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EXHIBIT 10.1
CONFIDENTIAL TREATMENT REQUESTED
VR(2) TECHNOLOGY LICENSE AGREEMENT
THIS VR(2) TECHNOLOGY LICENSE AGREEMENT (this "AGREEMENT") is made and
entered into as of this 27th day of April, 2000 (the "EFFECTIVE DATE"), by and
between Overland Data, Inc., a California corporation, having a place of
business at 8975 Balboa Avenue, San Diego, CA 92123 ("OVERLAND"), and Storage
Technology Corp., a Delaware corporation, having a place of business at One
Storage Tek Drive, Louisville, CO 80028 ("STORAGETEK").
RECITALS
A. Overland is the owner of the VR(2) Intellectual Property, VR(2) Intellectual
Property Derivatives and know-how relating to the design, use and manufacture of
the VR(2) Core as defined below.
B. StorageTek has requested a license grant under the VR(2) Intellectual
Property, VR(2) Intellectual Property Derivatives and know-how of the VR(2) Core
to develop, make, use, sell and offer for sale tape drive products incorporating
application specific integrated circuits embodying such VR(2) Intellectual
Property, VR(2) Intellectual Property Derivatives and know-how of the VR(2) Core
as set forth in this Agreement.
C. Overland is willing to grant such license to StorageTek under the terms and
conditions herein.
NOW, THEREFORE, in consideration of the mutual promises, covenants and
other terms and conditions contained herein and for other good and valuable
consideration, the receipt of which is acknowledged by both parties, the parties
agree as follows:
ARTICLE I.
DEFINITIONS
For purposes of this Agreement, the following terms and all other terms
defined in this Agreement shall have the meanings so defined unless the context
clearly indicates otherwise, and a term defined in the singular shall include
the plural and vice versa when the context so indicates:
1.1 ASIC. The term "ASIC" means an application specific integrated circuit.
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1.2 CHANNEL. The term "CHANNEL" shall mean a set of electronics, including
any embedded firmware, that processes a single data stream, reads the
data from a single data track on tape with a single reproduce element,
and detects and decodes the data. The number of Channels in a tape drive
is the maximum number of Channels simultaneously active at any given
time.
1.3 CORE LICENSE. The term "CORE LICENSE" means a *** to: (i) use the VR(2)
Intellectual Property solely for the purpose of designing, manufacturing
and having manufactured VR(2) Compliant Products; (ii) incorporate such
VR(2) Compliant Products solely into tape drives manufactured by or for
StorageTek; (iii) promote, market, offer to sell, sell, and distribute
such VR(2) Compliant Products as a part of tape drives manufactured by or
for StorageTek; (iv) excerpt, reproduce and distribute, subject to the
confidentiality provisions of ARTICLE 5, the Documentation solely for the
purpose of making such VR(2) Compliant Products; and (v) use the Overland
Mark in connection with the promotion, marketing, sale, offer for sale,
or distribution of tape drives manufactured by or for StorageTek which
contain the VR(2) Compliant Products.
1.4 DOCUMENTATION. The term "DOCUMENTATION" means all present manuals,
notebooks, VR(2) Technical Information, quick reference guides, comments
and publications of every nature, and all corrections, modifications,
updates and revisions thereto, relating to the VR(2) Core provided by
Overland to StorageTek, to assist in the integration, use and operation
of Implementation Compliant Cores and/or VR(2) Compliant Products. In
order to be considered Confidential Information, Documentation must
conform with the requirements of SECTION 5.1.
1.5 FUNCTIONAL TEST VECTORS. The term "FUNCTIONAL TEST VECTORS" means one (1)
or more sets of test vectors provided by Overland to verify the
functionality of the VR(2) Core and/or any Implementation Compliant Core.
1.6 IMPLEMENTATION COMPLIANT CORE. The term "IMPLEMENTATION COMPLIANT CORE"
means an integrated circuit implementation of the VR(2) Core which (i)
conforms to the VR(2) datasheet and specification, (ii) passes the
Functional Test Vectors and (iii) has been verified in accordance with
the provisions of this Agreement.
1.7 INTELLECTUAL PROPERTY. The term "INTELLECTUAL PROPERTY" means inventions,
know-how, concepts, routines, ideas, trade secrets, manufacturing
processes and assembly techniques, whether or not patentable, embodied in
or utilized in the design, use and/or fabrication of any product,
including any patent applications, patents, patent rights, trademarks,
service marks, trade secrets, copyrights, registered designs, topography
and/or semiconductor mask work registrations and rights and/or any
applications for any of the foregoing.
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1.8 OVERLAND MARK. The term "OVERLAND MARK" means the VR(2) mark adopted by
Overland in connection with products incorporating the VR(2) Technology,
which mark is attached as EXHIBIT C.
1.9 QUARTER. The term "QUARTER" means each three (3) month period ending
March 31, June 30, September 30, or December 31 during the Term.
1.10 VR(2) COMPLIANT PRODUCT. The term "VR(2) COMPLIANT PRODUCT" means any
semiconductor chip and/or ASIC developed by StorageTek containing an
Implementation Compliant Core and additional StorageTek or customer
circuitry providing significant functionality.
1.11 VR(2) CORE. The term "VR(2) CORE" means the single channel core as
described and identified in the specification set forth in EXHIBIT A,
excluding: (i) any analog to digital circuitry or any references thereto;
and (ii) those items identified in EXHIBIT D hereto that do not
constitute part of the VR(2) Technology.
1.12 VR(2) INTELLECTUAL PROPERTY. The term "VR(2) INTELLECTUAL PROPERTY" means
VR(2) Inventions, know-how, concepts, routines, ideas, trade secrets,
manufacturing processes and assembly techniques, whether or not
patentable, embodied in or utilized in the design, use and/or fabrication
of the VR(2) Core and/or ASICs embodying the VR(2) Technology and/or
VR(2) Technical Information, including any patent applications, patents,
patent rights, trademarks, service marks, trade secrets, copyrights,
registered designs, topography and/or semiconductor mask work
registrations and rights and/or any applications for any of the
foregoing, unregistered design rights and any VR(2) Intellectual Property
Derivatives.
