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INTELLECTUAL PROPERTY AGREEMENT BETWEEN QUANTUM CORPORATION AND SNAP APPLIANCES, INC. EFFECTIVE AS OF ________________, 2000 TABLE OF CONTENTS ARTICLE 1 DEFINITIONS AND CONSTRUCTION 1.1 Definitions 1.2 Construction ARTICLE 2 INTELLECTUAL PROPERTY LICENSES AND ASSIGNMENTS 2.1 Acknowledgement of Ownership of Snap’s Intellectual Property Rights 2.2 Assignment of Rights 2.3 License Grant by Quantum 2.4 Assignment of Snap Patents 2.5 Further Assurances 2.6 License Grant by Snap 2.7 No Implied Licenses 2.8 Technology Transfer ARTICLE 3 CONFIDENTIAL INFORMATION 3.1 Definition 3.2 Use of Confidential Information ARTICLE 4 WARRANTIES AND DISCLAIMER 4.1 Quantum Warranty 4.2 Reciprocal Warranties 4.3 Disclaimer ARTICLE 5 LIMITATION OF LIABILITY ARTICLE 6 TERM AND TERMINATION ARTICLE 7 MISCELLANEOUS PROVISIONS 7.1 Entire Agreement 7.2 Governing Law 7.3 Severability 7.4 Failure or Indulgence Not Waiver; Remedies Cumulative 7.5 Amendment 7.6 Infringement Suits 7.7 Assignability 7.8 Counterparts
This Intellectual Property Agreement (“AGREEMENT”) is made this ____ dayof ________, 2000 (“EFFECTIVE DATE”) by and between Quantum Corporation(“QUANTUM”), a Delaware corporation, and Snap Appliances, Inc. (“SNAP”), aDelaware corporation (each, a “PARTY,” together the “PARTIES”).
WHEREAS, Snap is a wholly-owned subsidiary of Quantum; WHEREAS, Quantum acquired Snap, formerly known as Meridian Data, Inc.,in September, 1999; WHEREAS, from the time of such acquisition until the Effective Date,Snap has been operating as an independent, wholly-owned subsidiary of Quantum; WHEREAS, as a result of the foregoing, the Parties believe that, asbetween Quantum and Snap, Snap has legal title to substantially all of thetechnology and intellectual property rights owned, created or acquired by Snap; WHEREAS, after such acquisition, certain Patents (as defined below)relating to the Snap Business (as defined below) were prosecuted in Quantum’sname, and Quantum wishes to assign its rights in such Patents to Snap; WHEREAS, the Boards of Directors of Quantum and Snap have eachdetermined that it would be appropriate and desirable for Quantum to contributeand transfer to Snap, and for Snap to receive and assume, directly orindirectly, certain assets and liabilities, if any, currently held by Quantumand associated with the Snap Business; WHEREAS, Quantum and Snap currently contemplate that, following thecontribution and assumption of assets and liabilities, Snap will make an initialpublic offering of an amount of its common stock pursuant to a registrationstatement on Form S-1 pursuant to the Securities Act of 1933, as amended, aswell as subsequent transactions, which may reduce Quantum’s ownership of Snap toless than 50%; and WHEREAS, in anticipation of the foregoing contribution and publicoffering, the Parties wish to hereby confirm Snap’s ownership of its technologyand intellectual property relating to the Snap Business, and provide fortransfers or licenses in the event that any intellectual property rights ortechnology rights owned by Quantum that should be transferred or licensed toSnap; WHEREAS, on October 4, 2000, Quantum entered into an Agreement and Planof Merger and Reorganization with, inter alia, Maxtor Corporation and InsulaCorporation, a wholly-owned subsidiary of Maxtor Corporation (the “MERGER AGREEMENT”), and following theconsummation of the transactions contemplated by the Merger Agreement (the “HDDTRANSACTIONS”), rights in certain Patents owned by Quantum will be acquired byInsula Corporation and Quantum will retain a right to sublicense its rightsunder such Patents; and WHEREAS, following the consummation of the HDD Transactions, Quantumwill license certain rights under certain Patents to Insula Corporation. NOW, THEREFORE, in consideration of the mutual promises of the Parties,and of good and valuable consideration, it is agreed by and between the Partiesas follows:
