PART I. FINANCIAL INFORMATION

EX-10.2 4 f94625exv10w2.txt EXHIBIT 10.2 EXHIBIT 10.2 Corning License No. L03273 NOTE: Information in this document marked with an "[*]" has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. INTELLECTUAL PROPERTY RIGHTS AGREEMENT BETWEEN CORNING INCORPORATED AND AVANEX CORPORATION RELATING TO PHOTONICS This Intellectual Property Rights Agreement ("IP Agreement") is agreed to and entered into by and between Corning Incorporated, a New York corporation having a principal place of business at One Riverfront Plaza, Corning, NY 14831 ("Corning") and Avanex Corporation, a Delaware corporation having a principal place of business at 40919 Encyclopedia Circle, Fremont, CA 94538 ("Avanex"). Hereinafter, these two corporations may be referred to individually as a "Party" and collectively as "Parties", as the context requires. The Parties, along with Alcatel Alstrom ("Alcatel"), are parties to a Purchase Agreement (as defined hereinafter) pursuant to which, among other things, Avanex is purchasing or otherwise acquiring rights in or to certain assets of Corning related to business operations of Corning and/or its Subsidiaries, and products related to those business operations. This IP Agreement is meant to definitively establish Avanex's and Corning's respective rights regarding the intellectual property which is included among the assets being purchased or otherwise acquired. Therefore, in consideration of the mutual premises recited in this IP Agreement as well as the associated payments and other consideration recited in the Purchase Agreement, the Parties agree as follows, to become effective only upon the Asset Purchase Closing (as defined hereinafter): 1. DEFINITIONS. 1.1 "ASSET PURCHASE CLOSING" is as defined in the Purchase Agreement. 1.2 "CORNING ASSIGNED COPYRIGHTS" shall mean (i) those registered Copyrights and applications for registration of Copyright owned by Corning or its Subsidiaries as of the Asset Purchase Closing and which are used exclusively in connection with the Corning OCM Products, and (ii) unregistered copyrights in the following material owned by Corning or its Subsidiaries as of the Asset Purchase Closing and which are used exclusively in connection with the Corning OCM Products: product schematics, product descriptions, manufacturing instructions, written specifications, laboratory notebooks, computer programs and software tools, drawings and manuals. 1.3 "CORNING ASSIGNED IP" shall mean collectively the Corning Assigned Patents, the Corning Assigned Copyrights and the Corning Assigned Trademarks. 1.4 "CORNING ASSIGNED PATENTS" shall mean (a) the Patents listed in Exhibit 1.4 attached hereto and (b) any Patents owned by Corning or its Subsidiaries (but excluding Corning Cable Systems and Technical Materials and their respective Subsidiaries) that primarily relate to the design, development, assembly, manufacture, production, testing, storage, 1 Corning License No. L03273 transportation or delivery of Corning OCM Products and are filed after the date of the signing of the Purchase Agreement until one hundred eighty (180) days after the Asset Purchase Closing; provided, however, that this clause (b) shall not include (i) any Patents which relate to [*], (iii) any Patent acquired from a third party after the Asset Purchase Closing, or (iv) any Patents owned by Corning Cable Systems. 1.5 "CORNING ASSIGNED TRADEMARKS" shall mean those trademarks and service marks, registered and unregistered, applications and renewals therefor, trade names, logos, company names and domain names owned by Corning or its Subsidiaries as of the Asset Purchase Closing listed in Exhibit 1.5 attached hereto. 1.6 "CORNING CABLE SYSTEMS" shall mean the Subsidiary of Corning known as Corning Cable Systems LLC and its Subsidiaries which is involved in the design, development, assembly, manufacture, production, testing, storage, transportation and delivery of (a) products described in the definition of Hardware and Equipment, and (b) Cable Products, i.e., (i) optical, electrical and composite optical-electrical cables, (ii) cable components, (iii) cable installations including, without limitation, inside or outside plant or premises networks installations, and (d) marine or submarine cables. 1.7 "CORNING COMMERCIALIZED OCM PRODUCTS" shall mean those specific Corning OCM Products listed in Exhibit 1.7 attached hereto, which had been marketed and sold to the general public as of the Asset Purchase Closing. 1.8 "CORNING LICENSED COPYRIGHTS" shall mean those Copyrights and copyrightable works, registered and unregistered, and applications for registration thereof that are either owned by Corning or its Subsidiaries (excluding Corning Cable Systems) or to which Corning or its Subsidiaries (excluding Corning Cable Systems) have sublicensing rights, and which have been used, but not exclusively, in connection with the design, development, assembly, manufacture, production, testing, storage, transportation or delivery of Corning OCM Products. Notwithstanding the foregoing, Corning Licensed Copyrights shall not include any system simulation software. 1.9 "CORNING LICENSED KNOW-HOW" shall mean the proprietary non-patented information, inventions and technology that are either owned by Corning or its Subsidiaries or to which Corning or its Subsidiaries have sublicensing rights (but in each case excluding Corning Cable Systems and Technical Materials and their respective Subsidiaries) which as of the Asset Purchase Closing was necessary for or used in the design, development, assembly, manufacture, production, testing, storage, transportation or delivery of Corning OCM Products and was in the possession of the employees of either Corning or its Subsidiaries, including the contents of invention disclosures or laboratory notebooks, computer programs and software tools, drawings, manuals, data, trade secrets, manufacturing processes, formulas, testing methodologies, designs and samples. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 2 Corning License No. L03273 Notwithstanding the foregoing, Corning Licensed Know-How shall not include technical information (a) owned by Corning Cable Systems or Technical Materials or their respective Subsidiaries, or (b) related to optical fiber, switching, MEMS (micromechanical systems), VCSEL's (vertical cavity surface emitting lasers), [*]. It is understood and acknowledged, however, that Corning Licensed Know-How shall include any proprietary non-patented information, inventions and technology which, as of the Asset Purchase Closing, was necessary for or used in the design, development, assembly, manufacture, production, testing, storage, transportation or delivery of the Corning Commercialized OCM Products and which is delivered to Avanex pursuant to this IP Agreement or the Purchase Agreement, that would otherwise be excluded from Corning Licensed Know-How by the preceding sentence, unless, to Avanex's knowledge or the knowledge of any former Corning employee who becomes employed by Avanex subsequent to the Asset Purchase Closing, it falls within the exclusions of the preceding sentence. 1.10 "CORNING NON-EXCLUSIVE LICENSED PATENTS" shall mean (a) those Patents listed in Exhibit 1.10 attached hereto, (b) all Patents owned by Corning or its Subsidiaries (excluding Corning Cable Systems) or to which Corning or its Subsidiaries (excluding Corning Cable Systems) have sublicensing rights: (i) that are entitled to an effective filing date in the period beginning on the signing date of the Purchase Agreement and terminating one hundred eighty (180) days after the Asset Purchase Closing, and (ii) for which the named inventors were employed in the Technical Materials business at the time the invention was conceived or first reduced to practice. 