the Fibre Channel Driver Software is
synchronized on a regular basis (e.g., every six months),
conducting regular joint meetings to review bugs and
enhancements, and working closely to train each other on the
Parties' respective development efforts.
6.4. RETENTION AND RELEASE OF MODIFICATIONS. Agilent shall maintain the
master copy of the Fibre Channel Driver Software and deliver
updated copies of the Fibre Channel Driver Software to Adaptec in
accordance with a schedule agreed upon by the Fibre Channel Driver
Software Panel and/or upon reasonable requests by Adaptec for
copies of the Fibre Channel Driver Software.
6.5. LICENSE GRANT TO MODIFICATIONS.
6.5.1. AGILENT'S FIBRE CHANNEL DRIVER SOFTWARE MODIFICATIONS.
Agilent grants to Adaptec (i) an exclusive license for the
term of this Agreement to use, copy, test, modify, certify,
market, distribute, sell, price, sublicense, and support
customers in the use of the Agilent Fibre Channel Driver
Software Modifications as incorporated in the Fibre Channel
Driver Software for use in the Adaptec Field of Use, and (ii)
a license, exclusive except with respect to Agilent, to use,
copy, test, modify, and certify the Agilent Fibre Channel
Driver Software Modifications for the purpose of making
Adaptec Fibre Channel Driver Software Modifications.
6.5.2. ADAPTEC'S FIBRE CHANNEL DRIVER SOFTWARE MODIFICATIONS.
Adaptec grants to Agilent (i) an exclusive license for the
term of this Agreement to use, copy, test, modify, certify,
market, distribute, sell, price, sublicense, and support
customers in the use of the Adaptec Fibre Channel Driver
Software Modifications as incorporated in the Fibre Channel
Driver Software for use in the Agilent Field of Use, and (ii)
a license, exclusive except with respect to Adaptec, to use,
copy, test, modify, and certify the Adaptec Fibre Channel
Driver Software Modifications for the purpose of making
Agilent Fibre Channel Driver Software Modifications.
6.5.3. RESTRICTIONS ON LICENSES TO FIBRE CHANNEL DRIVER SOFTWARE
MODIFICATIONS. In no event may either Party disclose or
distribute in source code format the Fibre Channel Driver
Software Modifications of the other Party without receiving
the prior written consent of the other Party. Notwithstanding
the foregoing, Agilent may, without receiving Adaptec's prior
consent, disclose and/or distribute the Fibre Channel Layer
Code in source code format to those Agilent customers who
require the Fibre Channel Layer Code for use in embedded
designs.
6.5.4. RESERVATION OF RIGHTS. Any rights to a Party's Fibre
Channel Driver Software Modifications that are not expressly
granted to a Party in this Agreement are reserved by the other
Party.
7. FIBRE CHANNEL MANAGEMENT SOFTWARE AND MODIFICATIONS.
7.1. FIBRE CHANNEL MANAGEMENT SOFTWARE.
7.1.1. DEVELOPMENT BY ADAPTEC. Adaptec shall use reasonable efforts to
develop the Fibre Channel Management Software in accordance with
any and all Fibre Channel Management Software Specifications
provided to Adaptec by the Fibre Channel Development Committee.
7.1.2. CONSIDERATION FOR FIBRE CHANNEL MANAGEMENT SOFTWARE. Upon
completion of the Fibre Channel Management Software, Adaptec will
offer Agilent delivery of and license to the Fibre Channel
Management Software at commercially reasonable royalty rates.
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7.1.3. DELIVERY BY ADAPTEC. Upon the completion of the negotiations of
the royalties to be paid by Agilent for the Fibre Channel
Management Software, Adaptec shall deliver to Agilent a copy of
the Fibre Channel Management Software. Adaptec shall deliver the
Fibre Channel Management Software in a form and format mutually
agreed upon by the Parties.
7.1.4. LICENSE GRANT TO FIBRE CHANNEL MANAGEMENT SOFTWARE.
Upon the completion of the negotiations of the royalties to be paid
by Agilent for the Fibre Channel Management Software, Adaptec
shall grant to Agilent an exclusive license for the term of the
Agreement to (i) incorporate the Fibre Channel Management
Software into products for use in the Agilent Field of Use,
(ii) use, copy, test, modify, market, distribute, sell, price,
and sublicense the right to use the Fibre Channel Management
Software as used in such products, and (iii) support customers
in the use of the Fibre Channel Management Software as used in
such products.
7.1.5. ENFORCEMENT OF RIGHTS. Upon Agilent's being granted the license
contained in Section 7.1.4 to the Fibre Channel Management
Software, Agilent, as licensee of the Fibre Channel Management
Software, shall have power and right, in the event that Adaptec,
(i) having actual notice of an infringement, misappropriation, or
any other violation of any and all intellectual property rights,
excluding Adaptec's trademark rights, associated with the Fibre
Channel Management Software (collectively, "Fibre Channel
Management Software Infringement"), gives formal notice to Agilent
of its decision not to take any action in response to such Fibre
Channel Management Software Infringement, or (ii) fails to give
such formal notice to Agilent within 10 business days of receiving
actual notice of such violation, (x) to institute and prosecute at
its own expense suits for such Fibre Channel Management Software
Infringement, (y) to enjoin such Fibre Channel Management Software
Infringement and to collect damages, profits, and awards of
whatever nature recoverable for such Fibre Channel Management
Software Infringement, and (z) to settle any claim or suit for
such Fibre Channel Management Software Infringement by granting to
the alleged infringer a sublicense to the Fibre Channel Management
Software. Adaptec will assist Agilent and provide reasonably
necessary cooperation to Agilent in such suits and settlements,
including but not limited to assigning Agilent power of attorney
and any other rights necessary for the prosecution of such suits
and/or joining as party plaintiff in such suits if required by law
for the prosecution of such suits. Agilent explicitly retains all
rights and powers associated with its trademarks, regardless of
whether any or all of such trademarks are associated with the
Fibre Channel Management Software.
7.1.6. RESERVATION OF RIGHTS. Any rights to the Fibre Channel
Management Software that are not expressly granted to Agilent in
this Agreement are reserved by Adaptec.
7.2. MODIFICATIONS TO FIBRE CHANNEL MANAGEMENT SOFTWARE. Upon Agilent's
being granted the license contained in Section 7.1.4 to the Fibre
Channel Management Software, Sections 7.2.1. through 7.2.6 shall
become effective.:
7.2.1. MODIFICATIONS BY ADAPTEC. Adaptec shall use reasonable efforts
to develop the Adaptec mandatory modifications to the Fibre
Channel Management Software as determined by the Fibre Channel
Development Committee, and may from time to time during the term
of this Agreement make additional modifications to the Fibre
Channel Management Software (collectively, the "Adaptec Fibre
Channel Management Software Modifications"). Any and all Adaptec
Fibre Channel Management Software Modifications shall be presented
on a timely basis by Adaptec to the Fibre Channel Management
Software Panel, as defined below, in a form and format specified
by the Fibre Channel Management Software Panel for its
consideration.
