{"id":42656,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/patent-license-agreement-fujitsu-ltd-and-avanex-corp.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"patent-license-agreement-fujitsu-ltd-and-avanex-corp","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/patent-license-agreement-fujitsu-ltd-and-avanex-corp.html","title":{"rendered":"Patent License Agreement &#8211; Fujitsu Ltd. and Avanex Corp."},"content":{"rendered":"<pre>\n\n                                                              September 13, 1999\n\nMr. Walter Alessandrini\nChief Executive Officer\nAvanex Corporation\n42501 Albrae Street\nFremont, CA 94538\nUSA\n\n                                                                                \n\nRe: Patent License Agreement on VIPA between Fujitsu Limited and Avanex\nCorporation\n\nDear Mr. Alessandrini:\n\nFujitsu Limited acknowledges that, as of September 13, 1999, the Conditions\nPrecedent in Section 2 of the above Patent License Agreement have been fulfilled\nfor dispersion compensator and the patent license for the same has been granted\nto Avanex Corporation.\n\nI appreciate your business.\n\nSincerely,\n\n\/s\/ Yasuo Nagai\n\nYasuo Nagai\nGeneral Manager\nPhotonic Technology Development Division\nFujitsu Limited\n4-1-1 Kamikodanaka, Nakahara-ku\nKawasaki, 211-8588\nJapan\n\n\n\n\n                            PATENT LICENSE AGREEMENT\n\nTHIS AGREEMENT is made and entered into by and between FUJITSU LIMITED, a\ncorporation of Japan, having its registered office at 4-1-1 Kamikodanaka,\nNakahara-ku, Kawasaki, Kanagawa, 211-88, Japan (hereinafter referred to as\n\"FUJITSU\"), and AVANEX Corporation, a corporation of the State of California,\nhaving its principal office at 42501 Albrae Street, Fremont, CA 94538, USA.\n(hereinafter referred to as \"AVANEX\").\n\nWITNESSETH\n\nWHEREAS, FUJITSU owns patents in certain countries of the world with respect to\nLICENSED PRODUCTS (defined below); and\n\nWHEREAS, AVANEX desires to acquire licenses under such FUJITSU's patents; and\n\nWHEREAS, FUJITSU is willing to grant such licenses to AVANEX.\n\nNOW, THEREFORE, in consideration of the mutual covenants and premises contained\nherein, the parties hereto agree as follows:\n\nSection 1. DEFINITIONS\n\n1.1 \"SUBSIDIARY(IES)\" shall mean any corporation, company or other entity more\nthan fifty percent (50%) of whose voting stock or other similar interests are\nowned or controlled by AVANEX, directly or indirectly, as of EFFECTIVE DATE\n(defined below) and thereafter so long as such ownership or control exists.\n\n1.2 \"LICENSED PRODUCTS\" shall mean the following items (1) and (2):\n\n(1) Wavelength multiplexer\/demultiplexer devices which consist of the VIPA\nelement.\n\n(2) Chromatic dispersion compensator devices which consist of the VIPA element\nand a mirror.\n\n1.3 \"LICENSED PATENTS\" shall mean all the patents issued under the following\npatent applications and their divisions, continuations and\ncontinuation-in-parts, and all reissues of any of the foregoing patents: [*]\n\n\n1.4 \"LICENSED TERRITORIES\" shall mean the countries in which LICENSED PATENTS\nare in existence.\n\n1.5 \"EFFECTIVE DATE\" shall mean the date when all of the conditions of Section 2\nare satisfied.\n\n1.6 \"DESIGN INFORMATION\" shall mean the structural design information of\nLICENSED PRODUCTS, which includes design parameters and parts design sheets, but\ndoes not include the assembling know-how. FUJITSU can freely use this DESIGN\nINFORMATION for its own use.\n\nSection 2. CONDITIONS PRECEDENT AND EFFECTIVENESS OF AGREEMENT\n\nThe license pursuant to Section 3 below shall become available only after all of\nthe following conditions preceding have fulfilled for each LICENSED PRODUCT:\n\n(a) Development by AVANEX of DESIGN INFORMATION used for LICENSED PRODUCTS in\naccordance with the specifications which will be given by FUJITSU to AVANEX, no\nlater than one (1) month from the day when this agreement is signed by both\nparties, pursuant to a separate confidential agreement. AVANEX shall perform\nsuch development for FUJITSU with the first priority before manufacturing\nLICENSED PRODUCTS for customers other than FUJITSU.\n\n(b) DESIGN INFORMATION is given to FUJITSU with [*] charge.\n\nSection 3. GRANTS OF LICENSES\n\n3.1 FUJITSU hereby grants for the term of this Agreement to AVANEX, subject to\nthe\n\n\n----------\n* Certain information on this page has been omitted and filed separately with\nthe Commission. Confidential treatment has been requested with respect to the\nomitted portions.