EXHIBIT 10.6
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS
DENOTE OMISSIONS.
DEVELOPMENT, SUPPLY AND LICENSE AGREEMENT
This DEVELOPMENT SUPPLY AND LICENSE AGREEMENT ("Agreement") is made as
of the 17th day of June, 2002, by and between OASIS SEMICONDUCTOR INC.,
("Oasis"), a Delaware corporation, having its principal offices at
Waltham-Weston Corporate Center, ▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, and LEXMARK
INTERNATIONAL, INC., a corporation of the State of Delaware, having an office
for the transaction of business at ▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇
▇▇▇▇▇ (hereinafter referred to as "LII") and LEXMARK INTERNATIONAL TECHNOLOGY
S.A., a Swiss corporation, maintaining its principal business at World Trade
Center 11, 29 Route de Pre-Bois, ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇-▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇
(hereinafter referred to as "Lextech", with LII and Lextech collectively
referred to hereinafter as "Customer".)
WHEREAS, Oasis is in the business of developing and marketing
Application Specific Integrated Circuits (ASICs) for the office automation
market, and has developed image processor technology called DigiColor; and
WHEREAS, Customer is in the business of developing and marketing
printers, fax, multifunction and other machines and related technology and owns
related technology; and
WHEREAS, the parties desire to collaborate to accelerate the design,
and development of a DigiColor2 chip and associated software integrating Oasis's
technology and Customer's related technology and the parties desire to supply
and purchase chips respectively;
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, the parties agree as follows:
1. DEFINITIONS
For purposes of this Agreement, the following terms shall have the
respective meanings indicated:
1.1 CONTROL. The term "Control" shall mean the possession of the
ability to grant a license or sublicense as provided herein without violating
the terms of any agreement or other arrangement with, or the rights of, any
third party.
1.2 INVENTION. The term "Invention" means any discovery, improvement or
invention whether or not patentable, and all related know-how, designs, mask
works, formulae, processes, manufacturing techniques, trade secrets, ideas,
artwork, software or other copyrightable or patentable works.
1.3 CUSTOMER'S PRODUCTS. The tern "Customer's Products" shall mean any
printer, fax, multi-function, controller or other products developed and/or
marketed by or for Customer (whether now in existence or developed in the
future).
1.4 CUSTOMER TECHNOLOGY. The term "Customer Technology" shall mean the
Customer's related technology listed in EXHIBIT B ("Description of Related
Technology") or any other Invention developed, owned or Controlled by Customer
which Customer discloses to Oasis for use hereunder.
1.5 OASIS TECHNOLOGY. The term "Oasis Technology" shall mean any
Invention, which is developed, owned or Controlled by Oasis and becomes a part
of the DigiColor2 Chip and/or its design.
1.6 PROPRIETARY RIGHTS. The term "Proprietary Rights" shall mean all
patents, patent applications, mask works, copyrights, trade secrets, and know
how.
1.7 PURCHASE ORDERS. The term "Purchase Orders" shall have the meaning
assigned to it in Section 5.2.
1.8 DIGICOLOR2 CHIP. The term "DigiColor2 Chip" shall mean a chip,
including its associated firmware and software, manufactured based on the design
described in EXHIBIT A ("DigiColor2 Chip Effort") hereto, or any revision
thereof, with the characteristics and functionality as set forth in the
Specifications.
1.9 SPECIFICATIONS. The term "Specifications" shall mean the
engineering, operational and/or functional descriptions, details and
requirements for the DigiColor2 Chip as mutually designated and agreed by the
parties and as set forth on EXHIBIT A ("DigiColor2 Chip Effort") hereto.
1.10 OTHER DEFINITIONS; SCHEDULES. Certain other words and phrases are
defined or described elsewhere in this Agreement and/or the Exhibits and
Schedules hereto. Wherever used in this Agreement (a) the words "include" or
"including" shall be construed as incorporating, also, "but not limited to" or
"without limitation" and (b) the word "day" means a calendar day unless
otherwise specified. Unless the context otherwise requires, words in the
singular include the plural and vice versa. All Schedules hereto are hereby
incorporated herein and made a part hereof.
2. DEVELOPMENT
2.1 DEVELOPMENT EFFORT.
(a) OASIS' DEVELOPMENT EFFORT. Subject to the terms of this
Agreement, Oasis will, promptly [**] develop the DigiColor2 Chip according to
the Specifications as set forth in EXHIBIT A ("DigiColor2 Chip Effort"), by the
completion dates set forth therein or in Section 2.3. Oasis agrees to exercise
the highest degree of professionalism, and to utilize its expertise and creative
talents in completing such Development Effort. In completing the Development
Effort, Oasis agrees to provide its own equipment, tools and other materials at
its own expense. Oasis shall perform the services necessary to complete the
Development Effort in
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a timely and professional manner consistent with industry standards, and at a
location, place and time which Oasis deems appropriate.
(b) CUSTOMER'S DEVELOPMENT EFFORT. Subject to the terms of this
Agreement, Customer will, promptly designate and commit engineering resources
and Technology as reasonably requested by Oasis to assist in the development of
the DigiColor2 Chip as set forth in EXHIBIT A ("DigiColor2 Chip Effort").
2.2 DELIVERY AND ACCEPTANCE OF DIGICOLOR2 CHIP
(a) DELIVERY. Not later than the date(s) specified in Section 2.3,
Oasis shall deliver each item or element associated with each delivery milestone
to Customer's principal place of business so that Customer may determine if such
deliverables comply with the Specifications (the "Acceptance Criteria").
(b) ACCEPTANCE. Customer shall have a period of [**] from the date
Oasis completes delivery of the final deliverable milestone (the "Acceptance
Period") as set forth in Section 2.3 to determine if the DigiColor2 Chip
conforms to the Specifications. If Customer determines that the DigiColor2 Chip
does not conform to such Specifications, Customer shall notify Oasis in writing,
setting forth the discovered non-conformities, and with respect to software
non-conformities, Oasis shall have [**] from receipt of such notice to correct
the listed items, and with respect to chip non-conformities, Oasis shall have
[**] from receipt of such notice to correct the listed items (each period, being
referred to as a "Correction Period") and redeliver the corrected items. The
DigiColor2 Chip shall be deemed accepted upon Oasis' receipt of Customer's
written notice stating that such final design conforms to the Specifications, or
upon the expiration of the Acceptance Period without receipt of a notice of
non-conformities from Customer. If Oasis fails to make the necessary changes to
correct any listed non-conformity within the applicable Correction Period or
fails to deliver any portion of the listed deliverables within the times and
dates specified in the development schedule set forth in Section 2.3, then at
Customer's option, (i) the Correction Period or development schedule, as
applicable, may be extended as may be agreed by the parties or (ii) Customer may
terminate this Agreement in accordance with the provisions in Section 13.2(a)
("Termination for Cause").
2.3 DEVELOPMENT NRE. Customer will pay Oasis a total of $[**][**]
development of the DigiColor2 Hardware. In addition, Customer will pay Oasis
a total of $[**]development of the DigiColor2 firmware. The NRE payment
schedule and target delivery dates are as follows:
MILESTONE NRE DATE
--------- --- ----
[**] $[**] [**]
[**] $[**] [**]
[**] [**]
[**] [**]
[**] $[**] [**]
[**] [**]
[**] $[**] [**]
[**] $[**] [**]
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3. RELATION OF THE PARTIES.
3.1 INDEPENDENT CONTRACTOR. Customer and Oasis are and at all times
shall be and remain independent contractors as to each other, and at no time
shall either be deemed to be the agent of the other, and no joint venture,
partnership, agency or other relationship shall be created or implied as a
result of this Agreement. Except as expressly set forth in this Agreement, each
party shall bear full and sole responsibility for its own expenses, liabilities,
and costs of operation, and each party will be solely responsible for payment of
all compensation owed to its staff assigned to perform work under this Agreement
including payment, if any, of employment related taxes and Workers' Compensation
Insurance.
3.2 FREEDOM TO COMPETE. Nothing in this Agreement shall preclude either
party from independently performing research and development or marketing its
products, provided that such party complies with the terms of this Agreement.
Each party shall have the freedom to work independently with third parties in
the same field with no obligation to provide the by-product or results of such
development to the other party if not covered by the terms of this Agreement.