1.11 "CORNING SOLELY LICENSED PATENTS" shall mean (a) those Patents (other than those listed in Exhibit 1.10) owned by Corning or its Subsidiaries, or to which Corning or its Subsidiaries have sublicensing rights, as of the date of signing of the Purchase Agreement that, although having use for the design, development, assembly, manufacture, production, testing, storage, transportation or delivery of Corning OCM Products, are usable with, or have application to, other products, fields or businesses, and (b) those Patents owned by Corning or its Subsidiaries as of the Asset Purchase Closing that relate primarily to [*], as well as, in each case, any such Patents (other than those included in subsection (b) of Section 1.10 above) that are entitled to an effective filing date in the period beginning on the signing date of the Purchase Agreement and terminating one hundred eighty (180) days after the Asset Purchase Closing. However, this definition shall not include any Patents which are: (i) related to [*], (iv) any of the Patents listed in Exhibit 1.11a, attached hereto; (v) any Patents acquired from a third party after the Asset Purchase Closing, (vi) any Patents owned by Corning Cable Systems other than those listed in Exhibit 1.11b, or (vii) any Patents for which Corning Cable Systems alone has a right to grant sublicensing rights. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 3 Corning License No. L03273 1.12 "CORNING OCM PRODUCTS" shall mean the products of Corning or its Subsidiaries that are within the product categories set forth in Exhibit 1.12 attached hereto, including any such products under development. 1.13 "CORNING THIRD PARTY IP" shall mean the Intellectual Property licensed to Corning or its Subsidiaries under a Corning Third Party IP Contract. 1.14 "CORNING TRANSFERRED THIRD PARTY IP CONTRACTS" shall mean all contracts set forth in Exhibit 1.14 attached hereto. 1.15 "DIAMOND TURNING" means the business unit of Corning that deals with the use of diamond tools, air bearings, stable platforms and precision feedback mechanisms to achieve optical quality finishes on various materials, including, but not limited to, aluminum, electroless nickel, brass, copper and IR (infrared) crystals. 1.16 "DISPERSION COMPENSATION MODULE" means a device, separate from a coated or cabled optical fiber and packaged within its own container, intended to compensate for the chromatic degradation of an optical signal propagating in the optical fiber over a distance greater than 10 km; provided, however, that although a Dispersion Compensation Module includes dispersion-compensating optical fiber, a dispersion-compensating optical fiber by itself shall not be considered to be a Dispersion Compensation Module. 1.17 "FIBER SUPPLY AGREEMENT" means that certain Fiber Supply Agreement entered into by Corning and Avanex under which Avanex has certain obligations to purchase dispersion-compensating optical fiber from Corning. 1.18 "HARDWARE & EQUIPMENT" means the business unit of Corning that deals with: (a) fiber optic hardware including without limitation fiber optic connectors, adapters, the purchase and resale of variable attenuators, fixed attenuators, fiber optic cable assemblies, joint wrappers/covers, splitters and taps (fused fiber), and filters; (b) cable installations including without limitation inside or outside plant, or premises networks installations, data, CATV, or telephone network electrical or fiber optic joints or terminations including without limitation electrical circuit connection or protection, distribution frames and components, digital subscriber lines and splitters, housings, network interface devices, measurement devices (i.e., OTDRs, hand-held optical meters for testing optical circuits such as for wavelength and power measurement and optical traffic and throughput and traffic indication, fault locators), testers and test units; (c) aerial network transmission products including without limitation lashing, fastening, jointing, terminating or insulating; (d) splicing equipment including without limitation optical fusion splicing equipment; and (e) fiber optic hardware and equipment for marine or submarine networks. 1.19 "INTELLECTUAL PROPERTY" shall mean any or all of the following and all rights in, arising out of, or associated therewith: (i) Patents, (ii) all inventions (whether patentable or not), invention disclosures, improvements, trade secrets, proprietary information, know how, 4 Corning License No. L03273 technology, technical data, and all documentation relating to any of the foregoing ("KNOW-HOW"), (iii) all copyrights, copyrights registrations and applications for registration thereof ("COPYRIGHTS"), (iv) all industrial designs and any registrations and applications therefor throughout the world, and (v) all databases and data collections and all rights therein throughout the world, and (vi) all equivalent rights under the laws of any jurisdiction. 1.20 "PATENT" shall mean any and all forms of patents issued or granted anywhere in the world, reissued and reexamined patents, continuations, continuations-in-part, divisions and extensions thereof, applications therefor and any patents which may issue on such applications, in each case which have not been abandoned or expired. 1.21 "PURCHASE AGREEMENT" means that certain Share Acquisition and Asset Purchase Agreement, among Avanex, Corning and Alcatel that establishes the underlying transaction related to the purchase or acquisition of Corning's assets as contemplated by the Parties. 1.22 "AVANEX COMPETITOR" means the entities listed in Exhibit 1.22 and any successor to the entities. [*] within every [*] period after the Asset Purchase Closing, Avanex may substitute [*] new entities for those currently on the list by providing written notice to Corning. 1.23 "SUBSIDIARY" shall mean, when used with respect to any party, any corporation or other organization, whether incorporated or unincorporated, at least a majority of the securities or other interests of which having by their terms ordinary voting power to elect a majority of the Board of Directors or others performing similar functions with respect to such corporation or other organization is directly or indirectly owned or controlled by such party or by any one or more of its subsidiaries, or by such party and one or more of its subsidiaries. 1.24 "TECHNICAL MATERIALS" means the business unit of Corning (including the business unit called Photonic Materials) that deals with various micromaterials and microlenses suitable for a variety of optical components including, but not limited to, lensed fibers, GRIN (gradient index) lenses, glass polarizers, optical element-holding devices (i.e., devices for holding, positioning and aligning micromaterials and microlenses), fiber arrays, collimator arrays (i.e., functional arrays made by combining various holding, positioning and aligning devices and lensing technologies included within this definition) and lens arrays. 2. ASSIGNMENT OF CORNING ASSIGNED PATENTS. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 5 Corning License No. L03273 2.1 At the Asset Purchase Closing, subject to the terms and conditions set forth in this IP Agreement, Corning or the applicable Subsidiary shall sell, convey, transfer and assign all of Corning's or its Subsidiary's right, title and interest in and to the Corning Assigned Patents to Avanex or one or more of its designated Subsidiaries, and Avanex or one or more of its designated Subsidiaries shall purchase from Corning such right, title and interest. 2.2 If, due to the fact that either (a) any Corning Assigned Patent claims priority from any Patent retained by Corning or its Subsidiaries or (b) any Patent retained by Corning or its Subsidiaries claims priority to any Corning Assigned Patent, either Party is impeded in its ability either to license a third party under a particular Patent or to assert a particular Patent against a third party, the Parties will cooperate in good faith with each other to resolve such issue, including one of the Parties extending to the other Party a reasonable offer to sell or license such Patents needed to resolve such issue. The determination as to whether or not any Patent will be sold or licensed and, if so, which Party's Patent will be sold or licensed, shall be based on a good faith consideration of the relative impact on each Party's respective business interests likely to be caused by the transfer of rights in any such Patent. In the event that the decision is made to sell, rather than to license, a Patent, the selling Party shall retain a license under such Patent of appropriate scope, in order to permit the selling Party to continue its business operations; provided, however, that such scope shall, unless otherwise agreed to by the Parties, be