\n\n\n\nconditions under Section 4 below, a non-exclusive and non-transferable license,\nwithout the right to sublicense, under LICENSED PATENTS to make or have made\nLICENSED PRODUCTS and to use, lease, sell, offer to sell, import or otherwise\ndispose of such LICENSED PRODUCTS in LICENSED TERRITORIES.\n\n3.2 The license granted to AVANEX hereunder shall also extend to any of\nSUBSIDIARY provided that AVANEX shall cause SUBSIDIARIES to assume the same\nobligations as imposed on AVANEX hereunder.\n\nSection 4. LICENSES FEE\n\n4.1 In consideration of the license set forth in Section 3 above, AVANEX shall,\nbeginning on the EFFECTIVE DATE and to the extent that AVANEX and SUBSIDIARIES\nmanufacture, have manufactured, use, lease, sell, offer to sell, import or\notherwise dispose of LICENSED PRODUCTS under this Agreement, pay to FUJITSU a\nrunning royalty of [*] of all NET SALES AMOUNT (hereinafter defined) of all\nLICENSED PRODUCTS which are made or had made, and used, leased, sold, imported\nor otherwise disposed of by AVANEX and SUBSIDIARIES in LICENSED TERRITORIES.\n\n4.2 For the purpose of this Agreement, \"NET SALES AMOUNT\" shall mean the total\nof the arm's length selling prices of LICENSED PRODUCTS at which distributors,\ndealers, customers and users of AVANEX or SUBSIDIARIES paid, but the following\nitems may be excluded; normal discounts actually granted, insurance fees and\npacking and transportation charges as invoiced separately to customers, and\nduties and sales taxes actually incurred and paid by AVANEX or SUBSIDIARIES. If\nLICENSED PRODUCTS are used, leased, imported or otherwise disposed of by AVANEX\nor SUBSIDIARY, or sold by AVANEX or SUBSIDIARY not on arm's length basis, the\nselling prices used in calculating NET\n\n\n\n----------\n* Certain information on this page has been omitted and filed separately with\nthe Commission. Confidential treatment has been requested with respect to the\nomitted portions.\n\n\n\nSALES AMOUNT shall be the average arm's length selling prices during the past\n[*] for the same or similar LICENSED PRODUCTS sold by AVANEX or SUBSIDIARIES to\nthird party customers.\n\nSection 5. PAYMENTS, REPORTS, RECORDS AND TAX\n\n5.1 The running royalty set forth in Section 4.1 above shall be computed and\npaid to FUJITSU by AVANEX within thirty (30) days after the end of each quarter\nending on March 31st, June 30th, September 30th and December 31st.\n\n5.2 AVANEX shall, at the time of each payment of the running royalty under\nSection 5.1 above, furnish to FUJITSU a royalty report in suitable form prepared\nby Chief Financial Officer of AVANEX, which shall describe sales (including use,\nlease, import or other disposition) quantity and gross sales price of LICENSED\nPRODUCTS, any deduction from and\/or adjustments to the gross sales price as\nprovided in Section 4.2 above, NET SALES AMOUNT, royalty amount, tax withheld\nand royalty remitted. AVANEX shall, within sixty (60) days after the end of each\ncalendar year, also furnish to FUJITSU a royalty compliance report certified by\nan outside Certified Public Accountant, for the period of the year.\n\n5.3 The first royalty report and payment shall be made with respect to all\nLICENSED PRODUCTS made or had made, and used, leased, sold, import or otherwise\ndisposed of by AVANEX and SUBSIDIARIES in LICENSED TERRITORIES from EFFECTIVE\nDATE to the last day of the quarterly period next ending.\n\n5.4 Payment hereunder shall be made without deductions of taxes, assessments or\nother charges of any kind which may be imposed on FUJITSU by the Government of\nthe United States of America or any political subdivision thereof with respect\nto any amounts due to FUJITSU pursuant to this Agreement, and such taxes,\nassessments or other charges shall be paid by AVANEX. However, income taxes or\ntaxes of similar nature imposed on FUJITSU by the Government of the United\nStates of America or any other political subdivision thereof and paid by AVANEX\nfor the account of FUJITSU shall be deductible from the payment to FUJITSU to\nthe extent that such taxes are allowable as a credit against taxes imposed on\nFUJITSU by the Government of Japan. To assist FUJITSU in obtaining such credit,\nAVANEX shall furnish FUJITSU with such evidence as may be required by taxing\nauthorities of the Government of Japan to establish that any such taxes have\nbeen paid.