3.3 EMPLOYEES AND INDEPENDENT CONTRACTORS. Each party agrees that each
and every individual participating in the development effort contemplated by
this Agreement shall either be an employee or an independent contractor acting
under a valid and enforceable agreement pursuant to which such employee or
contractor is obligated to protect the confidential and proprietary information
of third parties and has assigned, or will assign, all Proprietary Rights and
Inventions developed during the term of such employment to such party.
4. PROPRIETARY RIGHTS AND LICENSES
4.1 RIGHTS IN CUSTOMER TECHNOLOGY.
(a) IDENTIFICATION OF CUSTOMER TECHNOLOGY. A list of the Customer
Technology which Customer intends Oasis to use in the performance of the
Development Effort pursuant to this Agreement is set forth in EXHIBIT B
("Description of Customer Technology") as may be updated from time to time by
Customer. In the event that Oasis subsequently elects to use Customer Technology
which is not listed in such Exhibit during the term of this Agreement, Oasis
shall give notice to Customer, and if Customer agrees to such use, EXHIBIT B
("Description of Customer Technology") will be amended to include such
additional Customer Technology.
(b) LICENSE OF CUSTOMER TECHNOLOGY. Subject to Oasis' compliance
with the terms and conditions of this Agreement, Customer hereby grants to Oasis
a non-exclusive, worldwide, fully paid, royalty-free license to use [**] the
Development Effort described herein. Customer further grants to Oasis a
non-exclusive, worldwide, fully paid, royalty-free license in the Customer
Technology only to make (or have made), sell (or have sold), solely as included
in the DigiColor2 Chip, provided that Oasis includes all proprietary rights and
notices (including but not limited to notice of patents, copyrights, and mask
works and restricted rights notices) on and in such Customer Technology as
reasonably requested by Customer.
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4.2 LICENSE OF THE DIGICOLOR2 CHIP. Oasis hereby grants to Customer a
non exclusive, worldwide, fully paid, royalty-free, perpetual and irrevocable
license [**] pursuant to this Agreement, [**] and to market, distribute and
resell the DigiColor2 Chips bundled, or for use with Customers' Products on a
worldwide basis, including through Value Added Reseller ("VAR") and Original
Equipment Manufacturer ("OEM") arrangements.
4.3 CONVEYANCE OF LICENSE ONLY. Customer shall retain all ownership and
title in the Customer Technology and Oasis shall retain all ownership and title
in the Oasis Technology. Except as stated herein, this Agreement does not grant
either party any rights to patents, mask works, copyrights, trade secrets, trade
names, trademarks (whether registered or unregistered), or any other rights,
franchises or license in respect to the other party's Inventions included in the
DigiColor2 Chip. Nothing in this Agreement is intended to create ownership by
Customer in the intellectual property rights of Oasis, nor of Oasis in the
intellectual property rights of Customer.
4.4 REPRESENTATIONS AND WARRANTIES. [**] makes the following
representations and warranties with respect to its Inventions included in the
DigiColor2 Chip (provided, however, that these representations and warranties do
not extend to the Inventions to the extent they may be modified by the other
party without the express written consent of the inventing party):
(i) OWNERSHIP. [**] owns or Controls, free and clear of
all liens, charges, claims and restrictions, its own
such Inventions.
(ii) INFRINGEMENT. [**] has received notice that it is
infringing upon or otherwise acting adversely to the
right or claimed right of any third party under or
with respect to its own Inventions. [**] is aware of
any potential claims that third parties may have
against it with respect to its own intellectual
property.
(iii) THIRD PARTY GRANTS. [**] has previously granted any
rights to any third party which conflict with, or in
any other way encumber its right to use or grant the
licenses to the other party hereunder, with respect to
its own Inventions.
4.5 ESCROW PROVISION. Oasis shall deposit the source code of the
DigiColor2 Chip firmware (the "Source Code") in an escrow account with DSI
Technology Escrow Services ("DSI") within 30 days of the effective date of this
Agreement, pursuant to a Master Preferred Escrow Agreement in substantially the
form of EXHIBIT C to this Agreement, for an annual fee of the greater of $5000
or the actual amount charged by DSI for the escrow (allocated among
beneficiaries if more than one), for so long as such escrow account shall remain
in effect (pro rated for any final partial year), but no longer than the term of
this Agreement. Notwithstanding any language to the contrary contained in the
Escrow Agreement among Oasis, Customer and DSI, only the below listed Triggering
Events shall entitle Customer to a copy of the Source Code: Oasis becomes unable
to pay its debts as such debts become due and payable for a period in excess of
ninety (90) days, or shall admit in writing its inability to pay its debts
generally, or shall make a general assignment for the benefit of creditors, or
if any proceeding shall be brought by or against Oasis and not dismissed within
90 days, seeking to adjudicate it bankrupt or insolvent or seeking liquidation,
winding up, reorganization, arrangement, protection or relief
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under any law relating to bankruptcy, insolvency, reorganization, relief of
debtors, or seeking the appointment of a receiver or trustee under any federal
or state law.
Upon the occurrence of a Triggering Event, Customer shall have a non-exclusive,
non-transferable, non-assignable, perpetual, royalty-free, worldwide license to
use and modify the Source Code for the sole purposes of support or enhancement
of Customer products that use the Oasis DigiColor family of chips. Oasis agrees
to update such deposit of Source Code whenever it makes a new update of the
Source Code and makes the associated compiled firmware available to Lexmark as a
general firmware release, but not more frequently than every month. This section
4.5 shall survive termination of this Agreement.
5. PURCHASES; SALES
5.1 PURCHASES. Subject to the provisions of this Agreement, Oasis
agrees to sell and deliver to Customer the DigiColor2 Chips. Oasis agrees to use
its commercial best efforts to satisfy Customer's production volume
requirements, referenced in Section 8.1 (Purchasing Forecast) for the DigiColor2
Chips.
5.2 PURCHASE ORDERS. Customer shall place written orders ("Purchase
Orders") for units of DigiColor2 Chips in accordance with the terms and
conditions of this Agreement. Without limitation to the obligation of Oasis to
sell to Customer hereunder, orders will be effective upon acceptance thereof by
delivery of Oasis' order acknowledgement, such acceptance not to be unreasonably
withheld. The Oasis Order Acknowledgement will assign re-scheduled delivery
dates for all quantities that can not be met by Oasis from the customer's
requested delivery dates. Each Purchase Order shall be deemed to incorporate the
terms and conditions of this Agreement. All Purchase Orders shall be governed
exclusively by the terms and conditions of this Agreement, and any terms or
provisions on Customer's Purchase Order forms, or on any of Oasis'
acknowledgments thereof that are inconsistent with those contained in this
Agreement shall have no force or effect whatsoever as between the parties
hereto. Neither Oasis' commencement of performance nor delivery shall be deemed
or construed as acceptance of Customer's additional or different terms and
conditions; and Customer's acceptance of delivery shall not be deemed or
construed as acceptance of Oasis' additional or different terms and conditions.
Purchase Orders may be sent by facsimile transmission or other electronic media
approved by Customer and Oasis and shall specify: (a) that the Purchase Order is
being placed under this Agreement, (b) Customer's Purchase Order number, (c)
product number and description, (d) ordered quantities, (e) purchase price; (f)
tax status, including exemption certificate number, if applicable, (g) customer
requested delivery dates, (h) preferred shipping method, if any, and (i) "▇▇▇▇
to" and "ship to" addresses.
5.3 LEAD TIMES. Scheduled delivery dates in Customer's Purchase Orders
for DigiColor2 Chips purchased hereunder shall be no sooner than [**] after the
date of issuance of a Purchase Order therefor; provided, however, that Oasis
shall [**] meet shorter lead times (earlier delivery dates) if requested in
writing by Customer.
5.4 CANCELLATION; RESCHEDULING. Customer may cancel or reschedule all
or a portion of the DigiColor2 Chips to be purchased under any Purchase Order at
no charge (and with no
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penalty) by giving notice of such cancellation or rescheduling to Oasis in
accordance with the following schedules:
Interval Between Notice Date Percentage of Purchase Order Quantity
and Scheduled Shipment Date that May be Cancelled or Rescheduled
--------------------------- ------------------------------------
[**] days [**]%
[**] days [**]%
[**] days [**]%
5.5 OEM PURCHASE AND SALES. To support Customer's OEM customers who
order DigiColor2 Chips directly from Oasis, Oasis shall issue non-cancelable POs
to Customer for the purchase of DigiColor2 Chips at $[**] each and in quantities
appropriate to fulfill orders from Customer's OEM customers; provided, however,
that if Customer fails to issue its PO as described in the following sentence,
Oasis' PO shall be deemed automatically canceled. Within 15 days of Lexmark's
receipt of such PO from Oasis, Customer will issue a PO to Oasis for the
purchase of DigiColor2 Chips at $[**] each in quantities sufficient to at least
satisfy the corresponding Oasis PO. In no event, however, shall Customer be held
financially liable for such OEM orders.
