Patent And Technology License Agreement

EXECUTION COPY


PATENT AND TECHNOLOGY LICENSE AGREEMENT


by and among


LUCENT TECHNOLOGIES INC.


LUCENT TECHNOLOGIES GRL CORP.


LUCENT TECHNOLOGIES GUARDIAN I CORP.


LUCENT TECHNOLOGIES OPTICAL NETWORKING GUARDIAN CORP.


LUCENT TECHNOLOGIES WIRELESS GUARDIAN CORP.


LUCENT TECHNOLOGIES FIBER GUARDIAN CORP.


AGERE SYSTEMS INC.


AGERE SYSTEMS GUARDIAN CORP.


and


AGERE SYSTEMS OPTOELECTRONICS GUARDIAN CORP.


Dated as of February 1, 2001 2
PATENT AND TECHNOLOGY LICENSE AGREEMENT
Table of Contents


ARTICLE I -- DEFINITIONS


ARTICLE II -- ACCESS AND USE OF LICENSED TECHNOLOGY


2.1 Access to Licensed Technology 2.2 Export Control 2.3 Lucent's Rights to Use Licensed Agere Technology 2.4 Agere's Rights to Use Licensed Lucent Technology and Licensed
Corporate Technology 2.5 Procurement 2.6 Additional Licenses for Messaging Technology


ARTICLE III -- PATENT LICENSES


3.1 Grants to Agere 3.2 Grants to Lucent and GRL 3.3 Duration and Extent of Licensees 3.4 Scopes of Licenses 3.5 Filings of Patent Applications 3.6 Joint Inventions 3.7 Outside the United States 3.8 Defensive Protection Arrangement 3.9 Licensing prior to Distribution Date 3.10 Exclusive Licenses granted to Agere Subsidiaries 3.11 Exclusive Licenses granted to Lucent Subsidiaries 3.12 Covenant Not to Sue under Certain Conditions


ARTICLE IV -- ASSIGNMENT OF RESTRICTED JOINT CORPORATE TECHNOLOGY


4.1 Assignment 4.2 Exception to Restriction 4.3 Access to Restricted Joint Corporate Technology


ARTICLE V - RIGHTS RELATED TO PRODUCTS SOURCED BY LUCENT FROM AGERE


5.1 Definitions


i 3 5.2 Resolution Process 5.3 Manufacturing Rights 5.4 Trigger Events


ARTICLE VI -- MEMS PATENTS AND SPECIALTY PATENTS


6.1 Assignment of Joint MEMS Patents and Joint Specialty Patents. 6.2 License of Licensed MEMS Patents and Licensed Specialty Patents. 6.3 Patent prosecution and maintenance of Joint MEMS Patents, Joint
Specialty Patents, Licensed MEMS Patents and Licensed Specialty
Patents. 6.4 Licensing of Joint MEMS Patents and Joint Specialty Patents and
Sublicensing of Licensed MEMS Patents and Licensed Specialty Patents
to Third Parties. 6.5 Enforcement of MEMS Patents and Specialty Patents.


ARTICLE VII -- VALUE OF RIGHTS EXCHANGED


ARTICLE VIII -- TERMINATION


8.1 Voluntary Termination 8.2 Survival 8.3 Change of Control of, or Certain Acquisitions by Agere 8.4 Material Breach


ARTICLE IX -- MISCELLANEOUS PROVISIONS


9.1 Agreement Prevails 9.2 Nothing Construed 9.3 Disclaimer 9.4 Confidentiality 9.5 Counterparts; Entire Agreement; Corporate Power 9.6 Governing Law 9.7 Assignability; Successors. 9.8 Third Party Beneficiaries 9.9 Notices 9.10 Severability 9.11 Force Majeure 9.12 Publicity 9.13 Headings 9.14 Waivers of Default 9.15 Specific Performance


ii 4 9.16 Amendments 9.17 Interpretation


iii 5
EXHIBITS


Exhibit A -- Licensed Agere Technology


Exhibit B -- Agere Developments and Product Realization Technology


Exhibit C -- Licensed Corporate Technology


Exhibit D -- Licensed Lucent Technology


Exhibit E -- Lucent Developments and Product Realization Technology


Exhibit F -- Restricted Joint Corporate Technology


Exhibit G -- Agere Restricted Joint Corporate Technology


Exhibit H -- Lucent Restricted Joint Corporate Technology


Exhibit I -- Designated Defensive Patents


Exhibit J -- Joint MEMS Patents


Exhibit K -- Joint Specialty Patents


i 6
SCHEDULES


Schedule 3.10-1 Patents licensed by Lucent Technologies Guardian I Corp. to
Agere Guardian Corp.


