Exhibit 10.26
January 10, 2003
Xxxxxxx Xxxx
Concero Group L.P.
Xxxxxxxx 0, Xxxxx 000
0000 Xxxxxxxxxxx Xxxxxxx
Xxxxxx, XX 00000
Re: Concero Interactive TV Development, LLC
General Instrument Corporation, doing business as the Broadband Communications
Sector of Motorola, Inc. ("Motorola"), Concero Group L.P. ("Concero") and
Concero Interactive TV Development, LLC ("Subsidiary") were parties to that
certain Preferred Software Development Center Sourcing Agreement dated February
8, 2001 and amended on March 28, 2002 (the "PSDC Agreement"). As a result of
Concero ceasing its activities as a Preferred Software Development Center,
Motorola terminated the PSDC Agreement pursuant to the September 26, 2002 letter
mailed hereto as Exhibit A (the "Termination Letter").
In connection with the termination of the PSDC Agreement, the parties agree to
the following:
1. Motorola hereby releases Subsidiary from its outstanding payments
obligations due to Motorola pursuant to sections 4.2 and 4.3 of the
PSDC Agreement.
2. Concero and Concero Inc. hereby sell, assign, convey and transfer to
Motorola all of Concero and Concero Inc.'s right, title and interest
in and to the Concero Marquee Software Suite (described generally in
Exhibit B) as such software exists as of the date of this letter
agreement in all forms of expression, including but not limited to
the source code, object code, flowcharts, block diagrams, and all
related documentation; and all copyrights, trade secrets, inventions
(whether or not patentable), proprietary rights and intellectual
property contained therein, together with any and all improvements,
corrections, modifications, updates, enhancements or other changes,
whether or not included in the current version of the Concero
Software Marquee Software Suite (the "Software")
3. Concero Inc. represents, warrants and covenants as follows: (a) to
its knowledge, it has good and marketable title to the Software,
including copyright, and has all necessary rights to enter into this
letter agreement without violating any other agreements or
commitment of any sort; (b) it has no outstanding agreements or
understandings, written or oral, concerning the Software; and (c) it
has not previously sold, licensed, encumbered or pledged the
Software or any portion
thereof as security to any third party. IT IS UNDERSTOOD THAT,
EXCEPT TO THE EXTENT OTHERWISE EXPRESSLY PROVIDED IN THE PREVIOUS
SENTENCE, MOTOROLA TAKES THE SOFTWARE "AS IS" AND "WITH ALL FAULTS."
EXCEPT AS EXPRESSLY PROVIDED IN THE PREVIOUS SENTENCE, CONCERO INC.
AND ITS AFFILIATES MAKE NO REPRESENTATIONS OR WARRANTIES TO ANY
PERSON OR ENTITY WITH RESPECT TO THE SOFTWARE OR ANY OTHER SUBJECT
MATTER OF THIS LETTER AGREEMENT. FURTHER, CONCERO INC. AND ITS
AFFILIATES DO NOT WARRANT, GUARANTEE OR MAKE ANY REPRESENTATIONS
REGARDING THE FUNCTIONALITY OR USE, OR THE RESULTS OF THE USE, OF
THE SOFTWARE OR ANY INFORMATION CONTAINED THEREIN OR OTHERWISE
PROVIDED PURSUANT TO THIS LETTER AGREEMENT, IN TERMS OF CORRECTNESS,
ACCURACY, RELIABILITY OR OTHERWISE. WITHOUT LIMITING THE FOREGOING,
CONCERO INC. AND ITS AFFILIATES SPECIFICALLY DISCLAIM ALL EXPRESS
WARRANTIES NOT STATED HEREIN AND ALL IMPLIED WARRANTIES, INCLUDING,
WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF NONINFRINGEMENT,
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. NO AGENT OR
EMPLOYEE OF CONCERO INC. OR ANY OF ITS AFFILIATES IS AUTHORIZED TO
MAKE ANY EXPANSION, MODIFICATION OR ADDITION TO THIS LIMITATION AND
EXCLUSION OF WARRANTIES.
4. Pursuant to Section 9.2 of that certain Operating Agreement of the
Subsidiary (the "Operating Agreement"), Motorola hereby transfers
one hundred percent (100%) of its Membership Interest (as that term
is defined in the Operating Agreement) to Concero. Upon execution of
this letter agreement, Concero and Concero Inc. each acknowledges
and agrees that Motorola no longer has any liabilities or
obligations under the Operating Agreement.