7.2.2. MODIFICATIONS BY AGILENT. Agilent shall use its reasonable
efforts to develop the Agilent mandatory modifications to the
Fibre Channel Management Software as determined by the Fibre
Channel Development Committee, and may from time to time during
the term of this Agreement make additional modifications to the
Fibre Channel Management Software (collectively, the "Agilent
Fibre Channel Management Software Modifications"). Any and all
Agilent Fibre Channel Management Software Modifications shall be
presented on a timely basis by Agilent to the Fibre Channel
Management Software Panel, as defined below, in a form and format
specified by the Fibre Channel Management Software Panel for its
consideration.
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7.2.3. DELIVERY AND ACCEPTANCE OF MODIFICATIONS. A panel of two (2)
engineering representatives from each Party (the "Fibre Channel
Management Software Panel") will meet on a regular basis to
present and discuss Adaptec Fibre Channel Management Software
Modifications and Agilent Fibre Channel Management Software
Modifications and to recommend which, if any, of such
modifications should be incorporated into the Fibre Channel
Management Software. The Fibre Channel Management Software Panel
shall give priority to and consider in a timely manner all
modifications submitted to it by the Parties in accordance with a
Fibre Channel Management Software Modification Schedule. In the
event that the Fibre Channel Management Software Panel recommends
that a given Adaptec Fibre Channel Management Software
Modification or a given Agilent Fibre Channel Management Software
Modification be incorporated into the Fibre Channel Management
Software, the Fibre Channel Management Software Panel may, in its
sole discretion, either (i) formally accept such a modification
for incorporation into the Fibre Channel Management Software or
(ii) stipulate the test(s), if any, that should be performed on
such modification prior to a determination of whether the
modification should be formally accepted for incorporation into
the Fibre Channel Management Software. In the event that the Fibre
Channel Management Software Panel formally accepts the
modification, the appropriate Party shall deliver the modification
to Adaptec in accordance with the schedule, if any, drafted by the
Fibre Channel Management Software Panel with respect to such
delivery. Adaptec shall then use its reasonable efforts to
incorporate the modification into the Fibre Channel Management
Software. In the event that the Fibre Channel Management Software
Panel stipulates that certain test(s) are to be performed on the
modification, the appropriate Party shall deliver the modification
to Adaptec in accordance with the schedule, if any, drafted by the
Fibre Channel Management Software Panel with respect to such
delivery. Upon receiving the modification, Adaptec shall perform
such test(s) in a timely manner and provide any and all results of
such test(s) to the Fibre Channel Management Software Panel for
review and consideration. In addition to the above activities, the
Fibre Channel Management Software Panel may engage in activities
reasonably related to the Fibre Channel Management Software and
the Fibre Channel Management Software Modifications, including but
not limited to developing a common reporting and documentation
process, ensuring the Fibre Channel Management Software is
synchronized on a regular basis (e.g., every six months),
conducting regular joint meetings to review bugs and enhancements,
and working closely to train each other on the Parties' respective
development efforts.
7.2.4. RETENTION AND RELEASE OF MODIFICATIONS. Adaptec shall maintain
the master copy of the Fibre Channel Management Software and
deliver updated copies of the Fibre Channel Management Software to
Agilent in accordance with a schedule agreed upon by the Fibre
Channel Management Software Panel and/or upon reasonable requests
by Agilent for copies of the Fibre Channel Management Software.
7.2.5. LICENSE GRANT TO MODIFICATIONS.
(a) ADAPTEC'S FIBRE CHANNEL MANAGEMENT SOFTWARE MODIFICATIONS.
Adaptec grants to Agilent (i) an exclusive license for the
term of this Agreement to incorporate the Adaptec Fibre
Channel Management Software Modifications into products for
use in the Agilent Field of Use; market, distribute, sell,
price, and sublicense the right to use the Adaptec Fibre
Channel Management Software Modifications as used in such
products; support customers in the use of the Adaptec Fibre
Channel Management Software Modifications as used in such
products; and (ii) a license, exclusive except with respect to
Adaptec, to use, copy, test, modify, and certify the Adaptec
Fibre Channel Management Software Modifications for the
purpose of making Agilent Fibre Channel Management Software
Modifications.
(b) AGILENT'S FIBRE CHANNEL MANAGEMENT SOFTWARE MODIFICATIONS.
Agilent grants to Adaptec (i) an exclusive license for the
term of this Agreement to incorporate the Agilent Fibre
Channel Management Software Modifications into products for
use in the Adaptec Field of Use; market, distribute, sell,
price, and sublicense the right to use the Agilent Fibre
Channel Management Software Modifications as used in such
products; support customers in the use of the Agilent Fibre
Channel Management Software Modifications as used in such
products; and (ii) a license, exclusive except with respect to
Agilent, to use, copy, test, modify, and certify the Agilent
Fibre Channel Management Software Modifications for the
purpose of making Adaptec Fibre Channel Management Software
Modifications.
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(c) RESTRICTIONS ON LICENSES TO FIBRE CHANNEL MANAGEMENT SOFTWARE
AND MODIFICATIONS. In no event may either Party disclose or
distribute in source code format the Fibre Channel Management
Software or Fibre Channel Management Software Modifications
without receiving the prior written consent of the other
Party.
7.2.6. RESERVATION OF RIGHTS. Any rights to a Party's Fibre Channel
Management Software Modifications that are not expressly granted
to a Party in this Agreement are reserved by the other Party.
8. BOARD DESIGNS.
8.1. DELIVERY BY AGILENT. Within 30 days after the Effective Date,
Agilent shall provide to Adaptec the then most current versions of
the Board Designs and associated documentation. The Board Designs
must conform to the Board Designs Specifications attached hereto
as Exhibit G. Agilent shall deliver the Board Designs in a form
and format mutually agreed upon by the Parties.
8.2. LICENSE GRANT TO BOARD DESIGNS. Agilent grants to Adaptec a
license, exclusive except with respect to Agilent, for the term of
this Agreement to use, copy, test, modify, and certify the Board
Designs, to manufacture and have manufactured Boards from the
Board Designs, and to market, distribute, sell, price, sublicense,
and support customers in the use of such Boards; provided,
however, that such license grant to market, distribute, sell,
price such Boards applies only to the extent that such Boards use
and/or contain Chips.
