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Exhibit 10.4
ORIGINAL
HARDWARE AND SOFTWARE TECHNOLOGY LICENSING AGREEMENT
This agreement is made as February 1, 1996 by and between Advanced
Telecommunications Modules Limited whose registered office is at Xxxxx Xxxxxxxx
Xxxxx, 0 Xxxxx Xxxxxxxx, Xxxxxxxxx XX0 0XX ("ATML") and its affiliate Advanced
Telecommunications Modules, Inc.; and Com21, Inc. at 0000 Xxxxxxxx Xxxxx,
Xxxxxxxx Xxxx, Xxxxxxxxxx XXX 00000 ("Licensee")
WHEREAS:
ATML develops and markets computer communications software and hardware and
Licensee wishes to license such technology on the terms of this license.
NOW IT IS AGREED:
1. INTERPRETATION
1.1 In this Agreement, save where the context otherwise requires, the
following words and phrases shall have the following meanings:
"Affiliate" any Holding or Subsidiary company of any
company and any Subsidiary or Holding
company of any such Holding company of
such company
"Agreement" this agreement together with all of its
Schedules
"Designated Equipment" the equipment specified in Schedule 2 as
amended from time to time by the written
agreement of the parties
"Documentation" any documentation supplied to Licensee by
ATML from time to time during the
continuation of this Agreement and which
relates to the Licensed Technology
"Generated Technology" all software programs
generated from, or in connection with, or
by the use of, the Licensed Software and
all hardware generated from or in
connection with or by the use of the
Licensed Hardware and all modified,
enhanced, updated, revised or additional
versions and releases (including new
releases) thereof
"Intellectual Property Rights" patents, trade marks,
service marks, registered designs and
applications for any of the foregoing,
copyright, know-how confidential
information, trade or business names,
design rights and any other similar rights
protected in any country
"Licensed Hardware" the hardware specified in Part 2 of
Schedule 1, as amended from time to time
"Licensed Software" the software specified in Part I of
Schedule I as amended from time to time
"Licensed Technology" together the Licensed Hardware and the
Licensed Software
"Maintenance Services" the maintenance services to be provided by
ATML to Licensee in
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accordance with Schedule 3 and clause 3
"Maintenance Services Fee" the fee for the Maintenance Services set
out in Clause 5 of this agreement and as
amended from time to time by ATML
"Object Code" the directly executable program in binary
code derived from Source Code using a
compiler or otherwise
"Price" the license fee specified in Clause 5
"Royalty" the royalty payable by Licensee to ATML in
accordance with the terms of Schedule 4
and Clause 5
"Source Code" all material necessary to enable a
programmer of reasonable skill and
experience to maintain and enhance
software, including but not limited to,
logic, logic diagrams, flow charts,
orthographic representations, algorithms,
routines, sub-routines, utilities,
modules, file structures, coding sheets,
specifications and the program
instructions
"Territory" the territory specified in Schedule 5
1.2 The headings to the clauses of this Agreement are for ease of
reference only and shall not affect the interpretation or
construction thereof.
1.3 Reference to any statute or statutory provision includes a reference
to that statute or statutory provision as from time to time amended
extended or re-enacted.
1.4 Words importing the singular number shall include the plural and vice
versa, words importing any gender shall include all other genders,
words importing persons shall include bodies corporate,
unincorporated associations and partnerships and vice versa and
references to the whole shall include the part and vice versa.
2. EXTENT OF LICENSE
2.1 ATML grants to Licensee for the term of this Agreement a
non-exclusive, non-transferable and royalty bearing license under all
applicable patents, copyrights, and trade secrets in the Territory,
to:
2.1.1 use, copy and modify the Source Code and Object Code of the
Licensed Technology and create derivative works of the
Licensed Technology for use on or in the course of the
operation of the Designated Equipment only; and
2.1.2 grant non-exclusive, non-assignable sub-licenses of the
Object Code of the Licensed Technology and the Object Code
of the Generated Technology to any third party for such
third party to use on or in the course of the operation of
the Designated Equipment; and
2.1.3 use and copy the Documentation for its own internal use;
2.1.4 sub-license the Object Code of the Licensed Technology and
the Object Code of the Generated Technology to U.S.
Government agencies PROVIDED THAT if a sub-license is
granted to any unit or agency of the United States
Government the sub-license shall contain legends in the
form or substantially similar to the following provisions:
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2.1.4.1 For units of the Department of Defense:
The Licensed [Software] is commercial computer
software as defined in 48 C.F.R.211 and therefore
is provided to units of the Department of Defense
under the terms of this agreement for the
Licensed [Software]. In the alternative, if 48
C.F.R.211 is not invoked, the Licensed [Software]
is licensed as follows: Restricted rights Legend:
Use, duplication, or disclosure by the United
States Government is subject to restrictions as
set forth in subparagraph (c)(1)(ii) of the
Rights in Technical Data and Computer Software
Clause at 48 C.F.R.52.227-7013, LICENSEE's name
and address.
