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EXHIBIT 10.13
LICENSE AGREEMENT
THIS AGREEMENT is entered into on this 15th day of December 1995, 1995, by and
between Motorola, Inc. a Delaware corporation having an office at ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter called "MOTOROLA"), and
Stac, Inc., a California corporation having an office at ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ (hereinafter called "STAC").
WHEREAS, MOTOROLA owns and has, or may have, rights in certain patents issued,
and applications for patents pending, in various countries of the world as to
which STAC desires to acquire licenses as hereinafter provided, and
WHEREAS, STAC owns and has, or may have, rights in certain patents issued, and
applications for patents pending, in various countries of the world as to which
MOTOROLA desires to acquire licenses as hereinafter provided,
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter set forth, it is agreed as follows:
Section 1 -- DEFINITIONS
1.1 SUBSIDIARY(IES) means any legal entity, more than fifty percent (50%) of
whose outstanding shares or securities representing the right to vote for the
election of directors or other managing authority are, now or hereafter, owned
or controlled, directly or indirectly by that party (but only so long as such
conditions exist).
1.2 LZS DATA COMPRESSION means any lossless data compression algorithm made
commercially available by STAC and which STAC has the rights to license others
to make, use, sell, offer for sale, copy and create derivative works therefor.
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1.3 CZL DATA COMPRESSION means a MOTOROLA developed version of the Ziv-Lempel
77 lossless data compression algorithm.
1.4 DATA COMMUNICATION APPLICATIONS means the use of any product for the
primary function of communications, such product having one or more interfaces
to a public or private network.
1.5 STAC PATENTS means U.S. Patent Nos. 4,701,745; 5,016,009; 5,146,221;
5,126,739, and 5,463,390, and any patent issuing from European Patent
Application Number EP 0 582 907 A2 and including all divisions, continuations,
continuations-in-part, reissues, renewals, and extensions, and any foreign or
domestic counterparts claiming priority therefrom.
1.6 MOTOROLA PATENTS shall mean U.S. Patent Nos. 5,130,993 and 5,245,614, any
patent issuing from U.S. Patent Application No. 08/156,857 and including all
divisions, continuations, continuations-in-part, reissues, renewals, and
extensions, and any foreign or domestic counterparts claiming priority
therefrom.
1.7 STAC COPYRIGHTS means copyrights owned by STAC in the United States and
throughout the world in LZS DATA COMPRESSION algorithms, and in source code and
object code versions of software implementing LZS DATA COMPRESSION algorithms.
1.8 CHIPSETS means one or more semiconductor devices which, alone or
collectively, are utilized to implement the function of lossless data
compression.
1.9 MERCHANT CHIPSETS means CHIPSETS offered for sale, sold or otherwise
transferred as CHIPSETS, and not as incorporated in a larger product, to
entities other than MOTOROLA and STAC or their SUBSIDIARIES.
1.10 MERCHANT SOFTWARE means software having lossless data compression as its
primary and predominant function that is offered
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for sale, sold, or otherwise transferred as a software-only product, and not as
incorporated in a larger product, to entities other than MOTOROLA and STAC or
their SUBSIDIARIES.
1.11 LICENSED MOTOROLA PRODUCT(S) means all products made by, or manufactured
for, MOTOROLA or its SUBSIDIARIES that infringe the STAC PATENTS; provided,
however, that LICENSED MOTOROLA PRODUCTS shall not include MERCHANT CHIPSETS,
MERCHANT SOFTWARE or LICENSED MOTOROLALZS PRODUCTS.
1.12 LICENSED MOTOROLA LZS PRODUCTS means all products that incorporate LZS DATA
COMPRESSION, including products that embody enhancements to LZS DATA COMPRESSION
developed by MOTOROLA; provided, however, that LICENSED MOTOROLA LZS PRODUCTS
shall not include CHIPSETS, LICENSED MOTOROLA PRODUCTS or MERCHANT SOFTWARE.
1.13 LICENSED STAC PRODUCT(S) means all products that infringe or cause to be
infringed by purchasers, the MOTOROLA PATENTS. LICENSED STAC PRODUCT(S) shall
not include software directly incorporated into computer operating systems
software sold by Microsoft Corporation or software sold on media containing
other software sold by Microsoft Corporation, but shall include software sold by
STAC on separate media under the trade identity of STAC or its SUBSIDIARY(IES).
1.14 LICENSED STAC LZS MOTOROLA ENHANCED PRODUCT(S) means all software made by,
or manufactured for, STAC or its SUBSIDIARIES having lossless data compression
as its primary function which: 1) embodies enhancements to LZS DATA COMPRESSION
developed by MOTOROLA; 2) is incorporated in a LICENSED MOTOROLA LZS PRODUCT;
and 3) is delivered to STAC in source code form.
1.15 EFFECTIVE DATE means the date of last signature hereto as such date is
entered on the first page hereof.
Section 2 -- RELEASES
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2.1 STAC and its SUBSIDIARY(IES) hereby release, acquit and forever discharge
MOTOROLA (and those SUBSIDIARY(IES) affiliated with MOTOROLA on the EFFECTIVE
DATE of this Agreement) and their respective distributors, dealers, customers
and users from any and all claims or liability for infringement or alleged
infringement of any STAC PATENTS, by the use, lease, sale or other disposition
of MOTOROLA products prior to the EFFECTIVE DATE.
2.2 MOTOROLA and its SUBSIDIARY(IES) hereby release, acquit and forever
discharge STAC (and those SUBSIDIARY(IES) affiliated with STAC on the EFFECTIVE
DATE of this Agreement) and their respective distributors, dealers, customers
and users from any and all claims or liability for infringement or alleged
infringement of any MOTOROLA PATENTS, by the use, lease, sale or other
disposition of STAC products prior to the EFFECTIVE DATE.
Section 3 -- GRANTS
3.1 STAC hereby grants to MOTOROLA and its SUBSIDIARY(IES), for the lives of
the STAC PATENTS, a non-exclusive, non-transferable royalty bearing license
throughout the world under the STAC PATENTS for DATA COMMUNICATION APPLICATIONS
only, without the right to sub-license:
3.1.1 to make and to have made LICENSED MOTOROLA PRODUCTS and LICENSED
MOTOROLA LZS PRODUCTS, and
3.1.2 with respect to LICENSED MOTOROLA PRODUCTS and LICENSED MOTOROLA LZS
PRODUCTS so made and have made, to use, lease, sell, or otherwise dispose
of such LICENSED MOTOROLA PRODUCTS and LICENSED MOTOROLA LZS PRODUCTS under
the trade identity of MOTOROLA or its SUBSIDIARY(IES).
