Exhibit 10.15
NON-EXCLUSIVE SOFTWARE LICENSE AGREEMENT
This Software License Agreement ("Agreement") is entered as of,
December 30, 1998 ("Effective Date"), by and between QuadraMed Corporation., a
Delaware corporation, with its principal place of business at 0000 Xxxx Xxxxxxx
Xxxxxxxxx, 0xx Xxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 (hereafter "QuadraMed"), and
VantageMed Corporation, with its principal place of business at 0000 Xxxxxxx
Xxxx, Xxxxx 000, Xxxxxx Xxxxxxx, XX 00000 (hereafter "Licensee").
The parties agree as follows:
1. LICENSE GRANT
a. Subject to the terms of this Agreement, QuadraMed grants to
Licensee, and only Licensee, under all intellectual property rights of QuadraMed
applicable to QuadraMed's existing software modules described in Exhibit A in
source code form and Exhibit B in object code only (collectively the "Licensed
Software"), a worldwide, non-exclusive, non-transferable, non-sublicensable
(except as expressly authorized below), fully paid-up, irrevocable, royalty free
license solely to:
(i) incorporate the Licensed Software into Licensee
Products;
(ii) reproduce and distribute (subject to Section 1.b) the
Licensed Software, but only in object code form, and only as integrally
incorporated by Licensee into or with Licensee Products; and
(iii) make modifications, enhancements and improvements to
the Licensed Software listed in Exhibit A.
"Licensee Product" shall mean any Licensee products that include or incorporate
any portion of the Licensed Software.
b. Upon the signing of this Agreement, QuadraMed will promptly
deliver to Licensee two (2) copies of the Licensed Software listed in Exhibit A
in source and object code forms and two (2) copies of the Licensed Software
listed in Exhibit B in object code form only.
c. The Licensee Product shall be sub-licensed only pursuant to
end-user license agreements in the name of Licensee that are as protective as
those used by Licensee for its own products and, that at a minimum (and for
QuadraMed's benefit), (i) provide that the Licensed Software (and any copy) is
licensed (and not sold) and that reverse engineering (by disassembly,
decompilation or otherwise) is prohibited and (ii) effectively disclaim all
warranties and exclude incidental and consequential damages with respect to
QuadraMed. QuadraMed shall have the right, at its own expense, to inspect the
relevant books and records of Licensee to insure compliance with this Agreement.
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d. QuadraMed will defend and indemnify Licensee against a claim
that the software furnished and used within the scope of this Agreement infringe
a United States copyright or patent provided that: (a) Licensee notifies
QuadraMed in writing within 30 days of the claim; (b) QuadraMed has sole control
of the defense and all related settlement negotiations; and (c) Licensee
provides QuadraMed with the assistance, information and authority necessary to
perform QuadraMed's obligations under this section. Reasonable out-of-pocket
expenses actually incurred by Licensee in providing such assistance will be
reimbursed by QuadraMed.
QuadraMed shall have no liability for any claim of infringement based on; (a)
use of a superseded or altered release of Products if the infringement would
have been avoided by the use of a current unaltered release of the Products that
QuadraMed provides to Licensee; or (b) the combination, operation or use of any
Products furnished under this Agreement with software, hardware or other
materials not furnished by QuadraMed if such infringement would have been
avoided by the use of the Products without such software, hardware or other
materials.
In the event the Products are legally held or are believed by QuadraMed to
infringe, QuadraMed shall have the option, at its expense, to (a) modify the
Products to be non-infringing, (b) obtain for Licensee a license to continue
using the Products; or (c) terminate the license for the infringing Products and
refund the license fees paid for those Products prorated over a five year term,
QuadraMed's or QuadraMed's licensor's entire liability and Licensee's exclusive
remedy for infringement or any intellectual property warranty.
e. Licensee will defend and indemnify QuadraMed against a claim
that any Licensee product infringes a United States copyright or patent provided
that: (a)QuadraMed notifies Licensee in writing within 30 days of the claim; (b)
Licensee has sole control of the defense and all related settlement
negotiations; and (c) QuadraMed provides Licensee with the assistance,
information and authority necessary to perform Licensees obligations under this
section. Reasonable out-of-pocket expenses actually incurred by Quadramed in
providing such assistance will be reimbursed by Licensee.
f. The foregoing license does not allow any sublicense,
distribution or disclosure to any third party of source code or source
documentation in any circumstance or manner and Licensee agrees that it will not
engage in any such sublicensing, disclosure or distribution.
g. As between the parties, QuadraMed retains all title to, and,
except as unambiguously licensed herein, all rights to the Licensed Software (in
source code and object code form) and any intellectual property rights thereto
and all copies thereof (by whomever produced) and all related documentation and
materials.