8.3. ENFORCEMENT OF RIGHTS. Adaptec, as licensee of the Board Designs,
shall have power and right, in the event that Agilent, (i) having
actual notice of an infringement, misappropriation, or any other
violation of any and all intellectual property rights, excluding
Agilent's trademark rights, associated with the Board Designs
(collectively, "Board Designs Infringement"), gives formal notice
to Adaptec of its decision not to take any action in response to
such Board Designs Infringement, or (ii) fails to give such formal
notice to Adaptec within 10 business days of receiving actual
notice of such violation, (x) to institute and prosecute at its
own expense suits for such Board Designs Infringement, (y) to
enjoin such Board Designs Infringement and to collect damages,
profits, and awards of whatever nature recoverable for such Board
Designs Infringement, and (z) to settle any claim or suit for such
Board Designs Infringement by granting to the alleged Infringer a
sublicense to the Board Designs. Agilent will assist Adaptec and
provide reasonably necessary cooperation to Adaptec in such suits
and settlements, including but not limited to assigning Adaptec
power of attorney and any other rights necessary for the
prosecution of such suits and/or joining as party plaintiff in
such suits if required by law for the prosecution of such suits.
Adaptec explicitly retains all rights and powers associated with
its trademarks, regardless of whether any or all of such
trademarks are associated with the Board Designs.
8.4. RESERVATION OF RIGHTS. Any rights to the Board Designs that are
not expressly granted to Adaptec in this Agreement are reserved by
Agilent.
9. MODIFICATIONS TO BOARD DESIGNS.
9.1. MODIFICATIONS BY AGILENT. From time to time during the term of
this Agreement, Agilent may make modifications to the Board
Designs (the "Board Designs Modifications").
9.2. LICENSE GRANT TO MODIFICATIONS.
9.2.1. AGILENT'S BOARD DESIGNS MODIFICATIONS. Agilent grants to
Adaptec an exclusive license for the term of this Agreement to
use, copy, test, modify, certify, market, distribute, sell,
price, sublicense, and support customers in the use of the
Board Designs Modifications as incorporated in the Board
Designs for use in the Adaptec Field of Use.
9.2.2. RESERVATION OF RIGHTS. Any rights to the Board Designs
Modifications that are not expressly granted to Adaptec in
this Agreement are reserved by Agilent.
10. BRANDING.
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10.1.BOARDS AND SOFTWARE. Adaptec will co-brand any and all Boards and
associated marketing materials manufactured or sold by Adaptec,
including but not limited to kit sleeves, datasheets, print
advertising, and Web sites, with a primary brand consisting of
Adaptec's name(s) and a secondary brand consisting of Agilent
name(s). Branding of software drivers and BIOS will be decided at
a later time based on maximizing market benefits for the Parties
and development efficiency criteria. Should co-branding of
software drivers and/or BIOS be required, Adaptec and Agilent
brands will be treated equally.
10.2.TRADEMARK LICENSE GRANT. Each Party grants to the other Party a
non-exclusive license for the term of this Agreement to use and
display to the extent required by Section 10.5.1 of this Agreement
the trademarks, service marks and logos of the granting Party (the
Party's "Marks"). Any use of the granting Party's Marks by the
other Party shall strictly conform to the granting Party's
trademark usage guidelines, which will be supplied by the
granting Party at a later date.
11. TECHNICAL ASSISTANCE AND SUPPORT. During the term of this Agreement,
Agilent shall make available to Adaptec, free of charge, at Adaptec's
request, a reasonable amount of ongoing technical assistance with
respect to the Chips, the Fibre Channel Driver Software, the Agilent
Fibre Channel Driver Software Modifications, the Boards, the Board
Designs, and the Agilent Board Designs Modifications consistent with
the needs of Adaptec's business.
12. CONSIDERATION.
12.1.CONSIDERATION FOR LICENSE GRANTS AND ASSIGNMENTS OF JOINT
OWNERSHIP. In consideration for the Parties' duties, obligations,
grants of license and assignments of joint ownership hereunder,
Adaptec shall deliver to Agilent on the Effective Date a warrant
for 1,160,000 shares of Adaptec Common Stock (the "Stock") and
adhere to the payment structure attached hereto as Exhibit H
("Payment Structure").
12.2 VALUE OF EXCLUSIVE LICENSE GRANTS. The exclusive licenses granted
by Agilent to Adaptec under Sections 6.5 and 9.2 of this Agreement
are valued at $12,500,000 (U.S.) by Adaptec, while the exclusive
licenses granted by Adaptec to Agilent under Section 6.5 of this
Agreement are valued at $3,600,000 (U.S.) by Agilent.
12.3 ADAPTEC ALLOCATIONS. The Parties agree that 40% of Adaptec's total
consideration under this Section 12 shall be attributed to the US
rights granted to Adaptec under this Agreement and will be paid by
Adaptec, Inc., and that the remaining 60% of Adaptec's total
consideration under this Section 12 shall be attributed to the
non-US rights granted to Adaptec under this Agreement and will be
paid by Adaptec CI. Should any withholding taxes apply to any of
the payments under this agreement, Adaptec agrees to gross-up the
payments such that the net amount received by Agilent will be the
full amount due under this agreement. Upon request by Adaptec,
Agilent will affirm that Agilent received no benefit in Agilent's
Federal tax returns from the withholding taxes imposed. To the
extent Agilent receives a benefit for withholding taxes imposed on
these payments, no gross-up of the payments will be required from
Adaptec.
13. REPRESENTATIONS AND WARRANTIES.
13.1.POWER AND AUTHORITY. Each Party warrants that it has sufficient
right and authority to grant, enter into, and perform its
obligations under this Agreement.
13.2.LIMITED WARRANTY. Agilent warrants to Adaptec that as of the
Effective Date the Fibre Channel Driver Software and the Board
Designs conform to and operate in conformance with (i) the Fibre
Channel Driver Software Specifications and the Board Designs
Specifications, and (ii) all government and industry performance
requirements applicable to the Fibre Channel Driver Software and
the Board Designs. Adaptec warrants to Agilent that the
development of the Fibre Channel Management Software will be
performed in a manner consistent with industry standards.