1.1 DEFINITIONS. For the purpose of this Agreement the followingcapitalized terms are defined in this Article 1 and shall have the meaningspecified herein: (a) “CONFIDENTIAL INFORMATION” has the meaning set forth in Section3.1. (b) “HDD PATENTS” means any Patents of Quantum that will be acquiredby Insula Corporation in connection with the HDD Transaction. (c) “INTELLECTUAL PROPERTY” means any and all (i) rights associatedwith works of authorship, including rights to copy, manufacture, reproduce,distribute copies of, modify, publicly perform and display the copyrighted workand all derivative works thereof, moral rights (including any right toidentification of authorship and any limitation on subsequent modification) andmaskworks; (ii) rights relating to the protection of trademarks, service marks,trade names, goodwill, rights in packaging, rights of publicity and privacy,merchandising rights and similar rights; (iii) rights in and relating to theprotection of trade secrets and confidential information; (iv) Patents, designs,algorithms and other industrial property rights and rights associated therewith;and (v) other intellectual and industrial property and proprietary rights (ofevery kind and nature however designated) relating to intangible property thatare analogous to any of the foregoing rights. (d) “PATENTS” means patent applications and patents, and alldivisions, continuations, continuations-in-part, and substitutions thereof; allforeign patent applications corresponding to the preceding applications; and allU.S. and foreign patents issuing on any of the preceding applications, includingextensions, reissues, and re-examinations. (e) “QUANTUM BUSINESS” means the business of Quantum as it isconducted as of the Effective Date, excluding the Snap Business. (f) “QUANTUM PRODUCTS” means any and all products and services ofQuantum that have been, are or will be produced or marketed in connection withthe Quantum Business. (g) “SHARED INTELLECTUAL PROPERTY” means any Intellectual Propertyowned by either Snap or Quantum (or, in the case of HDD Patents, licensed byQuantum), that, as of the Effective Date, is either (i) used by or necessary toboth the Snap Business and the Quantum Business, or (ii) but for a license to orownership thereof would be infringed by the operation of, in the case ofIntellectual Property owned by Quantum, the Snap Business, or, in the case ofIntellectual Property owned by Snap, the Quantum Business. Shared IntellectualProperty includes, to the extent covered within the foregoing definition, theHDD Patents and Snap Patents. (h) “SNAP BUSINESS” means the business in the “Network Area Storage”(“NAS”) field as described in the Master Separation and Distribution Agreementbetween the Parties, to which this Agreement is attached as EXHIBIT D. (i) “SNAP INTELLECTUAL PROPERTY” means any Intellectual Propertythat, as of the Effective Date, is (i) owned, or was created or otherwiseacquired, and not disposed of, by Snap; or (ii) is owned by Quantum and is usedin the operation of the Snap Business and not in the operation of the QuantumBusiness. (j) “SNAP PATENTS” means the Patents described in EXHIBIT A. (k) “SNAP PRODUCTS” means any and all products and services of Snapthat have been, are or will be produced or marketed in connection with the SnapBusiness. 1.2 CONSTRUCTION. (a) For purposes of this Agreement, whenever the context requires:the singular number will include the plural, and vice versa; the masculinegender will include the feminine and neuter genders; the feminine gender willinclude the masculine and neuter genders; and the neuter gender will include themasculine and feminine genders. (b) Any rule of construction to the effect that ambiguities are tobe resolved against the drafting Party will not be applied in the constructionor interpretation of this Agreement. (c) As used in this Agreement, the words “include” and “including”and variations thereof, will not be deemed to be terms of limitation, but ratherwill be deemed to be followed by the words “without limitation.” (d) Except as otherwise indicated, all references in this Agreementto “Attachments,” “Schedules,” “Sections” and “Exhibits” are intended to referto Attachments, Schedules, Sections and Exhibits to this Agreement.
