Exhibit 4.26
CONFIDENTIAL TREATMENT REQUESTED PURSUANT TO RULE 24B-2
Certain portions, indicated by [*****], of this exhibit have been
omitted pursuant to Rule 24b-2 of the Securities Act of 1934.
The omitted materials have been filed separately with
the Securities and Exchange Commission.
LICENSE, SERVICES & PURCHASE AGREEMENT
This LICENSE, SERVICES & PURCHASE AGREEMENT (the "Agreement") dated as of
December 22, 2003 (the "Effective Date") is between UTStarcom, Inc., a Delaware
corporation with principal place of business is at 0000 Xxxxxx Xxx Xxxxxxx,
Xxxxx 000, Xxxxxxx, Xxxxxxxxxx, X.X.X. 00000 (the "Licensee"), and Spectrum
Signal Processing, Inc, a British Columbia, Canada corporation with a principal
place of business at 0000 Xxxxxxxxxx Xxx, Xxxxx 000, Xxxxxxx, Xxxxxxx Xxxxxxxx,
Xxxxxx X0X 0X0 (the "Licensor"), collectively, (the "Parties").
RECITALS
WHEREAS, the Licensor desires to license to Licensee the intellectual
property related to the aXs.623 packet processor technology of the Licensor; and
WHEREAS, the Licensor desires to negotiate with Licensee a subsequent
technical support and maintenance agreement relating to the Intellectual
Property; and
WHEREAS, the Licensor desires to sell to Licensee a specified quantity
of Licensor product modules to Licensee as a "last-time buy" by Licensee;
NOW, THEREFORE, in consideration of the covenants, agreements,
representations, and warranties contained in this Agreement, the parties hereto
hereby agree as follows:
ARTICLE I
INTELLECTUAL PROPERTY LICENSE; SERVICE AGREEMENT PROVISIONS;
FEES; LAST-TIME BUY PROVISIONS
1.1 License of Intellectual Property. Subject to the terms and
conditions of this Agreement, on or before 12:00 P.M., California time, December
23, 2003 (the "Closing Date"), the Licensor shall:
(a) license all of the Licensor's technology
design specifications relating co Licensor's
aXs.623 product ("Intellectual Property") as
further described and on the terms specified
in Schedule 1
Page 1
to this Agreement, which is hereby
incorporated into this Agreement by
reference thereto;
(b) obtain the written consent of all
third-party software licensors permitting
Licensee's rights to use third party
software embedded in the Intellectual
Property, as listed in Schedule 2 to this
Agreement, which is hereby incorporated into
this Agreement by reference thereto.
Licensor hereby agrees that the execution of
such consents shall be a condition precedent
to Licensee's duty to perform its
obligations pursuant to this Agreement;
(c) provide a manufacturing package, to be
delivered on the Closing Date, which
includes all of the information required to
procure parts, kit, assemble and test the
]Intellectual Property and as further
described in Schedule 3 to this Agreement,
which is hereby incorporated into this
Agreement by reference thereto;
(d) provide any and all other material or
information necessary for the continued
availability, commercial viability and
manufacturability of the Intellectual
Property.
1.2 Technical. Support and Maintenance. Licensor and Licensee
hereby agree to negotiate and execute a separate agreement effective as of the
Closing Date which will cover general technical support and maintenance of all
Intellectual Property described in Article 1.1 of this Agreement the form of
which is attached in Schedule 4 to this Agreement, which is hereby incorporated
into this Agreement by reference thereto.
1.3 Engineering Development Services. At Licensee's
discretion, additional engineering resources may be made available for
engineering development activities which may include hardware and software
development. The terms and conditions of such services shall be determined in a
separate agreement mutually agreed upon by the Parties.
1.4 Excluded Assets. Notwithstanding any other provision of
this Agreement, the Licensor shall retain and shall not license, or otherwise
transfer, to Licensee any other assets not otherwise specified in this
Agreement.
1.5 No Assumption of Liabilities or Obligations.
Notwithstanding anything to the contrary in this Agreement, the Licensee shall
not assume any liabilities or obligations of the Licensor and nothing herein
shall be construed as imposing any liability or obligation upon the Licensee
other than those specifically provided for herein.
Page 2
1.6 License Fee. The license fee paid for the Intellectual
Property described in Article 1.1 of this Agreement shall be [*****] (the
"License Fee"), payable to the Licensor by the Licensee as of the Closing Date
by way of wire transfer with wire transfer instructions to be provided by
Licensor.