\n\n5.5 If AVANEX fails to make any payment stipulated in this Agreement within the\ntime specified herein, AVANEX shall pay an interest of fifteen percent (15%) per\nyear on the unpaid balance payable from the due date until fully paid. The\nforegoing payment of interest shall not affect FUJITSU's right to terminate this\nAgreement in accordance with Section 7.2 below.\n\n5.6 Any payment from AVANEX to FUJITSU hereunder shall be made by means of\ntelegraphic transfer remittance in U.S. Dollars to the following bank account of\nFUJITSU, and notice of the payment shall be sent by AVANEX to FUJITSU's address\nset forth in Section 8.6 below:\n\nThe Dai-Ichi Kangyo Bank, Ltd., Head Office, Tokyo, Japan\nAccount No. 011-1-167829\n\nSection 6. ACCOUNTING AND AUDIT\n\nWith respect to the running royalty set forth in Section 4.1 above, AVANEX shall\nkeep full, clear and accurate records and accounts for LICENSED PRODUCTS subject\nto royalty for a period of three (3) years. FUJITSU shall have the right through\na person(s) appointed by FUJITSU to audit, not more than once in each calendar\nyear and during normal business hours, all such records and accounts to the\nextent necessary to verify that no underpayment has been made by AVANEX\nhereunder. Such audit shall be conducted at FUJITSU's own expense, provided that\nif any discrepancy or error exceeding five percent (5%) of the money actually\ndue is found through the audit, the cost of the audit shall be born by AVANEX.\n\nSection 7. TERM AND TERMINATION\n\n\n----------\n* Certain information on this page has been omitted and filed separately with\nthe Commission. Confidential treatment has been requested with respect to the\nomitted portions.\n\n\n\n7.1 This Agreement shall become effective on EFFECTIVE DATE and shall, unless\nearlier terminated pursuant to Sections 7.2 or 7.3 below, continue until [*].\n\n7.2 In the event of a breach of this Agreement by one party hereto, and if such\nbreach is not corrected within ninety (90) days after written notice complaining\nthereof is received by such party, the other party may terminate this Agreement\nforthwith by written notice to that effect to such party.\n\n7.3 FUJITSU shall also have the right to terminate this Agreement forthwith by\ngiving written notice of termination to AVANEX at any time, upon or after:\n\n(a) the filing by AVANEX of a petition in bankruptcy or insolvency; or\n\n(b) any adjudication that AVANEX is bankrupt or insolvent; or\n\n(c) the filing by AVANEX of any legal action or document seeking reorganization,\nreadjustment or arrangement of AVANEX's business under any law relating to\nbankruptcy or insolvency; or\n\n(d) the appointment of receiver for all or substantially all of the property of\nAVANEX; or\n\n(e) the making by AVANEX of any assignment for the benefit of creditors; or\n\n(f) the institution of any proceedings for the liquidation or winding up of\nAVANEX's business or for the termination of its corporate charter; or\n\n(g) the assignment to third party of all or substantially all of the assets of\nAVANEX; or\n\n(h) important change in controlling ownership of AVANEX; or\n\n(i) any activity or assistance by AVANEX or SUBSIDIARIES of challenging the\nvalidity of any LICENSED PATENTS or restricting the scope thereof.\n\n7.4 In the event of termination of this Agreement by FUJITSU pursuant to\nSections 7.2 or 7.3 above, the licenses granted hereunder to AVANEX and\nSUBSIDIARIES shall automatically terminate when AVANEX received or deemed to be\nreceived such termination notice hereunder. AVANEX shall pay the amount of the\nrunning royalty accrued on or before the date of termination within thirty (30)\ndays thereafter.\n\nSection 8. NEW PATENTS\n\nA new patent derived from any improvement over inventions covered by the\nLICENSED PATENTS:\n\n(i) is owned by FUJITSU and the non-exclusive license shall be granted to AVANEX\nat a reasonable royalty, if invention is made solely by FUJITSU. Detailed terms\nand conditions for such license shall be separately agreed upon between the\nparties.\n\n(ii) is owned by AVANEX and the non-exclusive license shall be granted to\nFUJITSU at a reasonable royalty, if invention is made solely by AVANEX. Detailed\nterms and conditions for such license shall be separately agreed upon between\nthe parties. However, the non-exclusive license for a patent for which the\ninvention is made within [*] after the day when this agreement is signed by both\nparties shall be royalty free.