5.6 [**]PURCHASE AND SALES. Customer may [**] working to produce
Customer's branded products or Customer's branded product re-labeled for OEM
sales, that may purchase DigiColor2 Chips under the same conditions (Sections 4,
5, 6 and 7) as Customer. Such [**] conditions with Oasis. In either case, all
purchases intended for Customer's branded products or Customer's branded product
re-labeled for OEM sales shall be combined for the purposes of determining
volume discounts (section 7.1) regardless of the actual purchasers. In no event,
however, shall Customer be held financially liable for such purchases.
6. DELIVERY
6.1 DELIVERY TERMS. Oasis shall pack the DigiColor2 Chips for shipment
and shall externally label each package to indicate the description and quantity
contained therein. Risk of loss of the DigiColor2 Chips shall pass from Oasis to
Customer upon delivery of the DigiColor2 Chips to the FOB point, which shall be
FOB Boston, MA, U.S.A. (FOB meaning FOB according to "IncoTerms" as last
published by the International Chamber of Commerce). Oasis will ship in
accordance with Customer's shipping instructions. In the absence of specific
instructions, Oasis reserves the right to ship by the commercially appropriate
methods. Customer shall be responsible for all freight, handling, insurance and
other transportation charges from the FOB point. Without prejudice, Oasis waives
in favor of Customer its rights to claims for any damage to the DigiColor2 Chips
shipped; Customer shall make all claims for any damage directly to the freight
or insurance carrier.
6.2 DELIVERY DELAYS. Oasis shall [**] deliver DigiColor2 Chips to
Customer on or prior to the Oasis scheduled delivery date specified on Oasis'
Order Acknowledgments. In the event that Oasis is unable to deliver any
DigiColor2 Chips within [**] after the Oasis scheduled delivery date, without
limitation to any other rights or remedy Customer may have under law or this
Agreement, Customer shall have the right to cancel that portion of the Purchase
Order relating to the delayed DigiColor2 Chips at no charge (and with no
penalty) upon written notice
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to Oasis. In the event that Customer does not exercise its cancellation rights
with respect to any DigiColor2 Chips pursuant to this Section 6.2, Oasis shall
deliver such to Customer and Customer shall be obligated to purchase such
products on the terms specified in this Agreement.
6.3 ACCEPTANCE BY CUSTOMER. Customer shall have [**] following receipt
of the DigiColor2 Chips in which to notify Oasis of any discrepancies as to
number, type and condition of DigiColor2 Chips with respect thereto. Oasis will
promptly correct such discrepancies after being so notified.
7. PRICE; PAYMENT
7.1 PRICES. Customer may purchase DigiColor2 Chips in quantities of
[**] units or greater at the following prices:
Price Per Chip (for Order Aggregate Number of Chips Purchased
of [**] or more) Since Effective Date of this Agreement
---------------- --------------------------------------
$[**] [**] units.
$[**] [**] units.
$[**] [**] and above units.
Customer may purchase DigiColor2 Chips in quantities of less than [**] units per
order at a price of $[**] per Chip. All prices are in United States Dollars.
7.2 TAXES. All United States federal and state taxes based upon
Customer's use, sale, license or possession of the DigiColor2 Chips, other than
income or franchise taxes payable by Oasis, will be borne and paid by Customer.
Oasis agrees to furnish any documents to taxing authorities if requested to do
so by Customer.
7.3 PAYMENT. Customer shall pay Oasis for all DigiColor2 Chips
purchased hereunder within [**] End-of-Month of receipt of the shipment of such
DigiColor2 Chips by Customer. All payments due hereunder shall be made by
Customer in United States Dollars in the form, at the option of Customer, of
cash, check, wire transfer or such other means as may be agreed upon between the
parties. Past due balances shall be subject to an interest charge of one and
one-half percent per month computed from the payment due date, or the maximum
rate legally permitted, whichever is less. [**] purchasing under the terms of
this agreement will need to meet reasonable and commercially customary credit
approvals from Oasis.
7.4 CUSTOMER TO DETERMINE ITS OWN RESALE PRICES. Customer shall at all
times be free to determine its own prices for its sale and license of the
Customer's Products.
8. FORECASTS; ORDER SIZE
8.1 PURCHASING FORECASTS. Customer shall provide Oasis with non-binding
[**] rolling forecasts of Customer's purchases of DigiColor2 Chips [**] in
advance of such [**] period updated on a monthly basis. Customer shall include
in such forecasts any purchases by Customer's VAR and OEM customers that are
purchasing DigiColor2 Chips from Customer.
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9. WARRANTY
9.1 WARRANTY. Oasis warrants to Customer that all DigiColor2 Chips sold
pursuant to this Agreement shall substantially conform to the Specifications,
shall function in accordance therewith and shall be free from defects in
materials and workmanship for a period of [**] following delivery thereof to
Customer. Oasis further warrants that, to its knowledge, the DigiColor2 chips,
and all of the components and parts thereof, do not infringe any patent right,
trademark right, copyright, mask work right, trade secret or other intellectual
property right of any third party.
9.2 EPIDEMIC WARRANTY. In addition to the provisions of Section 9.1,
Oasis warrants for the benefit of Customer, and covenants, that Oasis will
replace (pursuant to the terms of Section 9.3), at Oasis' expense, Defective
DigiColor2 Chips (as defined below) for a period of [**] following delivery
thereof to Customer. "Defective DigiColor2 Chips" shall be defined as limited to
DigiColor2 Chips that fail to substantially conform to the Specifications, or
function properly or in accordance therewith, provided that such failure, or any
combination of such failures, occurs in more than 0.2 percent (0.2%) of such
DigiColor2 Chips in any lot or batch delivered to Customer.
9.3 REMEDY. Subject to the limitations set forth in this Section 9,
upon discovery of any defect in material or workmanship or failure of any
DigiColor2 Chips to substantially conform to the Specifications, or function in
accordance therewith, pursuant to this Section 9, Customer shall promptly
contact Oasis, and Oasis shall promptly repair or replace such DigiColor2 Chips
at Oasis' expense or credit Customer's account with an amount equal to the price
paid for such DigiColor2 Chips. Oasis shall be responsible for all freight and
insurance charges associated with any such replacement. If Oasis' inspection
discloses that the returned DigiColor2 Chips are not defective within the terms
of the warranty provided by this Section 9, then Customer shall pay such freight
and insurance charges associated with such replacement. Oasis shall not be
liable under any warranty set forth in this Section 9 with respect to any
DigiColor2 Chips that fail to substantially conform to the Specifications or
function properly or in accordance therewith if, and to the extent, such failure
would have been avoided but for misuse, neglect, alteration, repair, improper
installation or improper testing of the DigiColor2 Chips by Customer or
Customer's subcontractors, manufacturing partners or other parties who purchase
the DigiColor2 Chips directly from Oasis pursuant to Section 5.6. Oasis shall
not be liable hereunder for any labor or other costs incurred by Customer
related to the removal of any DigiColor2 Chip permanently affixed to any printed
circuit board.
9.4 DISCLAIMER OF OTHER WARRANTIES. THE WARRANTY SET FORTH IN THIS
SECTION 9 AND IN SECTION 4 ARE THE ONLY WARRANTIES, EXPRESS OR IMPLIED, THAT
EITHER PARTY MAKES WITH RESPECT TO THE DIGICOLOR2 CHIPS OR ITS INVENTIONS.