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3.2 STAC grants to MOTOROLA and its SUBSIDIARY(IES) a world-wide,
non-exclusive, non-transferable, royalty bearing license under the STAC PATENTS
and STAC COPYRIGHTS to use, copy, and distribute, object code only compilations
LZS DATA COMPRESSION software for pre-sale integration with LICENSED MOTOROLA
LZS PRODUCTS. STAC further grants to MOTOROLA and its SUBSIDIARY(IES) a
world-wide, non-exclusive, non-transferable, royalty bearing license under the
STAC PATENTS and the STAC COPYRIGHTS to create, use, copy and distribute
modified object code only compilations of LZS DATA COMPRESSION software for
pre-sale integration with LICENSED MOTOROLA LZS PRODUCTS, provided that such
modified compilations of LZS DATA COMPRESSION software do not change the
encoding format of the unmodified compilations of LZS DATA COMPRESSION software.
3.3 MOTOROLA grants to STAC and its SUBSIDIARY(IES) a non-exclusive,
non-transferable, royalty bearing license throughout the world under the
MOTOROLA PATENTS for DATA COMMUNICATION APPLICATIONS only, without the right to
sublicense:
3.3.1 to make and have made LICENSED STAC PRODUCTS and LICENSED STAC LZS
MOTOROLA ENHANCED PRODUCTS; and
3.3.2 with respect to LICENSED STAC PRODUCTS and LICENSED STAC LZS MOTOROLA
ENHANCED PRODUCTS so made and have made, to use, lease, sell, or otherwise
dispose of such LICENSED STAC PRODUCTS and LICENSED STAC LZS MOTOROLA
ENHANCED PRODUCTS under the trade identity of STAC or its SUBSIDIARY(IES).
Section 4 -- PAYMENTS
4.1 STAC shall pay to MOTOROLA a royalty in accordance with Schedule A for each
LICENSED STAC PRODUCT sold.
4.1.1 If at any time during the execution of this AGREEMENT MOTOROLA enters
into an agreement with respect to the
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MOTOROLA PATENTS on substantially similar terms to this AGREEMENT, and
providing for a more favorable royalty rate, STAC shall thereafter be
entitled to such royalty rate for LICENSED STAC PRODUCTS. MOTOROLA shall
notify STAC of that more favorable royalty rate within thirty (30) days of
execution of such subsequent agreement.
4.2 STAC shall pay to MOTOROLA for each LICENSED STAC LZS MOTOROLA ENHANCED
PRODUCT a royalty of 30% of the net selling price for each LICENSED STAC LZS
MOTOROLA ENHANCED PRODUCT sold. The net selling price for each LICENSED STAC LZS
MOTOROLA ENHANCED PRODUCT shall be based on the net selling price for the
software only, and shall not be based on any selling price of any STAC product
incorporating such LICENSED STAC LZS MOTOROLA ENHANCED PRODUCT.
4.3 MOTOROLA shall pay the royalty determined in accordance with Schedule A to
STAC for each LICENSED MOTOROLA PRODUCT sold.
4.4 MOTOROLA shall pay the royalty determined in accordance with Schedule B for
each LICENSED MOTOROLA LZS PRODUCT sold.
4.4.1 If at any time after the execution of this agreement, STAC enters
into an agreement with respect to LZS DATA COMPRESSION on substantially
similar terms to this AGREEMENT, and providing for a more favorable royalty
rate, MOTOROLA shall thereafter be entitled to such royalty rate for
LICENSED MOTOROLA LZS PRODUCTS. STAC shall notify MOTOROLA of that more
favorable royalty rate within thirty (30) days of execution of such
subsequent agreement.
4.4.2 Royalties payable by MOTOROLA to STAC hereunder for LICENSED MOTOROLA
LZS PRODUCTS which transfer information from one point to another point by
means of electromagnetic waves in free space shall not exceed $200,000.00
(TWO HUNDRED THOUSAND DOLLARS) per year. Royalties payable by MOTOROLA to
STAC hereunder for all other LICENSED MOTOROLA LZS PRODUCTS
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shall not exceed $200,000.00 (TWO HUNDRED THOUSAND DOLLARS) per year.
4.5 Within thirty (30) days following execution of this AGREEMENT, and on each
anniversary of this AGREEMENT, a responsible official of each party shall
estimate for the immediately following year, in writing, an election as to the
number of LICENSED MOTOROLA PRODUCTS or LICENSED STAC PRODUCTS it will sell,
lease, or otherwise dispose of for that year, and shall indicate the approximate
average selling price for said LICENSED MOTOROLA PRODUCTS or LICENSED STAC
PRODUCTS, and shall pay the amount indicated in accordance with Schedule A,
TABLE I. Within thirty (30) days following each anniversary of this AGREEMENT,
each party shall make royalty payments to the other pursuant to Schedule A,
TABLE II on the number of LICENSED MOTOROLA PRODUCTS or LICENSED STAC PRODUCTS
it sold, leased or otherwise disposed of in the previous year in excess of the
number of LICENSED MOTOROLA PRODUCTS or LICENSED STAC PRODUCTS previously
estimated for such previous year.
4.6 Within thirty (30) days following execution of this AGREEMENT, and on each
anniversary of this AGREEMENT, a responsible official of MOTOROLA shall estimate
for the immediately following year, in writing, an election as to the number of
LICENSED MOTOROLA LZS PRODUCTS that MOTOROLA will sell, lease, or otherwise
dispose of for that year, and shall indicate the approximate average selling
price for said LICENSED MOTOROLA LZS PRODUCTS, and shall pay the amount
indicated in accordance with the Current License Fee Schedule in accordance with
the terms of Exhibit B. Within thirty (30) days following each anniversary of
this AGREEMENT, MOTOROLA shall make an additional royalty payment, if any, to
STAC representing the royalty owing beyond the royalty paid at the beginning of
the previous year for that year, according to the Current License Fee Schedule
for that year, based on the average selling price and number of LICENSED
MOTOROLA LZS PRODUCTS it actually sold, leased or otherwise disposed of in the
previous year.
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4.7 Any payment hereunder which shall be delayed for more than thirty (30) days
beyond the due date shall be subject to an interest charge of one (1) percent
per month on the unpaid balance payable in United States currency until paid.
The foregoing payment of interest shall not affect either party's right to
terminate this agreement.
4.8 With respect to the royalty and reporting set forth in this Section 4, each
party shall keep full, clear and accurate records with respect to LICENSED
MOTOROLA PRODUCTS, LICENSED MOTOROLA LZS PRODUCTS, LICENSED STAC PRODUCTS, or
LICENSED STAC LZS MOTOROLA ENHANCED PRODUCTS sold, leased or otherwise disposed
of. These records shall be retained for a period of three (3) years from date of
reporting and payment notwithstanding the expiration or other termination of
this AGREEMENT. Each party shall have the right through a mutually agreed upon
independent certified public accountant and at its expense, to examine and
audit, not more than once a year, and during normal business hours, all such
records and such other records and accounts as may under recognized accounting
practices contain information bearing upon the amount of royalty payable to the
other under this AGREEMENT. Such independent accountant shall report to the
parties only as to the amount of royalties payable under this AGREEMENT. Prompt
payment shall be made to compensate for any underpayments disclosed by such
examination or audit.