1.7 Payment for Technical Support and Maintenance. The total
consideration for the Technical Support and Maintenance Agreement described in
Article 1.2 will be no more than [*****] per calendar quarter (the "Quarterly
Payment"), beginning with payment for the fourth quarter of 2003. for a minimum
of 3 quarters, with a Quarterly Payment made in advance of each calendar
quarter. Upon the mutual execution of the Technical Support and Maintenance
Agreement. Licensee shall forthwith pay Licensor [*****] for services rendered
during the fourth calendar quarter of 2003. Additional quarters of support
beyond the end of the second quarter of calendar of 2004 may be purchased by
Licensee at its option by giving eight weeks prior notice of its intent to
purchase such support for the ensuing calendar quarter.
1.8 Last Time Purchase. The Parties acknowledge that there is
currently an outstanding and .unfulfilled Purchase Order (P.O.) that the Parties
agree to be fulfilled as follows:
(a) X.X. XXX00000, dated September 9, 2003 for
[*****] aXs.623 [*****] will be cancelled
upon full execution of this Agreement.
(b) A new purchase order, at currently quoted
prices and conditions, will be submitted
within 7 days of the Effective Date for
aXs.623C modules in the minimum quantities
of C8 - [*****], C5 - [*****] and C4 -
[*****] for a minimum amount of [*****] (the
"Last Time Purchase"). Shipment for all
modules of the Last Time Purchase shall be
no later than March 31, 2004, title shall
pass CIP Spectrum, and payment to Licensor
shall be pursuant to the Parties standard
terms and conditions of prior payments made.
Due to the nature of this purchase, Seller
hereby specifically warrants that such
modules shall be delivered. in a
commercially-ready form, free of any
material defects or errata. Such warranty
shall hereby supercede any other warranties
(or disclaimers thereof) as may have been
otherwise agreed to between the Parties. Any
Last Time Purchase modules requiring
warranty repair shall be subject to the
Licensor's standard warranty repair
procedure.
Page 3
ARTICLE II
REPRESENTATIONS AND WARRANTIES OF THE LICENSOR
Except as otherwise set forth in the schedules attached to this
Agreement by reference to specific sections of this Agreement, the Licensor
represents and warrants to the Licensee as set forth below:
2.1 Organization and Good Standing. The Licensor is a corporation duly
organized, validly existing, and in good standing under the laws of British
Columbia, Canada, and is duly qualified to transact business as a. foreign
corporation and is in good standing in every jurisdiction in which the conduct
of its business requires it to be so qualified.
2.2 Authorization. The Licensor has full corporate power and authority
to enter into this Agreement, and all exhibits and schedules hereto, to perform
its obligations hereunder and thereunder, to license the Intellectual Property,
and to carry out the transactions contemplated hereby and thereby. The Board of
Directors of the Licensor has taken, or will take before the Closing Date, all
actions required by law, its Certificate of Incorporation, its By-Laws or
otherwise to authorize (i) the execution and delivery of this Agreement and the
attached schedules, and (ii) the performance of its obligations hereunder and
thereunder. This Agreement has been duly executed and delivered by the 'Licensor
and upon the execution and delivery of the Agreement and associated schedules by
a duly authorized officer of the Licensor, and this Agreement and associated
schedules will be, upon due execution and delivery thereof, the legal, valid,
and binding obligations of the Licensor enforceable according to their terms.
2.3 Licensed Assets. The Licensor owns, with the exception of any third
party software, and has good and marketable title to all Intellectual Property,
free and clear of all mortgages, pledges, security interests, conditional sales,
or other title retention agreements, encumbrances, liens, easements, claims,
rights of way, warrants, options, or charges of any kind in writing
(collectively hereinafter referred to as "LIENS"). The Licensor has full power
and authority with respect to any third parties. the right to license the
Intellectual Property to the Licensee.
2.4 No Violation. None of (i) the execution and delivery of this
Agreement by the Licensor, (ii) the performance by the Licensor of its
obligations hereunder or thereunder, (iii) the consummation of the transactions
contemplated hereby or thereby after the Closing bate, will (A) violate any
provision of the Articles of Incorporation or By-Laws of the Licensor; (B) to
Licensor's knowledge, after investigation, violate, or be in conflict with, or
constitute a default under or breach of, or permit the termination of, or cause
the acceleration. of the maturity of, any Lien, indenture, mortgage, contract,
commitment, debt, or obligation of the Licensor:. (C) require the consent of any
other party to or to Licensor's knowledge, after investigation, result in the
creation or imposition of any Lien upon any of the intellectual Property; (I))
to Licensor's knowledge, after investigation. violate any statute, law,
judgment, decree, order, regulation, or rule of any court or governmental
authority to which the Licensor or the
Page 4
Intellectual Property are subject; or (E) to Licensor's knowledge, after
investigation, result in the loss of toy material license, privilege, tight, or
certificate relating to the Intellectual Property.
