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**Confidential**DSL technologies; or (2) wireless networking technologies, including IEEE 802.11, IEEE 802.16,and Bluetooth standards (“DSL/Wireless Components”); *but provided further that*if a claimof a Licensed Patent Covers both (A) a DSL/Wireless Component; and (B) another component in suchPurchaser Product that is not a DSL/Wireless Component (a “Non-DSL/Wireless Component”),then the license granted in this Section 1.1(a) shall not extend to the DSL/Wireless Component butshall extend to the Non-DSL/Wireless Component; and          **(b)**under each claim of the Licensed Patents that Covers any portion of the Purchaser Modules,Reasonable Modifications, or Interface Technology, to (i) use, make, have made (solely for thePurchaser or an Affiliate of the Purchaser), import, sell, offer for sale, and otherwise dispose ofcurrent or future Purchaser Modules, Reasonable Modifications, and Interface Technology, in each ofthe foregoing cases in the Purchaser Field of Use; and (ii) practice any methods for the purpose ofusing, making, having made (solely for the Purchaser or an Affiliate of the Purchaser), importing,selling, offering for sale, or otherwise disposing of current or future Purchaser Modules,Reasonable Modifications, or Interface Technology, in each of the foregoing cases in the PurchaserField of Use.This license will remain in effect until the expiration of the last-to-expire of the LicensedPatents.     **1.2 Licensed Non-Patent IP.**Subject to the terms and conditions of this Agreement, the Sellerhereby grants to the Purchaser and its Affiliates a worldwide, nontransferable (except to theextent permitted in Section 6.7), perpetual and irrevocable, royalty-free and fully-paid license(with the right to sublicense solely to the extent permitted in Section 1.3) to use, reproduce,modify, create derivative works of, distribute (through multiple tiers), perform, and display theLicensed Non-Patent IP (in both source code and executable code form, for those portions of theLicensed Non-Patent IP that are comprised of software code) for the sole purpose of using,developing, manufacturing, marketing, distributing, selling, supporting, or otherwise disposing ofcurrent or future Purchaser Products in the Purchaser Field of Use. The license granted under thisSection 1.2 shall be exclusive (including with respect to the Seller) to Purchaser in the STB fieldof use and the DTV field of use during the three-year period following the Effective Date, andnonexclusive thereafter. The license granted under this Section 1.2 shall be nonexclusive at alltimes with respect to fields of use other than the STB field of use and DTV field of use.     **1.3 Sublicensing of Licensed Patents and Licensed Non-Patent IP.**          **(a)**The Purchaser may sublicense all of the rights granted to it in Section 1.1 and Section1.2 solely (i) to contract manufacturers, foundries, test and assembly contractors, designcontractors, and other subcontractors engaged by the Purchaser or any Affiliate of the Purchaserfor the sole purpose of performing services for and on behalf of the Purchaser or any Affiliate ofthe Purchaser; (ii) to customers and distributors of the Purchaser or any Affiliate of thePurchaser, solely to the extent necessary to allow such customers and distributors to use, operate,and sell Purchaser Products or Purchaser Modules (or other products incorporating such PurchaserProducts or Purchaser Modules); and (iii) to Technical Collaborators of the Purchaser or anyAffiliate of the Purchaser, solely to the extent necessary to allow such Technical Collaborators toperform their development obligations to the Purchaser or such Affiliate of the Purchaser withrespect to a Purchaser Product or Purchaser Module; provided, however, that (1)
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**Confidential**no sublicensee shall have the right further to sublicense the rights described above; and (2)the Purchaser ensures that all such sublicensees are bound by an agreement containing terms andconditions no less protective of the Seller’s interests in the Licensed Patents and the LicensedNon-Patent IP than those set forth in Section 1.4 and Section 3.          **(b)**In addition, the Purchaser may sublicense any or all of the rights granted to it inSection 1.1(b) and Section 1.2 (including the right to sublicense under Sections 1.3(a)(i),1.3(a)(ii) and 1.3(a)(iii) above) (i) to another entity (whether owned by a third party orpartially owned by the Purchaser), or to a participant in a joint venture or similar arrangement,solely in connection with the sale, disposition, or contribution to such joint venture or similararrangement, of any business unit, product or business line, or operating unit of the Purchaser orany of its Affiliates (whether through a sale, contribution of assets or stock, merger,consolidation or any other form of business transfer or business combination), and (ii) topurchasers and licensees of the Transferred Non-Patent IP, solely with respect to the TransferredNon-Patent IP that is purchased or licensed; *provided, however*, that, in each case, (1) theforegoing right to sublicense shall not enable a sublicensee further to sublicense to additionalthird parties; (2) the Purchaser ensures that all such sublicensees are bound by an agreementcontaining terms and conditions no less protective of the Seller’s interests in the LicensedPatents and the Licensed Non-Patent IP than those set forth in Section 1.4 and Section 3; and (3)Purchaser shall have no right to sublicense any of the rights granted in Section 1.1(a) under thisSection 1.3(b).     **1.4 No Implied Licenses.**As between the Seller and the Purchaser, the Seller retainsexclusive ownership of the Licensed Patents and Licensed Non-Patent IP (and all IntellectualProperty Rights related thereto). There are no implied licenses granted to the Licensed Patents orLicensed Non-Patent IP under this Agreement, and all rights to the foregoing that are not expresslygranted herein are reserved to the Seller.**2.****Grantback Licenses**     **2.1 Transferred Patents.**Subject to the terms and conditions of this Agreement, the Purchaserhereby grants to the Seller and its Affiliates a worldwide, nonexclusive, nontransferable (exceptto the extent permitted in Section 6.7), irrevocable, royalty-free and fully-paid license (with theright to sublicense solely to the extent permitted in Section 2.3), under the Transferred Patents,to (a) use, make, have made (solely for the Seller or an Affiliate of the Seller), import, sell,offer for sale, and otherwise dispose of, current or future Seller Products in the Seller Field ofUse; and (b) practice any methods for the purpose of using, making, having made (solely for theSeller or an Affiliate of the Seller), importing, selling, offering for sale, or otherwisedisposing of, current or future Seller Products in the Seller Field of Use. This license willremain in effect until the expiration of the last-to-expire of the Transferred Patents.     **2.2 Transferred Non-Patent IP.**Subject to the terms and conditions of this Agreement, thePurchaser hereby grants to the Seller and its Affiliates a worldwide, nontransferable (except tothe extent permitted in Section 6.7), perpetual and irrevocable, royalty-free and fully-paidlicense (with the right to sublicense solely to the extent permitted in Section 2.3) to use,reproduce, modify, create derivative works of, distribute (through multiple tiers), perform, anddisplay the Transferred Non-Patent IP (in both source code and executable
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**Confidential**code form,for those portions of the Transferred Non-Patent IP that are comprised of softwarecode) for the sole purpose of using, developing, manufacturing,marketing, distributing, selling,supporting, or otherwise disposing of current or future SellerProducts in the Seller Field of Use.The license granted under this Section 2.2 shall be exclusive(including with respect to thePurchaser) to Seller in the PCTV field of use and the VideoSurveillance field of use during thethree-year period following the Effective Date, and nonexclusivethereafter. The license grantedunder this Section 2.2 shall be nonexclusive at all times withrespect to fields of use other thanthe PCTV field of use and the Video Surveillance field of use.Notwithstanding the foregoing, theSeller acknowledges and agrees that the license granted under thisSection 2.2 shall not extend to,and the Seller shall not use, reproduce, modify, create derivativeworks of, distribute (throughmultiple tiers), perform, or display (a) the TransferredNon-Patent IP listed in Exhibit B-1 at anytime inside the STB field of use or the DTV field of use; or(b) the Transferred Non-Patent IPlisted in Exhibit B-2 at any time outside the PCTV field of useand the Video Surveillance field of use.     **2.3 Sublicensing of Transferred Patents and Transferred Non-Patent IP.**          **(a)**The Seller may sublicense the rights granted to it in Section 2.1 and Section 2.2 solely(a) to contract manufacturers, foundries, test and assembly contractors, design contractors, andother subcontractors engaged by the Seller or any Affiliate of the Seller for the sole purpose ofperforming services for and on behalf of the Seller or any Affiliate of the Seller; (b) tocustomers and distributors of the Seller or any Affiliate of the Seller, solely to the extentnecessary to allow such customers and distributors to use and operate the Seller Products; and (c)to Technical Collaborators of the Seller or any Affiliate of the Seller, solely to the extentnecessary to allow such Technical Collaborators to perform their development obligations to theSeller or such Affiliate of the Seller with respect to the applicable Seller Product; *provided,however*, that (i) no sublicensee shall have the right to further sublicense the rights describedabove; and (ii) the Seller ensures that all such sublicensees are bound by an agreement containingterms and conditions no less protective of the Purchaser’s interests in the Transferred Patents andthe Transferred Non-Patent IP than those set forth in Section 2.4 and Section 3, and usescommercially reasonable efforts to enforce such agreement.          **(b) One-Time Sublicenses for Business Reorganizations.**In addition, the Seller may sublicenseall or any portion of the rights granted to it in Section 2.1 and Section 2.2 (including the rightto sublicense under Section 2.3(a) above) to (i) any successor of any portion of the business ofthe Seller or an Affiliate of the Seller resulting from a reorganization, spin-off, sale, ordivestiture of such business; or (ii) any joint venture entity in which the Seller or any Affiliateof the Seller owns an equity interest (whether controlling or not); *provided, however*, that (1)effective immediately upon the grant of a sublicense by the Seller pursuant to this Section 2.3(b),the Seller and its Affiliates automatically shall have no further right to exercise any rights inthe Transferred Patents or the Transferred Non-Patent IP that were granted to the sublicenseepursuant to such sublicense, and the license rights granted to the Seller and its Affiliates shallbe deemed to exclude such sublicensed rights; (2) no such sublicensee shall have the right tofurther grant sublicenses pursuant to this Section 2.3(b); and (3) the Seller shall ensure that allsuch sublicensees are bound by an agreement containing terms and conditions no less protective ofthe Purchaser’s interests in the Transferred Patents and the Transferred Non-Patent IP than thoseset forth in Section 1.4 and Section 3. *By way of illustration*: if Seller
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**Confidential**chooses to grant a sublicense pursuant to this Section 2.3(b) to a joint venture entity inwhich the Seller owns an equity interest, and such sublicense covers a particular field of use,then the joint venture entity may exercise its sublicensed rights under the applicable TransferredPatents and the Transferred Non-Patent IP in that particular field of use, but neither the Sellernor its Affiliates shall have any further rights under the applicable Transferred Patents orTransferred Non-Patent IP in that same field of use.     **2.4 No Implied Licenses.**There are no implied licenses granted to the Transferred Patents orTransferred Non-Patent IP under this Agreement, and all rights to any of the foregoing that are notexpressly granted herein are reserved to the Purchaser.**3.****Confidentiality**     **3.1 Seller Confidential Information**. Subject to Section 3.3, the Seller may from time to timefurnish the Purchaser with information that it clearly marks as confidential or proprietary;further, the Purchaser acknowledges that the Licensed Patents (other than patents and patentapplications that are publicly available) and Licensed Non-Patent IP embody or contain valuabletrade secrets and other confidential and proprietary information of the Seller (such furnishedinformation along with the Licensed Patents and Licensed Non-Patent IP are collectively “SellerConfidential Information”). During the Confidentiality Period, the Purchaser will not use anySeller Confidential Information for any purpose not expressly permitted by this Agreement, and willdisclose the Seller Confidential Information only to its employees and permitted sublicensees whohave a need to know such Seller Confidential Information for purposes of this Agreement and who areunder a duty of confidentiality no less restrictive than the Purchaser’s duty hereunder.Notwithstanding the foregoing, the Purchaser may disclose the Seller Confidential Information toauthorized sublicensees that are distributors and customers of the Purchaser Products solely to theextent that such disclosure is reasonably necessary to facilitate the use and operation of thePurchaser Products by such distributors and customers. During the Confidentiality Period, thePurchaser will protect the Seller Confidential Information from unauthorized use, access, ordisclosure in the same manner as the Purchaser protects its own confidential or proprietaryinformation of a similar nature and with no less than reasonable care.     **3.2 Purchaser Confidential Information.