1.13 VR(2) INTELLECTUAL PROPERTY DERIVATIVES. The term "VR(2) INTELLECTUAL
PROPERTY DERIVATIVE" means: (a) any translation, abridgement,
modification, revision, derivative works or other form in which an
existing work protected by copyright may be recast, transformed or
adapted; (b) any translation, abridgement, modification, revision or
other form in which an existing work protected by topography or mask
rights may be recast, transformed, or adapted; and (c) any changes,
modifications or improvements in the design, functionality or
specification of the VR(2) Core, VR(2) Technical Information and/or VR(2)
Technology, including the addition of new features or capacities.
1.14 VR(2) INVENTION. The term "VR(2) INVENTION" means any idea, design,
concept, technique, invention, discovery, algorithm or improvement
relating to the VR(2) Technical Information, VR(2) Technology and/or
VR(2) Core, whether or not patentable.
1.15 VR(2) TECHNICAL INFORMATION. The term "VR(2) TECHNICAL INFORMATION" means
information and know-how provided by Overland relating to VR(2)
Technology and the manufacture, engineering and use of the VR(2) Core,
including without limitation the following: manufacturing, engineering
and circuit drawings, parts and test specifications, test set drawings,
schematics and documents, engineering development documents, systems
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specifications, quality assurance plans, technical practices, software,
training and course materials, vendor listings, and systems engineering
applications.
1.16 VR(2) TECHNOLOGY. The term "VR(2) TECHNOLOGY" means the data encoding and
decoding channel technology for linear magnetic tape formats developed by
Overland, as identified in EXHIBIT D hereto as ***, and includes solid
state circuits embodied in semiconductor chips, associated
specifications, designs, drawings, data, test qualification, and other
documented technical and application information related thereto.
1.17 TEST CHIP. The term "TEST CHIP" shall mean a prototype VR(2) Compliant
Product.
ARTICLE II.
LICENSES
2.1 TITLE.
2.1.1 Each party shall retain the sole ownership of any Intellectual
Property or maskworks that it has developed or acquired prior to
the Effective Date.
2.1.2 Each party shall retain the sole ownership of any Intellectual
Property that it develops or acquires independently during the
Term of this Agreement; PROVIDED that such development or
acquisition does not result from either or both of the parties'
efforts in connection with this Agreement.
2.1.3 All Intellectual Property developed or acquired as a result of
either or both of the parties' efforts in connection with this
Agreement shall be assigned as follows:
***
2.2 INTELLECTUAL PROPERTY. *** StorageTek will at no time acquire or retain,
or appropriate for its own use, any right, title or interest in or to any
of the Documentation, Functional Test Vectors, Implementation Compliant
Cores, VR(2) Intellectual Property, VR(2) Intellectual Property
Derivatives, VR(2) Inventions, VR(2) Core, VR(2) Technical Information
and/or VR(2) Technology, regardless of inventorship or authorship.
StorageTek will not take any action that might impair in any way any
right, title or interest of Overland in or to any of the Documentation,
Functional Test Vectors, Implementation Compliant Cores, VR(2)
Intellectual Property, VR(2) Intellectual Property Derivatives, VR(2)
Inventions, VR(2) Core, VR(2) Technical Information and/or VR(2)
Technology, but will undertake such efforts and execute and deliver such
documents or instructions as Overland reasonably may request in order for
Overland to perfect, maintain and/or enforce such Documentation,
Functional Test Vectors, Implementation Compliant Cores, VR(2)
Intellectual Property, VR(2) Intellectual
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Property Derivatives, VR(2) Inventions, VR(2) Core, VR(2) Technical
Information and/or VR(2) Technology ***.
2.3 LICENSE GRANT. Subject to the terms and conditions of this Agreement,
Overland hereby grants to StorageTek the Core License.
2.3.1 StorageTek will at all times use its best efforts to ensure that
all products in relation to which it uses the Overland Mark
conform to the quality control guidelines set forth in this
Agreement or provided from time to time by Overland.
2.3.2 StorageTek will cooperate with Overland in making or
facilitating any governmental registrations or submissions that
are necessary to protect the Overland Mark and Overland's rights
therein, including, without limitation, registration of
StorageTek as a registered user of the Overland Mark ***. Upon
termination of StorageTek's right to use the Overland Mark under
this Agreement, StorageTek will cooperate with Overland in
revocation of any such user registration ***.
2.3.3 StorageTek will comply with all applicable laws and governmental
regulations pertaining to the proper use and designation of
trademarks.
2.3.4 StorageTek admits the validity of the Overland Mark.
2.3.5 Overland does not warrant or represent that the use of the
Overland Mark will be free from infringement of third-party
trademarks. Overland does represent, however, that it presently
is not aware of any such infringement.
2.3.6 StorageTek will use reasonable efforts to give Overland notice
of any known or presumed infringements of the Overland Mark, and
StorageTek will cooperate fully with Overland in the protection
of the Overland Mark ***. If Overland decides to enforce the
Overland Mark against an infringer, all recoveries made shall be
for the account of Overland.
2.3.7 StorageTek agrees to display the Overland Mark on: (i) any and
all tape drives incorporating the VR(2) Compliant Products
manufactured by or for StorageTek; and (ii) all advertising,
marketing, distribution, promotional materials, and packaging
relating thereto when the foregoing disclose technical
specifications relating to the VR(2) Compliant Products. In
addition, StorageTek will *** use or display the Overland Mark
in order to facilitate and promote sales of the VR(2) Compliant
Products. Upon Overland's request, StorageTek will provide, free
of charge, samples of the use of the Overland Mark solely for
the purpose of trademark registration or renewal. StorageTek
will support Overland *** in the application and maintenance of
any registration for the Overland Mark.
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2.4 USE OF TRADE NAMES AND MARKS. StorageTek expressly agrees not to
challenge the ownership or validity of the Overland Mark. StorageTek will
not use or register in any country any trademarks diluting or confusingly
similar to the Overland Mark. Except as provided by this Agreement,
StorageTek will not use any logo, name, trademark, trade name or service
mark, including, without limitation, any non-English language phonetic
and/or visual approximation or substitution for any such logo, name or
mark (collectively, "NAME OR MARK") of Overland, any Name or Mark
licensed to Overland, or any Name or Mark confusingly similar to any Name
or Mark owned by, or licensed to, Overland.