EXCEPT AS EXPRESSLY PROVIDED IN THIS SECTION 9 AND SECTION 4, ALL WARRANTIES,
WHETHER EXPRESS OR IMPLIED, ARISING BY LAW, CUSTOM, PRIOR ORAL OR WRITTEN
STATEMENTS BY THE PARTIES OR OTHERWISE (INCLUDING, BUT NOT LIMITED TO, ANY
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR OF
UNINTERRUPTED USE) ARE HEREBY OVERRIDDEN, EXCLUDED AND DISCLAIMED. [**]
acknowledges that [**] are responsible for product testing and quality
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assurance, and accordingly, (i) that [**] does not warrant that any of [**]
products meet any particular product specifications or functionality, and (ii)
that [**] is responsible for ensuring that the [**] deliverables under this
Agreement meet [**] expectations before beginning production.
9.5 LIMITATION OF LIABILITY. The maximum aggregate liability of Oasis
[**] under this Agreement (other than those arising under Section 12 hereof) or
otherwise shall be [**]% of the amounts paid by Customer and Customer's OEM
customers to Oasis under this Agreement [**].
10. SUPPORT
10.1 INTEGRATION SUPPORT PROVIDED BY OASIS. Oasis shall provide
reasonable assistance to Customer in support of Customer's efforts and to
expedite Customer's use of the DigiColor2 Chips in Customer's Products.
10.2 ENHANCEMENTS. Notwithstanding anything to the contrary contained
elsewhere in this Agreement, the definition of DigiColor2 Chip shall include any
and all improvements, bug fixes, patches, corrections, updates, modifications,
additions and new releases of the DigiColor2 Chip which Oasis develops or makes
available to its other licensees (any and all of the foregoing, the
"Enhancements") prior to the expiration of this Agreement.
11. CONFIDENTIALITY
Confidentiality will be in accordance with Customer's Confidential Exchange
Agreement No. 1453 jointly signed by Oasis and Customer, and such agreement is
incorporated herein by reference.
12. INDEMNITY
12.1 INDEMNITY. Oasis agrees, at Oasis' sole expense, to indemnify,
defend and hold Customer harmless from and against any claim, suit or proceeding
alleging that any of the DigiColor2 Chips, or any components or parts thereof,
other than the Customer Technology incorporated therein, infringes any patent
right, trademark right, copyright, mask work right, trade secret or other
intellectual property right of any third party, provided that Customer (a) gives
Oasis prompt notice of any such claim, suit or proceeding, (b) permits Oasis,
through counsel of its choice, to answer the charge of infringement and defend
or settle such claim, suit or proceeding and (c) provides Oasis with reasonable
cooperation and assistance as Oasis may request in the defense of such claim,
suit or proceeding.
12.2 LIMITATION. Oasis shall have no liability under this Section 12
for any claim of infringement if, and to the extent, such infringement arises
out of (a) any modification to the DigiColor2 Chips by Customer, if such
infringement would have been avoided by the use of the DigiColor2 Chips without
such modification or (b) any combination of the DigiColor2 Chips with hardware
or software not supplied by Oasis, unless (i) such infringement would have been
avoided by substituting for the DigiColor2 Chips another commercially available
product capable of performing substantially the same function as the DigiColor2
Chips, or (ii) Oasis's delivery to Customer of such DigiColor2 Chips constitutes
contributory infringement; or (c) any intellectual property supplied by
Customer.
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12.3 REMEDIATION. In the event that any of the DigiColor2 Chips, or any
components or parts thereof, is found by a proper court to be infringing of any
intellectual property rights of any third party, without limitation to its
obligations under Section 12.1, Oasis may, at its option and expense, within
thirty (30) days: (a) procure for Customer and its customers the right to use
such DigiColor2 Chips (with any royalties or other payments required to obtain
such rights to be born by Oasis) or (b) replace or modify such DigiColor2 Chips
so as to be non infringing (provided that such replacement or modified
DigiColor2 Chips are functionally and commercially equivalent). In the event
that a product feature required by Customer is found to be infringing on a
Blocking Patent (a patent that prevents the feature regardless of the detailed
implementation) then Oasis and Customer will work together to eliminate the
infringing feature.
12.4 EXCLUSIVE REMEDY. This Section 12 sets forth the sole obligations
of Oasis and the exclusive remedies of Customer under this Agreement for any
alleged infringement by the DigiColor2 Chips of the intellectual property rights
of any third party.
13. TERM; TERMINATION
13.1 TERM; RENEWAL. The term of this Agreement shall commence upon the
date first written above and shall continue, unless terminated in accordance
with the terms hereof, for a period of five (5) years, after which this
Agreement shall be renewable by written agreement of the parties. Except as
expressly set forth, this Agreement may not be terminated by either party hereto
except in accordance with this Section 13 and Section 2.2 above.
13.2 TERMINATION FOR CAUSE.
(a) Either party hereto may terminate this Agreement for any
material breach of this Agreement by the other party hereto upon 30 days written
notice to the breaching party. Such notice shall identify with particularity the
alleged breach. If the breaching party shall not cure the breach within such
30-day period, this Agreement shall automatically terminate.
(b) Either party hereto may terminate this Agreement upon written
notice to the other party hereto in the event a petition for relief under any
bankruptcy law or legislation is filed by or against such other party, or such
other party makes an assignment for the benefit of creditors or a receiver is
appointed for all or a substantial portion of such other party's assets, and
such petition, assignment or appointment is not dismissed or vacated within
thirty (30) days.
(c) In the event of extraordinary circumstances, Customer may
terminate this agreement. Limited to the amounts listed in Section 2.3, Oasis
shall keep NRE received to date and may ▇▇▇▇ Customer for time and materials
over and above NRE received to date.
13.3 RIGHTS UPON TERMINATION OR EXPIRATION. Notwithstanding any
termination or expiration of this Agreement for any reason whatsoever, Customer
shall have the continuing right to purchase units of the DigiColor2 Chips, and,
so long as Customer pays the fees set forth in this Agreement, Customer shall
have the continuing right to sublicense such rights to its third party
manufacturers. The terms and conditions of this Agreement shall apply to such
manufacture, marketing and distribution as though this Agreement were still in
force. Upon expiration of this Agreement or in the event this Agreement is
terminated by Customer for any breach by Oasis, Oasis shall fulfill all Purchase
Orders received by Oasis from Customer prior to
11
such expiration or termination and Customer shall pay for all DigiColor2 Chips
delivered thereunder, notwithstanding such expiration or termination. The terms
and conditions of this Agreement shall apply to such Purchase Orders and the
DigiColor2 Chips purchased thereby as though this Agreement were still in force.
13.4 SURVIVAL. Sections 4, 9, 10, 11, 12 and the relevant provisions of
Section 15 shall survive the expiration or any termination of this Agreement for
any reason whatsoever.
14. NOTICES
All notices required hereunder shall be in writing and shall be given
by personal delivery, by recognized overnight courier service, by confirmed
facsimile or by mail (certified or registered, postage prepaid, return receipt
requested) to the parties at their respective addresses as set forth below, or
to any party hereto at such other addresses as shall be specified in writing by
such party to the other parties in accordance with the terms and conditions of
this Section 14. All notices shall be deemed effective upon personal delivery or
sending of confirmed facsimile, or five (5) days following deposit in the mail
in accordance with this Section 14, or one (1) business day following deposit
with any recognized overnight courier service in accordance with this Section
14.
For notice to Oasis:
▇▇▇▇ ▇▇▇▇▇
Oasis Semiconductor, Inc.
Waltham-Weston Corporate Center
▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Email: ▇▇▇▇▇@▇▇▇▇▇▇▇▇▇.▇▇▇
-------------------
Phone: ▇▇▇-▇▇▇-▇▇▇▇
Fax number: ▇▇▇-▇▇▇-▇▇▇▇
For notice to Customer:
▇▇▇▇ ▇▇▇▇▇▇
Lexmark International, Inc.
▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Email: ▇▇▇▇▇▇▇@▇▇▇▇▇▇▇.▇▇▇
-------------------
Phone: ▇▇▇-▇▇▇-▇▇▇▇
Fax number: ▇▇▇-▇▇▇-▇▇▇▇
15. MISCELLANEOUS
15.1 ENTIRE AGREEMENT. This Agreement constitutes the entire
understanding and agreement between the parties hereto and supersedes any and
all prior or contemporaneous representations, understandings and agreements
between the parties with respect to the subject matter hereof.
12
15.2 AMENDMENTS. All amendments or modifications of this Agreement
shall be binding upon the parties despite any lack of consideration so long as
the same shall be in writing and executed by both parties hereto.