4.9 Each party shall bear all taxes imposed on it with respect to the payments
received under this Section, provided, however, that if so required by
applicable law, the other party may withhold the amount of taxes levied on
payments to be made pursuant to this Agreement, and shall promptly make payment
of the withheld amount to the appropriate tax authorities and shall transmit to
the other official tax receipts or other evidence issued by said appropriate tax
authorities sufficient to enable MOTOROLA to support a claim for tax credit in
respect to such withheld taxes so paid.
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4.10 All sums due MOTOROLA are payable in United States dollars and shall be
paid by wire transfer to the following MOTOROLA bank account unless otherwise
directed:
The Bank of Boston
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇
Account: 531-31430
Account Name: Motorola, Inc.
Federal Fund ID: 011000390
4.11 All sums due STAC are payable in United States dollars and shall be paid by
wire transfer to the following STAC bank account unless otherwise directed:
Silicon Valley Bank
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Account Number: ▇▇▇▇▇▇▇▇-75
Account Name: Stac Electronics
ABA Transfer Number: ▇▇▇▇-▇▇▇▇-▇
4.12 Royalties payable by STAC to MOTOROLA hereunder shall not exceed
$1,000,000.00 during the term of this agreement.
4.13 Royalties payable by MOTOROLA to STAC hereunder for LICENSED MOTOROLA
PRODUCTS which transfer information from one point to another point by means of
electromagnetic waves in free space shall not exceed $1,000,000.00 during the
term of this agreement. Royalties payable by MOTOROLA to STAC hereunder for all
other LICENSED MOTOROLA PRODUCTS shall not exceed $1,000,000.00 during the term
of this AGREEMENT.
4.14 The obligation to pay royalties in Sections 4.1 and 4.3 by either party
except for royalties accrued during the first seven years of this agreement
shall end seven years from the EFFECTIVE DATE.
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4.15 At MOTOROLA's option, MOTOROLA may eliminate the payment provisions of
Section 4.1 and 4.3 herein by paying to STAC on or before September 30, 1996,
the amount of $1,000,000.00, less any royalties already paid by MOTOROLA to STAC
pursuant to Section 4.3, plus any royalties already paid by STAC to MOTOROLA
pursuant to Section 4.1. Such amount represents a total net payment of the sum
of the limits on royalties to be paid by each party to the other party under the
provisions of Sections 4.12 and 4.13.
Section 5 -- SUSPENSION OF LICENSE
If at any time during the term of this Agreement any third party holding at
least a 20% ownership interest in STAC or any SUBSIDIARY of STAC, any supplier
to STAC, any user of LICENSED STAC PRODUCT(S) or LICENSED STAC LZS MOTOROLA
ENHANCED PRODUCT(S) or any other third party (hereinafter, collectively "Third
Party Claimant") asserts a patent essential to any standard of a recognized
engineering association, such as the ITU-C, Frame Relay Forum, or the IETF,
(hereinafter "ESSENTIAL PATENTS") against any MOTOROLA product and also asserts
that MOTOROLA is prevented from asserting claims under any MOTOROLA PATENTS
against such Third Party Claimant as a result of the licenses granted to STAC in
this AGREEMENT, then the licenses granted to STAC shall immediately be suspended
as to any products not generally offered for sale by the Third Party Claimant
within thirty (30) days of the date of written notice by MOTOROLA to STAC of
such assertions by such Third Party Claimant. The suspension of the licenses
granted to STAC shall be effective only if and so long as MOTOROLA actively
negotiates and/or defends such claim and only to the extent necessary to obviate
the assertions made by the Third Party Claimant to the effect that MOTOROLA is
prevented from asserting claims under MOTOROLA PATENTS because of this
AGREEMENT. MOTOROLA agrees to institute no legal action against either STAC or
the Third Party Claimant with respect to licensed product sold to Third Party
Claimant by STAC for the period of thirty (30) days following the Notice of
Suspension, during which thirty (30) days STAC may continue
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to operate as if the licenses were not suspended. After such thirty (30) day
period, no product sold, leased or otherwise disposed of by STAC to such Third
Party Claimant and no copy of software made by or for such Third Party Claimant
under authority granted by STAC shall be deemed to be a LICENSED STAC PRODUCT.
Such a suspension of the licenses granted to STAC shall remain in effect until
such time as MOTOROLA no longer actively negotiates and/or defends any assertion
of an ESSENTIAL PATENT by the Third Party Claimant or to the extent the
suspension is unnecessary for MOTOROLA to obviate any assertion made by the
Third Party Claimant to the effect that MOTOROLA is prevented from asserting
claims under MOTOROLA PATENTS because of this AGREEMENT.
Section 6 -- SUBLICENSES
6.1 STAC may grant sublicenses to its CHIPSET and software customers for the
MOTOROLA PATENTS on terms and conditions in conformance with the terms and
conditions contained in the exemplary license agreement attached hereto as
Exhibit C (hereinafter "INDUSTRY AGREEMENT"), as the MOTOROLA PATENTS are
defined in the INDUSTRY AGREEMENT; provided, however, that STAC may not grant
any sublicenses to the MOTOROLA PATENTS (as defined in the INDUSTRY AGREEMENT)
to Microsoft Corporation, Apple Computer, IBM, Digital Equipment Corporation
and Santa ▇▇▇▇ Operations.
6.2 Should STAC so desire, STAC shall be permitted to propose to MOTOROLA
modifications to the terms and conditions of the INDUSTRY AGREEMENT. STAC shall
propose such modifications by sending, by registered mail, return receipt
requested, to the address listed hereinafter in Section 10.11.1. MOTOROLA shall
either approve or deny such modifications within thirty (30) days of MOTOROLA's
receipt of STAC's proposed modifications. Failure by MOTOROLA to approve or deny
STAC's proposed modifications shall be deemed an approval of the proposed
modifications. Once any modifications have been approved by MOTOROLA, STAC will
be free to use an INDUSTRY AGREEMENT
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containing such modifications to use in accordance with granting sublicenses
pursuant to Section 6.1.
6.3 Schedule A of the INDUSTRY AGREEMENT sets forth the amount of royalties to
be paid by each sublicensee and the INDUSTRY AGREEMENT sets forth the timing and
manner of payments. As provided in the INDUSTRY AGREEMENT, royalties paid by
each sublicensee shall be paid directly to MOTOROLA. STAC shall use its best
efforts to ensure that all sublicensees pay the required royalty amounts to
MOTOROLA when due. If a sublicensee fails to pay the required royalties when
due, then the sublicense to that sublicensee shall, after reasonable notice to
the sublicensee, be immediately suspended.