13.3.DISCLAIMER OF OTHER WARRANTIES. THE WARRANTIES CONTAINED IN THIS
SECTION 13 ARE IN LIEU OF ALL OTHER WARRANTIES, EXPRESS AND
IMPLIED INCLUDING, BUT NOT LIMITED
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TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
14. INDEMNIFICATION.
14.1.INDEMNIFICATION OF ADAPTEC. Agilent will, at its own expense,
defend Adaptec and/or Adaptec's customers against and, subject to
the limitations set forth herein, pay all costs and damages made
in settlement or awarded against Adaptec and/or an Adaptec
customer resulting from any claim based on an allegation that (i)
the Fibre Channel Driver Software (except to the extent that the
Fibre Channel Driver Software incorporates Adaptec Fibre Channel
Driver Software Modifications), (ii) an Agilent Fibre Channel
Driver Software Modification, (iii) a Board Design, a portion
therof, and/or a Board Designs Modification, or (iv) an Agilent
Mark (collectively for the purpose of this section, the "Agilent
Deliverables") infringes any patent, trademark , copyright, or
other intellectual property right, or misappropriates a trade
secret of a third party, provided that Adaptec (a) gives Agilent
prompt written notice of any such claim, (b) grants sole control
to Agilent of the defense and settlement of the claims, and (c)
provides Agilent with the information and assistance necessary for
the defense and settlement of the claim at Agilent's expense. If
an injunction is obtained in an action based on any such claim
against the use by Adaptec or an Adaptec customer of an Agilent
Deliverable by reason of such infringement, or if in Agilent's
opinion such an injunction is likely to be obtained, Agilent may,
at its sole option, either (x) obtain for Adaptec or the Adaptec
customer the right to continue using the Agilent Deliverable, (y)
replace or modify the Agilent Deliverable so that it becomes
noninfringing but functionally equivalent to the enjoined Agilent
Deliverable, or (z) if neither (x) nor (y) can be reasonably
effected by Agilent, credit to Adaptec the consideration paid for
the Agilent Deliverable under this Agreement.
14.2.INDEMNIFICATION OF AGILENT. Adaptec will, at its own expense,
defend Agilent and/or Agilent's customer against and, subject to
the limitations set forth herein, pay all costs and damages made
in settlement or awarded against Agilent and/or an Agilent
customer resulting from any claim based on an allegation that (i)
the Fibre Channel Management Software, (ii) the Adaptec Fibre
Channel Driver Software Modifications, or (iii) an Adaptec Mark
(collectively for the purpose of this section, the "Adaptec
Deliverables") infringes any patent, trademark, copyright, or
other intellectual property right, or misappropriates a trade
secret of a third party, provided that Agilent (a) gives Adaptec
prompt written notice of any such claim, (b) grants sole control
to Adaptec of the defense and settlement of the claims, and (c)
provides Adaptec with the information and assistance necessary for
the defense and settlement of the claim at Adaptec's expense. If
an injunction is obtained in an action based on any such claim
against the use by Agilent or an Agilent customer of an Adaptec
Deliverable by reason of such infringement, or if in Adaptec's
opinion such an injunction is likely to be obtained, Adaptec may,
at its sole option, either (x) obtain for Agilent or the Agilent
customer the right to continue using the Adaptec Deliverable, (y)
replace or modify the Adaptec Deliverable so that it becomes
noninfringing but functionally equivalent to the enjoined Adaptec
Deliverable, or (z) if neither (x) nor (y) can be reasonably
effected by Adaptec, credit to Agilent the consideration paid for
the Adaptec Deliverable under this Agreement.
15. REMEDIES AND LIMITATIONS OF LIABILITY.
In the event that either Party sells any Board of or into the other
Party's Field of Use after the expiration of ninety (90) days after the
Effective Date, the selling Party will pay the other Party a fee of 20%
of the selling price of each such product sold. These fees are in
addition to any fees or royalties paid by (i) Agilent, including but
not limited to those for the Fibre Channel Management Software, and
(ii) Adaptec as outlined in Exhibit H, and do not count toward the
Minimum Royalty Payment to Agilent or the Royalty break level. Fees
will be due within 30 days of the end of each calendar quarter. Upon
fifteen (15) days' prior written notice to the other Party, either
Party may, at its own expense, appoint an independent auditor, to whom
the other Party has no reasonable objection, to audit and examine such
records at the other Party's offices during normal business hours, for
the purpose of confirming sales of Boards of or into a Party's Field of
Use and the appropriate payment of fees pursuant to this provision. A
Party may exercise audit rights pursuant to this Agreement no more than
two (2) times within any calendar year.
WITH THE EXCEPTION OF ANY LIABILITY ARISING FROM A BREACH OF AGILENT'S
WARRANTY IN SECTION 13.2 AND/OR A PARTY'S OBLIGATION UNDER SECTIONS 14
AND 16,
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IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR
ANY LOST PROFITS OR FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL,
PUNITIVE OR OTHER SPECIAL DAMAGES SUFFERED BY SUCH PARTY, ITS CUSTOMERS
OR OTHERS ARISING OUT OF OR RELATED TO THIS AGREEMENT, FOR ALL CAUSES
OF ACTION OF ANY KIND (INCLUDING TORT, CONTRACT, NEGLIGENCE, STRICT
LIABILITY AND BREACH OF WARRANTY) EVEN IF ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES. IN NO EVENT SHALL EITHER PARTY'S LIABILTY TO THE OTHER
EXCEED THE MINIMUM AMOUNTS SCHEDULED TO BE PAID BY ADAPTEC TO AGILENT
UNDER THE TERM OF THIS AGREEMENT.
16. CONFIDENTIALITY.
16.1.OBLIGATIONS. Adaptec and Agilent understand and agree that in the
performance of this Agreement each Party may have access to
nonpublic or confidential information of the other Party
including, but not limited to, information about customers, trade
secrets, marketing and business plans and technical information,
which is designated as confidential by the disclosing Party in
writing, whether by letter or by the use of a proprietary stamp or
legend, prior to or at the time it is disclosed to the other Party
("Confidential Information"). Both Parties agree that the terms of
this Agreement, including without limitation the financial terms
of this Agreement such as the pricing, shall be deemed
Confidential Information owned by the other Party hereto.
In addition, information that is orally disclosed to the other
Party shall constitute Confidential Information if within thirty
(30) days after such disclosure the disclosing Party delivers to
the receiving Party a written document describing such
Confidential Information and referencing the place and date of
such oral disclosure and the names of the employees of the Party
to whom such disclosure was made. Each Party agrees that: (i) all
Confidential Information shall remain the exclusive property of
the owner; (ii) it shall maintain, and shall use reasonably
prudent methods to cause its employees and agents to maintain, the
confidentiality and secrecy of the Confidential Information,
according to the same standard of care the receiving Party uses to
safeguard its own confidential information but in any event it
shall not use less than a reasonable degree of care (iii) it shall
not, and shall use reasonably prudent methods to ensure that its
employees and agents do not, copy, publish, disclose to others or
use (other than pursuant to the terms hereof) the Confidential
Information; and (iv) it shall return or destroy all copies of
Confidential Information upon request of the other Party. Each
Party, however, may disclose Confidential Information of the other
Party pursuant to the order or requirement of a court,
administrative agency, or other governmental body, provided that
the receiving Party gives reasonable notice to the other Party to
contest such order or requirement. Any such disclosure by the
receiving Party of the Confidential Information of the disclosing
Party, will, in no way, be deemed to change, affect or diminish
the confidential and proprietary status of such Confidential
Information.