equivalent to the rights each Party had in such Patent under this IP Agreement prior to the sale. If Avanex is a party to a lawsuit pertaining to a Corning Assigned Patent and does not request that Corning participate in the management and control of such suit, and as the result of litigation against a third party for the infringement of such Patent, Avanex obtains a recovery (through settlement, order, or judgment) against such third party, and a portion of such recovery pertains to acts of infringement occurring prior to the execution of this IP Agreement, Avanex shall deduct from such recovery Avanex's litigation costs, and shall remit to Corning a pro rata share of the remainder of the recovery, based on the ratio of the portion of the recovery attributable to such prior acts of infringement divided by the total recovery. In any such litigation, Corning shall, at the request of Avanex, cooperate in the manner outlined in Section 14.1(i). If Avanex requests that Corning participate in the management and control of the litigation against a third party for the infringement of any Corning Assigned Patent and Corning agrees to participate, the Parties shall equally share in all external expenses associated with the litigation except with respect to any expenses associated with any claims in the suit which are ancillary to the Corning Assigned Patent. For such expenses, the Party associated with such ancillary claim shall bear all those expenses. In such litigations, Corning's consent with respect to all matters of management, control, settlement, consent judgment, or voluntary final disposition of the litigation will be required. Each Party must obtain the other Party's consent to grant to the third party alleged infringer or any of its affiliates any license or sublicense to the Corning Assigned Patents in suit while such litigation is pending. Any recovery attributable to acts of 6 Corning License No. L03273 infringement prior to the Asset Purchase Closing shall be remitted to Corning. If at any time either Party does not wish to incur expenses in the litigation with respect to seeking damages for infringement, that Party may cease paying expenses and the other Party may continue to pursue the litigation at its expense, will receive any and all recovery from the litigation, and will retain sole management and control of the litigation. The other Party shall continue to cooperate in the litigation, however. Avanex or any applicable Subsidiary shall be obligated to maintain the Corning Assigned Patents in suit in force pending such litigation. 3. LICENSING OF CORNING ASSIGNED PATENTS. 3.1 Avanex hereby grants to Corning and its Subsidiaries (but only for so long as each Subsidiary remains a Subsidiary), a non-exclusive, perpetual, worldwide, irrevocable, royalty-free license under the Corning Assigned Patents, with the right to sublicense (subject to Section 3.2 below), to make, have made, import, use, offer to sell, sell, and otherwise dispose of any and all products and services, and to practice any method, process or procedure claimed in such Corning Assigned Patents, for all purposes, except for the commercial manufacture or sale of Corning OCM Products. Such license shall also permit Corning and its Subsidiaries to perform research and development activities that may relate to the Corning OCM Products and to develop, produce, market and sell products other than Corning OCM Products in the field of optical communications. Avanex shall not hold Corning liable for any claims of direct, indirect or contributory infringement of the Corning Assigned Patents arising out of Corning's manufacture or sale of products outside the scope of Corning OCM Products. 3.2 (a) Corning shall have the right to grant sublicenses of the right to use under the Corning Assigned Patents to Corning's or any of its Subsidiaries' customers of products manufactured by or on behalf of Corning or any of its Subsidiaries and sold by Corning or any of its Subsidiaries. (b) Corning shall have the right to grant sublicenses under Corning Assigned Patents only in connection with the grant of a license by Corning to make, have made, use, sell, offer for sale or import products (or products based on Corning's or any of its Subsidiaries' products) resulting from meaningful development activities by Corning or its Subsidiaries, or to practice a method, process or procedure claimed in such Corning Assigned Patents in connection with such products, within the scope of the license granted in Section 3.1 above, under a license agreement with a third party (including, but not limited to, a joint venture formed with a third party, or to establish a contract manufacturer, or to provide contingent manufacturing rights to a customer), but not, for the sake of clarification, in connection with a sale of a business or product line by Corning, which is addressed in Section 15.10. Except as provided in the next paragraph, Corning shall have no right to grant sublicenses under the Corning Assigned Patents as part of (i) Patent portfolio license, (ii) a Patent cross-license, or (iii) any license 7 Corning License No. L03273 that grants no other rights than those under Patents, or otherwise in any manner except as specifically set forth above. (c) Notwithstanding the previous paragraph, Corning shall be permitted to sublicense a maximum of fifteen (15) families of Corning Assigned Patents, selected at Corning's sole discretion, without the restrictions of subsections 3.2(b)(i) through (iii). (d) Corning may sublicense a Avanex Competitor under Sections 3.2(b) and (c) only if the Patent being sublicensed is being sublicensed outside the field of optical fiber communications. 3.3 Notwithstanding the provisions of Section 3.1 and the noncompetition provisions set forth in the Purchase Agreement, Corning and its Subsidiaries shall not be precluded in any way from making, having made, importing, using, offering to sell, selling or otherwise disposing of sub-components, i.e., devices not by themselves capable of performing the functional attributes of Corning OCM Products but otherwise usable, even exclusively, with Corning OCM Products or capable of being combined to form Corning OCM Products, provided that such sub-components are not provided to third parties in a kit or other form where they could be combined into and sold as Corning OCM Products without material design and manufacturing effort by such third parties. 3.4 Neither Avanex nor any of its Subsidiaries shall be required under this IP Agreement to maintain any Corning Assigned Patents in force, except as provided in Section 2.3. 4. LICENSING OF CORNING SOLELY LICENSED PATENTS AND CORNING NON-EXCLUSIVE LICENSED PATENTS. 4.1 Subject to the provisions of Section 11.1, Corning, for itself and on behalf of any applicable Subsidiary, hereby grants to Avanex and its Subsidiaries, as sole licensee (but sole only with respect to the Corning OCM Products), a perpetual, worldwide, irrevocable, royalty-free license under the Corning Solely Licensed Patents, with the right to sublicense (but only with respect to the Corning OCM Products), to make, have made, import, use, offer to sell, sell, and otherwise dispose of Corning OCM Products and to practice any method, process or procedure claimed in the Corning Solely Licensed Patents in order to make and have made Corning OCM Products; provided, however, that such sole license is subject to any rights or licenses granted to third parties prior to the date of signing of the Purchase Agreement, and subject to restrictions by operation of law with respect to any such Patents which are co-owned with a third party (and to the extent a co-owner's consent is necessary for such a license, Corning shall make good faith efforts, if requested, to procure such rights, but at Avanex's expense if any is required). With respect to [*], such license shall [*]. With respect to [*], such license [*]. