Patent License Agreement And Mutual Release

PATENT LICENSE AGREEMENT
AND MUTUAL RELEASE


between


LUCENT TECHNOLOGIES INC.


and


ASPECT TELECOMMUNICATIONS CORPORATION


Effective as of January 1, 1998


Relating to [*]


- ------------ [*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. 2


PATENT LICENSE AGREEMENT


TABLE OF CONTENTS


ARTICLE I - GRANTS OF LICENSES


1.01 Grant 1.02 Duration and Extent 1.03 Scope 1.04 Ability to Provide Licenses 1.05 Joint Inventions 1.06 Publicity 1.07 Pending Patent Litigation


ARTICLE II - ROYALTY AND PAYMENTS


2.01 Royalty Calculation


ARTICLE III - TERMINATION


3.01 Breach 3.02 Voluntary Termination 3.03 Survival


ARTICLE IV - MISCELLANEOUS PROVISIONS


4.01 Disclaimer 4.02 Limited Assignability; Mergers and Acquisitions 4.03 Addresses 4.04 Taxes 4.05 Choice of Law 4.06 Integration 4.07 Outside the United States 4.08 Dispute Resolution 4.09 Releases 4.10 Existing License Agreements


DEFINITIONS APPENDIX


3
PATENT LICENSE AGREEMENT


Effective as of January 1, 1998 (the "Effective Date"), LUCENT TECHNOLOGIES INC., a Delaware corporation ("LUCENT"), having an office at 600 Mountain Avenue, Murray Hill, New Jersey 07974, and ASPECT TELECOMMUNICATIONS CORPORATION, a California corporation ("ASPECT"), having an office at 1730 Fox Drive, San Jose, California 95131-2312, agree as follows:*


ARTICLE I


GRANTS OF LICENSES


1.01 GRANT


(a) LUCENT hereby grants to ASPECT under LUCENT's PATENTS personal,
nonexclusive and non-transferable worldwide licenses for:


[*]


(b) ASPECT hereby grants to LUCENT under ASPECT's PATENTS personal,
nonexclusive, royalty-free and non-transferable worldwide licenses
for:


[*]


1.02 DURATION AND EXTENT


All licenses granted herein by either party under any patent shall terminate on the earlier of such patent's expiration or the end of the LIMITED PERIOD. At the end of the LIMITED PERIOD, the cross-licenses for future use of the patents shall expire unless renewed, but the parties and their customers, acting within the scope of the license, shall be immune from infringement claims for activities during the LIMITED PERIOD, and such protection shall extend to the parties and their customers, acting within the scope of the license, for all transactions during the LIMITED PERIOD. For example, manufacture, sale or lease of LICENSED PRODUCTS during the LIMITED PERIOD would not be subject to a retroactive claim for damages after the LIMITED PERIOD ends, and no parties or customers, acting within the scope of the license, would be subject to claims for infringement at any time for LICENSED PRODUCTS initially sold or leased during the LIMITED PERIOD.


- --------


* Any term in capital letters which is defined in the Definitions Appendix
shall have the meaning specified therein.


[*] = OMITTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. THE MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.


1 4


1.03 SCOPE


(a) The licenses granted herein are licenses to (i) make, have made,
use, lease, offer to sell, sell and import LICENSED PRODUCTS; (ii)
make, have made, use and import machines, tools, materials and other
instrumentalities, insofar as such machines, tools, materials and
other instrumentalities are involved in or incidental to the
development, manufacture, testing or repair of LICENSED PRODUCTS
which are or have been made, used, leased, owned, sold or imported
by the grantee of such license; and (iii) convey to any customer of
the grantee, with respect to any LICENSED PRODUCT which is sold or
leased by such grantee to such customer, rights to use and resell
such LICENSED PRODUCT as sold or leased by such grantee (whether or
not as part of a larger combination); provided, however, that no
rights may be conveyed to customers with respect to any invention
which is directed to (1) a combination of such LICENSED PRODUCT (as
sold or leased) with any other product not furnished by grantee, (2)
a method or process which is other than the method of operation
carried out by the LICENSED PRODUCT in the form furnished by
grantee, or (3) a method or process involving the use of a LICENSED
PRODUCT to manufacture (including associated testing) any other
product.


(b) The licenses granted herein are not to be construed either (i) as
consent by the grantor to any act which may be performed by the
grantee, except to the extent impacted by a patent licensed herein
to the grantee, or (ii) to include licenses to contributorily
infringe or induce infringement under U.S. law or a foreign
equivalent thereof for products not manufactured and sold (or
leased) by ASPECT and its SUBSIDIARIES, licensed pursuant to the
provisions of this Agreement, or LUCENT and its SUBSIDIARIES,
licensed pursuant to the provisions of this Agreement.


(c) Until an event specified in Section 4.02(c) occurs, the grant of
each license hereunder includes the right to grant sublicenses
within the scope of such license to a party's SUBSIDIARIES for so
long as they remain its SUBSIDIARIES. Any such sublicense may be
made effective retroactively, but not prior to the effective date
hereof, nor prior to the sublicensee's becoming a SUBSIDIARY of such
party. When an event specified in Section 4.02(c) occurs, only the
party acquired is precluded from granting sublicenses to its
SUBSIDIARIES.