2.5 SUBCONTRACTORS. StorageTek may exercise its right to have manufactured
VR(2) Compliant Products; PROVIDED that: (i) StorageTek notifies Overland
of the identity of StorageTek's subcontract manufacturer ("MANUFACTURER")
not less than thirty (30) days prior to the first prototype production by
such Manufacturer; and (ii) StorageTek ensures that such Manufacturer
agrees (a) to be bound by obligations of confidentiality no less
restrictive than those contained in this Agreement and (b) to supply the
VR(2) Compliant Products solely to StorageTek for incorporation into tape
drives manufactured by or for StorageTek. If any Manufacturer breaches
any provision of this SECTION 2.5, StorageTek will (x) provide prompt
written notice to Overland of such breach and (y) use all commercially
reasonable efforts to cure any such breach. If StorageTek is unable to
cure such breach within thirty (30) days of such notice, then, within
ninety (90) days of such notice, StorageTek agrees to (i) qualify a new
Manufacturer and (ii) terminate the right of the original Manufacturer to
produce VR(2) Compliant Products. StorageTek further agrees to indemnify
and hold harmless Overland against any and all loss, liability, costs,
damages, reasonable expenses (including reasonable attorneys' and other
professional fees), suffered, incurred or sustained in connection with or
as a result of such breach.
2.6 EXCLUSIONS. No right or license is granted to StorageTek to: (i)
sublicense any of the rights granted to StorageTek pursuant to the Core
License; (ii) offer to sell or sell any VR(2) Compliant Products which
are not incorporated within a tape drive manufactured by or for
StorageTek; or (iii) sell any tape drive containing VR(2) Compliant
Products prior to verification by Overland of such VR(2) Compliant
Products in accordance with ARTICLE 3 and payment of all fees in
accordance with ARTICLE 4.
ARTICLE III.
VERIFICATION OF IMPLEMENTATION COMPLIANT CORES
3.1 TEST PLATFORMS. On the Effective Date, Overland has delivered to
StorageTek *** test platforms for the VR(2) Core. StorageTek acknowledges
receipt of such test platforms and further acknowledges and agrees that
such test platforms are fully functional and available for their intended
use on the Effective Date.
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3.2 VERIFICATION. StorageTek, at its sole cost and expense, will design,
manufacture (or have manufactured) and characterize a Test Chip for each
VR(2) Compliant Product that it intends to incorporate into its next
generation proprietary tape drive products. For each Test Chip,
StorageTek will test and deliver to Overland, free of charge, five (5)
samples of such Test Chip ("SAMPLES") and a copy of the log generated by
testing such Samples ("TEST RESULTS"). The Implementation Compliant Core
will be verified upon (a) Overland's acceptance of the Test Results
provided by StorageTek or (b) acceptable test results for such Test Chip
generated by Overland. Overland will notify StorageTek, in writing, as
soon as practical based on available resources and time schedules, but in
any event within thirty (30) days of delivery by StorageTek of the
Samples and the Test Results to Overland ("VERIFICATION PERIOD"), whether
the Implementation Compliant Core of the Test Chip has been verified or
has failed the verification process. If the Implementation Compliant Core
of any Test Chip fails the verification process, Overland will provide to
StorageTek details of the errors that caused the failure. The parties
will repeat the above process until either (x) the Test Chip is verified
or (y) StorageTek withdraws the Test Chip from the verification process
or (z) the parties agree that the Test Chip is verified. If Overland
fails to confirm the result of the verification process within the
Verification Period, the Test Chip subject to verification will be deemed
verified.
3.3 SALE OF VR(2) COMPLIANT PRODUCTS. If (i) the Test Chip for an
Implementation Compliant Core has been verified in accordance with the
provisions of SECTION 3.2 and (ii) the VR(2) Compliant Products
containing such verified Implementation Compliant Core in such Test Chip
runs the Functional Test Vectors without detection of any errors (or
where Overland waives in writing such detected errors pursuant to SECTION
3.2), StorageTek may sell such VR(2) Compliant Products manufactured by
or for StorageTek solely as part of a tape drive manufactured by or for
StorageTek without further verification.
3.4 SAMPLES OF VR(2) COMPLIANT PRODUCTS. Within ninety (90) days of
verification in accordance with SECTION 3.2, StorageTek will provide to
Overland, free of charge, five (5) samples of each VR(2) Compliant
Product manufactured by or for StorageTek on each process used for such
manufacture.
ARTICLE IV.
FEES AND ROYALTIES
4.1 CORE LICENSE FEE. In consideration for the Core License and Overland's
delivery of the test platforms to StorageTek pursuant to SECTION 3.1,
StorageTek will pay to Overland an up-front, non-refundable fee of $***,
which fee shall be due and payable immediately on the Effective Date.
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4.2 CONTRACT ENGINEERING SERVICES. During the development of StorageTek's
next generation proprietary tape drive product through ***, Overland will
provide to StorageTek contract engineering services. As consideration for
such contract engineering services, on each of *** and ***, StorageTek
will pay in arrears to Overland non-refundable fees of $***, plus, as
mutually agreed to by the parties in advance, Overland's *** expenses ***
in connection with such contract engineering services. StorageTek shall
deliver payment for such fees and *** expenses to Overland on each such
respective date.
4.3 ROYALTY. In consideration for the Core License, for each VR(2) Compliant
Product sold by StorageTek as part of a tape drive, StorageTek shall pay
to Overland a royalty amount for each Channel contained within such VR(2)
Compliant Product in accordance with the terms and conditions set forth
in EXHIBIT B. StorageTek shall deliver such royalty payments to Overland
not later than *** days after the end of each Quarter (or portion
thereof) during the Term of this Agreement.
4.4 ADDITIONAL CONTRACT ENGINEERING SERVICES. Subsequent to the development
of StorageTek's next generation proprietary tape drive product employing
the VR(2) Technology, upon written request of StorageTek, Overland may
elect to provide to StorageTek additional contract engineering services.
Consideration for such additional services will be determined on the
basis of the type and scope of work requested.