2.1.4.2 For civilian agencies:
Restricted Rights Legend: Use, reproduction, or
disclosure is subject to restrictions set forth
in subparagraph (a) through (d) of the Commercial
Computer Software Restricted Rights clause at 48
C.F.R.52.227-19 and the limitations set forth in
LICENSEE's standard commercial agreement for the
software. Unpublished rights reserved under the
copyright laws of the United States.
2.1.5 use, copy and modify the Licensed Technology listed in
Schedule 1, which include all related firmware software,
hardware drawings, schematics, bills of material, parts and
component specifications, manufacturing processes and
procedures, internal design drawings, and design and
manufacturing drawings. As part of the maintenance
contract, ATML will timely provide the same information
regarding updates, changes, modifications and enhancements
to this Licensed Hardware.
2.2 This License permits use of the Licensed Technology only to the
extent that such use is necessary for the purposes specified in
sub-clause 2.1 but is subject to Licensee satisfying the following
conditions:
Licensee shall:
2.2.1 include all such copyright and other proprietary rights
notices on any products incorporating any Licensed
Technology as ATML shall from time to time specify in
writing that provides sufficient notice necessary to
protect ATML's intellectual property; and
2.2.2 not, and shall contract with its sub-licensees of the
Licensed Technology or the Generated Technology that they
shall not, copy the Licensed Technology or the Generated
Technology other than in accordance with the express terms
of this Agreement; and
2.2.3 exclude liability of ATML and its Affiliates in respect of
the Licensed Technology and the Generated Technology to the
full extent legally possible in all its dealings with or
exploitation of the same and contract with its
sub-licensees; and
2.2.4 reasonably notify ATML of all geographical areas where the
Licensed Technology and/or the Generated Technology (or any
part thereof) will be licensed, or otherwise released by or
through or on behalf of it, to enable ATML to consider
local legal requirements for the protection of the
Intellectual Property Rights in the Licensed Technology, in
those jurisdictions; and
2.2.5 include in all sub-licenses and other agreements in respect
of the Licensed Technology and/or Generated Technology (or
any of them) a provision to make it clear that ATML does
not accept any liability for the supply of any upgrades or
maintenance of any kind in relation to the Licensed
Technology or the Generated Technology; and
2.2.6 where the Licensed Technology and/or the Generated
Technology is sub-licensed within the European Union the
Licensee shall include in all sub-licenses and other
agreements a clause in the
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following terms:
"[Sub-licensee] shall not modify, enhance, decompile,
disassemble or reverse engineer the [Licensed
Technology/Generated Technology]. Information necessary to
achieve inter-operability of the [Licensed
Technology/Generated Technology] with other programs is
available from [Licensee],"
2.2.7 not deface, remove, obliterate or otherwise interfere with
any copyright notice of ATML on the Licensed Technology and
Documentation and all copies thereof; and
2.2.8 pay all Royalties and the Price when they fall due; and
2.2.9 notify ATML forthwith on it becoming aware of any claim or
potential claim of infringement of third party Intellectual
Property Rights by the use or dealing with the Licensed
Technology or Generated Technology in accordance with this
Agreement or the terms of any sub-license or other fights
granted pursuant to the terms of this Agreement; and
2.2.10 not settle or compromise or negotiate the settlement of any
third party claim for breach of Intellectual Property
Rights in respect of the Licensed Technology without the
prior written consent of ATML and if requested by ATML pass
the conduct of any such claim to ATML.
2.3 Save as expressly specified in this clause 2, Licensee shall not copy
or disclose the Licensed Technology, the Generated Technology or the
Documentation for any purpose whatsoever without the prior written
consent of ATML. Licensee is authorized to make a maximum of 10
copies of the Licensed Technology for back up purposes only and shall
keep such back up copies at its Company locations.
2.4 Licensee:-
2.4.1 shall have the right to modify or enhance the Licensed
Technology as permitted in this document;
2.4.2 shall own the intellectual property in those elements of
the Generated Technology created by the Licensee;
2.4.3 hereby grants to ATML a world-wide, royalty free, perpetual
and irrevocable license to use, copy and modify any
modifications and enhancements of the Licensed Technology
made by the Licensee and/or its agents;
2.4.4 will negotiate in good faith a separate license agreement
with ATML on `most favored nation terms' which will provide
preferential access by ATML to the source code, object code
and intellectual property of those elements of the
Generated Technology created by the Licensee and
subsequently incorporated into products.
2.5 The relationship between the parties hereunder is of licenser and
licensee. ATML and Licensee (including their officers, employees or
agents):
2.5.1 shall not be deemed to be the agents or representatives,
legal or otherwise of the other for any purpose;
2.5.2 are not granted any express or implied right or authority
to assume or create an obligation or responsibility on
behalf of or in the name of the other or to the other in
any manner;
2.5.3 shall not act or purport to act as agents or
representatives of the other when endeavoring to make sales
of the Licensed Technology and/or the Generated Technology.