15.3 ASSIGNMENT; SUCCESSORS. [**] may assign this Agreement [**];
provided, however, that [**], assign this Agreement and its rights and
obligations hereunder to any successor in interest to it in connection with any
sale or transfer of all or substantially all of its assets or upon any merger,
consolidation or dissolution. This Agreement shall be binding upon and inure to
the benefit of each of the parties hereto and their respective legal successors
and permitted assigns.
15.4 WAIVER. No waiver of any provision of this Agreement shall be
effective, except pursuant to a written instrument signed by the party or
parties hereto waiving compliance, and any such waiver shall be effective only
in the specific instance and for the specific purpose stated in such writing.
15.5 SEVERABILITY OF PROVISIONS. In the event that any provision hereof
is found invalid or unenforceable pursuant to judicial decree or decision, the
remainder of this Agreement shall remain valid and enforceable according to its
terms.
15.6 CHOICE OF LAW. This Agreement shall be governed by the laws of the
State of Delaware, irrespective of its choice of law rules.
15.7 HEADINGS. The headings and titles used in this Agreement are for
convenience only and are not to be considered in construing or interpreting this
Agreement.
15.8 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original and all of which
together shall constitute one and the same instrument.
15.9 FOREIGN RESHIPMENT LIABILITY. THIS AGREEMENT IS EXPRESSLY MADE
SUBJECT TO ANY LAWS, REGULATIONS, ORDERS OR OTHER RESTRICTIONS ON THE EXPORT
FROM THE UNITED STATES OF AMERICA OF ANY INVENTION, DIGICOLOR2 CHIPS
INCORPORATING SUCH INVENTION OR OF INFORMATION ABOUT ANY INVENTION OR SUCH
DIGICOLOR2 CHIPS THAT MAY BE IMPOSED FROM TIME TO TIME BY THE GOVERNMENT OF THE
UNITED STATES OF AMERICA. NOTWITHSTANDING ANYTHING CONTAINED IN THIS AGREEMENT
TO THE CONTRARY, NEITHER PARTY SHALL EXPORT OR REEXPORT, DIRECTLY OR INDIRECTLY,
ANY INVENTION, DIGICOLOR2 CHIPS INCORPORATING SUCH INVENTION OR OF INFORMATION
PERTAINING THERETO TO ANY COUNTRY FOR WHICH SUCH GOVERNMENT TO ANY AGENCY
THEREOF REQUIRES AN EXPORT LICENSE OR OTHER GOVERNMENTAL APPROVAL AT THE TIME OF
EXPORT OR REEXPORT WITHOUT FIRST OBTAINING SUCH LICENSE OR APPROVAL.
15.10 FORCE MAJEURE. Neither party shall be responsible or liable to
the other party for nonperformance or delay in performance of any terms or
conditions of this Agreement due to acts of God, acts of governments, wars,
riots, or other causes beyond the reasonable control of the non-performing or
delayed party, provided, however, that nonperformance or delay in excess
13
of one hundred eighty (180) days shall constitute cause for termination of this
Agreement by the party not failing to perform pursuant to Section 13.2 above.
15.11 NO CONSEQUENTIAL DAMAGES. [**], IN NO EVENT SHALL EITHER OASIS OR
CUSTOMER BE LIABLE FOR ANY CONSEQUENTIAL, INDIRECT, PUNITIVE, SPECIAL OR
INCIDENTAL DAMAGES, WHETHER FORESEEABLE OR UNFORESEEABLE, BASED ON CLAIMS OF THE
OTHER PARTY OR ITS CUSTOMERS (INCLUDING, BUT NOT LIMITED TO, CLAIMS FOR LOSS OF
GOOD WILL, PROFITS, INVESTMENTS, USE OF MONEY OR USE OF DIGICOLOR2 CHIPS,
INTERRUPTION IN USE, STOPPAGE OF OTHER WORK OR IMPAIRMENT OF OTHER ASSETS, OR
LABOR CLAIMS), ARISING OUT OF BREACH OF EXPRESSED OR IMPLIED WARRANTY, BREACH OF
CONTRACT, MISREPRESENTATION, NEGLIGENCE, STRICT LIABILITY IN TORT OR OTHERWISE.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first set forth above.
LEXMARK INTERNATIONAL, INC. OASIS SEMICONDUCTOR INC.
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇
---------------------------- --------------------------
Name: ▇▇▇▇ ▇▇▇▇▇▇ Name: ▇▇▇▇ ▇. ▇▇▇▇▇
Title: Supply Base Manager Title: President
Date: 5/29/02 Date: 6/07/02
LEXMARK INTERNATIONAL TECHNOLOGY, S.A.
By: /s/ L. Giannicam
----------------------------
Name: L. Giannican
Title: Managing Director
Date: 6/17/02
14
EXHIBIT A
DIGICOLOR2 CHIP EFFORT
DIGICOLOR2 TASK LIST:
-------------------------------------------------------------------------------
[**]
DIGICOLOR 2 DESCRIPTION:
[insert DigiColor2_description.pdf dated 6/4/01 here]
15
DEVELOPMENT SCHEDULE:
TASK DATE
---- ----
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
[**] [**]
16
EXHIBIT B
DESCRIPTION OF CUSTOMER TECHNOLOGY
SIX MONTH EXCLUSIVE TECHNOLOGY
Six Month Exclusive Technology is Customer Technology provided to Oasis for
inclusion in the DigiColor2 ASIC that is exclusive for Customer's use for six
month after DigiColor2's start of production.
o None
OTHER TECHNOLOGY
Other Technology is Customer Technology provided to Oasis for inclusion in the
DigiColor2 ASIC.
o Technology disclosed in descriptions, specs, code, and hardware regarding
Customer print heads and other mechanisms, including:
[**]
17
EXHIBIT C
MASTER PREFERRED ESCROW AGREEMENT
Master Number _________________
This agreement "Agreement" is effective _______________, 20__ among DSI
Technology Escrow Services, Inc. ("DSI"), ______________________________________
("Depositor") and any additional party signing the Acceptance Form attached to
this Agreement ("Preferred Beneficiary"), who collectively may be referred to in
this Agreement as the parties ("Parties").
A. Depositor and Preferred Beneficiary have entered into a Development,
Supply and License Agreement dated as of ______________, 2002 regarding
certain proprietary technology of Depositor (referred to in this
Agreement as "the License Agreement").
B. Depositor desires to avoid disclosure of its proprietary technology
except under certain limited circumstances.
C. The availability of the proprietary technology of Depositor is critical
to Preferred Beneficiary in the conduct of its business and, therefore,
Preferred Beneficiary needs access to the proprietary technology under
certain limited circumstances.
D. Depositor and Preferred Beneficiary desire to establish an escrow with
DSI to provide for the retention, administration and controlled access
of certain proprietary technology materials of Depositor.
E. The parties desire this Agreement to be supplementary to the License
Agreement pursuant to ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ [Bankruptcy] Code, Section
365(n).
ARTICLE 1--DEPOSITS
1.1 OBLIGATION TO MAKE DEPOSIT. Upon the signing of this Agreement by the
parties, including the signing of the Acceptance Form, and Exhibit D
naming the Deposit Account, Depositor shall deliver to DSI the
proprietary technology and other materials ("Deposit Materials")
required to be deposited by the License Agreement or, if the License
Agreement does not identify the materials to be deposited with DSI,
then such materials will be identified on Exhibit A. If Exhibit A is
applicable, it is to be prepared and signed by Depositor and Preferred
Beneficiary. DSI shall have no obligation with respect to the
preparation, signing or delivery of Exhibit A.
1.2 IDENTIFICATION OF TANGIBLE MEDIA. Prior to the delivery of the Deposit
Materials to DSI, Depositor shall conspicuously label for
identification each document, magnetic tape, disk, or other tangible
media upon which the Deposit Materials are written or stored.
Additionally, Depositor shall complete Exhibit B to this Agreement by
listing each such tangible media by the item label description, the
type of media and the quantity. Exhibit B shall be signed by Depositor
and delivered to DSI with the Deposit Materials. Unless and until
Depositor makes the initial deposit with DSI, DSI shall have no
obligation with
18
respect to this Agreement, except the obligation to notify the parties
regarding the status of the account as required in Section 2.2 below.