6.4 Payments for royalties due MOTOROLA on account of any sublicenses shall be
discounted to STAC's benefit from the Schedule A attached to this AGREEMENT by
FIFTY PERCENT (50%) for the first year of each sublicensee's INDUSTRY AGREEMENT,
FORTY PERCENT (40%) for the second year of each sublicensee's INDUSTRY
AGREEMENT, and THIRTY PERCENT (30%) for the third and each subsequent year of
each sublicensee's INDUSTRY AGREEMENT. STAC may modify the royalties set forth
on Schedule A of the INDUSTRY AGREEMENT in its sole discretion and without prior
approval from MOTOROLA, so long as those royalties are not less than that listed
in Exhibit A of this AGREEMENT less the aforementioned discount. Within thirty
days of MOTOROLA's receipt of royalties from a STAC sublicensee pursuant to an
INDUSTRY AGREEMENT, MOTOROLA shall pay STAC the difference between: 1) the
royalties paid to MOTOROLA by the sublicensee, and 2) the amount that would be
due from the sublicensee using Schedule A of this AGREEMENT reduced in
accordance with the aforementioned discount.
6.5 Pursuant to the INDUSTRY AGREEMENT, STAC shall have the ability to perform
an audit of each sublicensee once each year in order to verify that the
sublicensee's payment of royalties is correct. During each year of this
AGREEMENT subsequent to the first year of this AGREEMENT, MOTOROLA may request
that STAC perform an audit of a reasonable number of sublicensees pursuant to
the audit provisions of
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the INDUSTRY AGREEMENT. However, in no event shall STAC be required by MOTOROLA
to perform any audits in any one year of this AGREEMENT in excess of the lower
of 1) ten percent (10%) of the STAC sublicensees, or 2) any number of STAC
sublicensees representing twenty percent (20%) of the dollar sales volume
(determined by unit volume multiplied by selling price) of all of STAC
sublicensees. Nevertheless, MOTOROLA may require STAC to perform at least one
audit per year.
Section 7 -- TERM AND ASSIGNABILITY
7.1 The term of this Agreement shall be from the EFFECTIVE DATE through the
entire unexpired term of the last to expire of STAC PATENTS and MOTOROLA PATENTS
licensed or subject to license herein.
7.2 Any royalty obligation of MOTOROLA or its SUBSIDIARY(IES) shall not extend
beyond the expiration of the last of the STAC PATENTS licensed herein.
7.3 Any royalty obligation of STAC or its SUBSIDIARY(IES) shall not extend
beyond the expiration of the last of the MOTOROLA PATENTS licensed herein.
7.4 In the event that MOTOROLA sells a MOTOROLA business unit or SUBSIDIARY
that utilizes the STAC PATENTS, STAC agrees to enter into a separate agreement
with that business unit or SUBSIDIARY wherein STAC will grant the same licenses
under Sections 3.1 and 3.2 above pursuant to the same royalty terms provided
herein, except that the provisions of Sections 4.4.2 and 4.13 shall not apply.
7.5 In the event that STAC sells a STAC business unit or SUBSIDIARY to an
entity other than Microsoft Corporation, that utilizes, or has customers that
utilize, the MOTOROLA PATENTS, MOTOROLA agrees to enter into a separate
agreement with that business unit or SUBSIDIARY wherein MOTOROLA will grant the
same license under Section 3.3 above
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pursuant to the same royalty terms provided herein, except that the provisions
of Section 4.12 above shall not apply.
7.6 In the event that STAC sells a STAC business unit or SUBSIDIARY to an
entity other than Microsoft Corporation, that utilizes, or has customers that
utilize, the MOTOROLA PATENTS, and STAC determines that only the STAC business
unit or SUBSIDIARY or its customers require rights to the MOTOROLA PATENTS
granted in this AGREEMENT, STAC may assign all of its rights and obligations to
the MOTOROLA PATENTS to such STAC business unit or SUBSIDIARY, including but not
limited to the provisions of Section 4.12. For the purposes of calculating the
amounts paid by such STAC business unit or SUBSIDIARY determined by Section
4.12, all prior payments made by STAC pursuant to this AGREEMENT shall be
included.
7.7 In the event that MOTOROLA enters into a joint development or partnership
agreement with an original equipment manufacturer, STAC agrees to enter into a
separate agreement with that original equipment manufacturer wherein STAC will
grant the same licenses under Sections 3.1 and 3.2 above pursuant to the same
royalty terms provided herein, except that the provisions of Sections 4.4.2 and
4.13 above shall not apply. No royalty shall be due pursuant to this AGREEMENT
for products sold by such original equipment manufacturer pursuant to such a
separate agreement; royalties for such products shall be due pursuant to such
separate agreement.
7.8 In the event that STAC enters into a joint development or partnership
agreement with an original equipment manufacturer, MOTOROLA agrees to enter into
a separate agreement with that original equipment manufacturer wherein MOTOROLA
will grant the same licenses under Section 3.3 above pursuant to the same
royalty terms provided herein, except that the provisions of Section 4.12 above
shall not apply. No royalty shall be due pursuant to this AGREEMENT for products
sold by such original equipment manufacturer pursuant to such a separate
agreement; royalties for such products shall be due pursuant to such separate
agreement.
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Section 8 -- WARRANTIES
8.1 Each party warrants that it has all rights necessary to grant the releases,
rights and licenses granted herein.
8.2 Each party warrants that any of its SUBSIDIARY(IES) licensed hereunder
shall undertake all obligations contained herein as if such SUBSIDIARY(IES) were
directly named as a party to this Agreement.
Section 9 -- PUBLICITY
9.1 Nothing in this Agreement shall be construed as conferring upon either
party the right to include in advertising, packaging or other commercial
activity any reference to the other party, its trademarks, trade names, service
marks, or other trade identity in a manner likely to cause confusion.
9.2 Either party may disclose the existence of this Agreement, but shall
otherwise keep the terms of this Agreement confidential and shall not now or
hereafter divulge any part thereof to any third party except:
9.2.1 with the prior written consent of the other party; or
9.2.2 to any governmental body having jurisdiction to request and to read the
same; or
9.2.3 as otherwise may be required by law or legal processes; or
9.2.4 to legal counsel representing either party; or
9.2.5 to its SUBSIDIARY(IES) provided that such divulging party shall impose
equivalent confidentiality obligations on the recipient in writing prior to such
divulgence.
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9.3 STAC agrees to include the text of Exhibit D in its multichannel data
compression data sheets and in its licenses for LZS DATA COMPRESSION software.