5. NO PARTY SHALL BE LIABLE TO ANY OTHER PARTY FOR ANY DAMAGES, WHETHER
DIRECT, CONSEQUENTIAL, INDIRECT, INCIDENTAL, PUNITIVE, EXEMPLARY OR
SPECIAL DAMAGES, OR FOR ANY LOST DATA OR LOST PROFITS, WITH RESPECT
TO ANY SUBJECT MATTER OF THIS LETTER AGREEMENT, WHETHER IN COHTRACT,
TORT (INCLUDING BREACH OF WARRANTY, NEGLIGENCE AND STRICT LIABILITY
IN TORT) OR OTHERWISE, EVEN IF A PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. THE PARTIES ACKNOWLEDGE AND AGREE THAT
ANY CLAIMS, CAUSES OF ACTION OR SUITS OF ANY TYPE OR NATURE AGAINST
EITHER PARTY ARISING OUT OF, UNDER OR RELATED TO THIS LETTER
AGREEMENT MUST BE BROUGHT BEFORE DECEMBER 31, 2003.
6. In connectionwith this letter agreement, Concero Group L.P., Concero
Inc.and Motorola shall execute the Assignment of Intellectual
Property attached hereto as Exhibit C.
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7. If any provision of this letter agreement is prohibited by law or
held to be unenforceable, the remaining provisions hereof shall not
be affected, and this letter agreement shall continue in full force
and effect as if such unenforceable provision had never constituted
a part hereof, and the unenforceable provision shall be
automatically amended so as best to accomplish the objectives of
such unenforceable provision within the limits of applicable law.
This letter agreement will be binding on the parties and their
respective successors and permitted assigns. Neither party may, or
shall have the power to, assign this letter agreement without the
prior written consent of the other. This letter agreement, including
the exhibits referred to herein and attached hereto, constitutes the
entire agreement between the parties with respect to the subject
matter hereof and supersedes all prior agreements, whehter written
or oral, with respect to the subject matter contained in this letter
agreement. For convenience, this letter agreement may be signed in
more than one counterpart and signature pages may be exchanged by
facsimile.
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This letter agreement shall be construed and operated in accordance with the
laws of the State of New York without regard to conflicts of laws provisions
thereof.
Sincerely,
/s/ Xxxx XxXxxxx
--------------------------------------------
Xxxx XxXxxxx
Corporate Vice President and General Manager
Digital Consumer Gateways
Motorola Inc. Broadband Communications Sector
ACCEPTED AND AGREED TO:
CONCERO GROUP L.P.
By: Concero GP, LLC, its General Partner
By: /s/ Xxxxx Xxxxxxxx
---------------------------------------
Name: Xxxxx Xxxxxxxx
Title: President
CONCERO INTERACTIVE TV DEVELOPMENT, LLC
By: Concero GP, L.P., its Manager
By: Concero GP, LLC, its General Partner
By: /s/ Xxxxx Xxxxxxxx
---------------------------------------
Name: Xxxxx Xxxxxxxx
CONCERO INC.
By: /s/ Xxxxx Xxxxxxxx
---------------------------------------
Name: Xxxxx Xxxxxxxx
Title: President
cc: General Counsel; Concero LP
Xxxx XxXxxxxx, Motorola
EXHIBIT A
September 26, 2002 Termination Letter
Previously provided.
EXHIBIT B
General Description Concero Marquee Software Suite
The Concero "Marquee" software suite consists of the following applications:
1. UI Designer;
2. Report Generator;
3. Packager;
4. Site Manager;
5. VOD Adapters;
6. UPE Server;
7. Smart Components;
8. Merchandiser; and
9. UPE Clients.
EXHIBIT C
Assignment of Intellectual Property
THIS ASSIGNMENT OF INTELLECTUAL PROPERTY ("Assignment") is made and
entered into as of January 10, 2003 by and among Concero Inc., a Delaware
corporation; Concero Group L.P., a Texas limited partnership (together with
Concero Inc., "Seller"); and General Instrument Corporation, doing business as
the Broadband Communications Sector of Motorola, Inc. ("Buyer").