4.5 RECORDS AND REPORTS. StorageTek will keep accurate and sufficient records
to determine any and all amounts owed to Overland under this Agreement,
including, without limitation, the aggregate number of Channels contained
in all VR(2) Compliant Products sold by StorageTek as part of tape drives
in each Quarter (or portion thereof) during the Term of this Agreement.
StorageTek will make a preliminary written report detailing the basis for
any computations and deliver such report to Overland within *** days
after the end of each Quarter (or portion thereof) during the Term of
this Agreement. If no royalty is due, the report will so state.
StorageTek will provide the corresponding final written report to
Overland not later than *** days after the end of each Quarter. Overland
acknowledges that the preliminary written report may contain material,
non-public information of StorageTek and Overland will not disclose to
any third party any material, non-public information contained in such
preliminary written report. Records necessary for the computation of
amounts payable by StorageTek under this Agreement will be maintained by
StorageTek for a period of *** years following each accounting report
due, including the last accounting report due upon termination of this
Agreement for any reason. Upon *** days advance prior notice to inspect,
StorageTek will make such records open to inspection by an independent
auditor selected by Overland and approved by StorageTek, which approval
will not be withheld unreasonably, not more than *** each calendar year
during regular business hours of StorageTek. Such independent auditor
only will use such records to determine the accuracy of royalties paid
and reports submitted to Overland. StorageTek will (i) reimburse Overland
for the expenses of such audits *** and (ii) immediately pay to Overland
the amount of any such underpayment. Any overpayment
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will be offset against the next payment under this Agreement to be paid
by StorageTek to Overland.
4.6 PAYMENTS AND TAXES. All payments made pursuant to this Agreement will be
made in United States dollars. Notwithstanding any other provision of
this Agreement, any amounts payable under this Agreement will be paid
without notice, demand, counterclaim, deduction, set off, offset or
defense and without abatement, suspension, deferment, diminution, or
reduction. StorageTek will pay all national, federal, state, local, or
any other governmental use, sales, excise, occupational, property (ad
valorem), consumer and similar taxes or duties now in force or enacted in
the future relating to any license fees, service fees, royalties or other
payments due to Overland pursuant to this Agreement, except for income
taxes due and owing by Overland based on amounts received by Overland
under this Agreement. If Overland is required to pay any such tax, fee or
charge otherwise payable by StorageTek hereunder, StorageTek will
promptly reimburse Overland after Overland provides StorageTek with
evidence of the amounts paid, so that payments to Overland will be in
full and free of all liability for such taxes, fees or charges or other
deductions.
ARTICLE V.
CONFIDENTIAL INFORMATION
5.1 CONFIDENTIAL INFORMATION. Each party agrees that any information
identified as confidential ("CONFIDENTIAL INFORMATION"), including,
without limitation, the Documentation, Functional Test Vectors, VR(2)
Intellectual Property Derivatives, VR(2) Core, VR(2) Technical
Information, VR(2) Inventions and VR(2) Technology provided to StorageTek
by Overland, which is made available to the other party in accordance
with this Agreement shall be kept confidential. The disclosing party
hereunder shall mark or identify its Confidential Information as
"confidential." *** Each party will use the other party's Confidential
Information only for the purposes contemplated and permitted by this
Agreement. Neither party will disclose the other party's Confidential
Information to any third party except as may be required (i) by court
order (PROVIDED that the party subject to such court order gives prompt
written notice thereof to the party whose Confidential Information will
be disclosed and cooperates in any motion or action to prevent or limit
the required disclosure), and (ii) pursuant to any discovery obligation
in litigation, PROVIDED that a mutually agreeable protective order has
been entered by the court. Each party further agrees to protect the other
party's Confidential Information from unauthorized use or disclosure in
the same manner as it protects its own similar Confidential Information
(but in no event with less than reasonable care), and to limit access to
the other party's Confidential Information to those of its employees and
agents who need such access for purposes contemplated and permitted by
this Agreement. This obligation of confidentiality shall last until the
later of: (x) *** from the date when the confidential information is
disclosed to the recipient; or (y) the termination date of this
Agreement.
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5.2 EXCLUSIONS. The obligations in this ARTICLE 5 will not apply to any
information that is: (i) presently publicly available, except as
disclosed in violation of this Agreement; (ii) lawfully received by any
party from a third party who is or who was not bound in a confidential
relationship to the other party; (iii) already properly and lawfully in
possession of any party prior to the Effective Date or the date of its
disclosure, or information which such party demonstrates with appropriate
documentation was known prior hereto; (iv) required by law or
governmental regulation or necessary for the purpose of enforcement of
this Agreement; or (v) independently developed by one party without use
of any Confidential Information of the other party by employees who have
had no access to such Confidential Information.
5.3 PRESS RELEASES. Neither party shall issue a press release relating to
this Agreement without the prior written consent of the other party
(which consent shall not be withheld unreasonably); PROVIDED, HOWEVER,
that such consent shall not apply to the parties disclosure requirements
under the federal securities laws or other applicable governmental laws,
regulations or agencies.
ARTICLE VI.
REPRESENTATIONS AND WARRANTIES
6.1 LICENSOR.
6.1.1 Overland warrants that it has full power and authority to enter
into this Agreement. Overland warrants that it owns and has the
necessary authority to grant the Core License.
6.1.2 Overland is not a party to, subject to, or bound by any
agreement or any judgment, award, order, writ, injunction or
decree of any court, governmental body or arbitrator, which
could prevent the carrying out of this Agreement; and there is
(i) no action, suit, dispute or governmental, administrative,
arbitration or regulatory proceeding pending or, to Overland's
knowledge, threatened nor (ii) to Overland's knowledge, any
investigation pending or, to Overland's knowledge, threatened
against or relating to Overland, which, in either case, could
prevent Overland from carrying out its obligations under this
Agreement.