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 8 Corning License No. L03273 4.2 Subject to the provisions of Section 11.1, Corning, for itself and on behalf of any applicable Subsidiary, hereby grants to Avanex and its Subsidiaries, a perpetual, worldwide, non-exclusive, irrevocable, royalty-free license under Corning Non-Exclusive Licensed Patents, to make (but not have made), import, use, offer to sell, sell, and otherwise dispose of Corning OCM Products and to practice any method, process or procedure claimed in the Corning Non-Exclusive Licensed Patents in order to make Corning OCM Products; provided however, that such license is subject to any rights or licenses granted to third parties prior to the date of signing of the Purchase Agreement, and subject to restrictions by operation of law with respect to any such Patents which are co-owned with a third party (and to the extent a co-owner's consent is necessary for such a license, Corning shall make good faith efforts, if requested, to procure such rights, but at Avanex's expense if any is required). In the event that Avanex has a third party make, on Avanex's behalf, a product within the scope of any Corning Non-Exclusive Licensed Patents, Corning agrees not to sue Avanex or its customers under such Corning Non-Exclusive Licensed Patents. However, this agreement not to sue shall not waive Corning's rights to bring an infringement action against such third party under such Corning Non-Exclusive Licensed Patents. 4.3 Notwithstanding the limitation of certain Corning OCM Products to applications for transmitting signals in optical fiber [*], Corning, for itself any applicable Subsidiary, hereby grants to Avanex and its Subsidiaries a perpetual, worldwide, non-exclusive, irrevocable, royalty-free license under the Corning Solely Licensed Patents and Corning Non-Exclusive Licensed Patents, to make, have made, import, use, offer to sell, sell and otherwise dispose of products designed as Corning OCM Products for use in transmission in optical fiber for [*], and to practice any method, process or procedure claimed in the Corning Solely Licensed Patents or the Corning Non-Exclusive Licensed Patents in order to make and have made such Corning OCM Products; provided, however, that such license is subject to any rights or licenses granted to third parties prior to the date of signing of the Purchase Agreement, and subject to restrictions by operation of law with respect to any such Patents which are co-owned with a third party (and to the extent a co-owner's consent is necessary for such a license, Corning shall make good faith efforts, if requested, to procure such rights, but at Avanex's expense if any is required). Such license shall extend to Avanex's customers regardless of whether the customer uses the product for optical transmission [*]. Such license shall [*]. 4.4 If Avanex learns of the substantial infringement of any Corning Solely Licensed Patent in the field that has been solely licensed to Avanex, Avanex shall notify Corning in writing of this infringement, and shall provide Corning with reasonable evidence of the infringement. Neither Party will notify the infringer of the infringement without first obtaining the consent of the other Party which consent shall not be unreasonably withheld or delayed. Both Parties must use commercially reasonable efforts, in cooperation with [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 9 Corning License No. L03273 each other, to resolve such infringement without litigation. Subject to the above, Corning hereby grants to Avanex, to the extent permitted by law, the exclusive right to prosecute any substantial infringement of the Corning Solely Licensed Patents with respect to the manufacture, sale or use of a product within the field of Corning OCM Products, including acts of infringement occurring prior to the execution of this IP Agreement, or defend any declaratory judgment action with respect thereto (for the purposes of this Section 4.4, an "ENFORCEMENT ACTION"), at its own expense, provided that Avanex shall consult with Corning and obtain Corning's approval before taking any action (including entering any settlement, consent judgment or other voluntary final disposition of any Enforcement Action) that could adversely affect any Corning Solely Licensed Patents. If necessary, Corning will join such Enforcement Action as a party. Avanex shall retain all of any recovery obtained in an Enforcement Action, unless such recovery pertains to acts of infringement occurring prior to the execution of this IP Agreement. In such a case, Avanex shall deduct from such recovery Avanex's litigation costs, and shall remit to Corning a pro rata share of the remainder of the recovery (through settlement, order, or judgment), based on the ratio of the portion of the recovery attributable to such prior acts of infringement divided by the total recovery. In any Enforcement Action, Corning shall, at the request of Avanex and subject to reimbursement of costs set forth below, cooperate in all reasonable respects; make available relevant records, papers, information, and the like; and, to the extent reasonably possible, have its employees testify when requested. To the extent that Avanex elects to prosecute or defend an Enforcement Action, Avanex shall pay all Corning's expenses including, but not limited to, attorneys fees and court costs for Corning's involvement as a subpoenaed third party or as a necessary joined party in any court, alternative dispute resolution, or administrative body proceedings, as well as compensation for the value of the time of Corning's employees as reasonably required in connection with the Enforcement Action. 4.5 After Corning presents evidence of infringement to Avanex sufficient to bring a claim for patent infringement, Corning may request, in writing, that Avanex initiate an Enforcement Action against the infringement or threatened infringement of the Corning Solely Licensed Patents within the field of Corning OCM Products. If, within [*] days following receipt of such request, Avanex has not initiated an Enforcement Action directed at such infringement or threatened infringement, Corning shall have the right to initiate an enforcement suit on its own account, and at its own expense, and shall retain all of any recovery obtained by such suit unless such recovery pertains to acts of infringement occurring after the execution of this IP Agreement. In such a case, Corning shall deduct from such recovery Corning's litigation costs, and shall remit to Avanex a pro rata share of the remainder of the recovery, based on the ratio of the portion of the recovery attributable to such after-occurring acts of infringement divided by the total recovery. Avanex must obtain Corning's consent to grant a license to any such infringer with regard to the asserted Patents, once Corning has notified the alleged infringer and until any subsequent litigation is over. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 10 Corning License No. L03273 4.6 In the event that Avanex wishes to expand the foregoing licenses, the Parties will discuss such an expansion and the terms of such an expansion; provided that nothing herein will require Corning to agree. 4.7 Neither Corning nor any of its Subsidiaries shall be required under this IP Agreement to maintain any Corning Solely Licensed Patents in force. 5. LICENSING OF CORNING LICENSED KNOW-HOW. 5.1 Subject to the provisions of Section 11.1, Corning, for itself and on behalf of any applicable Subsidiary, hereby grants Avanex and its Subsidiaries (a) as sole licensee (but sole only with respect to the Corning OCM Products), a perpetual, worldwide, irrevocable, royalty-free license, with the right to sublicense (subject to Section 5.2 below), to use the Corning Licensed Know-How to design, develop, manufacture, have manufactured, assemble, have assembled, test, store, transport, deliver, market, sell, support and provide professional services with respect to Corning OCM Products and (b) a nonexclusive, perpetual, worldwide, irrevocable, royalty-free license, with the right to sublicense (subject to Section 5.2 below), to use the Corning Licensed Know-How for other purposes; provided, however, that such licenses are subject to any rights or licenses granted to third parties prior to the date of signing of the Purchase Agreement. 