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3. SECURITY, INTELLECTUAL PROPERTY RIGHTS AND MAINTENANCE
3.1 Licensee agrees not to alter, remove, conceal or deface any
copyright, or other proprietary rights notice or identification which
indicates the ownership of the Licensed Technology or the
Documentation or any interest therein (including Intellectual
Property Rights) provided by ATML (and on all copies thereof) and
Licensee shall ensure that all copies of the Licensed Technology and
the Documentation and all derivatives thereof containing the Licensed
Technology, or any of it, or any derivative which provides materially
the same function as the Licensed Technology, or any of it, made by
or on behalf of Licensee shall bear the proprietary rights notice
contained on the Licensed Technology when received by Licensee.
Licensee shall ensure that the terms of contracts entered by it in
respect of the Licensed Technology or any of it contain terms the
same as this sub-clause 3.1 binding such third party.
3.2 ATML shall provide Licensee with Maintenance Services in accordance
with the following provisions during the period that Licensee
continuously maintains Maintenance Services:-
3.2.1 the Maintenance Services shall be provided by ATML for the
term of this Agreement;
3.2.2 ATML shall invoice Licensee with the Maintenance Services
Fee annually, in advance.
3.2.3 ATML will keep Licensee at the current level of revisions,
enhancements, bug fixes free of charge.
3.2.4 At all times ATML will keep Licensee current with all
modifications to the Licensed Technology such that
Licensee can make timely modifications to the Generated
Technology to interface with ATML's currently sold and
latest generation ATM switch and motherboard, where
applicable.
3.3 For the avoidance of doubt the obligation of ATML to provide
Maintenance Services shall be in respect of the Licensed Software and
Licensed Hardware only and shall not be extended to the Generated
Technology.
3.4 Licensee acknowledges that title to and all Intellectual Property
Rights in the Licensed Technology and all modifications, upgrades,
new releases and enhancements thereof and to all manuals and other
Documentation relating thereto are and shall remain vested in ATML,
or its Affiliates at all times. The provisions of this Agreement do
not grant any rights to Licensee in respect of the use of any trade
xxxx of ATML or any Affiliate of it, which is hereby specifically
excluded. However, this in no way limits or reduces the obligation of
Licensee to give full credit to ATML in respect of the Licensed
Technology and to apply all copyright notices of ATML thereto and to
the Documentation and to the packaging thereof.
3.5 Licensee shall notify ATML if it becomes aware of any unauthorized
use of the Licensed Technology or breach of ATML's Intellectual
Property Rights therein.
4. DELIVERY AND SERVICES
4.1 Within 10 days from the date hereof ATML shall deliver to Licensee:-
4.1.1 one copy of the Licensed Software in the media specified
in Schedule 1;
4.1.2 the Licensed Hardware in the quantities specified in
Schedule 1; and
4.1.3 a copy of the Documentation.
4.2 ATML shall not bear any liability resulting from any delay in the
delivery of the aforesaid Licensed Technology to Licensee.
4.3 Risk of loss or damage of the Licensed Technology shall pass to
Licensee on actual delivery.
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4.4 ATML shall as part of this Agreement provide the software and
hardware services as defined in Schedule 6. These services shall be
provided as part of the License Fee.
5. PAYMENTS
5.1 In consideration of the licenses and other granted to it in this
Agreement Licensee shall pay to ATML:
5.1.1 A one-time License fee of [*] for the Licensed
Technology payable in 2 parts, one-third upon the
execution of this agreement, and the remaining two-thirds
upon the delivery and acceptance by the Licensee of the
remaining software features listed in Schedule 1, Part 1.
Within 5 working days of delivery of the remaining
software features by ATML, Licensee must present in
writing to ATML notice of non-acceptance listing specific
items of non-performance or the Licensed Technology will
be considered as accepted.
5.1.2 Licensee will also pay a per unit royalty fee as specified
in Schedule 4.
5.1.3 The Maintenance Service Fee of [*] will be invoiced on
the date hereof and annually thereafter during the term of
this Agreement.
5.2 ATML shall have the right no more than once per year during the term
of this Agreement and for 12 months thereafter, directly or through
its representative, upon a minimum of 3 days written notice to the
Chief Financial Officer to review Licensee's books and records
relating only to this Agreement and products supplied within the
period of 2 years prior to the date of such notice, the Licensed
Technology, for the purpose of ascertaining compliance with the terms
of this Agreement. If the results of such review disclose a
deficiency in any royalty payable by Licensee to ATML in excess of 5
per cent of the amounts actually paid by Licensee during the period
under review, then Licensee shall promptly pay to ATML its entire
costs of such review including, but not limited to professional fees,
travelling and accommodation expenses. Licensee shall also forthwith
pay the shortfall in the Royalties ascertained to be due from such
review.