16.2. EXCEPTIONS. Notwithstanding the foregoing, Confidential
Information shall not include any information to the extent it:
(a) is or becomes a part of the public domain through no act or
omission on the part of the receiving Party;
(b) is disclosed to third parties by the disclosing Party without
restriction on such third parties;
(c) is in the receiving Party's possession, without actual or
constructive knowledge of an obligation of confidentiality with
respect thereto, at or prior to the time of disclosure under this
Agreement;
(d) is disclosed to the receiving Party by a third party having no
obligation of confidentiality with respect thereto;
(e) is independently developed by the receiving Party without
reference to the disclosing Party's Confidential Information; or
(f) is released from confidential treatment by written consent of
the disclosing Party.
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17. DISPUTE RESOLUTION. In the event of disagreement with respect to any
aspect of this Agreement, the Parties agree to discuss in good-faith to
reach an amicable resolution, and to escalate such resolution process
to the appropriate members of their respective management organizations
who have the power and authority to achieve a successful resolution.
18. TERM AND TERMINATION.
18.1.TERM. The term of this Agreement will commence on the Effective
Date and will continue for four (4) years, unless it is terminated
earlier in accordance with the provisions hereof.
18.2. TERMINATION AND EFFECT OF TERMINATION.
18.2.1. TERMINATION. Agilent or Adaptec, as the case may be, will
have the right to terminate this Agreement if the nonterminating
Party breaches any material term or condition of this Agreement
and fails to cure such breach within thirty (30) days after
written notice.
18.2.2. EFFECT OF TERMINATION.
(a) TERMINATION BY AGILENT. If the Agreement is terminated by
Agilent based on a breach of a material term or condition of this
Agreement by Adaptec, Adaptec will have the option of either (1)
providing all remaining consideration referenced in Section 12 and
pursuant to the schedule of minimum royalty payments referenced in
Exhibit H of this Agreement within sixty (60) days of the
effective date of termination, in which case and at such time
Adaptec and Agilent will be granted all rights under this
Agreement as if the Agreement had expired, or (2) providing no
further consideration, in which case Adaptec shall receive no
further license or ownership rights to the Board Designs, the
Board Designs Modifications, the Fibre Channel Driver Software,
the Agilent Fibre Channel Management Software Modifications, or
the Agilent Fibre Channel Driver Software Modifications and
Agilent shall receive, at Adaptec's sole option, either (i) the
right to purchase, at a fee to be determined by an independent
third party mutually agreed upon by the Parties, joint ownership
rights to the Fibre Channel Management Software, the Adaptec Fibre
Channel Management Software Modifications, and the Adaptec Fibre
Channel Driver Software Modifications, or (ii) a worldwide,
irrevocable and perpetual license, at a fee to be determined by an
independent third party mutually agreed upon by the Parties, to
sell, modify, and distribute the Fibre Channel Management
Software, the Adaptec Fibre Channel Management Software
Modifications, and the Adaptec Fibre Channel Driver Software
Modifications, provided, however, that Agilent may exercise such
rights under the applicable subsection (i) or (ii) only in
conjunction with the sale of products based on Chips.
(b) TERMINATION BY ADAPTEC. If the Agreement is terminated by
Adaptec based on a breach of a material term or condition of this
Agreement by Agilent, (i) Agilent shall receive, at Adaptec's sole
option, either (x) the right to purchase, at a fee to be
determined by an independent third party mutually agreed upon by
the Parties, joint ownership rights to the Fibre Channel
Management Software, the Adaptec Fibre Channel Management Software
Modifications, and the Adaptec Fibre Channel Driver Software
Modifications, or (y) a worldwide, irrevocable and perpetual
license, at a fee to be determined by an independent third party
mutually agreed upon by the Parties, to sell, modify, and
distribute the Fibre Channel Management Software, the Adaptec
Fibre Channel Management Software Modifications, and the Adaptec
Fibre Channel Driver Software Modifications, provided, however,
that Agilent may exercise such rights under the applicable
subsection (x) or (y) only in conjunction with the sale of
products based on Chips, and (ii) Adaptec will be granted all
rights as if the Agreement had expired, provided that Adaptec
provides Agilent with a residual payment ("Residual Payment") as
calculated using the following formula:
Residual Payment = ($60 million multiplied by (number of
months from the Effective Date to the date of termination
divided by 48)) minus (the aggregate royalties paid by Adaptec
to Agilent prior to the date of termination pursuant to the
schedule of royalty payments referenced in the "Sale of Boards
to Third Parties by Adaptec" section of Exhibit H).
However, if the calculation of the Residual Payment results in an
amount less than zero, then no payment will be required by Adaptec
to Agilent to receive all the ownership rights as if the Agreement
had expired.
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18.3. EFFECT OF EXPIRATION.
18.3.1. FIBRE CHANNEL DRIVER SOFTWARE AND AGILENT FIBRE CHANNEL
DRIVER SOFTWARE MODIFICATIONS.
(a) ASSIGNMENT AND GRANT TO ADAPTEC. Upon expiration of this
Agreement, Adaptec will be deemed to receive and Agilent
hereby irrevocably (i) transfers and assigns to Adaptec an
undivided joint ownership interest in and to all versions of
the Fibre Channel Driver Software and Agilent Fibre Channel
Driver Software Modifications, including all copyrights, trade
secrets, and any other intellectual property rights recognized
in any country excluding trademarks and patents (for purposes
of this Section 18.3.1, "Intellectual Property Rights"), and
(ii) grants a non-exclusive, world-wide, royalty-free,
fully-paid, irrevocable, perpetual license to all current and
future worldwide patents and patent applications owned or
licensed by Agilent related to or arising from the Fibre
Channel Driver Software and Agilent Fibre Channel Driver
Software Modifications, including the right to sublicense such
patents, for any and all purposes consistent with Adaptec's
joint ownership interest in and to all versions of the Fibre
Channel Driver Software and Agilent Fibre Channel Driver
Software Modifications (for purposes of this Section 18.3.1,
"Adaptec Patent Rights"), provided, however, that Adaptec may
exercise such ownership and license rights only in conjunction
with the sale of products based on Chips or future versions of
Chips. Notwithstanding the foregoing, Adaptec may exercise
such ownership and license rights without restriction upon the
discontinuance by Agilent and/or its successors of the supply
or development of Chips and future versions of Chips. Agilent
will render to Adaptec any and all customary and reasonable
assistance requested by Adaptec, including but not limited to
the execution and delivery of any additional documents, in
order for Adaptec to acquire, transfer, perfect, register,
maintain and enforce Adaptec's joint ownership interest,
Intellectual Property Rights, and Patent Rights in the Fibre
Channel Driver Software and Agilent Fibre Channel Driver
Software Modifications, in any and all countries throughout
the world. Any transfer or assignment of any or all of
Agilent's rights in the Fibre Channel Driver Software and/or
Agilent Fibre Channel Driver Software Modifications to a third
party, including but not limited to any entity owned or
controlled by Agilent, shall be subject to such third party's
assumption of Agilent's obligations contained in this Section
18.3.1.