2. UP-FRONT PAYMENT. As consideration for this Agreement,
VantageMed shall pay an up-front fee of $(U.S.) 1,500,000 to QuadraMed upon the
execution of this Agreement for the software products listed in Exhibit A and B.
3. GRANT BACK. VantageMed agrees to negotiate, in good faith,
reasonable terms and condition for the grant to QuadraMed of the non-exclusive
right to use, reproduce,
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modify, sublicense and/or distribute any modifications or improvements made to
the Licensed software by or for VantageMed, which modification or improvement is
made commercially available for licensing as a stand-alone item or as
incorporated in another product. In any event, VantageMed agrees to license such
modification or improvement to QuadraMed on terms and conditions which, taken as
a whole, are at least as favorable to QuadraMed as the most favorable terms and
conditions that VantageMed has or may grant from time to time to any third party
with respect to the modification or improvement. In determining whether the
terms and conditions offered to QuadraMed are at least as favorable as those
granted to a third party, (i) all terms and conditions will be considered as a
whole and (ii) only the value and consideration attributable to the modification
or improvement will be taken into account.
4. COPYRIGHT NOTICES. Licensee agrees to include QuadraMed's
copyright notice which appears on or in the Licensed Software on any
documentation or screen display associated with any Licensee Product that
includes or is derived from the Licensed Software to any extent. Other than to
comply with the foregoing, no right or license with respect to any QuadraMed
trademark, trade name or other designation is granted under this Agreement.
5. PROHIBITION AGAINST ASSIGNMENT. Licensee may not assign or
transfer, in whole or in part, this Agreement or its rights and obligations
hereunder without the prior written consent of QuadraMed which will not be
unreasonably withheld. QuadraMed may freely assign or transfer, in whole or in
part, this Agreement and its rights and obligations hereunder.
6. TERM AND TERMINATION.
a. This Agreement shall remain in effect unless otherwise
terminated in accordance with the provisions contained in Section 6.b.
b. This Agreement may be terminated by a party for cause
immediately upon the occurrence of any of the following events:
(i) if the other materially breaches any material
provision of this Agreement and fails to fully cure such breach within thirty
(30) days of written notice describing the breach; or
c. Termination is not the sole remedy under this Agreement and,
whether or not termination is effected, all other remedies will remain
available. The indemnity in Section 1 (c), Sections 1 (d), 1 (e), 3, 4, 5, 6, 7,
8, 9, 10, 11, 12 and 13 and, except as otherwise expressly provided herein, any
right of action for breach of this Agreement prior to termination shall survive
any termination of this Agreement. The license to Licensee will cease upon
termination; provided, however, that end user sublicenses granted pursuant to
this Agreement shall not be revoked by the termination of this Agreement.
7. NOTICES AND REQUESTS. All notices, consents, authorizations,
and requests in connection with this Agreement shall be deemed received if
personally delivered, delivered by confirmed telecopy or mailed by certified or
registered mail, return receipt requested, to either party at its address set
forth above or such other address as such party may provide by notice
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pursuant to this Section.
8. CONTROLLING LAW; ATTORNEYS FEES. This Agreement shall be
governed by and construed under the laws of the State of California and the
United States without regard to conflicts of laws provisions thereof. Unless
otherwise elected by QuadraMed in writing for the particular instance (which
QuadraMed may do at its option), the sole jurisdiction and venue for actions
related to the subject matter hereof shall be the California state and U.S.
federal courts having within their jurisdiction the location of QuadraMed's
principal place of business. Both parties consent to the jurisdiction of such
courts and agree that process may be served in the manner provided herein for
giving of notices or otherwise as allowed by California or federal law. If
either QuadraMed or Licensee employs attorneys to enforce any rights arising out
of or relating to this Agreement, the prevailing party shall be entitled to
recover its reasonable attorneys' fees, costs and other expenses.