5.2 Avanex shall have the right to grant sublicenses under the Corning Licensed Know-How only in connection with the grant of a license by Avanex to make, have made, use, sell, offer for sale or import Avanex's or any of its Subsidiaries' products or products based on Avanex's or any of its Subsidiaries' products within the scope of the license granted in Section 5.1 above, in connection with a license agreement with a third party (including, but not limited to, a joint venture formed with a third party, to establish a contract manufacturer, and to provide contingent manufacturing rights to a customer). Avanex shall have no right, however, to grant sublicenses under the Corning Licensed Know-How to a third party as a bare Know-How license for a new application for which Avanex has not had meaningful product development activities, or otherwise in any manner except as specifically set forth above. Furthermore, Avanex shall not be permitted to sublicense Corning Licensed Know-How embodied in and associated with those computer programs or software tools listed in Exhibit 5.2. 5.3 (a) The following items of Corning Licensed Know-How shall be considered delivered upon the Asset Purchase Closing: (i) Corning Licensed Know-How embodied in tangible and electronic form contained within the facilities to be occupied by Avanex; (ii) those items of Corning Licensed Know-How within the knowledge of those employees of Corning who become employees of Avanex at the Asset 11 Corning License No. L03273 Purchase Closing and any items constituting or containing Corning Licensed Know-How, in tangible or electronic form, which they bring with them. In connection with the transition of such employees from Corning to Avanex, and consistent with such employees' continuing confidentiality obligations to Corning, Corning shall direct such employees to identify and accumulate such items of Corning Licensed Know-How during the period prior to Asset Purchase Closing. (b) Avanex may, within [*] of Asset Purchase Closing, request in writing the delivery of additional specific tangible or electronic items of Corning Licensed Know-How that have not already been delivered in the manner set forth in Section 5.2(a) and which have been used by Corning's employees in connection with Corning OCM Products within [*] prior to the Asset Purchase Closing. Corning will copy and deliver such requested items, and deliver a copy in tangible or electronic form only if i) the requested item already exists within Corning's possession in tangible or electronic form; ii) no services other than clerical copying or electronic download services are necessary to produce the deliverable form of the requested item; iii) the requested item is not subject to third party copyright which would restrict Corning's right to provide a copy to Avanex for Avanex's use while retaining a copy with Corning for Corning's use; and iv) Avanex shall reimburse Corning for out-of-pocket copying, electronic download, and delivery expenses. (c) Corning shall have no further obligation under this IP Agreement to deliver any specific items of Corning Licensed Know-How to Avanex. Furthermore, neither Corning nor its Subsidiaries shall be obligated under any provision of this IP Agreement to provide the services of any employees or to expend any resources for the purpose of transferring any items of Corning Licensed Know-How to Avanex, including, but not limited to (a) reducing to tangible form any Corning Licensed Know-How not previously available in tangible form, (b) providing any oral transfer of Corning Licensed Know-How or (c) providing any technical support, consultation, instruction or training of Avanex's personnel in how to understand, use or implement such Corning Licensed Know-How. 5.4 Each Party agrees, for itself and on behalf of its Subsidiaries, to maintain any Corning Licensed Know-How in confidence in accordance with the provisions of the confidentiality agreement in Exhibit 5.4, attached hereto. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 12 Corning License No. L03273 6. ASSIGNMENT OF CORNING ASSIGNED TRADEMARKS 6.1 At the Asset Purchase Closing, subject to the terms and conditions set forth in this IP Agreement, Corning or its applicable Subsidiary shall sell, convey, transfer and assign all of Corning's or its Subsidiary's right, title and interest in and to the Corning Assigned Trademarks, together with all goodwill of the business associated with or symbolized by the Corning Assigned Trademarks, to Avanex or one or more of its designated Subsidiaries, and Avanex or one or more of its designated Subsidiaries shall purchase from Corning such right, title and interest. 7. LICENSING OF CORNING TRADEMARKS 7.1 In order for the Avanex to be able to market, promote, sell or distribute any finished goods inventory of the Corning OCM Products acquired under the Purchase Agreement, Corning agrees to grant and hereby grants, effective as of the Asset Purchase Closing and extending not longer than the respective periods of time specified in Sections 7.6 and 7.7, a non-exclusive, non-transferable, non-sublicensable, royalty-free license to use certain trademarks of the Corning or its Subsidiaries, solely on, or in connection with, the Corning OCM Products. Such trademarks include (a) all trademarks containing the name "CORNING" or any variation of the name "CORNING" and (b) the "CORNING FLAME" logo (collectively, the "Corning Trademarks"). 7.2 The license granted in Section 7.1 shall be limited to the use of the Corning Trademarks in the manner in which, and to the extent to which, they were in use by Corning as of the Asset Purchase Closing, and shall not permit Avanex to expand the use thereof. 7.3 Subject to Section 11.2, Corning agrees to grant and hereby grants, effective as of the Asset Purchase Closing, an exclusive, non-transferable, non-sublicensable, royalty-free license to use Corning's trademark "DCM" solely on, or in connection with, Dispersion Compensation Modules. 7.4 Avanex agrees, on behalf of itself and its Subsidiaries (a) to conform with all applicable quality standards and usage guidelines established by Corning and/or its respective Subsidiaries and provided by Corning to Avanex regarding the Corning Trademarks and the DCM trademark and the use thereof in connection with the Corning OCM Products or Dispersion Compensation Modules, which standards and guidelines shall be consistent with those followed by Corning prior to the Asset Purchase Closing (b) not to engage in any activities that would adversely affect the goodwill associated with the Corning Trademarks or the DCM trademark and (c) to permit Corning to monitor and control the nature and quality of any products or services provided by Avanex or its Subsidiaries under or in connection with the Corning Trademarks or the DCM trademark. The form and manner in which the DCM Trademark shall be used upon or in connection with Dispersion Compensation Modules, or labels, containers, or advertisements therefor shall be consistent with the use made by Corning prior to the Asset Purchase Closing. 13 Corning License No. L03273 7.5 Except to the extent, if at all, that Corning is obligated to indemnify Avanex under the Purchase Agreement, Avanex agrees to defend, indemnify and hold harmless Corning and its applicable Subsidiaries and their respective officers, directors, employees and agents from any and all liability and costs arising from third party claims, demands, causes of action and judgments, including attorneys' fees and court costs, resulting from Avanex's or its Subsidiary's (a) production, manufacture, distribution or shipment of Corning OCM Products bearing the Corning Trademarks and Dispersion Compensation Modules bearing the DCM trademark, (b) use of the Corning Trademarks or the DCM trademark for the marketing, promotion, sale or distribution of products other than the Corning OCM Products (or Dispersion Compensation Modules, in the case of the DCM trademark), or (c) use of the Corning Trademarks or the DCM trademark not otherwise in accordance with the license and rights granted herein. 7.6 Notwithstanding the license granted in Section 7.1, Avanex shall, as soon as is practicable but not more than twelve (12) months after the Asset Purchase Closing, modify all Corning OCM Products and associated packaging, labeling, labels, brochures and sales aids which bear or contain any Corning Trademarks, by use of stickers or other appropriate means, which are reasonably calculated to show customers and prospective customers of the Corning OCM Products that the ownership thereof and responsibility therefor has transferred to Avanex. 