(b) CONDITIONS. Adaptec's and Agilent's joint ownership rights
in the Fibre Channel Driver Software and Agilent Fibre Channel
Driver Software Modifications are subject to the following
conditions. Upon fifteen (15) days prior written notice to
Adaptec, Agilent may, at its own expense, appoint an
independent auditor, to whom Adaptec has no reasonable
objection, to audit and examine such records at Adaptec's
offices during normal business hours, solely for the purpose
of confirming that Adaptec's exercise of its ownership rights
in the Fibre Channel Driver Software and Fibre Channel Driver
Software Modifications is done so in accordance with Section
18.3.1(a).
18.3.2. ADAPTEC FIBRE CHANNEL DRIVER SOFTWARE MODIFICATIONS. Upon
expiration of this Agreement, Agilent will be deemed to
receive and Adaptec hereby grants to Agilent effective as of
the date of expiration, a worldwide, irrevocable, perpetual,
fully-paid and royalty-free license to the Adaptec Fibre
Channel Driver Software Modifications. Adaptec agrees to
cooperate in all ways reasonably requested by Agilent in order
to affirm, confirm and give effect to such license, including
without limitation the execution of documents, for
registration with government agencies or for any other
reasonable purpose.
18.3.3. FIBRE CHANNEL MANAGEMENT SOFTWARE AND FIBRE CHANNEL
MANAGEMENT SOFTWARE MODIFICATIONS. Upon expiration of this
Agreement, the Parties shall negotiate in good faith the
consideration to be paid (i) by Agilent for a license to the
Fibre Channel Management Software and the Adaptec Fibre
Channel Management Software Modifications, and (ii) by Adaptec
for a license to the Agilent Fibre Channel Management Software
Modifications. Upon the completion of such negotiations,
Adaptec shall grant to Agilent a worldwide, irrevocable and
perpetual license to sell, modify, and distribute the Fibre
Channel Management Software and Adaptec Fibre Channel
Management Software Modifications and Agilent shall grant to
Adaptec a worldwide, irrevocable and perpetual license to
sell, modify, and distribute the Agilent Fibre Channel
Management Software Modifications, provided, however, that
each Party may exercise such license rights only in
conjunction with the sale of products, including but not
limited to Boards, that use, incorporate, or are based on
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Chips or future versions of Chips. Notwithstanding the
foregoing, upon the discontinuance by Agilent and/or its
successors of the supply or development of Chips and future
versions of Chips (i) Adaptec may exercise such ownership and
license rights without restriction, and (ii) Agilent's rights
to the Fibre Channel Management Software and the Adaptec Fibre
Channel Management Software Modifications shall be terminated.
Each Party agrees to cooperate in all ways reasonably
requested by the other Party in order to affirm, confirm and
give effect to such licenses, including without limitation the
execution of documents, for registration with government
agencies or for any other reasonable purpose.
Each Party's license rights under this Section 18.3.3 are
subject to the following conditions. Upon fifteen (15) days
prior written notice to the other Party, either Party may, at
its own expense, appoint an independent auditor, to whom the
other Party has no reasonable objection, to audit and examine
such records at the other Party's offices during normal
business hours, solely for the purpose of confirming that the
other Party's exercise of its license rights under this
Section 18.3.3 is done so in accordance with this Section
18.3.3.
18.3.4. BOARD DESIGNS AND BOARD DESIGNS MODIFICATIONS.
(a) Assignment and Grant to Adaptec. Upon expiration of this
Agreement, Adaptec will be deemed to receive and Agilent
hereby irrevocably (i) transfers and assigns to Adaptec an
undivided joint ownership interest in and to all versions of
the Board Designs and Board Designs Modifications, including
all copyrights, trade secrets, and any other intellectual
property rights recognized in any country excluding trademarks
and patents (for purposes of this Section 18.3.4,
"Intellectual Property Rights"), and (ii) grants a
non-exclusive, world-wide, royalty-free, fully-paid,
irrevocable, perpetual license to all current and future
worldwide patents and patent applications owned or licensed by
Agilent related to or arising from the Board Designs and Board
Designs Modifications, including the right to sublicense such
patents, for any and all purposes consistent with Adaptec's
joint ownership interest in and to all versions of the Board
Designs and Board Designs Modifications (for purposes of this
Section 18.3.4, "Adaptec Patent Rights"), provided, however,
that Adaptec may exercise such ownership and license rights
only in conjunction with the sale of products, including but
not limited to Boards, that use, incorporate, or are based on
Chips or future versions of Chips. Notwithstanding the
foregoing, Adaptec may exercise such ownership and license
rights without restriction upon the discontinuance by Agilent
and/or its successors of the supply or development of Chips
and future versions of Chips. Agilent will render to Adaptec
any and all customary and reasonable assistance requested by
Adaptec, including but not limited to the execution and
delivery of any additional documents, in order for Adaptec to
acquire, transfer, perfect, register, maintain and enforce
Adaptec's joint ownership interest, Intellectual Property
Rights, and Patent Rights in the Board Designs and Board
Designs Modifications, in any and all countries throughout the
world. Any transfer or assignment of any or all of Agilent's
rights in the Board Designs and Board Designs Modifications to
a third party, including but not limited to any entity owned
or controlled by Agilent, shall be subject to such third
party's assumption of Agilent's obligations contained in this
Section 18.3.4 to grant Adaptec Patent Rights to Adaptec.