Schedule 3.10-2 Patents licensed by Lucent Technologies Optical Networking
Guardian Corp. to Agere Guardian Corp.


Schedule 3.10-3 Patents licensed by Lucent Technologies Wireless Guardian
Corp. to Agere Guardian Corp.


Schedule 3.10-4 Patents licensed by Lucent Technologies Guardian I Corp. to
Agere Optoelectronics Guardian Corp.


Schedule 3.10-5 Patents licensed by Lucent Technologies Fiber Guardian
Corp. to Agere Optoelectronics Guardian Corp.


Schedule 3.10-6 Patents licensed by Lucent Technologies Optical Networking
Guardian Corp. to Agere Optoelectronics Guardian Corp.


Schedule 3.11-1 Patents licensed by Agere Guardian Corp. to Lucent
Technologies Guardian I Corp.


Schedule 3.11-2 Patents licensed by Agere Guardian Corp. to Lucent
Technologies Optical Networking Guardian Corp.


Schedule 3.11-3 Patents licensed by Agere Guardian Corp. to Lucent
Technologies Wireless Guardian Corp.


Schedule 3.11-4 Patents licensed by Agere Optoelectronics Guardian Corp. to
Lucent Technologies Guardian I Corp.


Schedule 3.11-5 Patents licensed by Agere Optoelectronics Guardian Corp. to
Lucent Technologies Fiber Guardian Corp.


Schedule 3.11-6 Patents licensed by Agere Optoelectronics Guardian Corp. to
Lucent Technologies Optical Networking Guardian Corp.


Schedule 6.2-1 MEMS patents licensed by Lucent Technologies Optical
Networking Guardian Corp. to Agere Optoelectronics Guardian
Corp.


Schedule 6.2-2 MEMS patents licensed by Lucent Technologies Fiber Guardian
Corp. to Agere Optoelectronics Guardian Corp.


Schedule 6.2-3 MEMS patents licensed by Lucent Technologies Guardian I
Corp. to Agere Optoelectronics Guardian Corp.


ii 7 Schedule 6.2-4 MEMS patents licensed by Agere Guardian Corp. to Lucent
Technologies Guardian I Corp.


Schedule 6.2-5 Specialty patents licensed by Agere Guardian Corp. to
Lucent Technologies Guardian I Corp.


Schedule 6.2-6 Specialty patents licensed by Agere Optoelectronics
Guardian Corp. to Lucent Technologies Guardian I Corp.


iii 8
PATENT AND TECHNOLOGY LICENSE AGREEMENT


THIS PATENT AND TECHNOLOGY LICENSE AGREEMENT (this "Agreement"), effective as of February 1, 2001 (the "Effective Date"), is by and among Lucent Technologies Inc., a Delaware corporation, with offices at 600 Mountain Avenue, Murray Hill, New Jersey 07974 ("Lucent"), Lucent Technologies GRL Corporation, a Delaware corporation, having an office at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014 ("GRL"), Lucent Technologies Guardian I Corp., a Delaware corporation having an office at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014 ("Lucent Guardian"), Lucent Technologies Optical Networking Guardian Corp., a Delaware corporation having an office at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014 ("Lucent Optical Networking Guardian"), Lucent Technologies Wireless Guardian Corp., a Delaware corporation having an office at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014 ("Lucent Wireless Guardian"), Lucent Technologies Fiber Guardian Corp., a Delaware corporation having an office at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014 ("Lucent Fiber Guardian"), Agere Systems Inc., a Delaware corporation, with offices at 555 Union Boulevard, Allentown, PA 18109 ("Agere"), Agere Systems Guardian Corp., a Delaware corporation, with offices at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014, United States of America ("Agere Guardian"), and Agere Systems Optoelectronics Guardian Corp., a Delaware corporation, with offices at Suite 105, 14645 N.W. 77th Avenue, Miami Lakes, Florida 33014, United States of America ("Agere Optoelectronics Guardian").