(d) The "have-made" right of ASPECT and LUCENT to sell LICENSED PRODUCTS
does not include the right to distribute products or offer services
of a third party for the purpose of shielding such products and/or
services from the patents of the other party.


1.04 ABILITY TO PROVIDE LICENSES


(a) It is recognized that certain actions of the parties to this
Agreement may limit their ability to provide licenses hereunder
without constituting a breach. In particular, (i) prior to the
actual or constructive reduction to practice of an invention
disclosed in a patent application of a party or its SUBSIDIARY, such
party or SUBSIDIARY may assign to a third party the title to patents
on such invention, or (ii) prior to the execution of this Agreement,
a party or its SUBSIDIARY may have limited by contract its ability
to provide licenses hereunder with respect to certain patents or
technologies.


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(b) Each party agrees to disclose to the other party, promptly upon
receipt of a written request for such disclosure, any such
assignment or other contractual limitation with respect to any
patent and/or technology which is specifically identified in such
request.


(c) Each party represents that it has already disclosed to the other
party any such assignment or other contractual limitation currently
in effect with respect to any patent and/or technology specifically
identified in any such disclosure request received by it prior to
execution of this Agreement.


(d) A party's failure to meet any obligation hereunder, due to the
assignment of title to any invention or patent, or the granting of
any licenses, to the United States Government or any agency or
designee thereof pursuant to a statute or regulation of, or contract
with, such Government or agency, shall not constitute a breach of
this Agreement.


(e) LUCENT represents and warrants that, except for its patents (and
applications) relating to the following areas of technology, LUCENT
has the right and ability to grant under LUCENT's PATENTS the
licenses and releases in this Agreement:


optical tweezers, connector system products, optical traps,
insecticide dispensers, printed circuit boards and backplanes,
scalpel machines, locator devices, near field scanning optical
instruments, undersea surveillance, manufacture of copper wire,
fingerprint identification systems and fifty telecommunications
services patents that are jointly owned by AT&T Corp. and LUCENT.
Telecommunications services is defined as the operation of a
communications network to provide communication services to
customers, including the processing of information, to the extent
needed to transfer information between locations. Except as limited
by a confidential agreement with AT&T regarding the grant of rights
for telecommunication services under the fifty patents, LUCENT
grants rights herein to ASPECT under the fifty patents in accordance
with ARTICLE 1 of this Agreement.


(f) ASPECT represents and warrants that, except for its patents (and
applications) relating to the following areas of technology, ASPECT
has the right and ability to grant for ASPECT's PATENTS the licenses
and releases in this Agreement:


automatic warranty registration outside the field of hardware,
software or peripheral equipment principally used in commercial
telecommunications systems.


1.05 JOINT INVENTIONS


(a) There are countries (not including the United States) which require
the express consent of all inventors or their assignees to the grant
of licenses or rights under patents issued in such countries for
joint inventions.


(b) Each party shall give such consent, or shall obtain such consent
from its SUBSIDIARIES, its employees or employees of any of its
SUBSIDIARIES, as required to make


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full and effective any such licenses and rights respecting any joint
invention granted to the grantee hereunder by such party and by
another licensor of such grantee.


(c) Each party shall take steps which are reasonable under the
circumstances to obtain from third parties whatever other consents
are necessary to make full and effective such licenses and rights
respecting any joint invention purported to be granted by it
hereunder. If, in spite of such reasonable steps, such party is
unable to obtain the requisite consents from such third parties, the
resulting inability of such party to make full and effective its
purported grant of such licenses and rights shall not be considered
to be a breach of this Agreement provided, however, that such party
shall afford the grantee the opportunity to obtain such consents
itself.


1.06 PUBLICITY


(a) Nothing in this Agreement shall be construed as conferring upon
either party or its SUBSIDIARIES any right to include in
advertising, packaging or other commercial activities related to a
LICENSED PRODUCT, any reference to the other party (or any of its
SUBSIDIARIES), its trade names, trademarks or service marks.


(b) Neither party shall disclose any of the terms and conditions
(including but not limited to payments) of this Agreement without
the written consent of the other party, unless such disclosure is:


(i) in response to a valid order of a court or other governmental
body of the United States or any political subdivision
thereof; provided, however, that the disclosing party shall
have given prior notice to the other party and made a
reasonable effort to obtain a protective order requiring that
the information so disclosed be used only for the purposes for
which the order was issued; or


(ii) otherwise required by law, including but not limited to
disclosures required by securities laws or regulations; or


(iii) necessary to establish rights under this Agreement; or
necessary for use by outside accountants and legal counsel


Notwithstanding (ii) and (iii), each party shall take reasonable
steps to preclude the release of the financial terms of this
Agreement such as, for example, filing this Agreement in confidence
with the Securities and Exchange Commission (SEC), and deleting the
financial terms therefrom in any copy, if any, made available to the
public.


(c) The parties will issue a joint press release, either prior to the
stock market opening or after its close, reciting that the parties
have dismissed their respective lawsuits, released one another for
claims of past infringement, settled their disputes, and that Aspect
will pay an undisclosed sum to Lucent in connection with the
settlement and cross license. In accor ...