(b) Conditions. Adaptec's and Agilent's joint ownership rights
in the Board Designs and Board Designs Modifications are
subject to the following conditions Upon fifteen (15) days
prior written notice to Adaptec, Agilent may, at its own
expense, appoint an independent auditor, to whom Adaptec has
no reasonable objection, to audit and examine such records at
Adaptec's offices during normal business hours, solely for the
purpose of confirming that Adaptec's exercise of its ownership
rights in the Board Designs and the Board Designs
Modifications is done so in accordance with Section 18.3.4(a).
18.4. SURVIVAL. The Parties' rights and obligations provided in
Sections 13, 14, 15, 16, 18.2, 18.3, 18.4, and 22 will survive the
expiration or termination of this Agreement.
19. NON-SOLICITATION. During the term of this Agreement, each Party will
not, without the prior written consent of the other Party, directly
solicit for employment any person who is employed by the other Party
and whose employment for the other Party is substantially related to
Fibre Channel technology or business.
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Notwithstanding the foregoing, either Party may make general
solicitations, including through newspaper advertisements or similar
advertisements, so long as such solicitations are not specifically
directed towards employees of the other Party.
20. RIGHT TO BID ON ACQUISITION OF BUSINESS. During the term of this
Agreement, prior to allowing any third party to acquire rights of any
kind to Agilent's Fibre Channel business (the "Agilent Fibre Channel
Business"), Agilent will, in good faith, inform Adaptec, in writing, of
the intent to sell such rights in the Agilent Fibre Channel Business.
During the term of this Agreement, prior to allowing any third party to
acquire rights of any kind in Adaptec's Fibre Channel business (the
"Adaptec Fibre Channel Business"), Adaptec will, in good faith, inform
Agilent, in writing, of the intent to sell such rights in the Adaptec
Fibre Channel Business.
21. OTHER ADAPTEC PRODUCTS. Adaptec will consider Agilent Fibre Channel
technology as its first choice for use in other Adaptec products such
as RAID controllers or switches. However, Adaptec reserves the right to
use a supplier other than Agilent for Fibre Channel in these other
applications if Adaptec reasonably deems necessary due to good cause.
22. GENERAL.
22.1.WAIVER AND MODIFICATIONS. No failure of either Party to exercise
or enforce any of its rights under this Agreement will act as a
waiver of such rights. Any waiver, amendment or other modification
of any provision of this Agreement will be effective only if in
writing and signed by the Parties.
22.2.INDEPENDENT CONTRACTORS. The Parties are independent
contractors. There is no relationship of partnership, joint
venture, employment, franchise or agency between the Parties.
Neither Party will have the power to bind the other or incur
obligations on the other's behalf without the other's prior
written consent.
22.3.PUBLICITY. Within 30 days of the Effective Date, the Parties
shall issue a joint press release. Thereafter, the Parties
will use reasonable efforts to coordinate any of their
respective marketing and promotional activities reasonably
related to the subject matter of this Agreement.
22.4.NOTICES. All notices and demands hereunder will be in writing
and will be served by personal service, mail or confirmed
facsimile transmission at the address of the receiving Party
set forth in this Agreement (or at such different address as
may be designated by such Party by written notice to the other
Party). All notices or demands by mail shall be by certified
or registered airmail, return receipt requested, and shall be
deemed complete upon receipt.
Legal notices to Adaptec will be addressed to:
Bob Schultz
Address:
Adaptec, Inc.
691 South Milpitas Boulevard
Milpitas, California 95035
Phone: (408) 957-6721
Fax: (408) 957-6670
with a copy to:
Dana Miles
Address:
Adaptec, Inc.
691 South Milpitas Boulevard
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Milpitas, California 95035
Phone: (408) 957-4972
Fax: (408) 957-7137
Legal notices to Agilent will be addressed to:
Julian Elliott
Address:
Agilent Technologies, Inc.
350 West Trimble Road, MS 90TZ
San Jose, California 95131-1008
Phone: (408) 435-4668
Fax: (408) 435-6445
with a copy to:
Keith Shandalow
Address:
Agilent Technologies, Inc.
3000 Hanover Street, MS 20BQ
Palo Alto, California 94304-1112
Phone: (650) 857-4460
Fax: (650) 857-3710
22.5. ATTORNEYS' FEES. In the event any litigation is brought by
either Party in connection with this Agreement, the prevailing
Party in such litigation shall be entitled to recover from the
other Party all reasonable costs and attorneys' fees incurred
by such prevailing Party in the litigation.
22.6. GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of
California and the United States, without regard to or
application of provisions relating to conflicts of law. Any
litigation arising under this Agreement will be brought
exclusively in the Superior Court in and for the County of
Santa Clara, California and the Parties hereby consent to the
personal jurisdiction and venue therein.
22.7. SEVERABILITY. In the event that any of the provisions of this
Agreement shall be held by a court or other tribunal of
competent jurisdiction to be unenforceable, such provision
will be enforced to the maximum extent permissible and the
remaining portions of this Agreement shall remain in full
force and effect.
22.8. FORCE MAJEURE. Neither Party shall be liable to the other for
delays or failures in performance resulting from causes beyond
the reasonable control of that Party, including, but not
limited to, acts of God, labor disputes or disturbances,
material shortages or rationing, riots, acts of war,
governmental regulations, communication or utility failures,
or casualties. In the event that Agilent fails to deliver the
Fibre Channel Driver Software due to such causes, Adaptec may
suspend this Agreement in whole or in part for the duration of
the delaying cause. Agilent shall resume performance under
this Agreement immediately after the delaying cause ceases
and, at Adaptec's option, extend the then current term period
for a period equivalent to the length of time the excused
delay endured.
16
<PAGE>
22.9. ENTIRE AGREEMENT. This Agreement, including all exhibits,
constitutes the complete and exclusive agreement between the
Parties pertaining to the subject matter hereof, and
supersedes in their entirety any and all written or oral
agreements previously existing between the Parties with
respect to such subject matter.
22.10. ASSIGNMENT. This Agreement may not be assigned in whole or in
part by either Party without consent of the other, which
consent will not be unreasonably withheld, except that either
Party may assign (subject to any rights of the other Party)
all of such Party's rights and obligations under this
Agreement in the event of a merger, reorganization or sale of
substantially all of its assets.
ADAPTEC, INC. AGILENT TECHNOLOGIES, INC.
BY: /s/ Robert L. Schultz, Jr. BY: /s/ William P. Sullivan
--------------------------- ---------------------------
TITLE: Chief Operating Officer TITLE: Senior Vice President,
Semiconductor Products
ADAPTEC CI, LTD.