**Subject to Section 3.3, the Purchaser may from timeto time furnish the Seller with information that it clearly marks as confidential or proprietary;further, the Seller acknowledges that the Transferred Patents (other than patents and patentapplications that are publicly available) and Transferred Non-Patent IP embody or contain valuabletrade secrets and other confidential and proprietary information of the Purchaser (such furnishedinformation along with the Transferred Patents, the Transferred Non-Patent IP, and the terms andconditions of this Agreement are collectively “Purchaser Confidential Information”).During the Confidentiality Period, the Seller will not use any Purchaser Confidential Informationfor any purpose not expressly permitted by this Agreement, and will disclose the PurchaserConfidential Information only to its employees and permitted sublicensees who have a need to knowsuch Purchaser Confidential Information for purposes of this Agreement and who are under a duty ofconfidentiality no less restrictive than the Seller’s duty hereunder. During the ConfidentialityPeriod, the Seller will protect the Purchaser Confidential Information from unauthorized use,access, or disclosure in the same manner as the Seller protects its own
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**Confidential**confidentialor proprietary information of a similar nature and with no less than reasonable care.     **3.3 Exceptions**. Each of the Purchaser’s and the Seller’s (a “Receiving Party’s”)obligations under Section 3.1 and Section 3.2, respectively, will terminate if and when theReceiving Party can document that the Seller Confidential Information or the Purchaser ConfidentialInformation, as applicable (the “Confidential Information”): (a) was already lawfully knownto the Receiving Party at the time of disclosure by the other Party, *provided however*, that thisprovision shall not apply to Seller’s knowledge related to the Transferred Patents and theTransferred Non-Patent IP; (b) was disclosed to the Receiving Party by a third party who had theright to make such disclosure without any confidentiality restrictions; (c) is, or through no faultof the Receiving Party has become, generally available to the public; or (d) was independentlydeveloped by the Receiving Party without access to, or use of, the other Party’s ConfidentialInformation. In addition, the Receiving Party will be allowed to disclose Confidential Informationof the other Party to the extent that such disclosure is (i) approved in writing by the otherParty, (ii) necessary for the Receiving Party to enforce its rights under this Agreement inconnection with a legal proceeding, provided that the Receiving Party shall, prior to disclosureand at its own expense, seek a protective order appropriate to preserve the other Party’s rights inthe confidential nature of the Confidential Information; or (iii) required by law or by the orderor a court of similar judicial or administrative body, provided that the Receiving Party notifiesthe other Party of such required disclosure promptly and in writing and cooperates with the otherParty, at the other Party’s reasonable request and expense, in any lawful action to secure aprotective order appropriate to preserve the other Party’s rights in the confidential nature of theConfidential Information or otherwise to contest or limit the scope of such required disclosure.**4.****Disclaimer of Warranties.**THE BUSINESS NON-PATENT IP, LICENSED PATENTS, ANDTRANSFERRED PATENTS ARE LICENSED UNDER THIS AGREEMENT “AS IS” AND WITHOUT WARRANTY OF ANY KIND.THE PARTIES MAKE NO REPRESENTATIONS OR WARRANTIES OF ANY KIND IN CONNECTION WITH THIS AGREEMENT ORANY BUSINESS NON-PATENT IP, LICENSED PATENTS, AND TRANSFERRED PATENTS, AND EACH PARTY DISCLAIMS THEIMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, ANDNONINFRINGEMENT. Without limiting the generality of the foregoing, nothing in this Agreementshould be construed as: (a) a warranty or representation by either Party as to the validity,enforceability, or scope of any of the Licensed Patents or Transferred Patents; (b) a warranty orrepresentation by either Party that any pending application included in the Licensed Patents orTransferred Patents will issue as a patent or that either Party will prosecute or maintain any ofthe Licensed Patents or Transferred Patents; (c) a warranty or representation by either Party thatusing, making, selling, offering for sale, or importing any product as permitted under thisAgreement will not infringe any patent of a third party; (d) a warranty or representation by eitherParty that it will enforce any Licensed Patent or Transferred Patent against a third party; or (e)an obligation by either Party to furnish any manufacturing or technical information to the otherParty to enable the other Party to practice the Licensed Patents or Transferred Patents.Notwithstanding the foregoing, nothing in this Section 4will operate to amend, modify,expand, limit, restrict, or otherwise affect any of the representations, warranties, andobligations set forth in the APA.