6.1.3 StorageTek acknowledges and agrees that Overland makes no
representations or warranties as to the commercial utility of
the Documentation, VR(2) Intellectual Property, VR(2)
Intellectual Property Derivatives, VR(2) Core, VR(2) Technical
Information, VR(2) Technology, or any other items provided by
Overland ("OVERLAND ITEMS") pursuant to this Agreement. OVERLAND
DOES NOT WARRANT THAT THE OVERLAND ITEMS WILL MEET STORAGETEK'S
REQUIREMENTS
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OR THAT THE OVERLAND ITEMS WILL OPERATE IN THE COMBINATIONS
WHICH STORAGETEK MAY SELECT FOR USE. THE OVERLAND ITEMS ARE
PROVIDED WITHOUT ANY EXPRESS OR IMPLIED WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR
NONINFRINGEMENT. FURTHER, OVERLAND DOES NOT WARRANT, GUARANTEE,
OR MAKE ANY REPRESENTATIONS REGARDING USE, OR THE RESULTS OF
USE, OF THE OVERLAND ITEMS. THE ENTIRE RISK AS TO THE RESULTS
AND PERFORMANCE OF THE OVERLAND ITEMS IS ASSUMED BY STORAGETEK.
6.1.4 StorageTek acknowledges and agrees that it is solely and
exclusively responsible for any and all of its activities
carried out under the license granted or otherwise under
this Agreement. StorageTek acknowledges and agrees that
Overland makes no representations, extends no warranties of
any kind, either express or implied, and assumes no risk,
liability or responsibilities whatsoever with respect to
the practice or use by StorageTek, its agents, assigns,
employees, customers, subcontractors or other third parties
of any of the Overland Items. StorageTek acknowledges and
agrees that Overland makes no representations or warranties
as to (i) the validity of any of the VR(2) Intellectual
Property and/or VR(2) Intellectual Property Derivatives, or
(ii) except as provided in SECTION 7.2, the absence of or
freedom from alleged infringement of third-party patents or
absence of or freedom from third-party infringers.
6.1.5 THE WARRANTIES ABOVE ARE EXCLUSIVE AND IN LIEU OF ALL OTHER
WARRANTIES, CONDITIONS, REPRESENTATIONS, INDEMNITIES AND
GUARANTEES WITH RESPECT TO THE OVERLAND ITEMS, WHETHER EXPRESS
OR IMPLIED, ARISING BY LAW, CUSTOM OR ORAL OR WRITTEN STATEMENTS
BY OVERLAND, ITS AGENTS, OR REPRESENTATIVES OR OTHERWISE.
OVERLAND MAKES NO WARRANTIES OR REPRESENTATIONS WITH RESPECT TO
THE OVERLAND ITEMS.
6.2 LICENSEE.
6.2.1 StorageTek warrants that it has full power and authority to
enter into this Agreement.
6.2.2 StorageTek is not a party to, subject to, or bound by any
agreement or any judgment, award, order, writ, injunction or
decree of any court, governmental body or arbitrator, which
could prevent the carrying out of this Agreement; and there is
(i) no action, suit, dispute or governmental, administrative,
arbitration or regulatory proceeding pending or, to StorageTek's
knowledge, threatened nor (ii) to
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StorageTek's knowledge, any investigation pending or, to
StorageTek's knowledge, threatened against or relating to
StorageTek, which, in either case, could prevent StorageTek from
carrying out its obligations under this Agreement.
6.2.3 StorageTek represents and warrants that it has the knowledge,
expertise and capability necessary to use the Overland Items in
a safe and effective manner. StorageTek acknowledges and agrees
that (i) Overland has no control over, or responsibility for,
the manner in which StorageTek uses the Overland Items and (ii)
StorageTek uses the Overland Items solely and exclusively at its
own risk.
6.3 LIMITATION OF LIABILITY. NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THIS
AGREEMENT, OVERLAND WILL NOT BE RESPONSIBLE OR LIABLE UNDER ANY PROVISION
OF THIS AGREEMENT OR UNDER ANY CONTRACT, NEGLIGENCE, PRODUCT LIABILITY,
STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR NON-RECURRING
ENGINEERING COSTS, MANUFACTURING STARTUP COSTS, LOSS OF GOODWILL, LOSS OR
INACCURACY OF DATA, COST OF PROCUREMENT OF SUBSTITUTE GOODS, SERVICES OR
TECHNOLOGY, OR OTHER ECONOMIC LOSS OR ANY INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES INCLUDING, WITHOUT LIMITATION, LOSS OF REVENUES AND
LOSS OF PROFITS, REGARDLESS OF WHETHER OVERLAND HAS BEEN ADVISED OF THE
EXPECTATION OR EXISTENCE OF SUCH DAMAGES. THE LIABILITY OF OVERLAND UNDER
ANY THEORY WHATSOEVER, EXCEPT FOR THIRD-PARTY INTELLECTUAL PROPERTY
INFRINGEMENT PURSUANT TO SECTION 7.2 BELOW, WILL BE LIMITED TO PAYMENT OF
AN AMOUNT NOT GREATER THAN AMOUNTS ACTUALLY RECEIVED BY OVERLAND PURSUANT
TO THIS AGREEMENT.
ARTICLE VII.
INDEMNITY
7.1 INDEMNITY BY STORAGETEK. StorageTek will indemnify and hold harmless
Overland and its directors, officers, employees, agents, successors and
assigns from and against any and all liability, damages, losses, claims,
demands, actions, judgments, costs, attorneys' fees, disbursements and
expenses incurred in connection with any action, claim or demand against
Overland by reason of losses, injury to or death of any person or damage
to or destruction of property or the environment arising out of or
resulting from (a) any material breach of this Agreement by StorageTek,
(b) any breach of any representations or warranties made by StorageTek in
this Agreement, (c) the practice or use of any of the Overland Items by
StorageTek, (d) any and all activities carried out by StorageTek pursuant
to this Agreement, (e) any use or defects of any kind relating to a VR(2)
Compliant Product manufactured by or for StorageTek, (f) infringement
based on the making, using,
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CONFIDENTIAL TREATMENT REQUESTED
selling or offering for sale of any VR(2) Compliant Product manufactured
by or for StorageTek, *** (g) *** the making, using, selling or offering
for sale of any devices incorporating VR(2) Compliant Products, or (h)
the negligent, reckless or willful acts or omissions of StorageTek, its
employees, subcontractors or agents in any and all activities carried out
under this Agreement. StorageTek will not be responsible for any such
losses, damages, liabilities, claims, actions, judgments, costs, demands,
attorneys' fees, disbursements and expenses to the extent caused by the
negligence or willful misconduct of Overland, its directors, officers or
employees. If an action, claim or demand is filed against Overland for
which StorageTek is to be responsible under this provision, Overland will
promptly notify StorageTek in writing of such action, claim or demand.