9. CONFIDENTIALITY. Licensee agrees that all source code,
inventions, algorithms, know-how and ideas it obtains from the other and all
other business, technical and financial information it obtains from QuadraMed
are the confidential property of QuadraMed if identified as such at or before
the time of disclosure ("Proprietary Information"). Except as expressly and
unambiguously allowed herein, Licensee will hold in confidence and not use or
disclose any Proprietary Information and shall similarly bind its employees and
contractors in writing.
10. WARRANTY DISCLAIMER.
THE LICENSED SOFTWARE IS PROVIDED "AS IS"; QUADRAMED MAKES NO
WARRANTIES TO ANY PERSON OR ENTITY WITH RESPECT TO THE SUBJECT MATTER OF THIS
AGREEMENT OR THE LICENSED SOFTWARE OR ANY DERIVATIVES THEREOF OR ANY SERVICES OR
LICENSES AND DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING WITHOUT LIMITATION
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMINT.
11. LIMITED LIABILITY
NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR OTHERWISE,
QUADRAMED WILL NOT BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS
AGREEMENT OR TERMS AND CONDITIONS RELATED THERETO UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY (I) FOR ANY
AMOUNTS IN EXCESS IN THE AGGREGATE OF THE FEES PAID TO QUADRAMED HEREOF OR (II)
FOR ANY INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES INCLUDING, BUT NOT LIMITED
TO, LOSS OF REVENUES AND LOSS OF PROFITS OR FOR LOSS OR INACCURACY OF DATA OR
(III) FOR COST OF PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES.
12. ASSIGNMENT. In the event that Licensee assigns the source code
granted
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under this Agreement whether by operation of law or otherwise, including, but
not limited to, assignment by merger, consolidation, sale of more than fifty
percent (50%) of its stock or all or substantially all of its assets, in a
single transaction or in a series of related transactions, to an entity that
operates in a business that competes with QuadraMed such assignment shall not be
effective unless Licensee first pays to QuadraMed an "Assignment Fee" in the
amount of $ 500,000.
13. GENERAL.
a. Upon execution by both parties, this Agreement shall
constitute the entire agreement between the parties with respect to the subject
matter hereof and merges all prior and contemporaneous communications. It shall
not be modified except by a written agreement dated subsequent to the date of
this Agreement and signed on behalf of Licensee and QuadraMed by their
respective duly authorized representatives. If any provision of this Agreement
shall be held by a court of competent jurisdiction to be illegal invalid or
unenforceable, that provision shall be limited or eliminated to the minimum
extent necessary so that this Agreement shall otherwise remain in full force and
effect and enforceable. No waiver of any breach of any provision of this
Agreement shall constitute a waiver of any prior, concurrent or subsequent
breach of the same or any other provisions hereof, and no waiver shall be
effective unless made in writing and signed by an authorized representative of
the waiving party.
b. Licensee agrees to comply with the U.S. Foreign
Corrupt Practices Act (regarding among other things, payments to government
officials) and all export laws, restrictions, national security controls and
regulations of the United States or other applicable foreign agency or
authority, and not to export or re-export, or allow the export or re-export of
the Licensed Software or any copy or direct product thereof in violation of any
such restrictions, laws or regulations, or to any Group D:1 or E:2 country (or
any national of such country) specified in the then current Supplement No. 1 to
Part 740, or, in violation of the embargo provisions in Part 746, of the U.S.
Export Administration Regulations (or any successor regulations or supplement),
except in compliance with and with all licenses and approvals required under
applicable export laws and regulations, including without limitation, those of
the U.S. Department of Commerce.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date set forth above. All signed copies of this Agreement shall be deemed
originals.
QUADRAMED CORPORATION
By:
Name: /s/ Xxxxxx X. Xxxxxx
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Title: VP of Finance
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Date: 12/31/98
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VantageMed Corporation
By /s/ Xxxx Xxxxxx
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Name: Xxxx Xxxxxx
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Title: President & CEO
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Date: 12/30/98
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EXHIBIT A
LICENSED SOFTWARE
SOFTWARE
Claimstar EDI
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EXHIBIT B
LICENSED SOFTWARE
SOFTWARE
QuadraMed ERA
QuadraMed Eligibility
QuadraMed MSB
8