9.4 MOTOROLA agrees to use the STAC LZS logo, as specified in Exhibit E, on the
packaging and documentation of any products which use the STAC LZS DATA
COMPRESSION technology.
Section 10 -- MISCELLANEOUS PROVISIONS
10.1 Nothing contained in this Agreement shall be construed as:
10.1.1 restricting the right of either party or any of its SUBSIDIARY(IES) to
make, use, sell, lease or otherwise dispose of any particular product or
products not herein licensed;
10.1.2 conferring any license or other right, by implication, estoppel or
otherwise, under any patent application, patent or patent right, except as
herein expressly granted herein;
10.1.3 conferring any license or right with respect to any trademark, trade or
brand name, a corporate name of either party or any of their respective
SUBSIDIARY(IES), or any other name or ▇▇▇▇, or contraction, abbreviation or
simulation thereof;
10.1.4 imposing on either party any obligation to institute any suit or action
for infringement of any patent, or to defend any suit or action brought by a
third party which challenges or concerns the validity of any patent licensed
under this Agreement;
10.1.5 a warranty or representation by either party that any manufacture, use,
sale, lease or other disposition of its products or services will be free from
infringement of any patent other than the patents licensed herein;
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MOTOROLA CONFIDENTIAL PROPRIETARY
17
10.1.6 imposing on either party any obligation to file any patent application or
to secure any patent or maintain any patent in force; or
10.1.7 an obligation on either party to furnish any manufacturing or technical
information under this Agreement except as the same is specifically provided for
herein.
10.2 No express or implied waiver by either of the parties to this Agreement of
any breach of any term, condition or obligation of this Agreement by the other
party shall be construed as a waiver of any subsequent breach of that term,
condition or obligation or of any other term, condition or obligation of this
Agreement of the same or of a different nature.
10.3 Anything contained in this Agreement to the contrary notwithstanding, the
obligations of the parties hereto shall be subject to all laws, both present and
future, of any Government having jurisdiction over either party hereto, and to
orders or regulations of any such Government, or any department, agency, or
court thereof, and acts of war, acts of public enemies, strikes, or other labor
disturbances, fires, floods, acts of God, or any causes of like or different
kind beyond the control of the parties, and the parties hereto shall be excused
from any failure to perform any obligation hereunder to the extent such failure
is caused by any such law, order, regulation, or contingency but only so long as
said law, order, regulation or contingency continues.
10.4 This Agreement is the result of negotiation between the parties and,
accordingly, shall not be construed for or against either party regardless of
which party drafted this Agreement or any portion thereof.
10.5 Nothing in this Agreement shall be construed as creating a partnership,
joint venture, or other formal business organization of any kind.
-17-
MOTOROLA CONFIDENTIAL PROPRIETARY
18
10.6 In no event shall either party be liable to the other party by reason of
this Agreement or any breach or termination of this Agreement for any loss of
prospective profits or incidental or special or consequential damages.
10.7 The captions used in this Agreement are for convenience only, and are not
to be used in interpreting the obligations of the parties under this Agreement.
10.8 This Agreement and the performance of the parties hereunder shall be
construed in accordance with and governed by the laws of the State of Illinois,
United States of America.
10.9 If any term, clause, or provision of this Agreement shall be judged to be
invalid, the validity of any other term, clause, or provision shall not be
affected; and such invalid term, clause, or provision shall be deemed deleted
from this Agreement.
10.10 This Agreement sets forth the entire Agreement and understanding between
the parties as to the subject matter hereof and merges all prior discussions
between them, and neither of the parties shall be bound by any conditions,
definitions, warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or as duly set forth on
or subsequent to the date hereof in writing and signed by a proper and duly
authorized official of the party to be bound thereby.
10.11 All notices required or permitted to be given hereunder shall be in
writing and shall be valid and sufficient if dispatched by registered mail,
postage prepaid, in any post office in the United States, addressed as follows:
10.11.1 If to MOTOROLA:
Motorola Inc.
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MOTOROLA CONFIDENTIAL PROPRIETARY
19
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Vice President for
Patents, Trademarks & Licensing
10.11.2 If to STAC:
Stac, Inc.
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: Vice President, Finance
10.12.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or the
date at which such notice takes effect, as the case may be.
IN WITNESS WHEREOF, each party hereto has caused this Agreement to be executed
in duplicate by its duly authorized representative:
Motorola, Inc. Stac, Inc.
By: [SIG] By: [SIG]
--------------------------------- ------------------------------------
Title: VP & GM Network Title: Vice President, Finance
Systems Division
-19-
MOTOROLA CONFIDENTIAL PROPRIETARY
20
SCHEDULE A
For each year of this AGREEMENT, a party who shall pay a license fee
shall pay the amount from TABLE I according to forecasted NET SALES PRICE and
ANNUAL VOLUME. NET SALES PRICE is the averaged forecasted selling price for all
LICENSED MOTOROLA PRODUCTS or LICENSED STAC PRODUCTS, as applicable, sold during
the year, and ANNUAL VOLUME is the number of LICENSED MOTOROLA PRODUCTS or
LICENSED STAC PRODUCTS, as applicable, forecasted for shipment during the year.
In the case of LICENSED MOTOROLA PRODUCTS or LICENSED STAC PRODUCTS where data
compression is sold as an option, the NET SALES PRICE is the selling price of
the option together with the host product or host platform having the option. If
the actual sales for the party during the year exceed the forecasted volume for
which a royalty was paid at the beginning of the year, royalties are payable in
accordance with TABLE II. If no sales are anticipated for the year, then no
license fee is due. However, if any sales are made during a year, the minimum
royalty due is $20,000.00.
TABLE I: ANNUAL LICENSE FEE
=====================================================================================================
NET SALES PRICE
Annual Volume <$50 <$250 <$1000 >$1000
-----------------------------------------------------------------------------------------------------
10,000 or less $20,000 $20,000 $25,000 $40,000
100,000 or less $40,000 $50,000 $85,000 $165,000
1,000,000 or less $105,000 $205,000 $410,000 $825,000
For annual volumes in excess of 1,000,000 units, no annual royalty is charged
and, instead, the following per unit royalty is assessed:
$0.125 $0.25 $0.50 $1.00
=====================================================================================================
TABLE II:
PER UNIT ROYALTY FOR UNITS
IN EXCESS OF VOLUME BAND UPPER LIMIT.