Upon receipt of such notice from Overland, if StorageTek acknowledges in
writing to Overland that StorageTek is obligated to indemnify Overland
under the terms of this SECTION 7.1 in connection with such action, claim
or demand, then StorageTek will be entitled, if it so elects, to take
control of the defense and investigation of such action, claim or demand
and to employ and engage attorneys of its own choice to handle and defend
the same at StorageTek's sole cost, risk and expense and Overland will
thereafter cooperate in all reasonable respects with StorageTek and its
attorneys in the investigation, trial and defense of such action, claim
or demand and any appeal arising therefrom. Overland may also, through
independent counsel and at its own cost, participate in such
investigation, trial and defense of such action, claim or demand and any
appeal arising therefrom. StorageTek may effect no settlement without the
prior written approval of Overland, which approval will not be
unreasonably withheld.
7.2 INDEMNITY BY OVERLAND. Overland will indemnify and hold harmless
StorageTek and its directors, officers, employees, agents, successors and
assigns from and against any and all liability, damages, losses, claims,
demands, actions, judgments, costs, attorneys' fees, disbursements and
expenses incurred in connection with any action, claim or demand against
StorageTek by reason of injury to or death of any person or damage to or
destruction of property or the environment arising out of or resulting
from (a) any material breach of this Agreement by Overland, (b) any
breach of any representations or warranties made by Overland in this
Agreement, (c) any and all activities carried out by Overland pursuant to
this Agreement, (d) the negligent, reckless or willful acts or omissions
of Overland, its employees, subcontractors or agents in any and all
activities carried out under this Agreement, or (e) infringement based on
the making, using, selling or offering for sale of any VR(2) Compliant
Product manufactured by or for StorageTek, to the extent that such
infringement relates specifically to the VR(2) Core. Overland will not be
responsible for any such losses, damages, liabilities, claims, actions,
judgments, costs, demands, attorneys' fees, disbursements and expenses to
the extent caused by the negligence or willful misconduct of StorageTek,
its directors, officers or employees. If an action, claim or demand is
filed against StorageTek for which Overland is to be responsible under
this provision, StorageTek will promptly notify Overland in writing of
such action, claim or demand. Upon receipt of such notice from
StorageTek, if Overland acknowledges in writing to StorageTek that
Overland is obligated to indemnify StorageTek under the terms
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<PAGE>
CONFIDENTIAL TREATMENT REQUESTED
of this SECTION 7.2 in connection with such action, claim or demand,
then Overland will be entitled, if it so elects, to take control of the
defense and investigation of such action, claim or demand and to employ
and engage attorneys of its own choice to handle and defend the same at
Overland's sole cost, risk and expense and StorageTek will thereafter
cooperate in all reasonable respects with Overland and its attorneys in
the investigation, trial and defense of such action, claim or demand and
any appeal arising therefrom. StorageTek may also, through independent
counsel and at its own cost, participate in such investigation, trial
and defense of such action, claim or demand and any appeal arising
therefrom. Overland may effect no settlement without the prior written
approval of StorageTek, which approval will not be unreasonably
withheld.
7.3 LIABILITY FOR INJURIES TO PERSONNEL. Each party will be solely
responsible for, and will indemnify the other party against, all claims,
losses, litigation, damages and expenses resulting from injuries to or
the death of any of its personnel occurring while any such person is
traveling to or from any of the other party's facilities, or is otherwise
engaged in activities incident to this Agreement.
ARTICLE VIII.
TERM AND TERMINATION
8.1 TERM. This Agreement will commence on the Effective Date and shall
terminate upon *** (the "TERM").
8.2 ***
8.3 TERMINATION. Either party may terminate this Agreement and all licenses
granted pursuant to this Agreement immediately: (i) in the event of a
material breach, including any failure by StorageTek to make payments of
any amounts to Overland when due, of any term of this Agreement by the
other party which continues uncured for a period of *** after the
non-breaching party provides written notice to the breaching party; (ii)
upon any breach of the provisions of ARTICLE 5; or (iii) upon a breach by
either party of any provision of ARTICLE 9. Either party may terminate
this Agreement or suspend performance, if at any time during the Term of
this Agreement, the other party: becomes insolvent or becomes unable to
meet its obligations as they become due; makes a general assignment for
the benefit of creditors; petitions, applies for, suffers or permits with
or without its consent the appointment of a custodian, receiver, trustee
in bankruptcy or similar officer for all or any substantial part of its
business or assets; or avails itself or becomes subject to any proceeding
under the Federal Bankruptcy Code or any similar state, federal or
foreign statute relating to bankruptcy, insolvency, reorganization,
receivership, arrangement, adjustment of debts, dissolution or
liquidation, which proceeding is not dismissed within *** days of
commencement thereof. ***
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<PAGE>
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8.4 ACCRUED OBLIGATIONS. Termination of this Agreement will not relieve
either party of any then-accrued payment obligations under this
Agreement. Any and all payments by either party to the other party
accrued pursuant to this Agreement as of the date of termination will
remain due and payable in accordance with the terms hereof.
8.5 CONSEQUENCES OF TERMINATION. Upon any termination or expiration of this
Agreement for any reason whatsoever, StorageTek will immediately deliver
to Overland all Overland Items, including any and all Confidential
Information and other materials related to, embodying, or associated
with, any of the Documentation, Functional Test Vectors, VR(2)
Intellectual Property, VR(2) Intellectual Property Derivatives, VR(2)
Core, VR(2) Technical Information, and/or VR(2) Technology, made
available to, or produced by, StorageTek pursuant to the terms of this
Agreement. Any termination of this Agreement will not eliminate any
liability arising out of the conduct prior to the actual date of
termination, and either party may, following such termination, pursue
such remedies as may be available with respect to such liabilities. In
addition, the obligations of *** will survive any termination of this
Agreement. Within *** days after termination of this Agreement for any
reason whatsoever, StorageTek will: (i) certify in writing to Overland
that StorageTek has satisfied all of its obligations under this
SECTION 8.5; (ii) fill all outstanding purchase orders for any product or
device integrating the VR(2) Compliant Product; and (iii) pay all accrued
and unpaid royalties pursuant to SECTION 4.3. Immediately upon
termination of this Agreement, StorageTek will not accept further
purchase order of any VR(2) Compliant Product and/or any product or
device integrating any VR(2) Compliant Product. In the event of a
material breach of this Agreement by Overland, *** In the event of
Overland's bankruptcy, insolvency, inability to meet its obligations as
they become due, general assignment for the benefit of creditors,
petition, application for (with or without its consent) the appointment
of a custodian, receiver, trustee in bankruptcy or similar officer for
all or any substantial part of its business or assets, or if Overland
avails itself or becomes subject to any proceeding under the Federal
Bankruptcy Code or any similar state, federal or foreign statute relating
to bankruptcy, insolvency, reorganization, receivership, arrangement,
adjustment of debts, dissolution or liquidation, which proceeding is not
dismissed within sixty (60) days of commencement thereof, ***.