5.3 Any payments due to ATML under this Agreement and not paid on the due
date for payment shall bear annual interest at 5% above the then
prevailing prime rate from the date payment falls due to the date of
actual payment.
5.4 All payments hereunder are expressed net of any value added or sales
tax properly due thereon which shall be paid by Licensee in addition.
Licensee shall pay, collect and remit all sales, use, withholding and
other taxes and charges, including, without limitation, landing fees,
import duties and other charges imposed in respect of the Licensed
Technology and the Generated Technology (other than income taxes
imposed on ATML on its receipt of the Price and Royalties). Licensee
further agrees to indemnify and hold ATML harmless against any such
liabilities. The provisions of this clause shall continue following
termination of this Agreement.
5.5 Unless otherwise agreed in writing by ATML all payments under this
Agreement shall be made in US dollars.
6. WARRANTIES
6.1 ATML, warrants that it has the sufficient right, title and interest
in the Licensed Technology to enter this Agreement.
6.2 Licensee acknowledges that the Licensed Technology and the
Documentation have not been prepared to meet Licensee's individual
requirements and it is therefore the responsibility of Licensee to
ensure that the facilities and functions of the Licensed Technology
meet its requirements. The license herein operates as a permission
only and does not imply any obligation or liability on the part of
ATML in respect of quality, fitness for any particular purpose,
suitability, performance, maintenance or support of the Licensed
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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Technology except as expressly provided in this Agreement.
Notwithstanding the above, ATML agrees to provide the support as
defined in Schedule 6.
6.3 SAVE AS EXPRESSLY SET OUT HEREIN AND SUBJECT TO THE INDEMNITY IN
SUB-CLAUSE 6.1 ALL IMPLIED CONDITIONS AND WARRANTIES AS TO QUALITY,
FITNESS FOR ANY PARTICULAR PURPOSE, SUITABILITY OR PERFORMANCE OF THE
LICENSED SOFTWARE ARE HEREBY EXCLUDED AND LICENSEE SHALL USE THE
LICENSED SOFTWARE AT ITS OWN RISK. NOTHING IN THIS AGREEMENT SHALL
EXCLUDE OR LIMIT LIABILITY FOR DEATH OR PERSONAL INJURY RESULTING
FROM THE NEGLIGENCE OF ATML.
6.4 In the event any claim of infringement of third party Intellectual
Property Rights being made in respect of the Licensed Technology ATML
shall be entitled and at its sole discretion, at its cost to:
6.4.1 procure the right for Licensee to continue to use the
Licensed Technology or any part thereof the subject of the
infringement without change; and/or
6.4.2 make with equivalent functionality, performance and
characteristics such alterations, modifications or
adjustments to the Licensed Technology or any part thereof
subject of the breach to make it not infringe third party
Intellectual Property Rights; and/or
6.4.3 replace in kind the Licensed Technology or any part thereof
the subject of the infringement with substitutes with
equivalent functionality, performance and characteristics.
6.4.4 ATML shall reimburse Licensee for its actual costs
associated with modifying the Generated Technology because
of these changes limited to the actual Licensing Fees and
Royalties paid by Licensee.
6.5 In the event that there is an infringement of third party
Intellectual Property Rights resulting from changes made by the
Licensee to the Licensed Technology then ATML will not be held
liable.
6.5 The liability of ATML in contract, tort, negligence or otherwise
arising out of or in connection with this Agreement or the
performance or observance of its obligations under this Agreement and
every applicable part of it shall be limited in aggregate to a sum
equal to the aggregate of the Price and Royalties paid by Licensee to
ATML at the time such event occurs in respect of which the liability
arises.
6.6 In any event neither party shall be liable to the other under, or in
connection with this Agreement, in contract, tort, negligence or
otherwise for any loss of business, contracts, profits or anticipated
savings or for any other indirect or consequential or economic loss
whatsoever.
6.7 In any event ATML shall not be liable to Licensee under or in
connection with this Agreement, in contract, tort, negligence or
otherwise for any loss of business contracts, profits or anticipated
savings or for any other indirect or consequential or economic loss
whatsoever which results from Licensee's use of the Generated
Technology.
6.8 In any event ATML shall not be liable to Licensee under or in
connection with this Agreement, in contract, tort, negligence or
otherwise for any loss of business contracts, profits or anticipated
savings or for any other indirect or consequential or economic loss
whatsoever which results from any amendments, modifications or
alterations made to the Licensed Technology by the Licensee or its
agents.
6.9 Licensee and ATML warrant to each other that they have not relied on
any oral representation made by or on behalf of the other or upon any
financial projections, business plans or models, description,
illustration or specification contained in any catalogues or
publicity material or other documentation (except as expressly stated
in this Agreement) and acknowledges that such are only intended to
convey a general idea of the Licensed Technology and its use and the
services referred to therein or Licensee's plans to use the
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same. Notwithstanding the above, ATML warrants that Licensee can rely
on written representations signed by the designated ATML
representative specified in Schedule 7 which are expressly stated as
applying to this agreement, and the Documentation furnished pursuant
to this Agreement.