7.7 Notwithstanding the license granted in Section 7.1, Avanex shall, as soon as is practicable but not more than three (3) months after the Asset Purchase Closing, terminate the use of any existing inventories of (a) any letterhead stationery, envelopes, business cards, checks, invoices, purchase orders, and similar printed materials, and (b) signage in or on buildings or vehicles which bear or contain any Corning Trademarks. 7.8 Notwithstanding Section 15.10, the licenses of Sections 7.1 and 7.3 shall not be assignable by Avanex without the express written consent of Corning. 8. ASSIGNMENT OF CORNING ASSIGNED COPYRIGHTS 8.1 At the Asset Purchase Closing, subject to the terms and conditions set forth in this IP Agreement, Corning or its applicable Subsidiary (but not including Corning Cable Systems or Technical Materials) shall sell, convey, transfer and assign all of Corning's, or such Subsidiary's, right, title and interest in and to the Corning Assigned Copyrights to Avanex or one or more of its designated Subsidiaries, and Avanex or one or more of its designated Subsidiaries shall purchase from Corning such right, title and interest. Avanex shall ensure that Corning's name (including the name in Corning's copyright notice) and trademarks shall be deleted from any copies of materials within the scope of the Corning Assigned Copyrights provided to third parties, except as may be otherwise explicitly permitted under this IP Agreement. 8.2 Avanex hereby grants to Corning, including its Subsidiaries, a non-exclusive, perpetual, worldwide, irrevocable, royalty-free license under the Corning Assigned Copyrights to 14 Corning License No. L03273 copy, modify, make derivative works of, and distribute any printed materials in Corning's or its Subsidiaries' possession after the Asset Purchase Closing and covered by any Corning Assigned Copyrights, solely for purposes other than related to the Corning OCM Products. 9. LICENSING OF CORNING LICENSED COPYRIGHTS. 9.1 Corning, for itself and on behalf of any applicable Subsidiary, hereby grants Avanex and its Subsidiaries (a) as sole licensee (but sole only with respect to Corning OCM Products), a perpetual, worldwide, irrevocable, royalty-free license (but subject to any royalties owed to third parties, which shall be the responsibility of Avanex), under the Corning Licensed Copyrights, with the right to sublicense (subject to Section 9.2 below), to copy, modify, make derivative works of, and distribute any copyrightable materials covered by a Corning Licensed Copyright and derivative works thereof made by or for Avanex, and (b) a nonexclusive, worldwide, royalty-free, irrevocable, perpetual license, under the Corning Licensed Copyrights, with the right to sublicense (subject to Section 9.2 below), to copy, modify, make derivative works of, and distribute any copyrightable materials covered by a Corning Licensed Copyright and derivative works thereof made by or for Avanex, for purposes other than those related to the Corning OCM Products. Such licenses shall be limited to Corning Licensed Copyrights which rightfully come into the possession of Avanex as of the Asset Purchase Closing pursuant to the Purchase Agreement. 9.2 Avanex shall have the right to grant sublicenses under the Corning Licensed Copyrights only in connection with the grant of a license by Avanex to make, have made, use, sell, offer for sale or import Avanex's or any of its Subsidiaries' products or products based on those products within the scope of the license granted in Section 9.1 above, in connection with a license agreement with a third party (including, but not limited to, a joint venture formed with a third party, to establish a contract manufacturer, and to provide contingent manufacturing rights to a customer). Avanex shall have no right, however, to grant sublicenses under the Corning Licensed Copyrights to a third party as a bare Copyright license for a new application for which Avanex has not had meaningful product development activities or otherwise in any manner except as specifically set forth above. Furthermore, Avanex shall not be permitted to sublicense Corning Licensed Copyrights embodied in or associated with those computer programs or software tools listed in Exhibit 5.2. 10. RIGHTS REGARDING CORNING TRANSFERRED THIRD PARTY IP CONTRACTS. 10.1 At the Asset Purchase Closing, subject to the terms and conditions set forth in this IP Agreement, Corning or its applicable Subsidiary shall sell, convey, transfer and assign all of Corning's or its Subsidiary's right, title and interest in and to the Corning Transferred Third Party IP Contracts, along with all of Corning's (or its Subsidiary's, as the case may be) attendant rights and obligations thereunder, to Avanex or one or more of its designated Subsidiaries, and Avanex or one or more of its designated Subsidiaries shall purchase from Corning such right, title and interest. Avanex, for itself and on behalf of 15 Corning License No. L03273 any applicable Subsidiary, agrees to perform all obligations under any Corning Transferred Third Party Contract so assigned or transferred, and to execute all documents necessary to effect such assignment or transfer. Any third party consents received by Corning from the party or parties to any Corning Transferred Third Party IP Contracts shall be delivered to Avanex. 10.2 Notwithstanding the various assignments of Corning Transferred Third Party IP Contracts to Avanex hereunder, none of the rights thereby acquired by Avanex shall in any way preclude Corning or its Subsidiaries from designing, producing, using or selling optical fiber. To the extent necessary to effectuate this provision, Avanex hereby sublicenses and covenants not to sue Corning, its Subsidiaries or any of their respective customers under any Corning Third Party IP acquired by Avanex pursuant to such assigned Corning Transferred Third Party IP Contracts that would otherwise prevent Corning or its Subsidiaries from making, having made, importing, using, offering to sell, selling, or otherwise disposing of optical fiber. 10.3 Notwithstanding the various assignments of Corning Transferred Third Party IP Contracts to Avanex hereunder, such assignments are subject to any rights or licenses to the applicable Corning Third Party IP granted to third parties prior to the date of signing of the Purchase Agreement. 10.4 [*] 11. RIGHTS REGARDING DISPERSION COMPENSATION MODULES 11.1 With respect to Dispersion Compensation Modules, the licenses of Sections 4.1, 4.2 and 5.1 are limited to (a) the assembly of Dispersion Compensation Modules and (b) the packaging of optical fiber(s) therein, but shall not apply in any way to the making, using or selling of dispersion-compensating optical fiber alone. Furthermore, Corning agrees not to license third parties with respect to Dispersion Compensation Modules under the Corning Solely Licensed Patents (per Article 4) or the Corning Licensed Know-How (per Article 5), provided, however, that such obligation not to license third parties shall terminate in the event that Avanex breaches the quality-related and customer satisfaction-related milestones specified in Exhibit 11.1 (i)- (iii) attached hereto and fails to cure such breach within ninety (90) days of receipt from Corning of notice of such breach, breaches its purchase obligations under the Fiber Supply Agreement and fails to cure such breach in the manner provided therein, or the Fiber Supply Agreement expires or is terminated for any reason other than Corning's breach. In the event that the Fiber Supply Agreement is terminated due to Corning's breach, Corning's obligation not to license third parties shall terminate four years after the Asset Purchase Closing. [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 16 Corning License No. L03273 11.2 The license to the DCM trademark under Section 7.3 shall terminate if Avanex breaches (a) the quality-related and customer satisfaction-related milestones (i)-(iii) specified in Exhibit 11.1, (b) its purchase obligations under the Fiber Supply Agreement, or (c) the quality obligations set forth in Section 7.4 and fails to cure the breaches of subsections (a) or (c) within ninety (90) days of receipt from Corning of notice of such breach or fails to cure the breach of subsection (b) in the manner provided in the Fiber Supply Agreement. Avanex shall immediately terminate its use of the DCM trademark upon termination of the license for any reason. In the event that Avanex fails to satisfy milestone (iv) in Exhibit 11.1, or the Fiber Supply Agreement expires or is terminated for reasons other than Avanex's breach, then Avanex's license shall become a non-exclusive license in the DCM trademark, still subject to the quality obligations set forth above. 