RECITALS


A. WHEREAS, the Board of Directors of Lucent has determined that it is in the best interests of Lucent and its stockholders to separate Lucent's existing businesses into two independent businesses;


B. WHEREAS, Agere and certain Agere Subsidiaries desire to receive and Lucent and certain Lucent Subsidiaries are willing to grant to Agere and such Agere Subsidiaries certain rights to use patents and technology retained and owned by Lucent and such Lucent Subsidiaries on or after the Effective Date; and


C. WHEREAS, Lucent and certain Lucent Subsidiaries desire to receive and Agere and certain Agere Subsidiaries are willing to grant to Lucent and such Lucent Subsidiaries certain rights to use patents and technology which are owned by Agere and such Agere Subsidiaries on or after the Effective Date.


NOW, THEREFORE, in consideration of the promises herein and for other good and valid consideration, the receipt and sufficiency of which are hereby acknowledged, the parties, intending to be legally bound, agree as follows: 9
ARTICLE I
DEFINITIONS


For the purposes of this Agreement, in addition to the words and phrases that are defined throughout the body of this Agreement, the following words and phrases shall have the following meanings:


AGERE BUSINESS shall have the meaning set forth in the Separation and Distribution Agreement.


AGERE DEVELOPMENTS AND PRODUCT REALIZATION TECHNOLOGY means any and all portions of Agere Technology listed in the attached Exhibit B.


AGERE GUARDIAN'S PATENTS means every patent including any reissues or reexaminations thereof (an including utility models but excluding design patents and design registrations) issued in any country of the world, which is owned or controlled by Agere Guardian or any of its Related Companies and issued on, or claiming priority from, an application filed in any country of the world prior to February 1, 2003, with respect to which and to the extent that Agere Guardian or any of its Related Companies has a right, as of the Effective Date or thereafter, to grant the licenses granted herein. It is understood and agreed that Agere Guardian's Patents are intended to include all patents assigned to Agere Guardian or Agere Optoelectronics Guardian by assignment from Lucent Technologies Inc. dated January 30, 2001.


AGERE RESTRICTED JOINT CORPORATE TECHNOLOGY means the technology listed on Exhibit G.


AGERE TECHNOLOGY means any and all portions of Corporation Technology existing as of the Effective Date which were developed by or for, or purchased by the Agere Business. The term includes Licensed Agere Technology, and Agere Developments and Product Realization Technology, but shall not include Lucent Technology, Common Support Function Software or Corporate Technology.


CHANGE OF CONTROL of any Person means any of the following: (a) the consummation of a merger, consolidation, or similar business combination involving such Person and the securities of such Person that are outstanding immediately prior to such transaction and which represent 100% of the combined voting power of the then outstanding voting securities of such Person entitled to vote generally in the election of directors ("Voting Securities") are changed into or exchanged for cash, securities or property, unless pursuant to such transaction such securities are changed into or exchanged for, in addition to any other consideration, securities of the surviving Person or transferee that represent immediately after such transaction, at least a majority of the combined voting power of the Voting Securities of the surviving Person or transferee; (b) a sale or other disposition of all or substantially all of the assets of such Person; (c)


2 10 the acquisition by any individual, entity or group (within the meaning of Section 13(d)(3) or 14(d)(2) of the Securities Exchange Act of 1934, as amended) of beneficial ownership (within the meaning of Rule 13d-3 promulgated under such Act) of 40% or more of the combined voting power of the then outstanding Voting Securities; or (d) individuals who, as of the Distribution Date, constitute the Board of Directors of such Person (the "Incumbent Board") cease for any reason to constitute at least a majority of such Board; provided, however, that any individual becoming a director subsequent to the Distribution Date (other than any such individual whose initial assumption of office occurs as a result of an actual or threatened election contest with respect to the election or removal of directors or other actual or threatened solicitation of proxies or consents by or on behalf of any Person other than the Board) whose election or nomination for election by the stockholders of such Person was approved by a vote of at least a majority of the directors then comprising the Incumbent Board shall be considered as though such individual were a member of the Incumbent Board.


