Master Patent Ownership And License Agreement

MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT


BETWEEN


3COM CORPORATION


AND


PALM, INC.


EFFECTIVE AS OF FEBRUARY 26, 2000


MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT


TABLE OF CONTENTS


PAGE ARTICLE 1 DEFINITIONS.................................................................................................1


1.1 ALLOCATED PATENT ASSETS DATABASE....................................................................1
1.2 ASSIGNED PATENTS....................................................................................2
1.3 BLUETOOTH...........................................................................................2
1.4 DISTRIBUTION DATE...................................................................................3
1.5 FIRST EFFECTIVE FILING DATE.........................................................................3
1.6 GALAHAD PATENTS.....................................................................................3
1.7 GALAHAD PROJECT.....................................................................................3
1.8 INVENTION DISCLOSURE................................................................................3
1.9 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........................................................3
1.10 PALM PATENTS........................................................................................3
1.11 PALM PRODUCTS.......................................................................................3
1.12 PATENTS.............................................................................................3
1.13 PERSON..............................................................................................4
1.14 SEPARATION DATE.....................................................................................4
1.15 SUBSIDIARY..........................................................................................4
1.16 THIRD PARTY.........................................................................................4
1.17 THIRD PARTY PATENTS.................................................................................4
1.18 3COM PATENTS........................................................................................4
1.19 3COM PRODUCTS.......................................................................................4


ARTICLE 2 OWNERSHIP...................................................................................................5


2.1 OWNERSHIP OF PATENTS................................................................................5
2.2 PRIOR GRANTS........................................................................................6
2.3 ASSIGNMENT DISCLAIMER...............................................................................6


ARTICLE 3 LICENSES AND COVENANTS NOT TO SUE...........................................................................6


3.1 LICENSE GRANTS TO PALM WITH RESPECT TO GALAHAD PATENTS..............................................6
3.2 RESTRICTION ON 3COM LICENSING OF GALAHAD PATENTS....................................................6
3.3 RESTRICTION ON PALM'S "HAVE MADE" RIGHTS TO GALAHAD PATENTS.........................................6
3.4 COMBINATION EXCLUSION...............................................................................6
3.5 PALM'S SUBLICENSE RIGHTS WITH RESPECT TO GALAHAD PATENTS............................................7
3.6 DURATION............................................................................................7
3.7 ACQUISITION OF PALM OR TRANSFER OF A BUSINESS OR
SUBSIDIARY RELATED TO GALAHAD PATENTS...............................................................7


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TABLE OF CONTENTS
(CONTINUED)


PAGE
3.8 COPIES OF PATENT APPLICATIONS AND INVENTION DISCLOSURES.............................................9
3.9 THIRD PARTY PATENTS.................................................................................9
3.10 3COM COVENANT NOT TO SUE............................................................................9
3.11 PALM COVENANT NOT TO SUE...........................................................................10


ARTICLE 4 ADDITIONAL OBLIGATIONS.....................................................................................12


4.1 ADDITIONAL OBLIGATIONS WITH REGARD TO ASSIGNED PATENTS.............................................12
4.2 ADDITIONAL OBLIGATIONS WITH REGARD TO GALAHAD PATENTS..............................................13
4.3 STANDARDS BODIES...................................................................................14
4.4 ASSIGNMENT OF PATENTS..............................................................................14
4.5 RECORDATION OF LICENSES............................................................................14


ARTICLE 5 CONFIDENTIALITY............................................................................................14


ARTICLE 6 TERMINATION................................................................................................15


6.1 VOLUNTARY TERMINATION..............................................................................15
6.2 SURVIVAL...........................................................................................15
6.3 NO OTHER TERMINATION...............................................................................15


ARTICLE 7 DISPUTE RESOLUTION.........................................................................................15


7.1 MEDIATION..........................................................................................15
7.2 ARBITRATION........................................................................................16
7.3 COURT ACTION.......................................................................................16
7.4 CONTINUITY OF SERVICE AND PERFORMANCE..............................................................16


ARTICLE 8 LIMITATION OF LIABILITY....................................................................................16


ARTICLE 9 MISCELLANEOUS PROVISIONS...................................................................................17


9.1 DISCLAIMER.........................................................................................17
9.2 NO IMPLIED LICENSES................................................................................17
9.3 INFRINGEMENT SUITS.................................................................................17
9.4 NO OTHER OBLIGATIONS...............................................................................17
9.5 ENTIRE AGREEMENT...................................................................................18
9.6 GOVERNING LAW......................................................................................18
9.7 DESCRIPTIVE HEADINGS...............................................................................18
9.8 NOTICES............................................................................................18
9.9 NONASSIGNABILITY...................................................................................19
9.10 SEVERABILITY.......................................................................................19
9.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE..............................................19


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TABLE OF CONTENTS
(CONTINUED)
PAGE
9.12 AMENDMENT..........................................................................................19
9.13 COUNTERPARTS.......................................................................................19


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MASTER PATENT OWNERSHIP AND LICENSE AGREEMENT


This Master Patent Ownership and License Agreement (the "Agreement") is effective as of February 26, 2000 (the "Effective Date"), between 3Com Corporation, a Delaware corporation ("3Com"), having an office at 5400 Bayfront Plaza, Santa Clara, California, 95052 and Palm, Inc., a Delaware corporation ("Palm"), having an office at 5470 Great America Parkway, Santa Clara, California, 95052.