2.5 Consents and Approvals of Governmental Authorities. No consent,
approval, or authorization of. or declaration, filing, or registration with, any
governmental or regulatory authority is required to be made or obtained by the
Licensor in connection with the execution, delivery, and performance of this
Agreement or any of the associated schedules by the Licensor.
2.6 Intellectual Property. The Licensor owns, is licensed, or otherwise
has the full right to use, with respect to the Intellectual Property relating to
the aXs.623, all (i) United States and foreign patents (including design
patents, industrial designs and utility models) and patent applications
(including docketed patent disclosures awaiting filing, reissues, divisions,
continuations-in-part and extensions), patent disclosures awaiting filing
determination, inventions and improvements thereto; (ii) trademarks, service
marks, trade names, trade dress, logos, business and product names. slogans, and
registrations and applications for registrations thereof; (iii) copyrights
(including software) and registrations and applications for registration
thereof; (iv) inventions, processes, designs, formulae, trade secrets, know-how,
industrial models, confidential and technical information, manufacturing,
engineering and technical drawings, product specifications and confidential
business information; and (v) intellectual property rights similar to any of the
foregoing. Licensor hereby represents that, to its knowledge, after
investigation, it has the sole and exclusive right to use the Intellectual
Property. and, other than those consents gained by Licensor pursuant to Section
1.1(b) of this Agreement, to its knowledge, after investigation, no consent of
any third party is required for the use thereof by the Licensee upon completion
of the licensing of the Intellectual Property. No claims have been asserted by
any person to the use of any Intellectual Property, and Licensor represents that
to its knowledge after investigation, there is no valid basis for any such
claims. The Licensor is not aware of any facts or alleged facts indicating that
the use of the Intellectual Property by the Licensor infringes on the rights of
any other third party whatsoever.
2.7 Operation. The technology relating to the Licensor's aXs.623
operates properly and in substantial compliance with the specifications
developed by the Licensor and is free from material defects in design and
workmanship. The documentation to be licensed to Licensee is current, accurate
and, to the best of the Licensor's knowledge, contains no material errors or
omissions,
2.8 Disclosure. To the best of its knowledge, no representation or
warranty by the Licensor in this Agreement or any schedules thereto, contains or
will contain any untrue statement of a material fact or omits or will omit to
state any material fact necessary to make the statements herein or therein not
misleading. There is no fact known to the Licensor that materially adversely
affects, or that might in the future materially adversely affect, the
operations, business, assets, properties, or condition, financial or otherwise,
of the Licensor that has not been set forth in this Agreement or any schedules
thereto.
Page 5
ARTICLE III
REPRESENTATIONS AND WARRANTIES OF THE LICENSEE
The Licensee hereby represents and warrants to the Licensor as set
forth below:
3.1 Corporate Organization. The Licensee is on the date
hereof, and will be on the Closing Date, a corporation duly organized, validly
existing and in good standing under the laws of the State of Delaware and is
duly qualified to transact business as a foreign corporation .and is in good
Standing in every jurisdiction in which the conduct of its business requires it
to be so qualified.
3.2 Authorization. The Licensee has full corporate power and
authority to enter into this Agreement, and all exhibits and schedules hereto,
to which it is or will be a party, to perform its obligations hereunder and
thereunder, and to carry out the transactions contemplated hereby and thereby.
The Board of Directors of the Licensee has taken, or will take before the
Closing Date, all actions required by law, its Certificate of Incorporation, its
By-Laws or otherwise to authorize (i) the execution and delivery of this
Agreement and the attached schedules, and (ii) the performance of its
obligations hereunder and thereunder. This Agreement has been duly executed and
delivered by the Licensee and upon the execution and delivery of the Agreement
and associated schedules by a duly authorized officer of the Licensee, and this
Agreement and associated schedules will be, upon due execution and delivery
thereof, the legal, valid, and binding obligations of the Licensee enforceable
according to their terms.
3.3 Consents and Approvals of Governmental Authorities. No
consent, approval, or authorization of, or declaration, filing, or registration
with, any governmental or regulatory authority is required to be made or
obtained by the Licensee in connection with the execution, delivery, and
performance of this Agreement or any of the associated schedules by the
Licensee.