COMMON SUPPORT FUNCTION SOFTWARE means those computer programs in source and object code forms, including their respective associated documentation, listed on Schedule B of the Technology Assignment and Joint Ownership Agreement.


COPYRIGHTS mean any rights in original works of authorship fixed in any tangible medium of expression as set forth in 17 U.S.C.Section 101 et. seq.


CORPORATE TECHNOLOGY means any and all portions of Corporation Technology other than Lucent Technology, Agere Technology, and Common Support Function Software. The term includes, but is not limited to, basic research.


CORPORATION TECHNOLOGY means any and all Technology existing as of the Distribution Date which is owned by, and was developed by or for, or purchased by Lucent or its Subsidiaries, including any of its business units and divisions. The term includes any and all Technology owned or controlled by any of Lucent's Subsidiaries under which Lucent has the right to grant any of the right-to-use licenses of the type and on the terms herein granted.


DISTRIBUTION DATE shall have the meaning defined in the Separation and Distribution Agreement.


GOVERNMENTAL AUTHORITY means any federal, state, local, foreign or international court, government, department, commission, board, bureau, agency, official or other regulatory, administrative or governmental authority.


GRL'S PATENTS means every patent including any reissues or reexaminations thereof (an including utility models but excluding design patents and design registrations) issued in any country of the world, which is owned or controlled by GRL or any of its Related Companies and issued on, or claiming priority from, an application filed in any country of the world prior to February 1, 2003, with respect to which and to the extent that GRL or any of its Related Companies has a right, as of the Effective Date or


3 11 thereafter, to grant the licenses granted herein. Notwithstanding the foregoing, the term GRL's Patents does not include Agere Guardian's Patents.


JOINT CORPORATE TECHNOLOGY means those portions of Corporate Technology listed on Schedule C of the Technology Assignment and Joint Ownership Agreement.


LICENSED AGERE TECHNOLOGY means those items of Agere Technology listed in the attached Exhibit A.


LICENSED CORPORATE TECHNOLOGY means those portions of Corporate Technology listed in the attached Exhibit C.


LICENSED LUCENT TECHNOLOGY means those items of Lucent Technology listed in the attached Exhibit D.


LICENSED TECHNOLOGY, as to Lucent, means Licensed Agere Technology, and as to Agere, means Licensed Lucent Technology or Licensed Corporate Technology.


LUCENT BUSINESS shall have the meaning set forth in the Separation and Distribution Agreement.


LUCENT DEVELOPMENTS AND PRODUCT REALIZATION TECHNOLOGY means those items of Lucent Technology listed in the attached Exhibit E.


LUCENT RESTRICTED JOINT CORPORATE TECHNOLOGY means the technology listed on Exhibit H.


LUCENT TECHNOLOGY means any and all portions of Corporation Technology existing as of the Effective Date, which were developed by or for, or purchased by the Lucent Business. The term includes Licensed Lucent Technology, and Lucent Developments and Product Realization Technology, but shall not include Agere Technology, Common Support Function Software or Corporate Technology.


MASK WORKS means any mask work, registered or unregistered, as defined in 17 U.S.C.Section 901.


PERSON shall have the meaning set forth in the Separation and Distribution Agreement.


RELATED COMPANIES means (i) with respect to GRL, the following: Lucent, Subsidiaries of either GRL or Lucent (only for so long as they remain Subsidiaries), (ii) with respect to Lucent, the following: Subsidiaries of Lucent, only for so long as they remain Subsidiaries, (iii) with respect to Agere Guardian, the following: Agere, and Subsidiaries of either Agere Guardian or Agere (only for so long as they remain Subsidiaries), and (iv) with respect to Agere, the following: Subsidiaries of Agere, only for so long as they remain Subsidiaries, and any other company so designated and agreed to in a writing signed by the relevant parties. Solely for purposes of this definition, Agere


4 12 and its Subsidiaries shall be deemed not to be Related Companies or Subsidiaries of Lucent.