12. LIMITATION ON LICENSES. 12.1 Neither Party grants any other licenses, express or implied, to any Intellectual Property, except as explicitly stated in this IP Agreement. 13. NO TERMINATION. 13.1 Each Party acknowledges and agrees that the licenses granted under this IP Agreement, except where specified otherwise, are perpetual and irrevocable, and that its remedy for breach by the other Party of the licenses granted to it hereunder or of any other provision hereof, shall be to bring a claim to recover damages and to seek appropriate equitable relief, other than termination of the licenses granted by it in this IP Agreement. 14. TRANSITION SERVICES. 14.1 (a) As soon as reasonably practicable after the Asset Purchase Closing,Corning and Avanex shall establish a schedule and a process for the transfer of files for the Corning Assigned Patents and Corning Assigned Trademarks to Avanex. In accordance with the schedule, Corning shall transfer to Avanex patent prosecution files, docketing and annuity payment schedules in Corning's possession for the Corning Assigned Patents and Corning Assigned Trademarks. (b) Corning shall provide the services listed below (hereinafter "the Services") to Avanex after Asset Purchase Closing as may be reasonably required to effectively transition the management of the prosecution and maintenance of the Corning Assigned Patents and Corning Assigned Trademarks to Avanex. The Services are: (i) docketing official actions from patent and trademark offices and informing Avanex of such actions; (ii) preparing responses to official actions (either by in-house attorneys or through outside counsel under the direction of in-house attorneys) in connection with patent and trademark applications; 17 Corning License No. L03273 (iii) filing responses and formal papers in patent and trademark offices (either by in-house attorneys or through outside counsel under the direction of in-house attorneys) in connection with patent and trademark applications; (iv) paying maintenance fees on Corning Assigned Patents and Corning Assigned Trademarks per direction from Avanex; (v) maintaining files; and (vi) physically transferring files to Avanex. (c) In no event will Corning be obligated to provide the Services to Avanex for longer than three (3) months from the Asset Purchase Closing. In no event will Corning be obligated to expend more than eighty (80) hours per month of in-house attorney time for provision of the Services. In the event that the Services require more than eighty (80) hours per month of in-house attorney time, Corning will apprise Avanex of this fact and if necessary ensure that such Services are provided through outside counsel, at Avanex's expense. Promptly upon the request of Avanex after the Asset Purchase Closing, Corning shall provide Avanex with an estimate of Avanex's payments for the Services, which estimate is not binding on Corning and is for budgeting purposes only. (d) Corning shall use the same standard of care in provision of the Services that it uses in connection with patents and applications owned by Corning. (e) Avanex shall promptly reimburse Corning for all expenses and costs (including outside counsel fees and expenses) incurred to provide the Services and assistance. Avanex also shall pay Corning for the value of the time expended by Corning's in-house attorneys and patent agents in providing the Services and assistance. The amount to be paid for in-house attorneys' time shall be one hundred ninety dollars ($190) per hour. (f) In no event will Corning be liable for any incidental or consequential damages in connection with the Services or assistance provided, or for any damages other than damages resulting from intentional breach, gross negligence or willful misconduct. (g) Avanex agrees to waive any attorney conflict of interest that may result from Corning's attorneys' provision of the Services or assistance in connection with the performance of Corning's obligations hereunder. (h) Corning shall make available to Avanex inventors employed by Corning for interviews, to assist in good faith in further prosecution of the Corning Assigned Patents, including the signing of documents related thereto. Avanex shall reimburse Corning for the time expended by such inventors. (i) Corning agrees to cooperate in good faith in responding to and assisting with reasonable discovery requests from Avanex should Corning be a party in a litigation and to reasonable third party subpoenas from Avanex concerning a litigation asserting Corning Assigned Patents or Corning Solely Licensed Patents. Such cooperation shall 18 Corning License No. L03273 include assistance from all Corning employees having information pertinent to the Patents at issue for the purposes of fact discovery by providing documents, and deposition and trial testimony. Corning may, but shall not be obligated to, provide expert witness assistance. Avanex agrees to compensate Corning for all such assistance. 14.2 Notwithstanding the above, the Parties acknowledge and agree that, prior to the signing of the Purchase Agreement, Corning and its Subsidiaries had continued to administer the Corning Assigned Patents in the ordinary course of business, and that, due to the size of the portfolio, many actions with respect to Corning Assigned Patents have been put into motion (including actions that may result in the termination of one or more of the Corning Assigned Patents) and that it is both imprudent and impractical to try to alter such actions. Corning agrees not to set into motion any new action with respect to any of the Corning Assigned Patents after the signing date of the Purchase Agreement which would affirmatively abandon any cases without consultation with the Avanex. At the Asset Purchase Closing, Corning shall update the list of Corning Assigned Patents in Exhibit 1.4 to account for any actions taken in this regard. 14.3 Each Party agrees, without demanding any further consideration, to execute (and to cause its Subsidiaries to execute) all documents reasonably requested by the other Party to effect recordation of (a) the assignment of the Corning Assigned Patents and Corning Assigned Trademarks and (b) the licensing relationships between the Parties created by this IP Agreement. 14.4 On a regular basis during the period from the signing of the Purchase Agreement until one hundred eighty (180) days after the Asset Purchase Closing, Corning shall provide Avanex with any new invention disclosures that are primarily related to Corning OCM Products and which are submitted during that period. Promptly after the completion of one hundred eighty (180) days after the Asset Purchase Closing, Corning shall provide Avanex with a list of Corning Assigned Patents which have been newly filed during the period from the signing of the Purchase Agreement until one hundred eighty (180) days after the Asset Purchase Closing. Within a reasonable time after the completion of such one hundred eighty (180) day period, Corning also shall provide Avanex with patent prosecution files, docketing and annuity payment schedules in Corning's possession for such Corning Assigned Patents. Corning will monitor such files, dockets, and annuity payment schedules until such files are transferred to Avanex. 15. MISCELLANEOUS. 15.1 No failure by a Party to exercise, or to delay to exercise, any right, power, or remedy under this IP Agreement shall operate as a waiver thereof, nor shall any single or partial exercise of such right, power, or remedy by such Party preclude any other or further exercise thereof or of any other right. 15.2 Nothing herein shall be deemed to create an agency, joint venture or partnership relation between the Parties. 