ARTICLE IV
OBLIGATIONS OF THE PARTIES
The Licensor hereby covenants and agrees with the Licensee and the
Licensee hereby covenants and agrees with the Licensor that:
4.1 Prohibited Transactions Before Closing Date. Before the
Closing Date, except as otherwise contemplated by this Agreement or permitted by
the prior written consent of the Licensee, the Licensor shall not cake any
action whatsoever which would violate Seller's representations and warranties as
stated in Article II of this Agreement.
4.2 Further Assurances. Before and after the Closing Date,
each party hereto shall execute and deliver such instruments and take such other
actions as any other party may reasonably request for the purpose of carrying
out the intent of this Agreement. Each party hereto shall use its best efforts
to cause the transactions contemplated by this
Page 6
Agreement to be consummated, and, without limiting the generality of the
foregoing, to obtain all consents and authorizations of government agencies and
third parties and to make all filings with and give all notices to government
agencies and third parties that may be necessary or reasonably required to
effect the transactions contemplated by this Agreement. The Licensor shall give
prompt notice to the Licensee, after receipt thereof by the Licensor, of any
notice or other communication from any third parry alleging that the consent of
such third party is or may be required in connection with the transactions
contemplated by this Agreement.
4.3 Confidentiality. Before and after the Closing Date, each
party to this Agreement shall, and shall cause its officers, accountants,
counsel, and other authorized representatives and affiliated parties, to hold in
strict confidence and not use or disclose to any other party without the prior
written consent of the other party, all information obtained from the other
parties in connection with the transactions contemplated hereby, except such
information may be used or disclosed (i) when required by any regulatory
authorities or governmental agencies, (ii) if required by court order or decree
or applicable law. (iii) if it is publicly available other than as a result of a
breach of this Agreement, (iv) if it is otherwise contemplated herein, or (v) by
the Licensee from and after the Closing Date to the extent related to full use
of the Intellectual Property as contemplated by this Agreement and associated
schedules.
ARTICLE V
INDEMNIFICATION
5.1 Indemnity. Licensor will defend or settle any suit or
proceeding brought against Licensee based upon a claim that the Intellectual
Property licensed hereunder or part thereof, except third parry software, alone
and not in combination with any other product or software, constitutes an
infringement of any United States patent or copyright provided that: (i)
Licensor is notified promptly in writing of such claim; (ii) Licensor controls
the defense or settlement of the claim; and (iii) Licensee cooperates
reasonably, and gives all necessary authority. information and assistance at
Licensor's expense. Licensor will pay all damages and costs finally awarded
against Licensee, but Licensor will not be responsible for any costs, expenses
or compromise incurred or made by Licensee without Licensor's prior written
consent. If the use of such Intellectual Property is permanently enjoined,
Licensor will, in its sole discretion and at its own expense, procure for
Licensee the right to continue using said Intellectual Property, replace same
with non-infringing Intellectual Property, modify it so that it becomes
non-infringing or if Licensor is unable to reasonably do any of the above,
Licensor will credit Licensee the sum paid to Licensor by Licensee for the
infringing Intellectual Property less any depreciation and accept its return.
Licensor shall have no liability to Licensee, and Licensee will indemnify and
hold Licensor harmless form any expenses, damages, costs or losses resulting
from, or with respect to, any proceeding or claim based on the infringement of
any patent, copyright or trade secret to the extent the proceeding or claim is
based upon (i) the combination, use, or operation of the Intellectual Property
in connection or combination with any
Page 7
equipment, devised or software not delivered by Licensor, if such infringement
would have been avoided in the absence of such combination, or (ii) the
modification by Licensee or any third party of the Intellectual Property; (iii)
Licensee's technology, or compliance by Licensor with specifications provided by
Licensee: (iv) use of the Intellectual Property, or any part of the Intellectual
Property, in the practice of a process; (v) compliance by Licensor with ITU or
IEEE standards; or (vi) the failure to use materials or instructions provided by
Licensor which would have rendered the Intellectual Property non-infringing.
The foregoing states the entire obligation and exclusive remedy of each of the
parties hereto with respect to any Intellectual Property furnished hereunder.