6.10 Each of the above provisions of this clause 6 shall be extended to
any licenser of software to ATML which is incorporated in the
Licensed Technology.
6.11 Each provision of this clause 6 excluding or limiting liability shall
be construed separately, applying and surviving even if for any
reason one or other of those provisions is held inapplicable or
unenforceable in any circumstances and shall remain in force
notwithstanding the termination of this Agreement.
7. UNDERTAKINGS OF LICENSEE
7.1 Licensee shall indemnify ATML forthwith on demand and hold it
harmless from any loss, claim or damage to persons or property
arising out of Licensee's use or possession of the Licensed
Technology, the Generated Technology or related material provided
that such loss, claim or damages was not caused by the fault or the
negligence of ATML, in which case ATML shall indemnify Licensee.
7.2 Licensee agrees as follows for itself and for all its Affiliates
during the term of this Agreement Licensee to submit to ATML for its
prior approval all references to ATML or the Licensed Technology
appearing on any of its literature and to make such amendments,
inclusions, deletions and variations thereto as ATML shall reasonably
and timely request.
7.3 ATML shall, at its own expense, obtain all necessary customs, import
and other governmental authorizations and approvals relating to this
Agreement, including transfer of technology approvals and
notifications.
7.4 During the term of this Agreement and for 6 months after its expiry
or termination Licensee shall maintain reasonably detailed records to
fulfill its obligations under this agreement.
7.5 Licensee shall notify ATML promptly of any "bugs" or other unresolved
technical problems arising in connection with the installation or use
of the Licensed Technology and/or the Generated Technology. ATML
agrees to use best commercial efforts to respond to bugs within 48
hours of notification. Bugs are defined as making the hardware or
software non operate.
7.6 Licensee shall not export or re-export the Licensed Technology and/or
the Generated Technology without the appropriate governmental
approvals necessary for such export or re-export and for the
avoidance of doubt it shall be the sole responsibility of the
Licensee to obtain such approvals.
8. TERM AND TERMINATION
8.1 This Agreement shall continue for an initial term of five (5) years
from the date hereof and thereafter shall continue unless terminated
at any time as follows:
8.1.1 forthwith by notice of termination given in writing by or
on behalf of ATML to Licensee in any of the following
circumstances:
8.1.1.1 if Licensee shall convene a meeting of its
creditors or if Licensee becomes unable to pay
its debts as and when they fall due or commits an
act of bankruptcy or if a trustee, receiver or
administrative receiver shall be appointed in
respect of all or part of Licensee's business or
assets or if any petition is presented or meeting
convened for the purpose of considering a
resolution or other steps are taken for the
winding up of Licensee.
8.1.1.2 if Licensee is in material breach of any of the
provisions of sub-clause 2.2 which are not
corrected with 30 days of written notice; and
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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8.1.1.3 pursuant to sub-clause 12.9;
8.1.2 forthwith by notice of termination given by Licensee to
ATML:
8.1.2.1 in the event of ATML's insolvency, which shall be
assessed as for Licensee's insolvency in
accordance with sub-clause 8.1.1.1;
8.1.2.2 pursuant to sub-clause 12.9.
8.1.3 Either party may terminate this Agreement
forthwith if the other party is in material
breach of this Agreement and fails to remedy such
breach within 30 days of receipt of a written
notice that it is in breach.
9. EFFECT OF TERMINATION/EXPIRY
9.1 On termination of this Agreement by Licensee or by a breach of the
terms and conditions of this Agreement Licensee shall:
9.1.1 pay to ATML forthwith the balance of the License Fee and
all Royalties which are due and which have not then been
paid;
9.1.2 cease to use the Licensed Technology;
9.1.3 promptly return to ATML all copies of the Source Code and
Object Code of the Licensed Technology and permanently
delete the same from all of its computer systems;
9.1.4 promptly return to ATML at such address as it may specify
all items of the Licensed Technology capable of being
delivered; and
9.1.5 within seven days of the date of termination or expiry of
this Agreement provide written confirmation to ATML that it
has complied with its obligations contained in clauses
9.1.3 and 9.1.4.
9.1.6 Licensee will however, have the right to retain and use
sufficient copies of the Licensed Technology to continue to
service and maintain its customers and to sell inventory
which is in process or on hand.
9.2 The provisions of clauses 2.4.2, 2.4.3, 2.4.4, 2.5, 3.4, 5, 6 (other
than clause 6.1), 7.4, 7.6, 9, 11 and 12 shall survive the
termination of this Agreement.