2.1 ACKNOWLEDGEMENT OF OWNERSHIP OF SNAP’S INTELLECTUAL PROPERTY RIGHTS.Quantum hereby acknowledges that, as between the Parties, Snap is the owner ofall right, title and interest in and to the Snap Intellectual Property and that Quantum has notacquired any rights to any of the Snap Intellectual Property. 2.2 ASSIGNMENT OF RIGHTS. To the extent Quantum is, as of the EffectiveDate, the owner of any right, title or interest in or to any Snap IntellectualProperty (other than Patents, which are assigned under Section 2.4), subject toSection 2.6, Quantum hereby assigns to Snap all such right, title and interesttherein and thereto. To the extent the Snap Intellectual Property includes anyrights in trademarks, service marks, trade names, or similar rights, theforegoing assignment includes the assignment of all goodwill of the SnapBusiness appurtenant thereto. 2.3 LICENSE GRANT BY QUANTUM. Subject to the terms and conditions ofthis Agreement, Quantum hereby grants to Snap a worldwide, perpetual,non-terminable, irrevocable, non-transferable (except as allowed under Section7.7), royalty-free, fully paid-up, non-exclusive license under all of its rightsin and to the Shared Intellectual Property to make, use, sell, offer for sale,have made and import, and to reproduce, prepare derivative works of, distribute,publicly perform, publicly display, transmit and otherwise exploit Snap Productsin any manner and without limitation, and to practice any method associatedtherewith. Snap may sublicense the rights granted in this Section 2.3, withrespect to all Intellectual Property other than Patents, provided that suchsublicense is in connection with the license of, and subject to the same termsas Snap licenses, some or all of the Snap Intellectual Property. The grant inthis Section 2.3 will be subject to: (a) any rights granted to any third partyby Quantum, including in connection with the HDD Transaction; and (b) anyrestrictions or limitations, including with respect to sublicensing rights,agreed to by Quantum prior to the Effective Date, including in connection withthe HDD Transaction. 2.4 ASSIGNMENT OF SNAP PATENTS. Subject to Section 2.6, Quantum herebyassigns to Snap all of its right, title and interest in and to the Snap Patents.Quantum further grants, conveys and assigns to Snap all its right, title andinterest in and to any and all causes of action and rights of recovery for pastinfringement, or misappropriation, of the Snap Patents, as well as the right toprosecute the Snap Patents. 2.5 FURTHER ASSURANCES. Quantum shall assist Snap in every reasonableway to secure the rights owned by or assigned to Snap in Sections 2.2 and 2.4,including the disclosure to Snap of all pertinent information and data withrespect thereto, the execution of all applications, specifications, oaths,assignments and all other instruments that Snap deems appropriate to apply for,register or perfect such rights, and including the execution of the form ofpatent assignment set forth in Exhibit B. 2.6 LICENSE GRANT BY SNAP. Subject to the terms and conditions of thisAgreement, Snap hereby grants to Quantum a worldwide, perpetual, non-terminable,irrevocable, non-transferable (except as allowed under Section 7.7),royalty-free, fully paid-up, non-exclusive license under all of its rights inand to the Shared Intellectual Property to make, use, sell, offer for sale, havemade and import, and to reproduce, prepare derivative works of, distribute,publicly perform, publicly display, transmit and otherwise exploit QuantumProducts. Quantum may sublicense the rights granted in this Section 2.6,provided that such sublicense is in connection with the license of,and under the same terms that Quantum licenses, some or all of Quantum’s ownIntellectual Property rights. 2.7 NO IMPLIED LICENSES. Nothing contained in this Agreement will beconstrued as conferring any rights by implication, estoppel or otherwise, underany intellectual property right, other than the rights expressly granted in thisAgreement. 2.8 TECHNOLOGY TRANSFER. Quantum shall use reasonable efforts to prepareand deliver to Snap, in a form to be reasonably determined by the Parties,copies of any technical information or other technology in Quantum’s possessionthat is needed by Snap for the Snap Business. 2.9 NOTICE REGARDING INFRINGEMENT. Each Party shall use reasonableefforts to notify the other Party in the event such Party becomes aware of theinfringement or misappropriation by any third party of any of such other Party’srights in the Shared Intellectual Property.