=====================================================================================================
NET SALES PRICE
Annual Volume <$50 <$250 <$1000 >$1000
-----------------------------------------------------------------------------------------------------
10,000 or less $0.50 $1.00 $2.00 $4.00
100,000 or less $0.25 $0.50 $1.00 $2.00
1,000,000 or less $0.125 $0.25 $0.50 $1.00
=====================================================================================================
-20-
MOTOROLA CONFIDENTIAL PROPRIETARY
21
SCHEDULE B
LZS Terms
Royalties for each LICENSED MOTOROLA LZS PRODUCT shall be payable according to
the following Current License Fee Schedule:
Total Average Selling Price (ASP)
Units <$50 <$250 <$1000 >$1000
< 1K $ 5K $10K $15K $20K
< 10K $12K $25K $37K $50K
<100K $25K $45K $60K $75K
<1000K $50K $70K $90K $95K
>1000K $80K $85K -- --
The Average Selling Price (ASP) of LICENSED MOTOROLA LZS PRODUCTS is the average
forcasted selling price for all LICENSED MOTOROLA LZS PRODUCTS during the
applicable year. The Total Units is the volume of LICENSED MOTOROLA LZS PRODUCTS
forecasted for shipment during the applicable year. If LICENSED MOTOROLA LZS
PRODUCTS comprises multiple products, Total Units is the sum of all LICENSED
MOTOROLA LZS PRODUCTS and the ASP is the average of the ASP for each of the
products comprising LICENSED MOTOROLA LZS PRODUCTS.
In the case of LICENSED MOTOROLA LZS PRODUCTS where data compression is sold as
an option, the ASP is the ASP of the option together with the host product or
host platform having the option.
If multiple compression libraries (e.g., separate versions of LZS DATA
COMPRESSION software for different platforms, or software for one or other
platforms that embodies enhancements to LZS DATA COMPRESSION developed by
MOTOROLA) are used, then the royalty payable shall be calculated as follows: The
royalty for each individual library is calculated separately using the
procedures described above. The total License Fee will be the sun of 1) the
largest License Fee plus 2) half of the sum of all other License Fees.
The Current License Fee Schedule above shall be updated on the anniversary of
this AGREEMENT by STAC's then Current License Fee Schedule, which shall not have
an amount of increase in royalties of more that ten percent (10%) from the
Current License Fee Schedule for the prior applicable year. Such updated License
Fee Schedule shall
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MOTOROLA CONFIDENTIAL PROPRIETARY
22
become the Current License Fee Schedule for the subsequent year of this
AGREEMENT.
-22-
MOTOROLA CONFIDENTIAL PROPRIETARY
23
EXHIBIT C
INDUSTRY AGREEMENT
-23-
MOTOROLA CONFIDENTIAL PROPRIETARY
24
PATENT LICENSE AGREEMENT
THIS AGREEMENT is entered into on this ___ day of _________ by and between Stac,
Inc., a California corporation having an office at ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇
▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ (hereinafter called "STAC"), and
__________, hereinafter called "LICENSEE").
WHEREAS, MOTOROLA (defined below) owns and has, or may have, rights in certain
patents issued, and applications for patents pending, in various countries of
the world under which LICENSEE desires to acquire licenses as hereinafter
provided, and
WHEREAS, STAC has certain rights to grant sublicenses under certain patent
rights held by MOTOROLA,
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter set forth, it is agreed as follows:
Section 1 -- DEFINITIONS
-----------------------
1.1 SUBSIDIARY(IES) means any legal entity, more than fifty percent (50%) of
whose outstanding shares or securities representing the right to vote for the
election of directors or other managing authority are, now or hereafter, owned
or controlled, directly or indirectly by that party (but only so long as such
conditions exist).
1.2 MOTOROLA means Motorola, Inc., a Delaware corporation having an office at
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
1.3 MOTOROLA PATENTS shall mean U.S. Patent Nos. 5,130,993 and 5,245,614, any
patent issuing from U.S. Patent Application No. 08/156,857 and including all
divisions, continuations, continuations-in-part, reissues, renewals, and
extensions, and any counterparts claiming priority therefrom, for any of the
aforementioned.
1.4 CHIPSETS means one or more semiconductor devices which alone, or
collectively, implement the function of data compression.
1.5. EQUIPMENT means routers, bridges, multiplexers, frame relay and other
frame/packet access devices, modems operating over a
1
25
telephone network, data service units, and ISDN terminal adapters other than
CHIPSETS, or a combination of software and routers, bridges, multiplexers, frame
relay and other frame/packet access devices, modems operating over a telephone
network, data service units, and ISDN terminal adapters, other than CHIPSETS,
which, alone or collectively, include a function of data compression and include
a function of data communication with one or more interfaces to a public or
private network.
1.6 LICENSED EQUIPMENT means EQUIPMENT infringing one or more of the MOTOROLA
PATENTS which is identified by LICENSEE on the form of Exhibit B.
1.7 LICENSED SOFTWARE means software infringing one or more of the MOTOROLA
PATENTS which is identified by LICENSEE on the form of Exhibit B.
1.8 LICENSED PRODUCTS means LICENSED EQUIPMENT and LICENSED SOFTWARE.
Section 2 -- GRANTS
2.1 STAC hereby grants to LICENSEE and its SUBSIDIARY(IES), for the lives of
the MOTOROLA PATENTS, a non-exclusive, non-transferable license throughout the
world under MOTOROLA PATENTS without the right to sub-license, to make and have
made, LICENSED EQUIPMENT, and to use, lease, sell, or otherwise dispose of such
LICENSED EQUIPMENT.
2.2 STAC on behalf of MOTOROLA hereby releases, acquits and forever discharges
LICENSEE and its SUBSIDIARY(IES) and their respective distributors, dealers,
customers and users from any and all claims or liability for infringement of the
MOTOROLA PATENTS by the use, lease, sale or other disposition of LICENSED
PRODUCTS prior to the EFFECTIVE DATE.
Section 3 -- PAYMENTS
3.1 In consideration for the license grants of Section 2.1, LICENSEE agrees to
pay to MOTOROLA the license fees in accordance with Schedule A. based on
LICENSED PRODUCTS identified by LICENSEE on the form of Exhibit B.
2
26
3.2 In consideration for the release of Section 2.2, LICENSEE agrees to pay to
MOTOROLA on the date of signing this AGREEMENT the amount representing royalties
based on LICENSED PRODUCTS sold. prior to date of signing of this Agreement, in
accordance with Schedule A. For the purpose of calculating such amount, all
LICENSED PRODUCTS sold prior to the signing of this AGREEMENT shall be
identified on the form of Exhibit B for each year prior to the signing of this
AGREEMENT, beginning on July 14, 1992. If, however, the AGREEMENT is signed on
or before January 31, 1996, LICENSEE need only identify on the form of Exhibit B
all LICENSED PRODUCTS sold since September 1, 1995, and pay the amount based
only on that LICENSED PRODUCT then identified on the form of Exhibit B.