10. PERSONAL LICENSE
10.1 The license herein granted is personal to Licensee and Licensee shall
not assign, part with or sublet any interest in it or grant any right
under it to any third party without ATML's prior written consent,
provided that Licensee assignment to an acquirer of substantially all
of Licensee's assets, stock or business shall not require ATML's
consent, except to Licensee's assignment to a direct competitor of
ATML. In the event of a sale or merger of the Licensee to a direct
competitor of ATML, ATML will in principal be prepared to negotiate a
license with the acquiring company under similar terms and conditions
as in this agreement, provided that the use of such Licensed
Technology is in the core business market of the Licensee as defined
in Schedule 2. Such agreement with the acquiring company will not be
unreasonably withheld.
11. CONFIDENTIALITY
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11.1 Both Licensee and ATML agree with each other to keep all information
that they obtain about the other concerning the business, finances,
technology and affairs of the other, and in particular but not
limited to the Licensed Technology (including the Source Code) and
the Source Code of the Generated Technology, and regardless of its
nature, strictly confidential.
11.2 Licensee and ATML hereby agree with each other:
11.2.1 not to use such confidential information save as agreed in
writing with the disclosing party; and
11.2.2 to procure that all persons or entities (including
employees) to whom they do disclose the confidential
information keep it strictly confidential and that they are
bound by the terms of this Agreement; and
11.2.3 not to copy or reproduce such confidential information
without the prior written consent of the other party
hereto; and
11.2.4 that Licensee shall not disclose the Licensed Technology
(save in accordance with the terms of this Agreement) or
the Source Code of the Licensed Technology.
11.3 The provisions of this clause 11 shall cease to apply:
11.3.1 to information that has come into the public domain other
than by breach of this clause or any other duty of
confidence; and
11.3.2 to information that is obtained from a third party without
breach of this clause or any other duty of confidence; and
11.3.3 to information that is known by either party, in connection
with the other party, prior to entering into this
Agreement, and which has been disclosed to either party by
a third party, other than Licensee or ATML or any Affiliate
of them and not in breach of any duty of confidence; and
11.3.4 to information that is trivial or obvious.
12. GENERAL
12.1 No waiver of any breach of any provisions of this Agreement shall
constitute a waiver of a prior, concurrent or subsequent breach of
the same or any other provision hereof and no waiver shall be
effective unless made in writing.
12.2 No variation of the terms of this Agreement shall be binding on
either party unless it is made in writing and signed in the case of
ATML by a Director of ATML and in the case of Licensee by an officer
of Licensee.
12.3 ATML reserves the right to assign this Agreement or to delegate any
right or obligation of it hereunder in whole or in part to any other
company.
12.4 The provisions of this sub-clause 12-4 and of clauses 9 and 11 and
sub-clauses 6.2 to 6.8 and 12.8 of this Agreement shall remain in
full force and effect and binding between the parties following
termination or expiry of this Agreement for any reason whatsoever.
12.5 In respect of notices:
12.5.1 Any notice required to be given under the provisions of
this Agreement shall be in writing and shall be deemed to
have been duly served if hand delivered or sent by
facsimile or by first class
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registered or recorded delivery post within the United
Kingdom or by registered airmail post outside the United
Kingdom correctly addressed to the relevant party's address
specified in this Agreement or to such other person and
address as either party may designate from time to time in
accordance with this clause.
12.5.2 Any notice pursuant to sub-clause 12.5.1 shall be deemed
to have been served:
12.5.2.1 if hand delivered at the time of delivery;
12.5.2.2 if sent by facsimile at the completion of
transmission during business hours at its
destination or if not within business hours at
the opening of business hours at its destination
on the next business day but subject to (1) proof
by the sender that it holds a printed record
confirming despatch of the transmitted notice and
(2) despatch of the notice by post in accordance
with sub-clause 12-5.1 on the same day as its
transmission;
12.5.2.3 if sent by post within 48 hours of posting
(exclusive of the hours of Sunday) if posted to
an address within the country of posting and
seven days of posting if posted to an address
outside the country of posting.
12.5.3 For the purpose of clause 12.5.2 "business hours" means
between 09.00 and 17.30 and "business day" means a day
between Monday and Friday inclusive on which banks in the
country of the addressee are open for business.
12.6 This Agreement constitutes the entire Agreement between ATML and
Licensee with respect to the licensing of the Licensed Technology.
12.7 Neither party shall publicize the terms of this Agreement or the
discussions relating to it without the prior written consent of the
other (save as legally required).
12.8 In respect of termination payments:
12.8.1 Neither ATML nor Licensee shall be liable to the other as a
result of any termination of this Agreement in accordance
with its terms, and shall not otherwise have any obligation
(statutory or otherwise) to compensate or reimburse the
other for any claims or damages whatsoever, lost revenues
or profits, expenditures, investments, leasehold or
employment obligations or other continuing commitments of
the other;
12.8.2 Licensee and ATML agree:
12.8.2.1 to waive all compensation and damages, whether
direct, consequential or otherwise, to which it
may otherwise have a right under any applicable
law; and
12.8.2.2 to indemnify and hold each other harmless from
and against all claims of the employees and
agents of each other for compensation or
severance, disability, social security or similar
payments.