ARTICLE IX.
COMPLIANCE WITH LAWS
9.1 CERTAIN LAWS. Without limiting the generality of this SECTION 9.1, each
party hereby acknowledges and agrees that certain laws of the United
States, including the Foreign Corrupt Practices Act, 15 U.S.C. sections
78dd-1, ET SEQ., prohibit any person subject to the jurisdiction of the
United States from making any payment of money or anything of value,
directly or indirectly, to any foreign political party or candidate for
foreign political
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<PAGE>
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office for the purpose of obtaining or retaining business. Each party
hereby represents and warrants that, in the performance of its duties
pursuant to this Agreement, it has not made, and will not make, any
such proscribed payment. Each party will indemnify and hold harmless
the other party from and against any and all claims, losses and
liabilities attributable to any breach by such party of its obligations
under this SECTION 9.1.
9.2 UNITED STATES EXPORT CONTROLS. Without limiting the generality of
SECTION 9.1, each party specifically acknowledges that certain of the
Overland Items ("TECHNICAL DATA") may be subject to United States
export controls, pursuant to the Export Administration Regulations, 15
C.F.R. Parts 768-799. Each party will comply strictly with any
applicable requirements of the Export Administration Regulations with
respect to all such Technical Data. Without limiting the generality of
the foregoing obligation, each party hereby expressly agrees that,
without the prior written authorization of Overland (in the case of
StorageTek) and the United States Commerce Department, such party will
not, and will cause its representatives to not (a) export, reexport,
divert or transfer any such Technical Data, or any direct product
thereof, to any destination, company, or person prohibited by the
Export Administration Regulations, or (b) disclose any such Technical
Data to any national of any country when such disclosure is prohibited
by the Export Administration Regulations. StorageTek will make its
records available to Overland at Overland's reasonable request, in
order to permit Overland to confirm StorageTek's compliance with its
obligations as set forth in this SECTION 9.2.
ARTICLE X.
ARBITRATION
10.1 GOVERNING LAW. This Agreement will be governed in all respects solely and
exclusively by the laws of the State of California, U.S.A. without regard
to conflict of law principles. The United Nations Convention on the
International Sale of Goods will not apply to this Agreement.
10.2 MANDATORY ARBITRATION. All disputes, controversies, or claims arising out
of, relating to, or in connection with this Agreement, including without
limitation the determination of the scope of the agreement to arbitrate,
will be finally settled by arbitration in accordance with the Expedited
Procedures of the Commercial Arbitration Rules ("RULES") of the American
Arbitration Association ("AAA"), applicable at the time of submission of
the dispute to arbitration. The arbitration will take place in San Diego,
California at the offices of the AAA. The dispute will be resolved by a
single arbitrator appointed by the AAA in accordance with the list
procedure described in Paragraph 13 of the Rules, except that the AAA
will transmit the list within ten (10) days of the filing of the Demand
for Arbitration, and the Parties will have five (5) days to return the
list to the AAA with their objections
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and preferences. The place of arbitration will be San Diego,
California, and the exclusive language to be used for the arbitration
proceedings will be English.
10.3 ANCILLARY RELIEF. Nothing herein will prevent a party, prior to
appointment of the arbitrator, from making application to any court of
competent jurisdiction, for any provisional remedy available at law or in
equity. Such application for relief will not constitute a waiver of this
agreement to arbitrate. Upon appointment, the arbitrator will have
exclusive authority to order provisional or interim relief, except that
any relief ordered by the arbitrator may be immediately and specifically
enforced by a court otherwise having jurisdiction. The parties waive
objection to venue and consent to the personal jurisdiction of the
federal courts of San Diego, California, U.S.A. in any action to enforce
this agreement to arbitrate or any order or award of the arbitrator, or
for the provisional or interim remedies provided for in this Agreement.
10.4 EXPENSES. In any arbitration proceeding pursuant to this Agreement, each
party will bear the expenses of its witnesses. All other costs of
arbitration, including, without limitation, the fees and expenses of the
arbitrators, the cost of the record or transcripts thereof, if any,
administrative fees, the reasonable attorneys' fees of the parties, and
all other fees and costs will be allocated to the parties to the
arbitration as determined by the arbitrator, except that the prevailing
party in such arbitration will be entitled to recover its reasonable
attorneys' fees and expenses.
10.5 DISCOVERY. Discovery will be limited to written requests for the
production of documents, and Overland and StorageTek may each conduct
depositions totaling not more than twenty (20) hours in the aggregate;
PROVIDED, HOWEVER, that the arbitrators may approve requests for
additional depositions upon good cause shown. The period for requesting
documents will be sixty (60) days commencing upon the day that the answer
is due under the Rules. The responding party will have thirty (30) days
to produce the requested documents by sending copies to the requesting
party or its representative via a recognized international courier
service. The parties will also voluntarily produce all documents that
they intend to use at the arbitration hearing and a list of intended
witnesses ten (10) days before the close of discovery subject to
supplementation for purposes of rebuttal or good cause shown. The parties
waive any right to seek any discovery not provided for in this Agreement
irrespective of whether the laws of any country provide for different or
additional discovery in international arbitration. The arbitrator will
hold a pre-hearing conference within three (3) days of the close of
discovery and will schedule and conclude the final hearing within sixty
(60) days of the close of discovery. EACH PARTY HERETO HEREBY AGREES THAT
THE ARBITRATION PROCEDURE PROVIDED IN THIS AGREEMENT WILL BE THE SOLE AND
EXCLUSIVE METHOD OF RESOLVING ANY DISPUTES, CONTROVERSIES OR CLAIMS
ARISING IN CONNECTION WITH, OR OUT OF THIS AGREEMENT, OR OTHERWISE
BETWEEN THE PARTIES TO THIS AGREEMENT.