\n\n(iii) is owned jointly by FUJITSU and AVANEX, if invention is made by FUJITSU\nand AVANEX. Each party shall be free to practice and use such jointly owned\npatent on a world-wide, non-exclusive basis without accounting to and\nroyalty-free to the-other party. Each party shall be free to license jointly\nowned patent to SUBSIDIARIES but licenses to third parties may be granted only\nupon the other party's prior consent, which may not be unreasonably withheld.\n\n\n----------\n* Certain information on this page has been omitted and filed separately with\nthe Commission. Confidential treatment has been requested with respect to the\nomitted portions.\n\n\nSection 9. SAMPLE PRODUCT\n\nUpon the conditions Section 2(a) and Section 2(b) have been fulfilled for each\nLICENSED PRODUCT, AVANEX shall sell 3 sets of LICENSED PRODUCT's samples to\nFUJITSU, if FUJITSU wishes to purchase. Such product's samples shall be made\nbased on DESIGN INFORMATION given to FUJITSU and their performance shall be in\naccordance with the specifications set forth in Section 2(a). The purchase shall\nbe with a separate purchase order.\n\nSection 10. MISCELLANEOUS\n\n10.1 The parties hereto shall keep the terms and conditions of this Agreement\n(except the existence of this Agreement) confidential and shall not divulge the\nsame or any part thereof to any third party except:\n\n(i) with the prior written consent of the other party; or\n\n(ii) to any governmental body having jurisdiction to request and to read the\nsame; or\n\n(iii) as otherwise may be required by law or legal process; or\n\n(iv) to legal counsel representing either party; or\n\n(v) as required for review by the competent authorities of the Japanese or the\nU.S. Government.\n\n10.2 The construction and performance of this Agreement shall be governed by and\nshall be subject to the laws of Japan.\n\n10.3 The parties hereto shall use their best efforts to resolve by mutual\nagreement any disputes, controversies or differences which may arise from,\nunder, out of or in connection with this Agreement. If any such disputes,\ncontroversies or differences cannot be settled between the parties hereto, they\nshall be finally settled by arbitration in Tokyo, Japan under the Rules of\nInternational Chamber of Commerce and by three (3) arbitrators appointed in\naccordance with the said Rules. The award rendered by the arbitrators shall be\nfinal and binding upon the parties hereto. Judgment upon the award may be\nentered into any court having jurisdiction thereof.\n\n10.4 Any failure of either party to enforce, at any time or for any period of\ntime, any of the provisions of this Agreement shall not be construed as a waiver\nof such provisions or of the right of such party thereafter to enforce such\nprovisions.\n\n10.5 If any term, clause or provision of this Agreement shall be judged by the\ncompetent authority to be invalid, the validity of any other term, clause or\nprovision shall not be affected; and such invalid term, clause or provision\nshall be deemed deleted from this Agreement.\n\n10.6 All notices required or permitted to be given hereunder shall be sent in\nwriting by certified or registered airmail, or facsimile (with a confirmation\nletter thereof) to the address specified below or to such changed address as may\nhave been previously specified in writing by the addressed party:\n\nIf to FUJITSU: FUJITSU LIMITED\n4-1-1 Kamikodanaka, Nakahara-ku\nKawasaki-shi, Kanagawa, 211-8588, Japan\nAttention: General Manager, Industry Relations Division I (H043)\nFacsimile No. +81-44-754-8503\n\nIf to AVANEX: AVANEX Corporation\n42501 Albrae Street, Fremont, CA 94538, USA\nAttention: Dr. Simon Cao, President\nFacsimile No. +1-510-360-0689\n\n\n\n\nUnless otherwise proven, each such notice given by either party hereto shall be\ndeemed to have been received by the other party on the fourteenth (14th) day\nfollowing the mailing date or on the second (2nd) day following the facsimile\ndate.\n\n10.7 FUJITSU shall keep DESIGN INFORMATION disclosed by AVANEX confidential\nagainst any third party However, the obligations on FUJITSU set out in this\nSection 10.7 do not apply in respect of information:\n\n(a) which is at any time in the public knowledge otherwise than through act or\nfailure to act on the part of FUJITSU; or\n\n(b) which was known to FUJITSU before its receipt of the same from AVANEX,\nwithout obligations of confidentiality; or\n\n(c) which is at any time rightfully received by FUJITSU from any third party\nwithout obligations of confidentiality; or\n\n(d) which is at any time developed by FUJITSU independently of confidential\ninformation.