ARTICLE VI
TERMINATION
6.1 Termination. This Agreement will commence upon the
Effective Date and will remain in effect until terminated. Licensor will
immediately terminate this Agreement upon 30 days written notice to Licensee if
Licensee fails to comply with the license grant obligations in paragraph 1.1(a),
payment provisions for the Licensing Fee, technical support and maintenance fees
and last time buy payment provisions contained in paragraphs 1.6, 1.7 and
1.8(b), confidentiality obligations in paragraph 4.2. Any payment obligations
accruing prior to such termination will remain due and owing. Upon termination
of this Agreement, (i) the licenses, rights and covenants granted hereunder and
the obligations imposed hereunder will cease, except as otherwise expressly
provided for herein, and Licensee will destroy the Intellectual Property,
including all copies and all relevant documentation. The provisions that survive
any termination or expiration of this Agreement shall not imply or create any
continued right to use the Intellectual Property after termination of this
Agreement.
ARTICLE VII
OTHER AGREEMENTS
7.1 Amendment and Modification; Waiver of Compliance. Subject
to the applicable law, this Agreement may be amended, modified, and supplemented
only by written agreement signed by the Licensee and the Licensor. Any failure
by' any party to this Agreement to comply with any obligation, covenant,
agreement, or condition contained herein may be expressly waived in writing by
the other parties hereto, but such waiver or failure to insist upon strict
compliance shall not operate as a waiver of, or estoppel with respect to, any
subsequent or other failure. Whenever this Agreement requires or permits consent
by or on behalf of any party hereto, such consent shall be given in a manner
consistent with the requirements for a waiver of compliance as set forth in this
Section 9.1.
7.2 Fees and Expenses. Except as otherwise provided herein,
each of the parties hereto will pay its own fees and expenses (including
attorneys' and accountants'
Page 8
fees, legal costs, and expenses) incurred in connection with this Agreement, and
all exhibits and schedules hereto, and the consummation of the transactions
contemplated hereby and thereby.
7.3 Notices. All notices, requests, demands, and other
communications required or permitted hereunder shall be in writing and shall be
deemed to have been given if delivered by hand, overnight courier, or mailed
certified or registered mail with postage prepaid as follows.
(a) If to the Licensee, to:
Attention: Xxxxxxx Xxxxxxxx
With a copy to:
Attention.: Xxxxx Xxxxxxxx
(b) If to the Licensor, to:
Attention: Legal Department
With a copy to:
Attention: President
7.4 Public Announcements. Neither the Licensee nor the
Licensor nor the representatives of any of them shall make any public
announcement with respect to this Agreement, the associated schedules, or the
transactions contemplated hereby or thereby without the prior written consent of
the other parties. Notwithstanding the foregoing either party may make such
announcements as are required by securities regulators such as the British
Columbia Securities Commission, the Ontario Securities Commission and the United
States Securities and Exchange Commission.
7.5 Assignment. This Agreement and all of the provisions
hereof shall be binding upon and inure to the benefit of the parties hereto and
their respective successors and permitted assigns, but neither this Agreement
nor any of the rights, interest, or obligations hereunder shall be assigned by
any of the parties hereto without the prior written consent of all the other
parties, such consent not to be unreasonably withheld.
7.6 Governing Law. This Agreement and the legal. relations
between the parties hereto shall be governed by, and construed in accordance
with, the laws of the State of California, without reference to the conflict of
laws principles thereof.
7.7 Counterparts. This Agreement may be executed
simultaneously in two or more counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same
instrument.
7.8 Headings. The headings contained in this Agreement are
inserted for convenience only and shall not constitute a part hereof.
7.9 Entire Agreement. This Agreement, including the schedules
attached hereto, and other documents referred to herein which form a part
hereof, embody the entire agreement and understanding of the parties hereto in
respect of the subject matter contained herein and supersede all prior
agreements and understandings between the
Page 9
parties with respect to such subject matter, including. by way of illustration
and not by limitation, any term sheet agreed to by the parties hereto before the
date hereof. There are no restrictions, promises, warranties, covenants, or
undertakings other than those expressly set forth or referred to herein.
7.10 Definitional Provisions. All terms defined in this
Agreement shall have such defined meanings when used in any exhibit, schedule,
or any certificate or other document made or delivered pursuant hereto or
thereto, unless otherwise defined therein.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duty executed on the day and year first above stated.
SPECTRUM SIGNAL PROCESSING INC. UTSTARCOM, INC.
By: /s/ Xxxxxx Xxxxxxxxxx By: /s/ Xxxxxxx Xxxxxxxx
------------------------------ --------------------------------
Name: Xxxxxx Xxxxxxxxxx Name: Xxxxxxx Xxxxxxxx
------------------------------ --------------------------------
Title: President & CEO Title: General Counsel
------------------------------ --------------------------------
Page 10
SCHEDULE 1.