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<PAGE>
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ARTICLE XI.
MISCELLANEOUS
11.1 INDEPENDENT CONTRACTORS. StorageTek and Overland hereby declare and agree
that: (i) each is engaged in an independent business and will perform its
obligations under this Agreement as an independent contractor and not as
the agent or employee of the other; (ii) the persons performing work for
each party hereunder are not agents or employees of the other; (iii)
StorageTek and Overland each has and hereby retains the right to exercise
full control of and supervision over the performance of its obligations
hereunder and full control over the employment, direction, compensation
and discharge of all employees assisting in the performance of such
obligations; (iv) StorageTek and Overland will each be solely responsible
for all matters relating to payment of its respective employees,
including compliance with worker's compensation, unemployment, disability
insurance, social security, withholding and all other federal, state and
local laws, rules and regulations governing such mattes; and (v)
StorageTek and Overland each will be responsible for its own acts and
those of its agents, employees and contractors during the performance of
its obligations under this Agreement. Neither party nor any of its
employees, agents or representatives will be deemed to be an agent or
representative of the other party for any purpose. Neither party will
have the right or authority to assign or create any obligation of any
kind, express or implied, on behalf of the other party, or to act for or
on behalf of the other party, to make commitments of any kind or bind it
in any way, to accept any service of process upon, or to receive any
notices of any nature whatsoever in its behalf.
11.2 ASSIGNMENT. Neither party may assign its rights or delegate its duties
under this Agreement without the prior written consent of the other
party; PROVIDED, HOWEVER, that any party may assign its rights and
delegate its duties, either in whole or in part, under this Agreement to
any wholly owned or controlled affiliate, PROVIDED that such assignment
includes an express assumption of the assignor's obligations hereunder;
and, FURTHER PROVIDED, that the assignor will continue to be responsible,
jointly and severally with the assignee, for its obligations,
responsibilities and duties hereunder. The assigning party will give to
the other party written notification of any such assignment. Any
attempted assignment or delegation in contravention of this SECTION 11.2
will be void and of no effect. Notwithstanding the foregoing, either
party will have the right to assign this Agreement as a part of the sale
or transfer of all or substantially all of the party's business to which
this Agreement relates.
11.3 NOTICE. Except as otherwise provided in this Agreement, all notices will
be deemed to have been duly given when made in writing and delivered in
person, sent by electronic facsimile transmission, deposited in the
United States Mail, postage prepaid, certified mail, return receipt
requested or sent by a express courier service which provides documented
delivery, and addressed as follows: (i) if to Overland, send to Overland
Data, Inc., 8975
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<PAGE>
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Balboa Avenue, San Diego, CA 92123, Attention: Chief Financial Officer;
and if to StorageTek, send to Storage Technology Corp., One Storage Tek
Drive, Louisville, CO 80028, Attention: General Counsel. The address to
which notices or communications may be given by any party may be changed
by written notice given by such party to the other pursuant to this
SECTION 11.3.
11.4 NO THIRD-PARTY BENEFICIARIES. The provisions of this Agreement are for
the benefit solely of the parties and not for any other person.
11.5 WAIVERS. Waiver by either party of any breach by the other party will not
be deemed a waiver by the non-breaching party of any other default. The
failure or delay of either party to assert any of its rights under this
Agreement will not be deemed to constitute a waiver of that party's right
thereafter to enforce each and every provision of this Agreement in
accordance with its terms.
11.6 AMENDMENTS. No provision of this Agreement will be deemed waived, amended
or modified by either party, unless such waiver, amendment or
modification is in writing and signed by the authorized representative of
the party against whom it is sought to enforce such waiver, amendment or
modification.
11.7 HEADINGS. The section and paragraph headings contained in this Agreement
are for reference purposes only and will not affect in any way the
meaning or interpretation of this Agreement.
11.8 SEVERABILITY. If any provision of this Agreement or the application of
any such provision to any person or circumstance, is declared judicially
to be invalid, unenforceable or void, such decision will not have the
effect of invalidating or voiding the remainder of this Agreement, it
being the intent and agreement of the parties that this Agreement will be
deemed to have been amended by modifying such provision to the extent
necessary to render it valid, legal and enforceable while preserving its
intent or, if such modification is not possible, by substituting therefor
another provision that is legal and enforceable and that achieves the
same objective.
11.9 COUNTERPARTS. This Agreement may be executed in several duplicate
originals in the English language, each of which will be deemed an
original but all of which together will constitute one and the same
instrument. All reports, data, information, notices, schedules, plans,
records and other information required to be provided pursuant to this
Agreement by either party will be in the English language. If a
translation is made of this Agreement, it will be made for the
convenience of StorageTek and the English version of this Agreement,
rather than the translated version, will be deemed to be controlling.
11.10 ENTIRE AGREEMENT. This Agreement embodies the entire agreement of
StorageTek and Overland and supersedes all prior agreements,
understandings and communications,
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whether written or oral, between the parties or by either of them with
respect to its subject matter.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives as of the Effective Date.
<TABLE>
<S> <C>
OVERLAND DATA, INC.: STORAGE TECHNOLOGY CORP.:
By: /s/ Vernon A. LoForti By: /s/ Roger D. Archibald
------------------------------------- -------------------------------------
Vernon A. LoForti Roger D. Archibald
Vice President and Chief Financial VP & GM of the Enterprise Business
Officer Group
</TABLE>
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<PAGE>
EXHIBIT A
VR(2) SPECIFICATION
***
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<PAGE>
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT B
ROYALTIES
***
2
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<PAGE>
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT C
OVERLAND MARK
StorageTek will use the following artwork for the Overland Mark to comply with
the obligations and requirements set forth in SECTION 2.3.7:
[LOGO]
***
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<PAGE>
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT D
VR(2) TECHNOLOGY DIAGRAM
***
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