12.9 Neither ATML nor the Licensee shall, subject to the following
provisions of this clause, be liable for failure to perform any
obligation under this Agreement if the failure is caused by war,
insurrection, riot, fire, explosion, flood, strike, lock-out,
injunction, inability to obtain fuel, power, raw materials, labor,
containers or transportation, accident, malfunction of machinery or
apparatus, national defence requirements acts or regulations of
national or local governments, denial of export or import licenses,
earthquake, or act of God, or any other cause beyond the control of
the parties provided that:
12
12.9.1 notwithstanding the above provisions, the occurrence of a
force majeure event or condition described above shall not
relieve Licensee in any manner whatsoever from its
obligations to pay to ATML any amounts then due and owing
to ATML pursuant to the terms of this Agreement;
12.9.2 the party claiming relief pursuant to the above provisions
shall promptly notify the other party in writing of the
facts indicating the existence of any force majeure event
or condition and the relief claimed and the parties agree
to use their best endeavors to overcome such conditions;
12.9.3 the above provisions shall not relieve either party of its
obligation to perform its part of this Agreement at such
time and to such extent as may be possible subsequent to
the occurrence of the events or conditions described above
and within reasonable time after such occurrence;
12.9.4 should such event or conditions continue unabated, despite
the parties' best endeavors to overcome them, for three
months from the date of notice given pursuant to sub-clause
12.9.3, the party receiving such notice shall have the
option to terminate this Agreement without liability to the
other party for the consequences of such termination by
giving written notice.
12.10 If any provision of this Agreement is determined by a court of
competent jurisdiction to be in violation of any applicable law or
otherwise invalid or unenforceable, such provision shall, to such
extent as it shall be determined to be illegal, invalid or
unenforceable under such law, be null and void but this Agreement
shall otherwise remain in full force and effect.
12.10 Each party agrees not to take any action that would or does adversely
affect the reputation or goodwill of either party or its products.
12-11 This Agreement shall be governed by the laws of the State of
California.
IN WITNESS the parties have executed this Agreement the date first above
written.
Signed for and on behalf of Advanced
Telecommunications Modules Limited
-----------------------------------------
Print Name
----------------------------------------
Position
----------------------------------------
Date
----------------------------------------
Signed for and on behalf of Licensee
----------------------------------------
Print Name
----------------------------------------
Title
----------------------------------------
Date
13
SCHEDULE I
PART 1
LICENSED SOFTWARE
The following software shall be supplied by ATML to Licensee in accordance with
the provisions of this Agreement.
PART NO. NAME
VT3000 [*]
VT5000 [*]
Interfaces to establish [*]
Software interfaces for telnet to allow [*].
PART 2
LICENSED HARDWARE
VT5100 [*]
Licensee will be granted the rights to use the following devices. The will be
supplied under the terms and conditions of a separate International OEM Supplier
agreement.
VT6000 [*]
VT6100 [*]
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
14
SCHEDULE 2
DESIGNATED EQUIPMENT
The Licensed Technology and Generated Technology may only be incorporated into
head-end or interface cards developed, manufactured and sold by the Licensee or
its agents to cable television operators or telephony companies for the delivery
of data using ATM protocols over coax or hybrid coax cable networks.
This Schedule may be amended from time to time by the written Agreement of the
parties.
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
15
SCHEDULE 3
MAINTENANCE SERVICES
Maintenance service with respect to Licensed Technology entitles Licensee to
receive product updates, product upgrades, technical bulletins and documentation
updates as they become Public Updates. Maintenance service also entitles
Licensee to receive email, telephone or fax assistance in the correction of
problems. A Product Update occurs when ATML issues a public release of a product
which adds features or functionality which exceeds current specifications as set
forth in the product documentation.
1. Error Corrections. ATML shall provide efforts to correct any
documented reproducible errors in the Source Code of the Licensed
Technology within a reasonable time, and to use due diligence to
rectify such errors that have been notified in writing by Licensee,
provided, that such program errors have not been introduced through
modifications to the Licensed Technology made by or on behalf of the
Licensee.
2. Product Upgrade. Should ATML make any Product Upgrade, ATML will
undertake to:
2.1. Inform Licensee of such Product Upgrade; and
2.2 Supply Licensee with the said Product Upgrade; and
2.3. provide advance notification to Licensee of pending changes
such that Licensee can timely integrate its changes into
the Generated Technology.
3. Licensee shall be solely responsible for directly supporting and
providing maintenance of all or any part of the Licensed Technology,
Generated Technology and documentation as provided to Licensee's
customers. ATML shall have no obligation to provide any direct
consultation or maintenance support to Licensee's customers with
respect to all or any part of the Licensed Technology, Generated
Technology or other subject matter of this Agreement.
4. License Grants to Updates or Upgrades. Any rights and obligations of
Licensee to Source Form and Object Form of the Licensed Technology
shall extend to any updates or upgrades upon delivery from ATML to
Licensee.