INTELLECTUAL PROPERTY AND LICENSE GRANT
The Intellectual property relating to the Licensor's aXs.623C module includes,
but is not limited to, the following:
1) LICENSOR'S AXS PACKET PROCESSOR SOURCE CODE which is the heart of the
aXs.623C module product that facilitates the real-time and high-density features
of the module and brings numerous value-add features such as [*****]. The source
code package to be licensed includes the following items:
1. Engineering Requirement Specification,
2. Engineering Technical Reference Manual,
3. Complete FPGA [*****] source code for supported revision(s),
4. Build instructions. including ail support files like makefiles
and constraint tiles,
5. Detailed list of specific tools used, including vendor
information and version numbers,
6. Applicable software test harnesses and procedures,
7. Snap-shot imago of "Problem Report" database for Packet
Processor components.
LICENSE GRANT: Licensor hereby grants to Licensee a non-exclusive, fully paid,
worldwide, royalty free, perpetual, irrevocable and unrestricted license to use
or modify the aXs packet processor technology, as described above. Licensor
represents and warrants that the technology here licensed is not restricted for
use with either Licensor's or Broadcom Corporation's products.
2) LICENSOR'S OPEN-AXS MODULE API'S SOURCE CODE which is the host-side software
that is used for controlling the aXs.623C module in system deployment. The
module APT's abstract the underlying hardware allowing the applications
developer to write their application code at a higher level. The source code
package licensed to Licensee shall include the following items:
1. Engineering Requirement & Design Specifications),
2. Complete C source code for currently supported software
revision,
3. Build instructions, including all support files like makefiles
and build scripts,
Page 11
4. Detailed list of specific tools used, including vendor
information and version numbers,
5. Applicable software test harnesses and procedures,
6. Snap-shot image of "Problem Report" database for Open-aXs
Module API components.
LICENSE GRANT: Licensor hereby grants Licensee a non-exclusive, fully paid,
worldwide, royalty free, perpetual, irrevocable, and unrestricted license to use
or modify Licensor's OpenaXs module API software, as described above. This
license is not restricted for use with Licensor's products and there are no
restrictions imposed by Broadcom Corporation on the Open aXs module API's source
code.
3) LICENSOR'S OPEN-AXS CORE SERVICE STACK technology is the executable Broadcom
Corporation CALISTO images that perform the actual media plane (voice)
processing. Licensor has integrated a complete set of specifically tailored and
optimized stack images for supporting the following applications of the Licensee
and the technology described here shall include the most recent supported
revision of each of the service images for these applications, which are
described as follows:
o [*****]
o [*****]
o [*****]
o [*****]
o [*****]
o [*****]
LICENSE GRANT: Licensor hereby grants Licensee a non-exclusive, fully paid,
worldwide, royalty free, perpetual, irrevocable, and unrestricted license to use
or modify Licensor's OpenaXs module API software, as described above, [*****].
Page 12
SCHEDULE 2.
THIRD PARTY SOFTWARE LICENSES
Third party software for which Licensee must obtain the requisite licenses
includes, but is not limited to, the following:
(a) Broadcom. Corp. (attached as Schedule "B")
Page 13
SCHEDULE 3.
MANUFACTURING PACKAGE AND LICENSE
LICENSOR'S AXS.623C MANUFACTURING PACKAGE. This covers the "C" version of the
aXs.623 module in all supported configurations. This is the latest module
revision targeted at reduction in cost, assurance of long-term component supply,
and [*****]. The package includes all of the information required to procure
parts, kit, assemble and test the aXs.623C module. Specific items include:
1. Xxxx of Materials (BOW with Approved Vendor List (AVL),
2. PLD source code. object code, and programming information,
3. Mechanical drawings,
4. Printed circuit board photo tools,
5. Assembly drawings,
6. Manufacturing test software,
7. Manufacturing test system description(1) and procedure.
8. Module schematics,
9. ECO history,
10. items 1 through 9 for the aXs.1012 test and reference blade.
LICENSE GRANT; Licensor hereby grants to Licensee a fully paid, worldwide,
unrestricted, non-exclusive, perpetual, irrevocable license to manufacture the
aXs.623C module at a facility of Licensee's choice.
Page 14
SCHEDULE 4.
TECHNICAL SUPPORT AND MAINTENANCE AGREEMENT
This Technical Support and Maintenance Agreement ("Agreement") is
entered into between Spectrum Signal Processing Inc, a British Columbia, Canada
corporation with a principal place of business at 0000 Xxxxxxxxxx Xxx, Xxxxx
000, Xxxxxxx, Xxxxxxx Xxxxxxxx, Xxxxxx X0X 0X0 (the "Supplier") and UTStarcom,
Inc. a Delaware corporation with principal place of business is at 0000 Xxxxxx
Xxx Xxxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxxxx, X.X.X. 00000 (the "Customer").