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**Confidential****5.****Limitation of Liability.**EXCEPT FOR BREACHES OF SECTION 3, IN NO EVENT WILL EITHERPARTY BE LIABLE FOR ANY CONSEQUENTIAL, EXEMPLARY, SPECIAL, INDIRECT, OR INCIDENTAL DAMAGES, OR ANYDAMAGES FOR LOST DATA OR LOST PROFITS, ARISING FROM OR RELATING TO THIS AGREEMENT, WHETHER INCONTRACT OR TORT OR OTHERWISE, EVEN IF SUCH PARTY KNEW OR SHOULD HAVE KNOWN OF THE POSSIBILITY OFSUCH DAMAGES. THE PARTIES ACKNOWLEDGE THAT THE TERMS OF THIS SECTION REFLECT THE ALLOCATION OFRISK SET FORTH IN THIS AGREEMENT AND THAT THE PARTIES WOULD NOT ENTER INTO THIS AGREEMENT WITHOUTTHESE LIMITATIONS OF LIABILITY. Notwithstanding the foregoing, nothing in this Section 5will operate to amend, modify, expand, limit, restrict, or otherwise affect any of therepresentations and warranties set forth in the APA; in particular, without limitation, nothing inthis Section 5 will operate to limit any of the representations, warranties, obligations, remedies,or amounts of indemnification available under the APA.**6.****Miscellaneous**     **6.1 Independent Contractors.**The Parties are and at all times will be and remain independentcontractors as to each other, and at no time will either Party be deemed to be the agent oremployee of the other. No joint venture, partnership, agency, or other relationship will becreated or implied as a result of this Agreement.     **6.2 Covenant not to Sue.**The Purchaser agrees that it will not, and will ensure that itsAffiliates do not, initiate a patent infringement lawsuit (or an administrative proceeding with theInternational Trade Commission) asserting any claim of any Purchaser Patent that Covers theBusiness Non-Patent IP against the Seller, any of its Affiliates, or any of their customers (director indirect), distributors (direct or indirect), agents (direct or indirect), or foundries orcontractors (direct or indirect) for the manufacture, use, import, offer for sale, sale, ordistribution of: (a) the Business Non-Patent IP as used in any product on or before the EffectiveDate; or (b) the Business Non-Patent IP as used in any product within the PCTV field of use orVideo Surveillance field of use after the Effective Date. For the avoidance of doubt, theforegoing covenant does not prevent Purchaser from initiating a patent infringement lawsuit basedupon claims of any Purchaser Patent that do not Cover the Business Non-Patent IP against any SellerProduct, or portions thereof. Notwithstanding the foregoing, however, in the event that the Sellerinitiates a patent infringement lawsuit (or an administrative proceeding with the InternationalTrade Commission) against the Purchaser or any of its Affiliates, the foregoing covenant shallbecome null and void and shall not affect the Purchaser’s right to assert any claim of anyPurchaser Patent or initiate a patent infringement lawsuit or commence an administrative proceedingwith the International Trade Commission against the Seller and its Affiliates. Notwithstandinganything to the contrary in this agreement, this covenant is not assignable.     **6.3 Governing Law.**This Agreement will be construed in accordance with, and governed in allrespects by, the laws of the State of New York (without giving effect to principles of conflicts oflaw).     **6.4 Notices.**Any notice or other communication required or permitted to be delivered toeither Party under this Agreement must be in writing and will be deemed properly
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**Confidential**delivered, given and received when delivered (by hand, by registered mail, by courier orexpress delivery service or by facsimile) to the address or facsimile telephone number set forthbeneath the name of such Party below (or to such other address or facsimile telephone number assuch Party shall have specified in a written notice given to the other Party):if to the Purchaser:NXP B.V.