5. Limitations. If ATML is requested, to correct an error and such error
is found to be caused by Licensee's negligence, modification by
Licensee, Licensee supplied data, operator error or misuse, or any
other cause not inherent in the Source Code of the Licensed
Technology, Licensee agrees to pay for such support services on a
time and material basis at ATML's then prevailing standard rates and
on ATML's standard terms of business at the time such service is
provided to Licensee by ATML.
16
SCHEDULE 4
LICENSE AND ROYALTY FEES
The license and royalty fees for each use of the Licensed Technology
or the Generated Technology are:
=================================================================================================================================
License
PART NO. Name Type License Fees Royalty
---------------------------------------------------------------------------------------------------------------------------------
VT5000 VM8100 Virata PCR as described in this See Below
Switch Ethernet Section 5 of this
Adapter Software agreement
Access Pack
---------------------------------------------------------------------------------------------------------------------------------
VT5100 VM8100 Virata PCR as described in See Below
Switch Ethernet Section 5 of this
Adapter Hardware agreement
Access Pack
=================================================================================================================================
Per-unit Royalties will be payable on all products sold which contain
the Licensed Technology or Generated Technology as set forth below:
[*] of "Equivalent Sales Price" of the unit, whichever is less,
capped by a lifetime maximum of [*].
DEFINITIONS:
"Equivalent Sales Price" shall be the greater of the actual sales
price of the unit, or the complete manufactured cost of the unit with
the Licensee's standard markup applied.
Per-copy royalty ("PCR") - The license granted in accordance with the
terms of this Agreement are to provide and install object code
derived from the Licensed Technology on a specified number of
systems. The Licensee will prior to the grant of any such license
establish and operate procedures acceptable to ATML by which the
number of such installations can be recorded. Licensee will submit
such proposed procedures to ATML for approval prior to the grant of
any such license and will not grant any such license until the
procedures have been approved by ATML. Licensee will notify ATML on a
quarterly basis of the number of such installations and will pay the
appropriate Royalty to ATML in accordance with the provisions of
clause 5 of this Agreement. For the avoidance of doubt royalties
shall be paid on the Generated Technology mutatis mutandis to the
payment of royalties on the Licensed Technology from which it was
derived.
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
17
SCHEDULE 5
THE TERRITORY
The world.
18
SCHEDULE 6
SOFTWARE AND HARDWARE SERVICES TO BE PROVIDED
Com21 acknowledges that this Licensing Agreement and associated Maintenance
Services provide for only scheduled training, and phone and email support of a
consultation nature. All contacts with ATML engineering will be through a single
designated support person.
During the technology integration phase where Com21 modifies the Licensed
Technology and develops its Generated Technology, ATML may provide at its
convenience additional engineering review support for Com2 I's design and
modifications. This will only be on a scheduled basis, and will not include
design engineering or debugging assistance besides the support of a consultation
nature as provided in this agreement. ATML, at its discretion, may allow the use
of its facilities in a scheduled and pre-agreed manner to facilitate Com21's
development, debugging and bring-up of the Generated Technology. This does not
imply a commitment on ATML's part to engineering design or support beyond that
described in this agreement, nor does it imply a guarantee of operability of
Com2 I's generated technology.
ATML will make available sufficient engineering time to review Com21's schematic
(to occur in late March, 1996) and PCB layout (to occur in early April, 1997)
for the 10BaseT design modification being undertaken by Com21 personnel based on
ATML's Ethernet card. Such face to face joint working sessions would include
review of the CAM, new Ethernet chip, ATM425 interface additional UART, among
others. Licensee estimates this support would be over an elapsed period of
approximately 24 hours.
ATML will provide consulting engineering in assisting Licensee in making the
modified 10BaseT board operational (bringing it up). Licensee estimates that
this support would be over an elapsed period of approximately 40-60 hours (to
occur in late April, 1997).
ATML will provide consulting engineering to review the Ethernet and ATM driver
code changes, and provide standard consulting support as described in this
agreement for the initial SNMP and miscellaneous software integration for
Licensee's controller card that uses ATML's OS. This would be over an elapsed
period of approximately two (2) weeks (to occur in late February, 1997). ATML
may, at its sole discretion, permit the use of its facilities to assist Com21
during this debug and integration phase.
In addition, ATML will provide support for general questions regarding the
Licensed Technology as well as development environment on an ongoing basis as
described in this agreement.
Licensee shall provide ATML with a detailed schedule of support requests.
Licensee will use its best efforts to inform ATML of schedule changes at least 4
weeks in advance. ATML cannot guarantee the availability of specific engineering
resources without such advanced notice and prior agreement from ATML.
19
SCHEDULE 7
ATML DESIGNATED REPRESENTATIVE
Xxxx Xxxxxxxxxx, Vice President of Business Development
The above stated contact may change from time to time with written notice to
Licensee.