1.3 ESCROW ACCOUNT NAME IDENTIFICATION. Subject to this Article 1, and at
the time Depositor makes the initial deposit with DSI in accordance
with Section 1.2 above, Depositor shall complete and sign Exhibit D
naming the initial account upon which the Deposit Materials are written
or stored. Any new deposits referencing new account names made
subsequent to the signing of this Agreement, intended by the Depositor
to be held in a separate account and maintained separately from the
initial account, but made a part of this Agreement, shall be provided
for by the Depositor on Exhibit E, and Exhibit E shall be signed by the
Depositor and DSI.
1.4 DEPOSIT INSPECTION. When DSI receives the Deposit Materials and Exhibit
B, DSI will conduct a deposit inspection by visually matching the
labeling of the tangible media containing the Deposit Materials to the
item descriptions and quantity listed on Exhibit B. In addition to the
deposit inspection, Preferred Beneficiary may elect to cause a
verification of the Deposit Materials in accordance with Section 1.6
below.
1.5 ACCEPTANCE OF DEPOSIT. At completion of the deposit inspection, if DSI
determines that the labeling of the tangible media matches the item
descriptions and quantity on Exhibit B, DSI will date and sign Exhibit
B and mail a copy thereof to Depositor and Preferred Beneficiary. If
DSI determines that the labeling does not match the item descriptions
or quantity on Exhibit B, DSI will (a) note the discrepancies in
writing on Exhibit B; (b) date and sign Exhibit B with the exceptions
noted; and (c) mail a copy of Exhibit B to Depositor and Preferred
Beneficiary. DSI's acceptance of the deposit occurs upon the signing of
Exhibit B by DSI. Delivery of the signed Exhibit B to Preferred
Beneficiary is Preferred Beneficiary's notice that the Deposit
Materials have been received and accepted by DSI.
1.6 DEPOSITOR'S REPRESENTATIONS. Depositor represents as follows:
a. Depositor lawfully possesses all of the Deposit Materials
deposited with DSI;
b. With respect to all of the Deposit Materials, Depositor has
the right and authority to grant to DSI and Preferred
Beneficiary the rights as provided in this Agreement;
c. The Deposit Materials are not subject to any lien or other
encumbrance;
d. The Deposit Materials consist of the proprietary technology
and other materials identified either in the License Agreement
or Exhibit A, as the case may be; and
e. The Deposit Materials are readable and useable in their
current form or, if any portion of the Deposit Materials is
encrypted, the decryption tools and decryption keys have also
been deposited.
1.7 VERIFICATION. Preferred Beneficiary shall have the right, at Preferred
Beneficiary's expense, to cause a verification of any Deposit
Materials. Preferred Beneficiary shall
19
notify Depositor and DSI of Preferred Beneficiary's request for
verification. Depositor shall have the right to be present at the
verification. A verification determines, in different levels of detail,
the accuracy, completeness, sufficiency and quality of the Deposit
Materials. If a verification is elected, then only DSI, or at DSI's
election an independent person or company selected and supervised by
DSI, may perform the verification.
1.8 DEPOSIT UPDATES. Unless otherwise provided by the License Agreement,
Depositor shall update the Deposit Materials within 60 days of each
release of a new version of the product which is subject to the License
Agreement. Such updates will be added to the existing deposit. All
deposit updates shall be listed on a new Exhibit B and the new Exhibit
B shall be signed by Depositor. Each Exhibit B will be held and
maintained separately within the escrow account. An independent record
will be created which will document the activity for each Exhibit B.
The processing of all deposit updates shall be in accordance with
Sections 1.2 through 1.6 above. All references in this Agreement to the
Deposit Materials shall include the initial Deposit Materials and any
updates.
1.9 REMOVAL OF DEPOSIT MATERIALS. The Deposit Materials may be removed
and/or exchanged only on written instructions signed by Depositor and
Preferred Beneficiary, or as otherwise provided in this Agreement.
ARTICLE 2--CONFIDENTIALITY AND RECORD KEEPING
2.1 CONFIDENTIALITY. DSI shall maintain the Deposit Materials in a secure,
environmentally safe, locked facility which is accessible only to
authorized representatives of DSI. DSI shall have the obligation to
reasonably protect the confidentiality of the Deposit Materials. Except
as provided in this Agreement, DSI shall not disclose, transfer, make
available, or use the Deposit Materials. DSI shall not disclose the
contents of this Agreement to any third party. If DSI receives a
subpoena or any other order from a court or other judicial tribunal
pertaining to the disclosure or release of the Deposit Materials, DSI
will immediately notify the parties to this Agreement unless prohibited
by law. It shall be the responsibility of Depositor and/or Preferred
Beneficiary to challenge any such order; PROVIDED HOWEVER, that DSI
does not waive its rights to present its position with respect to any
such order. DSI will not be required to disobey any order from a court
or other judicial tribunal. (See Section 7.5 below for notices of
requested orders.)
2.2 STATUS REPORTS. DSI will issue to Depositor and Preferred Beneficiary a
report profiling the account history at least semi-annually. DSI may
provide copies of the account history pertaining to this Agreement upon
the request of any party to this Agreement.
2.3 AUDIT RIGHTS. During the term of this Agreement, Depositor and
Preferred Beneficiary shall each have the right to inspect the written
records of DSI pertaining to this Agreement. Any inspection shall be
held during normal business hours and following reasonable prior
notice.
20
ARTICLE 3--GRANT OF RIGHTS TO DSI
3.1 TITLE TO MEDIA. Depositor hereby transfers to DSI the title to the
media upon which the proprietary technology and materials are written
or stored. However, this transfer does not include the ownership of the
proprietary technology and materials contained on the media such as any
copyright, trade secret, patent or other intellectual property rights.
3.2 RIGHT TO MAKE COPIES. DSI shall have the right to make copies of the
Deposit Materials as reasonably necessary to perform this Agreement.
DSI shall copy all copyright, nondisclosure, and other proprietary
notices and titles contained on the Deposit Materials onto any copies
made by DSI. With all Deposit Materials submitted to DSI, Depositor
shall provide any and all instructions as may be necessary to duplicate
the Deposit Materials including but not limited to the hardware and/or
software needed.
3.3 RIGHT TO TRANSFER UPON RELEASE. Depositor hereby grants to DSI the
right to transfer Deposit Materials to Preferred Beneficiary upon any
release of the Deposit Materials for use by Preferred Beneficiary in
accordance with Section 4.5. Except upon such a release or as otherwise
provided in this Agreement, DSI shall not transfer the Deposit
Materials.
ARTICLE 4--RELEASE OF DEPOSIT
4.1 RELEASE CONDITIONS. As used in this Agreement, "Release Condition"
shall mean the following:
a. Depositor becomes unable to pay its debts as such debts become
due and payable for a period in excess of ninety (90) days; or
b. Depositor shall admit in writing its inability to pay its
debts generally; or
c. Depositor shall make a general assignment for the benefit of
creditors; or
d. If any proceeding shall be brought by or against Depositor and
not dismissed within 90 days, seeking to adjudicate it
bankrupt or insolvent or seeking liquidation, winding up,
reorganization, arrangement, protection or relief under any
law relating to bankruptcy, insolvency, reorganization, relief
of debtors, or seeking the appointment of a receiver or
trustee under any federal or state law.
4.2 FILING FOR RELEASE. If Preferred Beneficiary believes in good faith
that a Release Condition has occurred, Preferred Beneficiary may
provide to DSI written notice of the occurrence of the Release
Condition and a request for the release of the Deposit Materials. Upon
receipt of such notice, DSI shall provide a copy of the notice to
Depositor by commercial express mail.
4.3 CONTRARY INSTRUCTIONS. From the date DSI mails the notice requesting
release of the Deposit Materials, Depositor shall have fifteen business
days to deliver to DSI contrary instructions ("Contrary Instructions").
Contrary Instructions shall mean the written representation by
Depositor that a Release Condition has not occurred or has been cured.
Upon receipt of Contrary Instructions, DSI shall send a copy to
Preferred Beneficiary by
21
commercial express mail. Additionally, DSI shall notify both Depositor
and Preferred Beneficiary that there is a dispute to be resolved
pursuant to the Section 7.3. Subject to Section 5.2 of this Agreement,
DSI will continue to store the Deposit Materials without release
pending (a) joint instructions from Depositor and Preferred
Beneficiary; (b) dispute resolution pursuant to Section 7.3; or (c)
order of a court.