\n\nThe obligations set out in this Section 10.7 shall continue to bind FUJITSU for\n[*] after the disclosure of DESIGN INFORMATION.\n\nIN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly\nexecuted in duplicate on the date below written.\n\nFUJITSU LIMITED                             AVANEX Corporation\n\nBy: \/s\/ Yasuo Nagai                         By: \/s\/ Simon Cao\n\nName: Yasuo Nagai                           Name: SIMON CAO\n      ------------                                ---------\n\nTitle: General Manager                      Title: President\n       ---------------                             ---------\n\nDate: 7\/9\/98                                Date: 7\/15\/98\n      ------                                      -------\n\n----------\n* Certain information on this page has been omitted and filed separately with\nthe Commission. Confidential treatment has been requested with respect to the\nomitted portions.\n\n                            Agreement on New Patents\n\nThis Agreement entered into as of August 26, 1998 by and between Fujitsu\nLimited, a corporation of Japan, having an address at 4-1-1, Kamikodanaka,\nNakahara-ku, Kawasaki, Kanagawa, 211, Japan (hereinafter referred to as\n\"Fujitsu\"), and Avanex Corporation, a corporation of the State of California,\nhaving an address at 42501 Albrae Street, Fremont, CA 94538 (hereinafter\nreferred to as \"Avanex\").\n\nWHEREAS, Fujitsu and Avanex have executed a PATENT LICENSE AGREEMENT in July,\n1998, regarding the VIPA technologies.\n\nWHEREAS, Fujitsu and Avanex are willing to have Technical Discussions between\nthe people from both parties regarding the VIPA technologies and other optics\ntechnologies.\n\nNOW, THEREFORE, both Fujitsu and Avanex agree that all patents produced directly\nfrom the Technical Discussions stated above, regardless of whether the patents\nare related to the VIPA technologies or not, are subject to the conditions in\nthe above mentioned PATENT LICENSE AGREEMENT, Section 8. NEW PATENTS.\n\nIN WITNESS WHEREOF, the parties have executed this Agreement as of the day above\nwritten.\n\nFujitsu Limited                             Avanex Corporation\n\n\/s\/Hideki Isono                             \/s\/ Simon Cao\n\nHideki Isono                                Simon Cao\nManager                                     President and CEO\nPhotonic Devices Development Dept.\n\n\n\n\n\n TYPE:  EX-10.24.1\n SEQUENCE:  30\n DESCRIPTION:  LETTER CLARIFYING THE PATENT LICENSE AGREEMENT\n\n\n   1\n\n                                                                 EXHIBIT 10.24.1\n\n                                                                    July 1, 1998\nDr. Simon Cao\nPresident\nAvanex Corporation\n42501 Albrae Street\nFremont, CA 94538\nUSA\n\nRe: Patent License Agreement for the VIPA related devices between Fujitsu\nLimited and Avanex Corporation\n\nDear Dr. Cao:\n\nWith regard to Section 7.3(h) of the agreement, Fujitsu Limited understands that\nthis term is defined as below.\n\n\"important change in controlling ownership of AVANEX\" means acquisition of more\nthan half of Avanex Corporation by one of [*].\n\nThe [*] are defined as [*].\n\nSincerely,\n\n\n\/s\/ Hideki Isono\n\n\nHideki Isono\nManager\nPhotonic Devices Development Dept.\nFujitsu Limited\n\n\n\n\n\n--------\n* Certain information on this page has been omitted and filed separately with\nthe Commission. Confidential treatment has been requested with respect to the\nomitted portions.\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[6807,7589],"corporate_contracts_industries":[9508,9512],"corporate_contracts_types":[9613,9616],"class_list":["post-42656","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-avanex-corp","corporate_contracts_companies-fujitsu-ltd","corporate_contracts_industries-technology__hardware","corporate_contracts_industries-technology__semiconductors","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42656","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42656"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42656"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42656"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42656"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}