BY: /s/ J. Peter Campagna
---------------------------
TITLE: Vice President and Treasurer
17
<PAGE>
EXHIBIT A
BOARD AND CHIP SUPPLY AGREEMENT
(TO BE SUPPLIED)
18
<PAGE>
EXHIBIT B
CHIP SPECIFICATIONS
(TO BE SUPPLIED BY PARTIES)
PLEASE REFERENCE THE TACHYON TL/TS USER MANUAL AND THE TACHYON XL2 USER MANUAL
19
<PAGE>
EXHIBIT C
FIBRE CHANNEL DRIVER SOFTWARE SPECIFICATIONS
Driver Architecture Specification for the Agilent PCI Fibre Channel Host Bus
Adapter
IOCTL Specification and Design Document for NetWare OS Layer
IOCTL Specification and Design Document for NT OS Layer
IOCTL Specification and Design Document for UnixWare OS Layer
Fibre Channel, SCSI-3 Addressing and Mux Addressing: Yet Another Mapping Scheme
Tachyon BIOS for IA-32
Tachyon BIOS Configuration Software for IA-32
20
<PAGE>
EXHIBIT D
BOARD SPECIFICATIONS
HHBA-5100 and HHBA-5101 Data Sheet
HHBA-5121 Data Sheet
HHBA-5220 and HHBA-5221 Data Sheet
Tachyon TL Single Channel PCI to Fibre Channel HBA Product Definition (see page
8 thru 10)
Tachyon TS Single Channel PCI to Fibre Channel HBA Product Definition (see
page 8 thru 10)
Raven Product Definition (see page 27 thru 30)
21
<PAGE>
EXHIBIT E
INITIAL FIBRE CHANNEL DEVELOPMENT SCHEDULE
SEE ATTACHED POWER POINT FILE
22
<PAGE>
EXHIBIT F
INITIAL DELIVERABLES
A. Fibre Channel Driver Software, in source and object code format, (most
recent released or development version to be delivered by Agilent within 30
days of Effective Date)
1. For OS level drivers and Fiber Channel layer code:
Drivers/HIM software for following operating systems:
Windows NT 4.0 Service Pack 5 including Enterprise and Advanced Server
Windows 2000 including Enterprise and Advanced Server
Solaris - x86
NetWare 4.2 and 5.0
Linux (Red Hat 6.1)
UnixWare 7.1
2. BIOS code
B. Boards
1. To be delivered by Agilent within 30 days of Effective Date: five (5) of
each of the following boards: HHBA 5100, HHBA 5101, HHBA 5121.
2. To be delivered by Agilent within 90 days of Effective Date: one-hundred
(100) of each of the following boards: HHBA 5100, HHBA 5101, HHBA 5121.
3. To be delivered by Agilent as soon as available: samples of HHBA 5220 and
HHBA 5221.
C. Board Designs (all to be delivered by Agilent within 30 days of Effective
Date)
1. For the following boards HHBA 5100, HHBA 5101, HHBA 5121, HHBA 5220, HHBA
5221: schematic capture, BOM's, design rules, mechanical information, Gerber
files or equivalent, and anything else required for Adaptec to manufacture.
D. Start-Up Period (all to be provided by Agilent as agreed per definition with
Adaptec):
engineering training
sales/market training
test methodologies
E. Datasheets and product definitions for driver software and boards listed
above
23
<PAGE>
EXHIBIT G
BOARD DESIGNS SPECIFICATIONS
Schematics
Component libraries
Approved vendor list for any parts on the boards
Board Designs Guide lines for:
Critical tolerances
Stack up of layers
Impedance requirements
Mechanical specifications
Gerber Files
PAL Programming Equations
Testing methodologies and processes for:
Functional / Design Verification testing
Environmental and Agency testing (FCC, CE, VCCI, UL....)
Functional Testers
ICT testers
24
<PAGE>
EXHIBIT H
PAYMENT STRUCTURE
SALE OF CHIPS TO ADAPTEC BY AGILENT:
Adaptec shall pay Agilent for Chips at a set price. In no event shall
such price be greater than Agilent's then most favorable OEM pricing.
Best OEM pricing is set on parts shipping at the time of the execution
of this Definitive Agreeement and will be revised at three month
intervals thereafter. If no parts are shipping at the time of execution
of this Agreement, initial pricing will be set on the basis of best
prototype quote for the delivery timeframe and at the time of quote.
Strategic alliance partnerships are excluded from this pricing.
Strategic alliance partners are defined as Intel and those entities
with which Agilent co-develops Chips (supplied silicon gates or Verilog
code to be used in such Chips).
SALE OF BOARDS TO ADAPTEC BY AGILENT:
In the event that Agilent manufactures Boards for Adaptec, Agilent will
sell Boards to Adaptec at a price to be negotiated. In no event shall
such price be greater than Agilent's then most favorable OEM pricing.
Best OEM pricing is set on parts shipping at the time of the execution
of this Definitive Agreement and will be revised at three month
intervals thereafter. If no parts are shipping at the time of execution
of this Agreement, initial pricing will be set on the basis of best
prototype quote for the delivery timeframe and at the time of quote.
SALE OF BOARDS TO THIRD PARTIES BY ADAPTEC:
For Boards sold by Adaptec, Adaptec will receive all revenue. Adaptec
will pay Agilent a royalty on a quarterly-basis over the 4 years
following the Effective Date based on such revenues as set forth in the
following chart, but in no event shall Adaptec pay Agilent less than
the minimum royalty payment as set forth in the following chart. The
annual Minimum Royalty Payment, and any additional annual Royalty
Payments, shall be calculated and made in full per the following
schedule by Adaptec to Agilent within forty-five (45) days of the end
of each 12-month period after this Agreement is executed.
Upon fifteen (15) days' prior written notice to the other Party, either
Party may, at its own expense, appoint an independent auditor, to whom
the other Party has no reasonable objection, to audit and examine such
records at the audited Party's offices during normal business hours,
for the purpose of confirming the audited Party's sales of Boards to
third parties and the appropriate amount of royalties to be paid.
<TABLE>
<CAPTION>
YEAR 1 YEAR 2 YEAR 3 YEAR 4 YEAR 5
<S> <C> <C> <C> <C> <C>
ROYALTY % (UP TO ROYALTY BREAK LEVEL) 20% 20% 20% 20% 0%
ROYALTY % (ABOVE ROYALTY BREAK LEVEL) 5% 5% 5% 5% 0%
ROYALTY BREAK LEVEL $6M $12M $22M $33M
MINIMUM ROYALTY PAYMENT TO AGILENT $6M $12M $18M $24M $0
</TABLE>
SALE OF BOARDS BY AGILENT:
For Boards sold to third parties, Agilent will be responsible for all
activities and will receive all the revenue.
25