3.3 Within thirty (30) days of executing this AGREEMENT, and on each
anniversary of this AGREEMENT, a responsible official of LICENSEE shall in good
faith estimate for the current year in writing to STAC and MOTOROLA an
approximate number of LICENSED PRODUCTS to be sold for that year, identify such
on the form of Exhibit B, and shall make a royalty payment to MOTOROLA (for
itself and all of its SUBSIDIARY(IES) based upon Schedule A, Table I as to the
number of LICENSED PRODUCTS sold, leased or otherwise disposed of by LICENSEE as
identified on the form of Exhibit B. Within thirty (30) days following the
anniversary of this AGREEMENT, LICENSEE shall certify in writing, incorporating
the form of Exhibit B, either that the number of LICENSED PRODUCTS sold, leased
or otherwise disposed of in the previous year did not exceed the estimated
number, or LICENSEE shall certify in writing that the number of LICENSED
PRODUCTS sold, leased or otherwise disposed of in the previous year exceeded the
estimate, and shall pay to MOTOROLA a royalty for the number of LICENSED
PRODUCTS sold in excess of the estimate for the previous year in accordance with
Schedule A, Table II.
3.4 Any payment hereunder which shall be delayed for more than thirty (30) days
beyond the due date shall be subject to an interest charge of one (1) percent
per month on the unpaid balance payable in United States currency until paid.
The foregoing payment of interest shall not affect either party's right to
terminate in accordance with Section 6.
3.5 With respect to the royalty and reporting set forth in this Section 3,
LICENSEE shall keep full, clear and accurate records with respect to LICENSED
PRODUCTS sold, leased or otherwise disposed
3
27
of. These records shall be retained for a period of three (3) years from the
date of reporting and payment notwithstanding the expiration or other
termination of this AGREEMENT. STAC shall have the right through a mutually
agreed upon independent certified public accountant and at its expense, to
examine and audit, not more than once a year, and during normal business hours,
all such records and such other records and accounts as may under recognized
accounting practices contain information bearing upon the amount of royalty
payable by LICENSEE to MOTOROLA under this AGREEMENT. Prompt adjustment shall be
made to compensate for any errors and/or omissions disclosed by such examination
or audit.
3.6 MOTOROLA shall bear all taxes imposed on it with respect to the payments of
this Section, provided, however, that if so required by applicable law, LICENSEE
shall withhold the amount of taxes levied on payments to be made by LICENSEE
pursuant to this AGREEMENT, and shall promptly make payment of the withheld
amount to the appropriate tax authorities and shall transmit to MOTOROLA
official tax receipts or other evidence issued by said appropriate tax
authorities sufficient to enable MOTOROLA to support a claim for tax credit in
respect to such withheld taxes so paid by LICENSEE.
3.7 No royalty shall be payable on LICENSED PRODUCTS sold after the seventh
full year from the date of execution of this AGREEMENT.
3.8 MOTOROLA may increase the royalties shown in Table I by not more than
ten percent (10%) each year.
Section 4 -- SUSPENSION OF LICENSE
If at any time during the term of this AGREEMENT, LICENSEE asserts a patent
against any MOTOROLA product and also asserts that MOTOROLA is prevented from
asserting claims under any MOTOROLA PATENTS against LICENSEE as a result of the
licenses granted to STAC in this AGREEMENT, then the licenses granted to
LICENSEE shall immediately be suspended. The suspension of the licenses granted
to LICENSEE shall be effective only if and so long as MOTOROLA actively
negotiates and/or defends such claim and only to the extent necessary to obviate
the assertions made by LICENSEE to the effect that MOTOROLA is prevented from
asserting claims under MOTOROLA PATENTS because of this AGREEMENT.
4
28
Section 5 -- WIRE TRANSFER
5.1 All sums due MOTOROLA are payable in United States dollars and shall be
paid by wire transfer to the following MOTOROLA bank account unless otherwise
directed:
The Bank of Boston
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇
Account: 531-31430
Account Name: Motorola, Inc.
Federal Fund ID: 011000390
Section 6 -- TERM, TERMINATION, AND ASSIGNABILITY
6.1 The term of this AGREEMENT shall be from the EFFECTIVE DATE through the
entire unexpired term of the last to expire MOTOROLA PATENTS licensed or subject
to license herein, unless earlier terminated as hereinafter provided.
6.2 In the event of any breach of this AGREEMENT by either party hereto
(including LICENSEE's obligation to make payments under Section 3), if such
breach is not corrected within forty-five (45) days after written notice to the
breaching party describing such breach, this AGREEMENT may be terminated
forthwith by further written notice to that effect from the party noticing the
breach. In the event of termination of this AGREEMENT pursuant to this Section
6.2, the licenses and rights granted to or for the benefit of LICENSEE and its
SUBSIDIARY(IES) under the MOTOROLA PATENTS shall terminate as of the date
termination takes effect.
6.3 This AGREEMENT is personal to each of the parties hereto; and either party
shall have the right to terminate this AGREEMENT by giving written notice of
termination to the other party at any time upon or after: 1) the filing by the
other party of a petition in bankruptcy or insolvency; 2) any adjudication that
the other party is bankrupt or insolvent; 3) the filing by the other party under
any law relating to bankruptcy or insolvency; 4) the appointment of a receiver
for all or substantially all of the property of the other party; 5) the making
by the other party of any assignment or attempted assignment of this AGREEMENT
for the benefit of
5
29
creditors; 6) any admission or statement by the other party that it is bankrupt
or insolvent; or 7) the institution of any proceedings for the liquidation or
winding up of the other party's business or for the termination of its corporate
charter. In the event of termination of this AGREEMENT pursuant to this Section
6.3 the licenses and rights granted to or for the benefit of LICENSEE and its
SUBSIDIARY(IES) under the MOTOROLA PATENTS shall terminate as of the date
termination takes effect.
6.4 The rights or privileges provided for in this AGREEMENT as to LICENSED
EQUIPMENT may be assigned or transferred by either party only with the prior
written consent of the other party, which consent will not be unreasonably
withheld, and with the authorization or approval of any governmental authority
as then may be required.
Section 7 -- WARRANTIES
7.1 STAC warrants that it has all rights necessary to grant the rights and
licenses granted in this AGREEMENT.
7.2 Each party warrants that any of its SUBSIDIARY(IES) licensed hereunder
shall undertake all obligations contained herein as if such SUBSIDIARY(IES) were
directly named as a party to this AGREEMENT.
Section 8 -- PUBLICITY
8.1 Nothing in this AGREEMENT shall be construed as conferring upon either
party the right to include in advertising, packaging or other commercial
activity any reference to the other party or MOTOROLA, its trademarks, trade
names, service marks, or other trade identity in a manner likely to cause
confusion.