RESTRICTED JOINT CORPORATE TECHNOLOGY means the trade secrets, know how, and computer programs (in source and object code forms), listed in the attached Exhibit F.


SEPARATION AND DISTRIBUTION AGREEMENT shall mean the Separation and Distribution Agreement dated as of February 1, 2001, by and between Lucent and Agere.


SUBSIDIARY of a company means a corporation or other legal entity (i) the majority of whose shares or other securities entitled to vote for election of directors (or other managing authority) is now or hereafter controlled by such company either directly or indirectly; or (ii) which does not have outstanding shares or securities but the majority of whose ownership interest representing the right to manage such corporation or other legal entity is now or hereafter owned and controlled by such company either directly or indirectly; but any such corporation or other legal entity shall be deemed to be a Subsidiary of such company only as long as such control or ownership and control exists.


TECHNOLOGY means any and all technical information, computer or other apparatus programs, specifications, drawings, records, documentation, works of authorship or other creative works, ideas, knowledge or data. The term Technology includes Copyrights, Mask Works and any other intellectual property right, but does not include any trademark, trade name, trade dress or service mark, or any patent applications on inventions, discoveries or improvements, or any patents that may be granted or have been granted thereon.


TECHNOLOGY ASSIGNMENT AND JOINT OWNERSHIP AGREEMENT shall mean the Technology Assignment and Joint Ownership Agreement dated as of January 31, 2001, by and between Lucent and Agere.


ARTICLE II
ACCESS AND USE OF LICENSED TECHNOLOGY


2.1 ACCESS TO LICENSED TECHNOLOGY. During a period beginning on the Effective Date and ending on December 31, 2001, each party shall have the right to access and to copy any and all portions of the Licensed Technology in possession of the other party. Such access and copying shall be in accordance with a reasonable request and schedule to be mutually agreed upon between the party in possession of the Licensed Technology that is requested and the requesting party. All costs associated with the assembling, copying and delivering of such Licensed Technology shall be borne by the requesting party.


2.2 EXPORT CONTROL. The parties acknowledge that any software and technical information provided under this Agreement are subject to U.S. export laws and regulations and any use or transfer of such software and technical information must be authorized under those laws and regulations. The parties agree that they will not use,


5 13 distribute, transfer, or transmit the software or technical information (even if incorporated into other products) except in compliance with U.S. export regulations. If requested by another party, each party also agrees to sign written assurances and other export-related documents as may be required for the other party to comply with U.S. export regulations.


2.3 LUCENT'S RIGHTS TO USE LICENSED AGERE TECHNOLOGY. (a) Subject to the restrictions specified in this Section 2.3 and any additional restrictions set forth in the Exhibits hereto, Lucent and its Related Companies shall each have a personal, worldwide, nonexclusive, royalty-free, and non-transferable right to use the Licensed Agere Technology for the businesses in which Lucent or any of its Related Companies are now or hereafter engaged.


(b) Lucent's right to use includes the right of Lucent and its Related Companies to copy, modify and improve any portion of the Licensed Agere Technology. No right is granted hereunder to Lucent or its Related Companies to sublicense any of the Licensed Agere Technology to any third party, other than the sublicensing of software in object code form in connection with the sale of Lucent products or services.


(c) In addition to the rights granted to Lucent and its Related Companies under Section 2.3(a), Lucent and its Related Companies shall have a personal, worldwide, nonexclusive, royalty-free and non-transferable limited right to continue to use any Agere Technology and any related or derivative technology generated by use of such technology, that was used prior to July 20, 2000 in the design or manufacture of any products (hereinafter "Existing Products") that Lucent offered for sale to customers other than Agere. Such continued use shall be limited, however, to use by Lucent in connection with the manufacture by Lucent of products that are the same as, or are substantially derived from, Existing Products. For the purposes of this Section 2.3(c), Agere Technology and any related or derivative technology generated by use of such technology, shall not be deemed to have been used solely as a result of the incorporation, prior to July 20, 2000, of components or other products obtained from Agere, into Existing Products, and shall in no circumstances include Agere CMBH processing technology listed on Exhibit A.