3.1 DEFINITION. (a) “CONFIDENTIAL INFORMATION” means any information disclosed byone Party to the other Party, either directly or indirectly, in writing, orallyor by inspection of tangible objects (including documents, prototypes, samples,plant and equipment), that is designated as “Confidential,” “Proprietary” orsome similar designation. Confidential Information of a Party shall also includetrade secrets constituting Intellectual Property rights of that Party disclosedto or known to the other Party. (b) Confidential Information will not, however, include anyinformation that (i) was publicly known and made generally available in thepublic domain prior to the time of disclosure by the disclosing Party; (ii)becomes publicly known and made generally available after disclosure by thedisclosing Party to the receiving Party through no action or inaction of thereceiving Party; (iii) is already in the possession of the receiving Party atthe time of disclosure by the disclosing Party (unless such ConfidentialInformation constitutes Snap Intellectual Property, in which case, subject tothe provisions hereof, it shall constitute Snap Confidential Information); (iv)is obtained by the receiving Party from a third party without a breach of suchthird party’s obligations of confidentiality; (v) is independently developed bythe receiving Party without use of or reference to the disclosing Party’sConfidential Information, as shown by documents and other competent evidence inthe receiving Party’s possession; or (vi) is required by law to be disclosed bythe receiving Party, provided that the receiving Party gives the disclosingParty prompt written notice of such requirement prior to such disclosure andassistance in obtaining an order protecting the information from publicdisclosure. 3.2 USE OF CONFIDENTIAL INFORMATION. Each Party shall take reasonablemeasures to protect the secrecy of and avoid disclosure and unauthorized use ofthe Confidential Information of the other Party. Without limiting the foregoing,each Party shall take at least those measures that it takes to protect its own most confidential information, and shall not discloseany Confidential Information of the other Party to third parties except inconnection with the disclosure of such Party’s own Confidential Information.Without limiting the foregoing, each Party may use Confidential Information ofthe other in, and subject to, the exercise of the licenses granted to such Partyin Article 2.
4.1 QUANTUM WARRANTY. Quantum hereby represents and warrants that it isthe registered owner of the Snap Patents. 4.2 RECIPROCAL WARRANTIES. Each of Quantum and Snap hereby representsand warrants to the other that: (a) it has the right to grant the licensesgranted herein; and (b) its has entered into no other agreements with any thirdparty in conflict with such grant. 4.3 DISCLAIMER. Each Party hereby disclaims any warranty as tonon-infringement of any product made, had made, used, offered for sale, sold, orimported pursuant to a license granted hereunder or any warranty as to theaccuracy, sufficiency or suitability of any such product or method and assumesno responsibility or liability for loss or damages, whether direct, indirect,consequential or incidental which might arise out of the other Party’s usethereof, which shall be entirely at the other Party’s risk. EACH PARTYACKNOWLEDGES AND AGREES THAT ALL LICENSED PATENTS AND ANY OTHER INTELLECTUALPROPERTY, INFORMATION, OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE LICENSEDOR PROVIDED ON AN “AS IS” BASIS AND THAT, EXCEPT AS EXPLICITLY SET FORTH IN THISSECTION 4, NEITHER PARTY MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIESWHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO, INCLUDING ANYIMPLIED WARRANTIES OF TITLE, MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,ENFORCEABILITY OR NON-INFRINGEMENT.
This Agreement will be effective as of the Effective Date and willcontinue in perpetuity. Any license granted under any Patent will expiresimultaneously with date of cancellation or expiration of such Patent. EitherParty may, at any time, terminate the licenses granted to such Partyunder this Agreement upon written notice to the other Party. Each Partyacknowledges and agrees that its remedy for breach by the other Party of thelicenses granted to it hereunder, or of any other provision hereof, will be tobring a claim to recover damages subject to the limits set forth in thisAgreement and to seek any appropriate equitable relief; provided that neitherParty may seek to terminate the licenses granted by it to the other in thisAgreement.