1. SERVICES
1.1. Subject to the terms and conditions contained in this Agreement, the
Supplier agrees to provide the Customer with ongoing technical support and
maintenance services (the "Technical Support and Maintenance Services"), for the
technology (the "Technology") listed in Schedule "A" attached, effective the 1st
day of October, 2003. For clarity, the services to be provided under this
agreement do not include services in the nature of engineering development for
hardware and/or software. Such engineering development services can be offered
by Supplier, if requested by Customer, under separate agreement.
2. RESTRICTIONS
As a condition to the furnishing of the Technical Support and
Maintenance Services:
(a) the Technology must be used only on the equipment (the
"Equipment") listed in Schedule "A" attached, except as is
otherwise authorized in this agreement;
(b) the Technology must not have been modified in any way by the
Customer without the prior written approval of the Supplier;
(c) the Equipment must be operating properly at all times and must
have been and continue to be properly maintained by the
manufacturer of the Equipment or other properly qualified
service organization reasonably acceptable to the Supplier;
and
(d) the Technology must be used with the version or release of the
operating system described in the attached Schedule "A", or
with any other version or release approved by the Supplier.
3. PAYMENT
(1) The Customer shall pay quarterly to the Supplier a fee of [*****]
(the "Support Fee") for the Technical Support and Maintenance Services. The
first payment is payable upon signing this agreement, and subsequent payments
are due on the first day of the first month of each quarter in the calendar year
that the Technical Support and Maintenance Services will be delivered.
Page 15
(2) The Support Fees stated are exclusive of any Federal, state,
provincial, local or other government taxes, duties, excise taxes or tariffs now
or hereafter imposed on the provision of the Technical Support and Maintenance
Services.
(3) All amounts payable in this agreement are due net 30 days. The
Customer agrees to pay interest on overdue amounts at the rate of 1 1/2% per
month calculated monthly.
(4) The Customer acknowledges that the Support Fee may be subject to
increases on written notice to the Customer delivered at least 30 days prior to
the commencement of the following renewal of the term of this agreement. Any
increase in the Support Fee is effective from the commencement of the following
renewal of the term of this agreement.
4. TECHNICAL SUPPORT AND MAINTENANCE SERVICES
(1) The Supplier will supply telephone and electronic mail assistance
co the representative designated by the Customer under paragraph 5 between 9
a.m. and 5 p.m., local time, from the Supplier's designated office location,
during the Supplier's regular business days, and on an as-needed basis as agreed
upon by the Parties. This telephone assistance will consist, of the Supplier
using its best efforts to provide:
(a) explanation of functions and features of the Technology;
(b) clarification of documentation pertaining to the Technology;
(c) guidance in the operation of the Technology; and
(d) error analysis and correction in accordance with paragraph
4(3), if correction can be made by telephone.
(2) The Supplier shall, if, as and when it deems necessary, provide
Customer with updates for the Technology reflecting improvements made to the
Technology.
(3) If the Customer suspects that a defect exists in the Technology,
the Customer shall notify the Supplier in writing of its suspicions. This
notification shall comprehensively describe the nature of the suspected defect
and provide details of the circumstances of its occurrence. Upon receipt of the
Customer's notice, the Supplier shall use its best efforts to confirm the
existence of the defect If the Supplier confirms the existence of the defect,
the Supplier shall correct it as part of its obligations under this agreement;
if the Supplier determines that no such defects exist, the Customer shall pay
the Supplier for its efforts at the Supplier's hourly rate then in effect.
(4) Under this agreement, the Supplier shall make available up to, but
not exceeding, one (1) program manager and two (2) senior experienced
development-engineering personnel to make feature modifications to existing
components of the Technology for the Customer.
5. PERSONAL ATTENDANCE & ON-SITE SUPPORT
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If required by the Customer, the Supplier shall be responsible for the
travel costs, communication costs, living expenses and other ant-of-pocket
expenses incurred by one (1) Supplier employee at the Customer's premises to
perform the Technical Support and Maintenance Services for two (2) separate
periods not exceeding five (5) days prior to the expiration of the term.
Any additional instances where personal attendance or on-site support
is required at the Customer's premises to perform the Technical Support and
Maintenance Services, the Customer shall be fully responsible for all travel
costs, accommodation costs, meal expenses and other out-of-pocket expenses
incurred by the Suppliers personnel, and all of these amounts shall be payable
to the Supplier forthwith when invoiced.