4.4 RELEASE OF DEPOSIT. If DSI does not receive Contrary Instructions from
the Depositor, DSI is authorized to release the Deposit Materials to
the Preferred Beneficiary or, if more than one beneficiary is
registered to the deposit, to release a copy of the Deposit Materials
to the Preferred Beneficiary. However, DSI is entitled to receive any
fees due DSI before making the release. Any copying expense in excess
of $300 will be chargeable to Preferred Beneficiary. Upon any such
release, the escrow arrangement will terminate as it relates to the
Depositor and Preferred Beneficiary involved in the release.
4.5 RIGHT TO USE FOLLOWING RELEASE. Unless otherwise provided in the
License Agreement, upon release of the Deposit Materials in accordance
with this Article 4, Preferred Beneficiary shall have the right to use
the Deposit Materials for the sole purpose of continuing the benefits
afforded to Preferred Beneficiary by the License Agreement. Preferred
Beneficiary shall be obligated to maintain the confidentiality of the
released Deposit Materials.
ARTICLE 5--TERM AND TERMINATION
5.1 TERM OF AGREEMENT. The initial term of this Agreement is for a period
of one year. Thereafter, this Agreement shall automatically renew from
year-to-year unless (a) Depositor and Preferred Beneficiary jointly
instruct DSI in writing that the Agreement is terminated; (b) Preferred
Beneficiary instructs DSI in writing that the Agreement is terminated
as it relates to Preferred Beneficiary; or (c) DSI instructs Depositor
and Preferred Beneficiary in writing that the Agreement is terminated
for nonpayment in accordance with Section 5.2 or by resignation in
accordance with Section 5.3. If the Acceptance Form has been signed at
a date later than this Agreement, the initial term of the Acceptance
Form will be for one year with subsequent terms to be adjusted to match
the anniversary date of this Agreement. If the deposit materials are
subject to another escrow agreement with DSI, DSI reserves the right,
after the initial one year term, to adjust the anniversary date of this
Agreement to match the then prevailing anniversary date of such other
escrow arrangements.
5.2 TERMINATION FOR NONPAYMENT. In the event of the nonpayment of fees owed
to DSI, DSI shall provide written notice of delinquency to the parties
to this Agreement affected by such delinquency. Any such party shall
have the right to make the payment to DSI to cure the default. If the
past due payment is not received in full by DSI within one month of the
date of such notice, then at any time thereafter DSI shall have the
right to terminate this Agreement to the extent it relates to the
delinquent party by sending written notice of termination to such
affected parties. DSI shall have no obligation to take any action under
this Agreement so long as any payment due to DSI remains unpaid.
22
5.3 TERMINATION BY RESIGNATION. DSI reserves the right to terminate this
Agreement, for any reason, by providing Depositor and Preferred
Beneficiary with 60-days' written notice of its intent to terminate
this Agreement. Within the 60-day period, the Depositor and Preferred
Beneficiary may provide DSI with joint written instructions authorizing
DSI to forward the Deposit Materials to another escrow company and/or
agent or other designated recipient. If DSI does not receive said joint
written instructions within 60 days of the date of DSI's written
termination notice, then DSI shall destroy, return or otherwise deliver
the Deposit Materials in accordance with Section 5.4.
5.4 DISPOSITION OF DEPOSIT MATERIALS UPON TERMINATION. Subject to the
foregoing termination provisions, and upon termination of this
Agreement, DSI shall destroy, return, or otherwise deliver the Deposit
Materials in accordance with Depositor's instructions. If there are no
instructions, DSI may, at its sole discretion, destroy the Deposit
Materials or return them to Depositor. DSI shall have no obligation to
destroy or return the Deposit Materials if the Deposit Materials are
subject to another escrow agreement with DSI or have been released to
the Preferred Beneficiary in accordance with Section 4.4.
5.5 SURVIVAL OF TERMS FOLLOWING TERMINATION. Upon termination of this
Agreement, the following provisions of this Agreement shall survive:
a. Depositor's Representations (Section 1.5);
b. The obligations of confidentiality with respect to the Deposit
Materials;
c. The rights granted in the sections entitled Right to Transfer
Upon Release (Section 3.3) and Right to Use Following Release
(Section 4.5), if a release of the Deposit Materials has
occurred prior to termination;
d. The obligation to pay DSI any fees and expenses due;
e. The provisions of Article 7; and
f. Any provisions in this Agreement which specifically state they
survive the termination of this Agreement.
ARTICLE 6--DSI'S FEES
6.1 FEE SCHEDULE. DSI is entitled to be paid its standard fees and expenses
applicable to the services provided. DSI shall notify the party
responsible for payment of DSI's fees at least 60 days prior to any
increase in fees. For any service not listed on DSI's standard fee
schedule, DSI will provide a quote prior to rendering the service, if
requested.
6.2 PAYMENT TERMS. DSI shall not be required to perform any service unless
the payment for such service and any outstanding balances owed to DSI
are paid in full. Fees are due upon receipt of a signed contract or
receipt of the Deposit Materials whichever is earliest. If invoiced
fees are not paid, DSI may terminate this Agreement in accordance with
Section 5.2.
23
ARTICLE 7--LIABILITY AND DISPUTES
7.1 RIGHT TO RELY ON INSTRUCTIONS. DSI may act in reliance upon any
instruction, instrument, or signature reasonably believed by DSI to be
genuine. DSI shall follow only written notices, requests, or
instructions given by an employee or representative who is named and
whose signature appears on Exhibit C or the Acceptance Form, as the
case may be. DSI will not be required to inquire into the truth or
evaluate the merit of any statement or representation contained in any
notice or document. DST shall not be responsible for failure to act as
a result of causes beyond the reasonable control of DSI.
7.2 INDEMNIFICATION. Depositor and Preferred Beneficiary each agree to
indemnify, defend and hold harmless DSI from any and all claims,
actions, damages, arbitration fees and expenses, costs, attorney's fees
and other liabilities ("Liabilities") incurred by DSI relating in any
way to this escrow arrangement unless such Liabilities were caused
solely by the negligence or willful misconduct of DSI.
7.3 DISPUTE RESOLUTION. Any dispute relating to or arising from this
Agreement shall be resolved by arbitration under the Commercial Rules
of the American Arbitration Association. Three arbitrators shall be
selected. The Depositor and Preferred Beneficiary shall each select one
arbitrator and the two chosen arbitrators shall select the third
arbitrator, or failing agreement on the selection of the third
arbitrator, the American Arbitration Association shall select the third
arbitrator. However, if DSI is a party to the arbitration, DSI shall
select the third arbitrator. Unless otherwise agreed by Depositor and
Preferred Beneficiary, arbitration will take place in San Diego,
California, USA. Any court having jurisdiction over the matter may
enter judgment on the award of the arbitrator(s). Service of a petition
to confirm the arbitration award may be made by First Class mail or by
commercial express mail, to the attorney for the party or, if
unrepresented, to the party at the last known business address.
7.4 CONTROLLING LAW. This Agreement is to be governed and construed in
accordance with the laws of the State of California, without regard to
its conflict of law provisions.
7.5 NOTICE OF REQUESTED ORDER. If any party intends to obtain an order from
the arbitrator or any court of competent jurisdiction which may direct
DSI to take, or refrain from taking any action, that party shall:
a. Give DSI at least two business days' prior notice of the
hearing;
b. Include in any such order that, as a precondition to DSI's
obligation, DSI be paid in full for any past due fees and be
paid for the reasonable value of the services to be rendered
pursuant to such order; and
c. Ensure that DSI not be required to deliver the original (as
opposed to a copy) of the Deposit Materials if DSI may need to
retain the original in its possession to fulfill any of its
other escrow duties.
24
ARTICLE 8--GENERAL PROVISIONS
8.1 ENTIRE AGREEMENT. This Agreement, which includes the Acceptance Form
and Exhibits A, B, C, D and E described herein, embodies the entire
understanding among all of the parties with respect to its subject
matter and supersedes all previous communications, representations or
understandings, either oral or written. DSI is not a party to the
License Agreement between Depositor and Preferred Beneficiary and has
no knowledge of any of the terms or provisions of any such License
Agreement. DSI's only obligations to Depositor or Preferred Beneficiary
are as set forth in this Agreement. No amendment or modification of
this Agreement shall be valid or binding unless signed by all the
parties hereto, except that Exhibit A need not be signed by DSI,
Exhibit B need not be signed by Preferred Beneficiary, Exhibit C need
not be signed by any party, Exhibit D need not be signed by Preferred
Beneficiary or DSI and the Acceptance Form need only be signed by the
parties identified therein.
