Seagate 2010 Annual Report Download - page 239

3.2
[Intentionally Omitted]
3.3
Sublicensing and Transfer Rights .
(a)
Subject to Section 5.13 of the APA ( Non-Competition ), Seller may sublicense in whole or in part the licenses granted
to it under the Licensed Back Other IP in Section 3.1 above provided that such sublicenses may not be of greater scope, and are subject to the
same limitations and restrictions as, than the license granted to Seller with respect to such Licensed Back Other IP in Section 3.1. For the
avoidance of any doubt, the restrictions on the license granted to Purchaser set forth in the first sentence of this Section 3.1 shall lapse upon
expiry of the period set forth in Section 5.13 of the APA ( Non-Competition ).
(b)
Without limiting Section 3.3(a), the licenses granted to Seller in this ARTICLE III may not be assigned or transferred
except in connection with a Change of Control of Seller or the transfer or sale of any business unit, Subsidiary or division (by means of a
reorganization, asset sale, stock sale, merger or otherwise) of Seller to which such licenses relate.
3.4
No Warranties . All rights and licenses granted to Seller hereunder are granted “AS IS” and without any representation or
warranty of any kind under this IP Agreement or otherwise.
ARTICLE IV.
RE-ACQUISITION OF CERTAIN PATENTS
4.1
Right to Re-Purchase Patents . If, prior to the fourth (4 ) anniversary of the Closing Date, any claim, demand, suit, action or
proceeding for Patent infringement is brought against Seller or its Affiliates (“ Patent Action ”), and Seller reasonably believes that it would be
of benefit in that Patent Action to assert a Transferred Patent, Seller shall have the right, in accordance with the terms set forth in this
ARTICLE IV, to re-purchase up to ten (10) of the Transferred Patents upon payment to Buyer of $100,000 per Patent (the “ Re-Purchase
Amount ”). For the avoidance of doubt, Seller may exercise the rights in this Section 4.1 any number of times up to the maximum number of re-
purchasable Transferred Patents.
4.2
Procedure .
(a)
If to the extent provided in Section 4.1, Seller wishes to re-acquire a Transferred Patent, it shall provide Purchaser with
written notice thereof specifying the Patent or Patents it wishes to re-acquire.
(b)
Subject to Seller’s compliance with the terms hereof and the execution of a patent assignment agreement substantially
in the form attached hereto as Schedule 2, Purchaser shall, upon receipt of the Re-Purchase Amount for each Patent, re-assign such Patent or
Patents (each a “Re-Purchased Patent”) to Seller.
(c)
The re-assignment of any Re-Purchased Patent shall be subject to Purchaser retaining a license to such Patent in
accordance with the Patent Cross License, and such Patent shall be deemed a licensed Patent under the Patent Cross License.
6
(d)
Purchaser agrees to execute any and all powers of attorney, applications, assignments, declarations, affidavits, and other
instruments of assignment, transfer, conveyance and recordal in connection therewith, as may be reasonably necessary to perfect such right, title,
and interest in Seller.
4.3
Non-Use . If Seller does not assert any Re-Purchased Patent in the Patent Action against a third party in accordance with
Section 4.1 above within one (1) year of receiving title to such Patent, at Purchaser’s sole option it shall re-assign such Patent to Purchaser upon
the execution of a patent assignment agreement substantially in the form attached hereto as Schedule 2 and receipt of a payment of $100,000
from Purchaser. For the avoidance of doubt, any such reassigned Patent shall be deemed licensed to Seller under the Patent Cross License. In the
event that Seller re-assigns a Re-Purchased Patent to Purchaser pursuant to this Section 4.3, such Patent shall no longer be a Re-
Purchased Patent
for the purposes hereof and Seller shall have the right to re-purchase another Patent in its place.
4.4
No Obligation . Neither Party shall be required under this IP Agreement to maintain any Patents in force. Nothing set forth
herein shall restrict either Party from transferring, assigning or licensing any Patent owned by it as a result of this IP Agreement or otherwise;
provided that Purchaser may not grant a license under any Transferred Patents to any party knowingly and for the purpose of derogating Seller’s
rights under this ARTICLE IV.
4.5
Right to Acquire Excluded Patents . Seller shall notify Purchaser if Seller or a Seller Subsidiary intends to abandon any
Excluded Patent prior to the fourth anniversary of the Closing Date. Upon Purchaser’s request, Seller shall transfer and sell such Excluded
Patent and all rights thereto or therein to Purchaser in return for a payment of $100.00, subject to Seller retaining a license to such Excluded
Patent as set forth in ARTICLE III. For the avoidance of doubt, any such reassigned Patent shall be deemed licensed to Seller under the Patent
Cross License.
ARTICLE V.
TERMINATION
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