(d) Except as provided in Section 2.3(c), neither Lucent nor any of its Related Companies shall have the right to access, copy or use, in whole or in part, for any purpose, any Agere Developments and Product Realization Technology without the prior written consent of Agere.


2.4 AGERE'S RIGHTS TO USE LICENSED LUCENT TECHNOLOGY AND LICENSED CORPORATE TECHNOLOGY. (a) Subject to the restrictions specified in this Section 2.4 and any additional restrictions set forth in the Exhibits hereto, Agere and its Related Companies shall each have a personal, worldwide, nonexclusive, royalty-free and non-transferable right to use the Licensed Lucent Technology and the Licensed Corporate Technology for the businesses in which Agere or any of its Related Companies are now or hereafter engaged.


6 14
(b) Agere's right to use includes the right of Agere and its Related Companies to copy, modify and improve any portion of Licensed Lucent Technology and the Licensed Corporate Technology. No right is granted hereunder to Agere or its Related Companies to sublicense any of Licensed Lucent Technology or Licensed Corporate Technology to any third party, other than the sublicensing of software in object code form in connection with the sale of Agere products or services.


(c) Agere and its Related Companies shall have a personal, worldwide, nonexclusive, royalty-free and non-transferable limited right to use Lucent Technology and any mask works, mask sets, macro cells, and the like generated by use of such technology, for the purpose of designing, manufacturing and selling products to Lucent or to a party designated in writing by Lucent.


(d) In addition to the rights granted to Agere and its Related Companies under Section 2.4(a), Agere and its Related Companies shall have a personal, worldwide, nonexclusive, royalty-free and non-transferable limited right to continue to use any Lucent Technology and any mask works, mask sets, macro cells, and the like generated by use of such technology, that was used prior to July 20, 2000 in the design or manufacture of any products (hereinafter "Existing Products") that Agere offered for sale to customers other than Lucent. Such continued use shall be limited, however, to use by Agere in connection with the manufacture by Agere of products that are the same as, or are substantially derived from, Existing Products. For the purposes of this Section 2.4(d), Lucent Technology and any mask works, mask sets, macro cells, and the like generated by use of such technology, shall not be deemed to have been used solely as a result of the incorporation, prior to July 20, 2000, of components or other products obtained from Lucent, into Existing Products.


(e) Except as provided in Sections 2.4(c) and 2.4(d), neither Agere nor any of its Related Companies shall have the right to access, copy or use, in whole or in part, for any purpose, without the prior written consent of Lucent, any Lucent Developments and Product Realization Technology.


2.5 PROCUREMENT. (a) As an attribute to each party's rights to use Licensed Technology, and subject to the restrictions specified in Sections 2.3 and 2.4, each party may disclose to any of its suppliers, prospective suppliers or third party joint developers (under appropriate joint development agreements) only those portions of Licensed Technology that are reasonably necessary for the procurement by such party of components, subsystems, subassemblies, products and/or services of the businesses of such party.


(b) Each party agrees that it will not make any portion of Licensed Technology available to any such supplier, prospective supplier, or joint developer except under terms and conditions (including confidentiality, use and disclosure restrictions) normally used by such party to protect its own proprietary information of a similar nature.


7 15
(c) The procurement rights granted hereunder to each one of the parties under this Section 2.5 shall not be exercised by one party in a manner such that the exercise of such one party's procurement rights is a sham to effect the licensing of another party's Licensed Technology or any portion thereof, to a third party and not for bona fide business purposes of such one party.


(d) Each party agrees that prior to the disclosure of any portion of Licensed Technology under this Section 2.5, all extraneous proprietary information of the other parties shall be expunged.


ARTICLE III
PATENT LICENSES


3.1 GRANTS TO AGERE. (a) GRL grants to Agere and Agere Guardian, under GRL' ...