WHEREAS, the Board of Directors of 3Com has determined that it is in the best interest of 3Com and its stockholders to separate 3Com's existing businesses into two independent businesses;


WHEREAS, as part of the foregoing, 3Com and Palm's predecessor, Palm Computing, Inc., a California Corporation, have entered into a Master Separation and Distribution Agreement (as defined below), which provides, among other things, for the separation of certain Palm assets and Palm liabilities, the initial public offering of Palm stock, the distribution of such stock and the execution and delivery of certain other agreements in order to facilitate and provide for the foregoing;


WHEREAS, also as part of the foregoing, 3Com and Palm desire to confirm Palm's ownership of all patents, patent applications and invention disclosures invented by or for Palm and to record in Palm's name any such patents and patent applications that are recorded in 3Com's name;


WHEREAS, Palm and 3Com desire to confirm 3Com's ownership of certain jointly developed technology and Palm desires to receive and 3Com is willing to grant to Palm certain licenses and rights under patents, patent applications and invention disclosures covering such technology; and


WHEREAS, Palm and 3Com further desire to enter into reciprocal covenants not to sue for patent infringement.


NOW, THEREFORE, in consideration of the mutual promises of the parties, and of good and valuable consideration, it is agreed by and between the parties as follows:


ARTICLE 1


DEFINITIONS


For the purpose of this Agreement the following capitalized terms are defined in this Article 1 and shall have the meaning specified herein:


1.1 ALLOCATED PATENT ASSETS DATABASE. "Allocated Patent Assets Database" means the mutually agreed Allocated Patent Assets Database as of the Separation Date, as it may be updated by the parties upon mutual agreement to add Patents, Patent applications and Invention Disclosures as of the Separation Date.


1.2 ASSIGNED PATENTS. "Assigned Patents" means only those


(a) Patents, Patent applications and Invention Disclosures that are recorded in 3Com's name and are allocated to Palm in the Allocated Patent Assets Database;


(b) Patent applications filed on the foregoing Invention Disclosures described in Section 1.2(a);


(c) continuations, continuations-in-part, divisions and substitutions of any of the foregoing Patent applications described in Sections 1.2(a) and (b);


(d) Patents which may issue on any of the foregoing Patent applications described in Sections 1.2(a)-(c);


(e) renewals, reissues, reexaminations and extensions of the foregoing Patents described in Sections 1.2(a) and (d); and


(f) foreign Patent applications and Patents that are counterparts of any of the foregoing Patent applications or Patents described in Sections 1.2(a)-(e), including any Patent application or Patent to the extent that it claims priority from any of the foregoing Patent applications or Patents described in Sections 1.2(a)-(e); but


(g) excluding from any Patent or Patent application described in Sections 1.2(c)-(f) any claim (i) directed to subject matter that does not appear in any Patent application having a First Effective Filing Date prior to the Separation Date and (ii) of which neither Palm nor any person having a legal duty to assign his/her interest therein to Palm is entitled to be named as an inventor.


1.3 BLUETOOTH. "Bluetooth" means the short range wireless standard currently being promulgated by the Bluetooth Special Interest Group, of which 3Com is an adopter.


1.4 CURRENT PALM PRODUCTS. "Current Palm Products" means Palm Products of the businesses in which Palm or any of its Subsidiaries is engaged as of the Separation Date, including any Palm Products under development as set forth in 3Com's High Level Product Plan for Fiscal Year 2000 or as otherwise agreed by the parties, as well as future versions of such Palm Products, but only to the extent that they use the same designs and/or technology as such Palm Products.


1.5 CURRENT 3COM PRODUCTS. "Current 3Com Products" means 3Com Products of the businesses in which 3Com or any of its Subsidiaries is engaged as of the Separation Date, including any 3Com Products under development as set forth in 3Com's High Level Product Plan for Fiscal Year 2000 or as otherwise agreed by the parties, as well as future versions of such 3Com Products, but only to the extent that they use the same designs and/or technology as such 3Com Products.


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1.6 DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in the Master Separation and Distribution Agreement.


1.7 FIRST EFFECTIVE FILING DATE. "First Effective Filing Date" means the earliest effective filing date in the particular country for any Patent or any application for any Patent. By way of example, it is understood that the First Effective Filing Date for a United States Patent is the earlier of (i) the actual filing date of the United States Patent application which issued into such Patent, (ii) the priority date under 35 U.S.C. Section 119 for such Patent, or (iii) the priority date under 35 U.S.C. Section 120 for such Patent.


1.8 GALAHAD PATENTS. "Galahad Patents" means any Patents, Patent applications and Invention Disclosures arising from the Galahad Project which have at least one inventor employed by Palm and at least one inventor employed by 3Com.


1.9 GALAHAD PROJECT. "Galahad Project" means the development effort within 3Com's Wireless Connectivity Division (WCD) currently known internally as the Galahad Project.