8.2 NOTICES. All notices, invoices, payments, deposits and other documents
and communications shall be given to the parties at the addresses
specified in the attached Exhibit C and Acceptance Form. It shall be
the responsibility of the parties to notify each other as provided in
this Section in the event of a change of address. The parties shall
have the right to rely on the last known address of the other parties.
Unless otherwise provided in this Agreement, all documents and
communications may be delivered by First Class mail.
8.3 SEVERABILITY. In the event any provision of this Agreement is found to
be invalid, voidable or unenforceable, the parties agree that unless it
materially affects the entire intent and purpose of this Agreement,
such invalidity, voidability or unenforceability shall affect neither
the validity of this Agreement nor the remaining provisions herein, and
the provision in question shall be deemed to be replaced with a valid
and enforceable provision most closely reflecting the intent and
purpose of the original provision.
8.4 SUCCESSORS. This Agreement shall be binding upon and shall inure to the
benefit of the successors and assigns of the parties. However, DSI
shall have no obligation in performing this Agreement to recognize any
successor or assign of Depositor or Preferred Beneficiary unless DSI
receives clear, authoritative and conclusive written evidence of the
change of parties.
8.5 REGULATIONS. Depositor and Preferred Beneficiary are responsible for
and warrant compliance with all applicable laws, rules and regulations,
including but not limited to customs laws, import, export, and
re-export laws and government regulations of any country from or to
which the Deposit Materials may be delivered in accordance with the
provisions of this Agreement.
25
DSI Technology Escrow Services, Inc.
----------------------------------
Depositor
By: By:
------------------------------- ---------------------------------
Name: Name:
---------------------------- -------------------------------
Title: Title:
--------------------------- ------------------------------
Date: Date:
---------------------------- -------------------------------
26
EXHIBIT A
MATERIALS TO BE DEPOSITED
Account Number ____________________
Depositor represents to Preferred Beneficiary that Deposit Materials delivered
to DSI shall consist of the following:
---------------------------------- -------------------------------------
Depositor Preferred Beneficiary
By: By:
------------------------------- ---------------------------------
Name: Name:
---------------------------- -------------------------------
Title: Title:
--------------------------- ------------------------------
Date: Date:
---------------------------- -------------------------------
27
EXHIBIT B
DESCRIPTION OF DEPOSIT MATERIALS
Depositor Company Name
--------------------------------------------------------
Account Number
----------------------------------------------------------------
Product Name Version
----------------------------------------- ----------------
(PRODUCT NAME WILL APPEAR AS EXHIBIT B NAME ON ACCOUNT HISTORY REPORT)
DEPOSIT MATERIAL DESCRIPTION:
Quantity Media Type & Size Label Description of Each Separate Item
________ Disk 3.5" or ___
________ DAT tape ___mm
________ CD-ROM
________ Data cartridge tape __
________ TK 70 or __ tape
________ Magnetic tape ___
________ Documentation
________ Other ________________
PRODUCT DESCRIPTION:
Environment
-------------------------------------------------------------------
DEPOSIT MATERIAL INFORMATION:
Is the media or are any of the files encrypted? Yes / No If yes, please include
any passwords and the decryption tools.
Encryption tool name Version
-------------------------------- -----------------
Hardware required
-------------------------------------------------------------
Software required
-------------------------------------------------------------
Other required information
----------------------------------------------------
28
I certify for DEPOSITOR that the DSI has inspected and accepted the
above described Deposit Materials above materials (ANY EXCEPTIONS ARE
have been transmitted to DSI: NOTED ABOVE):
Signature Signature
------------------------ -------------------------
Print Name Print Name
----------------------- -------------------------
Date Date Accepted
----------------------------- ----------------------
Exhibit B#
-------------------------
Send materials to: DSI, ▇▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇
29
EXHIBIT C
DESIGNATED CONTACT
Master Number ______________________
Notice and communications should be Invoices should be addressed to:
addressed to:
Company Name:
---------------------------- --------------------------------
Address:
--------------------------------- --------------------------------
--------------------------------- --------------------------------
--------------------------------- --------------------------------
Designated Contact: Contact:
---------------------- -----------------------
Telephone:
------------------------------- --------------------------------
Facsimile: P.O.#, IF REQUIRED:
-------------------------------- -------------
E-MAIL:
------------------------------------------
Verification Contact:
------------------------------------------
Requests to change the designated contact should be given in writing by the
designated contact or an authorized employee.
Contracts, Deposit Materials and Invoice inquiries and fee
notices to DSI should be remittances to DSI should be
addressed to: addressed to:
DSI Technology Escrow Services, Inc. DSI Technology Escrow Services, Inc.
Contract Administration PO Box 45156
▇▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
E-Mail: ▇▇@▇▇▇▇▇▇▇▇▇.▇▇▇
Date:
----------------------------
30
EXHIBIT D
NAME OF INITIAL ACCOUNT
Account Number_____________________
______________________________ ("Depositor") has entered into a Master Preferred
Escrow Agreement with DSI Technology Escrow Services, Inc. ("DSI" ). Pursuant to
that Agreement, Depositor may deposit certain Deposit Materials with DSI.
The initial account will be referenced by the following name:
-------------------------------------------------------------.
-------------------------------------------
Depositor
By:
----------------------------------------
Name:
--------------------------------------
Title:
-------------------------------------
Date:
31
EXHIBIT E
ADDITIONAL ESCROW ACCOUNT
TO MASTER PREFERRED ESCROW AGREEMENT
Master Number __________________________
New Account Number __________________________
_________________________________ ("Depositor") has entered into a Master
Preferred Escrow Agreement with DSI Technology Escrow Services, Inc. ("DSI").
Pursuant to that Agreement, Depositor may deposit certain Deposit Materials with
DSI.
Depositor desires that new Deposit Materials be held in a separate account and
be maintained separately from the initial account. By execution of this Exhibit
E, DSI will establish a separate account for the new Deposit Materials. The new
account will be referenced by the following name:_______________________________
Depositor hereby agrees that all terms and conditions of the existing Master
Preferred Escrow Agreement previously entered into by Depositor and DSI will
govern this account. The termination or expiration of any other account of
Depositor will not affect this account.
DSI Technology Escrow Services, Inc.
----------------------------------
Depositor
By: By:
------------------------------- ---------------------------------
Name: Name:
---------------------------- -------------------------------
Title: Title:
--------------------------- ------------------------------
Date: Date:
---------------------------- -------------------------------
32
PREFERRED BENEFICIARY
ACCEPTANCE FORM
Account Number ________________________
Depositor, Preferred Beneficiary and DSI Technology Escrow Services, Inc.
("DSI"), hereby acknowledge that _________________________________ is the
Preferred Beneficiary referred to in the Master Preferred Escrow Agreement
effective ___________________, 20___ with DSI as the escrow agent and
_______________________________________ as the Depositor. Preferred Beneficiary
hereby agrees to be bound by all provisions of such Agreement.
Depositor hereby enrolls Preferred Beneficiary to the following account(s):
ACCOUNT NAME ACCOUNT NUMBER
------------ --------------
------------------------------------ -------------------------------------
------------------------------------ -------------------------------------
------------------------------------ -------------------------------------
Notices and communications to
Preferred Beneficiary should be
addressed to: Invoices should be addressed to:
Company Name:
----------------------- -------------------------------------
Address:
---------------------------- -------------------------------------
---------------------------- -------------------------------------
---------------------------- -------------------------------------
Designated Contact: Contact:
----------------- -----------------------------
Telephone:
-------------------------- -------------------------------------
Facsimile: P.O.#, IF REQUIRED:
-------------------------- -----------------
E-Mail:
------------------------------------ -------------------------------------
Preferred Beneficiary Depositor
By: By:
--------------------------------- ----------------------------------
Name: Name:
------------------------------- --------------------------------
Title: Title:
------------------------------ -------------------------------
Date: Date:
------------------------------- --------------------------------
DSI TECHNOLOGY ESCROW SERVICES, INC.
------------------------------------
By:
---------------------------------
Name:
-------------------------------
Title:
------------------------------
Date:
-------------------------------
33