8.2 Either party may disclose the existence of this AGREEMENT, but shall
otherwise keep the terms of this AGREEMENT confidential and shall not now or
hereafter divulge any part thereof to any third party except with the prior
written consent of the other party; to any governmental body having jurisdiction
to request and to read the same; as otherwise may be required by law or legal
processes; to legal counsel representing either party; or to its SUBSIDIARY(IES)
provided that such divulging party shall impose equivalent.
6
30
confidentiality obligations on the recipient in writing prior to such
divulgence.
Section 9 -- MISCELLANEOUS PROVISIONS
9.1 Nothing contained in this AGREEMENT shall be construed as:
9.1.1 restricting the right of either party or any of its SUBSIDIARY(IES) to
make, use, sell, lease or otherwise dispose of any particular product or
products not herein licensed;
9.1.2 conferring any license or other right, by implication, estoppel or
otherwise, under any patent application, patent or patent right, except as
herein expressly granted herein;
9.1.3 conferring any license or right with respect to any trademark, trade or
brand name, a corporate name of either party or any of their respective
SUBSIDIARY(IES), or any other name or ▇▇▇▇, or contraction, abbreviation or
simulation thereof;
9.1.4 imposing on either party any obligation to institute any suit or action
for infringement of any patent, or to defend any suit or action brought by a
third party which challenges or concerns the validity of any patent licensed
under this AGREEMENT;
9.1.5 a warranty or representation by either party that any manufacture, use,
sale, lease or other disposition of its products or services will be free from
infringement of any patent other than the patents licensed herein;
9.1.6 imposing on either party any obligation to file any patent application or
to secure any patent or maintain any patent in force; or
9.1.7 an obligation on either party to furnish any manufacturing or technical
information under this AGREEMENT except as the same is specifically provided for
herein.
9.2 No express or implied waiver by either of the parties to this AGREEMENT of
any breach of any term, condition or obligation of this Agreement by the other
party shall be construed as a waiver of any subsequent breach of that term,
condition or obligation or of any
7
31
other term, condition or obligation of this AGREEMENT of the same or of a
different nature.
9.3 Anything contained in this AGREEMENT to the contrary notwithstanding, the
obligations of the parties hereto shall be subject to all laws, both present and
future, of any Government having jurisdiction over either party hereto, and to
orders or regulations of any such Government, or any department, agency, or
court thereof, and acts of war, acts of public enemies, strikes, or other labor
disturbances, fires, floods, acts of God, or any causes of like or different
kind beyond the control of the parties, and the parties hereto shall be excused
from any failure to perform any obligation hereunder to the extent such failure
is caused by any such law, order, regulation, or contingency but only so long as
said law, order, regulation or contingency continues.
9.4 Nothing in this AGREEMENT shall be construed as creating a partnership,
joint venture, or other formal business organization of any kind.
9.5 In no event shall either party be liable to the other party by reason of
this AGREEMENT or any breach or termination of this AGREEMENT for any loss of
prospective profits or incidental or special or consequential damages.
9.6 If any term, clause, or provision of this AGREEMENT shall be judged to be
invalid, the validity of any other term, clause, or provision shall not be
affected; and such invalid term, clause, or provision shall be deemed deleted
from this AGREEMENT.
9.7 This AGREEMENT sets forth the entire AGREEMENT and understanding between
the parties as to the subject matter hereof and merges all prior discussions
between them, and neither of the parties shall be bound by any conditions,
definitions, warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or as duly set forth on
or subsequent to the date hereof in writing and signed by a proper and duly
authorized official of the party to be bound thereby.
9.8 All notices required or permitted to be given hereunder shall be in writing
and shall be valid and sufficient if dispatched by registered mail, postage
prepaid, in any post office in the United States or ______________, addressed as
follows:
8
32
If to STAC:
Stac, Inc.
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: Vice President, Finance
If to LICENSEE:
Attention:
9.9 The date of receipt of such a notice shall be the date for the commencement
of the running of the period provided for in such notice, or the date at which
such notice takes effect, as the case may be.
IN WITNESS WHEREOF, each party hereto has caused this AGREEMENT to be executed
in duplicate by its duly authorized representative:
STAC, INC. LICENSEE
By: By:
--------------------------------- ------------------------------------
Title: Title:
------------------------------ ---------------------------------
9
33
SCHEDULE A
For each year of this agreement, LICENSEE shall pay the amount from
Table 1 according to forecasted NET SALES PRICE and ANNUAL VOLUME. NET SALES
PRICE is the averaged forecasted selling price for all LICENSED PRODUCTS sold
during the year, and ANNUAL VOLUME is the number of LICENSED PRODUCTS forecasted
for shipment during the year. If the actual sales for LICENSED PRODUCTS during
that year exceed the forecasted volume for which a royalty was paid at the
beginning of the year, royalties are payable in accordance with TABLE II. If no
sales are anticipated for that year, then no license fee is due. If any sales
are made during the year, the minimum royalty is $20,000.00.
TABLE I: ANNUAL LICENSE FEE
======================================================================================================
NET SALES PRICE
Annual Volume <$50 <$250 <$1000 >$1000
------------------------------------------------------------------------------------------------------
10,000 or less $20,000 $20,000 $25,000 $40,000
100,000 or less $40,000 $50,000 $85,000 $165,000
1,000,000 or less $105,000 $205,000 $410,000 $825,000
For volumes in excess of 1,000,000 units, no annual royalty is charged. The per
unit royalty is as follows:
$0.125 $0.25 $0.50 $1.00
======================================================================================================
TABLE II:
PER UNIT ROYALTY FOR UNITS
IN EXCESS OF VOLUME UPPER LIMIT.
======================================================================================================
NET SALES PRICE
Annual Volume <$50 <$250 <$1000 >$1000
------------------------------------------------------------------------------------------------------
10,000 or less $0.50 $1.00 $2.00 $4.00
100,000 or less $0.25 $0.50 $1.00 $2.00
1,000,000 or less $0.125 $0.25 $0.50 $1.00
======================================================================================================
10
34
EXHIBIT B
Licensed Product is Identified by LICENSEE as follows:
NET SALES PRICE ANNUAL VOLUME
------------------------------ --------------------------------
Product Name <$50 <$250 <$1000 >$1000 <10K <100K <1,000K >1,000K
Total Volume all Products
Average NET SALES PRICE all Products
35
EXHIBIT D
The use of this software and/or chip may require a license from Motorola. A
license agreement for the right to use Motorola patents may be obtained through
STAC or directly from Motorola.
-24-
MOTOROLA CONFIDENTIAL PROPRIETARY
36
EXHIBIT E
The STAC LZS Logo is shown below. The STAC LZS Logo Use Guidelines are contained
in a separate bound manual provided with this agreement.
-25-
MOTOROLA CONFIDENTIAL PROPRIETARY