1.10 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of an invention (i) written for the purpose of allowing legal and business people to determine whether to file a Patent application with respect to such invention and (ii) recorded with a control number in the owning party's records) with a First Effective Filing Date before the Separation Date.


1.11 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation and Distribution Agreement" means the Master Separation and Distribution Agreement between the parties.


1.12 PALM PATENTS. "Palm Patents" means:


(a) the Assigned Patents;


(b) every Patent to the extent entitled to a First Effective Filing Date prior to the Separation Date provided that, at any time after the First Effective Filing Date of any such Patent and prior to the Separation Date, Palm (or any Subsidiary of Palm) has ownership or control of any such Patent; and


(c) applications for the foregoing Patents described in Section 1.12(b), including without limitation any continuations, continuations-in-part, divisions and substitutions.


1.13 PALM PRODUCTS. "Palm Products" means any and all products and services of the businesses in which Palm or any of its Subsidiaries is engaged now or in the future, in all cases which products are designed or created primarily by Palm (or by any sublicensed Subsidiary) and/or by a subcontractor for Palm (or for any sublicensed Subsidiary).


1.14 PATENTS. "Patents" means patents, utility models, design patents, design registrations, certificates of invention and other governmental grants for the protection of inventions


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or industrial designs anywhere in the world and all reissues, renewals, re-examinations and extensions of any of the foregoing.


1.15 PERSON. "Person" means an individual, a partnership, a corporation, a limited liability company, an association, a joint stock company, a trust, a joint venture, an unincorporated organization and a governmental entity or any department, agency or political subdivision thereof.


1.16 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time, February 26, 2000, or such other date as may be fixed by the Board of Directors of 3Com.


1.17 SUBSIDIARY. "Subsidiary" of any Person means a corporation or other organization, whether incorporated or unincorporated, of which at least a majority of the securities or interests having by the terms thereof ordinary voting power to elect at least a majority of the board of directors or others performing similar functions with respect to such corporation or other organization is directly or indirectly owned or controlled by such Person or by any one or more of its Subsidiaries, or by such Person and one or more of its Subsidiaries; provided, however, that no Person that is not directly or indirectly wholly-owned by any other Person shall be a Subsidiary of such other Person unless such other Person controls, or has the right, power or ability to control, that Person. For the purposes of this Agreement, Palm shall be deemed not to be a Subsidiary of 3Com.


1.18 THIRD PARTY. "Third Party" means a Person other than 3Com and its Subsidiaries and Palm and its Subsidiaries.


1.19 THIRD PARTY PATENTS. "Third Party Patents" means all Third Party Patents licensed by 3Com or any Subsidiary of 3Com that, as of the Effective Date, may be sublicensed to Palm (e.g., because Palm is a Subsidiary of 3Com) under the terms of this Agreement without the requirement to pay a royalty or other consideration to a Third Party (unless 3Com has the right to grant such a sublicense to Palm on payment of a royalty and Palm agrees to pay such royalty to such Third Party).


1.20 3COM PATENTS. "3Com Patents" means:


(a) every Patent to the extent entitled to a First Effective Filing Date prior to the Separation Date provided that, at any time after the First Effective Filing Date of any such Patent and prior to the Separation Date, 3Com (or any Subsidiary of 3Com) has ownership or control of any such Patent; and


(b) applications for the foregoing Patents described in Section 1.18(a), including without limitation any continuations, continuations-in-part, divisions and substitutions.


1.21 3COM PRODUCTS. "3Com Products" means any and all products and services of the businesses in which 3Com or any of its Subsidiaries is engaged now or in the future, in all cases which products are designed or created primarily by 3Com (or by any sublicensed Subsidiary) and/or by a subcontractor for 3Com (or for any sublicensed Subsidiary), as well as future versions of such 3Com Products.


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ARTICLE 2


OWNERSHIP


2.1 OWNERSHIP OF PATENTS.


(a) PALM PATENTS. The parties agree that Palm hereby retains ownership of all right, title and interest in and to all Palm Patents.


(b) ASSIGNED PATENTS. Subject to Sections 2.2 and 2.3 below, 3Com hereby grants, conveys and assigns (and agrees to cause its appropriate Subsidiaries to grant, convey and assign) to Palm, by execution hereof (or, where appropriate or required, by execution of separate instruments of assignment), all its (and their) right, title and interest in and to the Assigned Patents, to be held and enjoyed by Palm, its successors and assigns. 3Com further grants, conveys and assigns (and agrees to cause its appropriate Subsidiaries to grant, convey and assign) to Palm all its (and their) right, title and interest in and to any and all causes of action and rights of recovery for past infringement of the Assigned Patents and the right to claim priority from the Assigned Patents. 3Com will, without demanding any further consideration therefor, at the request and expense of Palm (except for the value of the time of 3Com employees), do (and cause its Subsidiaries to do) all lawful and just acts, that may be or become necessary for prosecuting, sustaining, obtaining continuations of, or reissuing said Assigned Patents and for evidencing, maintaining, recording and perf ...