6. REPRESENTATIVE
The Customer shall within 10 days from the date of this agreement
designate, in writing, an employee or agent to serve as the contact
representative for the Supplier. The Supplier shall not be required to deal with
any person other than that representative. The Customer may by notice in writing
to the Supplier substitute another employee or agent as its representative.
7. CUSTOMER RESPONSIBILITIES
The Customer assumes full responsibility for:
(a) installation of the Technology, unless the Supplier, pursuant
to a separate written agreement, agrees to install the
Technology; and
(b) the operating environment in which the Technology is to
function.
8. DISCLAIMER OF WARRANTY AND LIMITATION OF LIABILITY
(1) THE SUPPLIER GRANTS NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY,
UNDER THIS AGREEMENT INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
(2) CUSTOMER. AGREES THAT THE SUPPLIER'S LIABILITY, IF ANY, FOR
DAMAGES, INCLUDING BUT NOT LIMITED TO LIABILITY ARISING OUT OF CONTRACT AND TORT
UNDER THIS AGREEMENT. SHALL NOT EXCEED THE AMOUNTS PAID BY THE CUSTOMER UNDER
THIS AGREEMENT.
(3) IN NO EVENT WILL THE SUPPLIER BE LIABLE FOR ANY INDIRECT, SPECIAL
AND CONSEQUENTIAL DAMAGES, INCLUDING BUT NOT LIMITED TO LOST PROFITS, EVEN IF
THE SUPPLIER HAS BEEN ADVISED OF THE POSSIBILITY OF THESE DAMAGES.
(4) The Supplier shall not be liable for any damages caused by delay in
delivering or furnishing any services referred to in this agreement.
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(5) The Supplier does not guarantee results under this agreement but
merely agrees to use reasonable diligence in attempting to accomplish its
obligations and shall be entitled to payment on that basis.
9. GENERAL
(1) This agreement supersedes all prior agreements and understandings
between the parties relating to the subject-matter of this agreement and is
intended by the parties to be the complete and exclusive statement of the
agreement between the parties with respect to the subject-matter of this
agreement.
(2) Any notices, request or demands under this agreement shall be in
writing and shall be sufficiently given if delivered personally or mailed by
registered mail, postage prepaid, and shall, in the case of personal delivery be
deemed to be received by the party to whom the notice is addressed on the date
of actual receipt by that party and in the case of registered mail, shall lie
deemed to be received on the second business day after posting, but in the case
of a mail interruption, these notices, requests or demands shall be delivered by
prepaid courier delivery.
(3) This agreement shall be governed by the laws of British Columbia,
Canada
10. TERM AND TERMINATION
(1) The term of this agreement expires the 30th day of June, 2004.
Thereafter, the term of this agreement shall automatically be renewed for
successive periods of one calendar quarter unless either party gives notice to
the other at least thirty (30) days prior to the expiration of the term.
(2) This agreement may be terminated by the Supplier, at its sole
option, if the Customer fails to comply with any of its obligations under this
agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their duly authorized representatives on the dates written below.
SPECTRUM SIGNAL PROCESSING INC. UTSTARCOM, INC. By:
By: /s/ Xxxxxx Xxxxxxxxxx By: /s/ Xxxxxxx Xxxxxxxx
------------------------------ --------------------------------
Name: Xxxxxx Xxxxxxxxxx Name: Xxxxxxx Xxxxxxxx
------------------------------ --------------------------------
Title: President & CEO Title: General Counsel
------------------------------ --------------------------------
Date: 12/22/03 Date 12/22/03
------------------------------ --------------------------------
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SCHEDULE "A"
TECHNOLOGY AND EQUIPMENT
The following technology will be supported and maintained by Supplier:
1) Supplier's "C" version of the aXs.623 module in all supported configurations.
2) Supplier's aXs packet processor source code which is heart of the aXs.623C
module product that facilitates the real-time and high-density features of the
module and brings numerous value-add features such as [*****].
3) Supplier's Open-aXs module API's source code which is the host-side software
that is used for controlling the aXs.623C module in system deployment. The
module API's abstract the underlying hardware allowing the applications
developer to write their application code at a higher level.
4) Supplier's Open-aXs core service stack images which are the executable
Broadcom Corporation Calisto images that perform the actual media plane (voice)
processing. Supplier has integrated a complete set of specifically tailored and
optimized stack images for supporting the following applications:
[*****]
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