19 Corning License No. L03273 15.3 This IP Agreement and the Purchase Agreement constitutes the entire agreement and understanding of the Parties with regard to the transfer of intellectual property rights and of licensing rights between the Parties as contemplated under the Purchase Agreement, and supersedes all prior and contemporaneous discussions, negotiations, understandings and agreements, whether oral or written, between the Parties concerning such subject matter. Each Party disclaims all representations and warranties except those expressly set forth herein or in the Purchase Agreement. No party shall be bound by any definition, condition, warranty, right, duty or covenant other than as expressly stated herein. Each Party expressly waives any implied right or obligation regarding the subject matter hereof. This IP Agreement may be amended only by a written document signed by authorized representatives of the Parties. 15.4 This IP Agreement shall be interpreted and construed, and the legal relations created herein shall be determined, in accordance with the laws of the State of New York (excluding conflict of laws which would require the application of any other law) and the United States. 15.5 Each Party shall execute, acknowledge and deliver all such further instruments and do all such further acts as may be reasonably necessary or desirable to carry out the intent and purposes of this Agreement and the consummation of the transactions contemplated hereby. 15.6 The headings contained in this IP Agreement are for reference purposes only and shall not affect in any way the meaning or interpretation of this IP Agreement. 15.7 Should any part or provision of this IP Agreement or the application thereof be declared by a court of competent jurisdiction to be illegal, void or unenforceable, the remaining parts or provisions shall continue in full force and effect. If a part or provision of this IP Agreement is held illegal, void or unenforceable, the remaining provisions of this Agreement shall be construed as if such illegal, void or unenforceable provision were omitted, and the Parties shall negotiate in good faith an amendment to such part or provision in a manner consistent with the intention of the parties with respect to this IP Agreement. 15.8 No party shall be responsible or liable to another Party for nonperformance or delay in performance of any terms or conditions of this IP Agreement due to acts or occurrences beyond the reasonable control of the nonperforming or delayed party, including but not limited to, acts of God, acts of government, wars, riots, strikes or other labor disputes, shortages of labor or materials, fires and floods, provided the nonperforming or delayed Party provides to the other Party written notice of the existence and the reason for such nonperformance or delay. 15.9 Any and all notices or other communications required or permitted by this Agreement or by law to be served on or given to a Party by another Party shall be in writing and delivered or sent to: 20 Corning License No. L03273 CORNING: Corning Incorporated One Riverfront Plaza Corning, NY 14831 Attn: Company Secretary cc: Licensing Coordinator Corning Incorporated Intellectual Property Department SP-TI-3-1 Corning, NY 14831 AVANEX: Avanex Corporation 40919 Encyclopedia Circle Fremont, CA 94538 Attn: CEO A Party may change its address for purposes of this Agreement by written notice to the other Party. All notices and other communications hereunder shall be in writing and shall be deemed duly given (i) on the date of delivery if delivered personally, (ii) on the date of confirmation of receipt (or, the first business day following such receipt if the date is not a business day) of transmission by telecopy or telefacsimile or (iii) on the date of confirmation of receipt (or, the first business day following such receipt if the date is not a business day) if delivered by a nationally recognized courier service. 15.10 (a) This IP Agreement shall be binding upon and inure to the benefit of the Parties and their respective successors and permitted assigns. Nothing in this IP Agreement shall be deemed to have created any third party beneficiary rights in any person. (b) Neither Party shall be permitted to assign or transfer this IP Agreement in its entirety (by operation of law or otherwise) without the prior written consent of the other Party, and any such attempted assignment or transfer shall be void; provided, however that either Party may assign or transfer this Agreement in its entirety (except as excluded under Section 7.8), in connection with the sale of all or substantially all of the assets to which this IP Agreement relates, and any and all of its associated rights and obligations, provided the assigning or transferring Party remains primarily liable for all obligations under this IP Agreement, and the assignee or transferee agrees in writing to comply with all of such obligations. (c) In addition, in the event that Corning assigns or transfers a technology for a specific field of use that includes at least one product under development or a commercially released product to a third party (a "TRANSFEREE"), Corning shall be 21 Corning License No. L03273 permitted to assign or transfer all of the license rights granted to Corning by Avanex under this IP Agreement solely in such field of use (a "TRANSFERRED FIELD"), provided that: (i) Corning provides Avanex with prompt notice of such assignment or transfer and copies of the portions of the agreement relevant to such assignment or transfer; (ii) Transferee agrees in writing to comply with all other terms and conditions of this Agreement as it applies to the assigned or transferred license rights and the Transferred Field; (iii) all of the license rights granted to Corning by Avanex under this IP Agreement shall terminate with respect to the Transferred Field; and (iv) Transferee shall not be a Avanex Competitor. (d) Notwithstanding Section 15.10(b), Avanex may assign or transfer the Corning Licensed Know-How and Corning Licensed Copyrights listed in Exhibit 5.2 in connection with the sale of all or substantially all of the assets to which this IP Agreement relates, but such Corning Licensed Know-How and Corning Licensed Copyrights may not be used in connection with any businesses other than those that existed at the time of the transfer or assignment, i.e., the transferee or assignee may not use for other applications. 15.11 Avanex acknowledges that any present or former employees of Corning (or its Subsidiaries) who become employed by Avanex, either directly or indirectly as a result of the transactions contemplated under the Purchase Agreement, will be bound by obligations of confidentiality to Corning (and/or its respective Subsidiary) with respect to proprietary information related to matters other than the Corning OCM Products and the Corning Licensed Know-How. Avanex agrees not to (a) induce such employees to breach such obligations, or (b) use, copy or disclose any information that may be disclosed by such employees and which Avanex knows, or has reason to know, constitutes Corning's proprietary information. 15.12 Each Party shall comply with (a) applicable export laws and regulations of any agency of the U.S. Government; and (b) any other current, applicable laws, regulations and other legal requirements in its exercise of its rights under this IP Agreement. 15.13 Each Party acknowledges that its breach of its obligations hereunder may cause irreparable damage to the other Party for which such Party will not have an adequate remedy at law. Therefore, each Party agrees that the other Party shall be entitled to seek equitable relief with respect to the first Party's obligations hereunder. 22 Corning License No. L03273 15.14 This IP Agreement may be executed by each Party in counterparts, each of which shall be deemed an original, but all such counterparts shall constitute only one and the same instrument. IN WITNESS WHEREOF, the Parties have executed this Agreement in duplicate on the signature page hereof. CORNING INCORPORATED AVANEX CORPORATION By: /s/ MARK W. LAUROESCH By: /s/ ANTHONY A. FLORENCE ----------------------- ---------------------------------------- Name: Mark W. Lauroesch Name: Anthony A. Florence Title: Assistant Secretary Title: Sr. Vice President, Corporate Affairs Date: July 31, 2003 Date: July 31, 2003 23