7.1 ENTIRE AGREEMENT. This Agreement and the Master Separation andDistribution Agreement constitute the entire agreement between the Parties withrespect to the subject matter hereof and shall supersede all prior written andoral and all contemporaneous oral agreements and understandings with respect tothe subject matter hereof. 7.2 GOVERNING LAW. This Agreement will be governed by and construed andenforced in accordance with the laws of the State of California as to allmatters regardless of the laws that might otherwise govern under principles ofconflicts of laws applicable thereto. 7.3 SEVERABILITY. Any term or other provision of this Agreement isdetermined by a nonappealable decision of a court, administrative agency orarbitrator to be invalid, illegal or incapable of being enforced by any rule oflaw or public policy, all other conditions and provisions of this Agreementshall nevertheless remain in full force and effect so long as the economic orlegal substance of the transactions contemplated hereby is not affected in anymanner materially adverse to either Party. Upon such determination that any termor other provision is invalid, illegal or incapable of being enforced, theParties shall negotiate in good faith to modify this Agreement so as to effectthe original intent of the Parties as closely as possible in an acceptablemanner to the end that the transactions contemplated hereby are fulfilled to thefullest extent possible. 7.4 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure ordelay on the part of either Party hereto in the exercise of any right hereunderwill impair such right or be construed to be a waiver of, or acquiescence in,any breach of any representation, warranty or agreement herein, nor shall anysingle or partial exercise of any such right preclude other or further exercisethereof or of any other right. All rights and remedies existing under thisAgreement are cumulative to, and not exclusive of, any rights or remediesotherwise available. 7.5 AMENDMENT. No change or amendment will be made to this Agreementexcept by an instrument in writing signed on behalf of each of the Parties. 7.6 INFRINGEMENT SUITS. Neither Party will have any obligation hereunderto institute any action or suit against any third Party for infringement of anyIntellectual Property rights or to defend any action or suit brought by a thirdParty which challenges or concerns the validity of any of any IntellectualProperty Rights. 7.7 ASSIGNABILITY. Neither Party may, directly or indirectly, in wholeor in part, whether by operation of law or otherwise, assign or transfer thisAgreement, without the other Party’s priorwritten consent, and any attempted assignment, transfer or delegation withoutsuch prior written consent shall be voidable at the sole option of such otherParty. Notwithstanding the foregoing, a Party (or its permitted successiveassignees or transferees hereunder) may assign or transfer this Agreement inwhole without consent of the other Party in connection with sale of all orsubstantially all of the business or assets of such Party related to thisAgreement or in connection with the merger or acquisition of the ownershipinterest of, such Party. Without limiting the foregoing, this Agreement will bebinding upon and inure to the benefit of the Parties and their permittedsuccessors and assigns. 7.8 COUNTERPARTS. This Agreement may be executed in counterparts, which,taken together, will be considered to be one and the same instrument. WHEREFORE, the Parties have signed this Intellectual Property Agreementeffective as of the date first set forth above. QUANTUM CORPORATION By: _____________ Name: ___________ Title: __________ SNAP APPLIANCES, INC. By: _____________ Name: ___________ Title: __________
Network Storage Made Simple US Allowed Snap!Server US Allowed
WHEREAS, Quantum Corporation (“Assignor”), owns the Patent Applicationslisted and described on Schedule A attached hereto (the “Patent Applications”);and WHEREAS, Assignor and Snap, Inc. (“Assignee”), have entered into anIntellectual Property Agreement of even date herewith, pursuant to whichAssignor has agreed, inter alia, to grant to Assignee all of Assignor’s righttitle and interest in and to the Patent Applications and Assignee desires toacquire the entire right, title and interest in and to the Patent Applications. NOW, THEREFOR, for and in consideration of the sum of One Dollar ($1.00)and other good and valuable consideration, the receipt and sufficiency of whichare hereby acknowledged, Assignor does hereby sell, assign, convey and transferunto Assignee, its successors and assigns, the entire right, title and interestin and to the Patent Applications and any patents or patent applications,anywhere in the world, issuing from or based upon such Patent Applications, orany continuations, continuations-in-part, divisions, reissues or extensions ofthe Patent Applications or such patents, including, without limitation, theright to sue for and recover damages for any past, present or futureinfringement of such patents, the same to be held and enjoyed by Assignee forits own use, and for its legal representatives and assigns, to the full end ofthe term for which patents are granted, as fully and entirely as the as the samewould have been held by Assignor had this assignment and sale not been made. Assignor agrees to execute any further papers and to do such other acts,at Assignee’s expense, as may be necessary and proper to vest full title in andto the Patent Applications and any patents arising from such applications, inthe Assignee. IN WITNESS WHEREOF, Assignor has caused these presents to be dulyexecuted in a manner appropriate thereto as of the ___ day of ______,2000__. “ASSIGNOR” By: __________ Name: ________ Title: _______
State of California ) � � � ) ss: County of _________ ) On this _____ day of ______, 200__, before me, the undersigned,personally appeared ________, personally known to me or provedto me on the basis of satisfactory evidence to be the person who executed thisinstrument on behalf of the corporation named herein, and acknowledged that s/heexecuted it in such representative capacity. IN WITNESS WHEREOF, I have hereunto set my hand and official seal. _________________ Notary Public My Commission Expires on ________
Network Storage Made Simple US Allowed Snap!Server US Allowed

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