WHEREAS, Seller and Buyer have entered into a letter agreement dated as of
even date herewith (the "Letter Agreement"), pursuant to which Seller has agreed
to transfer to Buyer and Buyer has agreed to accept and assume from Seller all
right, title and interest in and to the Software (as defined in the Letter
Agreement; capitalized terms used and not defined herein shall have the meanings
ascribed to them in the Letter Agreement) of Seller.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
Assignment. Seller hereby assigns, transfers and conveys to Buyer, and
Buyer accepts, all of Seller's right, title and interest throughout the world in
and to the Software identified on Schedule A hereto along with the goodwill and
know how associated therewith.
Protection. Seller further assigns all rights, and empowers Buyer, its
successors, assigns and nominees, with respect to the Software, to make
applications for patent, trademark, copyright or other intellectual property
registration or protection anywhere in the world, to claim and receive the
benefit of any applicable rights of priority in connection with such
applications, to prosecute, such applications to issue and to have any and all
registrations issued in the name of Buyer. Seller further assigns to Buyer, its
successors, assigns and nominees, all existing patent applications that Seller
has filed anywhere in the world and all benefits associated with such
applications, including without limitation, the following U.S. provisional
patent applications filed with the U.S. Patent and Trademark Office: 60/395,136;
60/395,137; 60/395,505; and 60/395,758. Seller represents that the foregoing
patent applications represent all of the patent applications filed by Seller
anywhere in the world relating to the Software.
Further Assurances. Seller agrees that it will use commercially reasonable
efforts to perform such other acts as Buyer lawfully may request, at Buyer's
cost and expense, to facilitate Buyer's right to obtain, protect, maintain,
defend or enforce any of the rights granted hereunder. In the event that Buyer
is unable, after using reasonable efforts, to secure Seller's signature to any
document when so required to effectuate fully this Assignment, Seller hereby
irrevocably designates and appoints Buyer and Buyer's duly authorized officers
and agents as and Seller's agents and attorneys in fact to act for and on their
behalf and instead of them, for the sole purpose of execution and filing any
such document and to do all other lawfully permitted acts to further the filing,
prosecution, registration, memorialization of assignment, issuance and
enforcement of rights under the Software with the same legal force and effect as
if executed by Seller.
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Miscellaneous. The waiver by either party of any breach of this Assignment
or any right hereunder shall not constitute a waiver of any subsequent breach of
this Assignment; nor shall any delay by either party to exercise any right under
this Assignment operate as a waiver of any such right. If any provision of this
Assignment is prohibited by law or held to be unenforceable, the remaining
provisions hereof shall not be affected, and this Assignment shall continue in
full force and effect as if such unenforceable provision had never constituted a
part hereof, and the unenforceable provision shall be automatically amended so
as best to accomplish the objectives of such unenforceable provision within the
limits of applicable law. Headings and captions are for convenience only and are
not to be used in the interpretation of this Assignment. This Assignment shall
be deemed to have been made in, and shall be construed pursuant to the laws of
the State of New York without regard to conflicts of laws provisions thereof.
This Assignment shall be binding on the parties' respective heirs, successors
and assigns.
IN WITNESS WHEREOF, this Assignment of Intellectual Property has been duly
executed and delivered by the duly authorized officers of Seller and Buyer as of
the date above first written.
CONCERO INC.
By: /s/ Xxxxx Xxxxxxxx
-----------------------------------------
Name: Xxxxx Xxxxxxxx
Title: President
CONCERO GROUP L.P.
By: Concero GP, LLC,
Its General Partner
By: /s/ Xxxxx Xxxxxxxx
-----------------------------------------
Name: Xxxxx Xxxxxxxx
Title: President
GENERAL INSTRUMENT CORPORATION,
doing business as the Broadband Communications
Sector of Motorola, Inc.
By: /s/ Xxxx XxXxxxx
-----------------------------------------
Name: Xxxx XxXxxxx
Title: Corporate Vice President and General
Manager, Digital Consumer Gateways
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SCHEDULE A
TO
ASSIGNMENT OF INTELLECTUAL PROPERTY
The Concero "Marquee" software suite consists of the following applications:
1. UI Designer;
2. Report Generator;
3. Packager;
4. Site Manager;
5. VOD Adapters;
6. UPE Server;
7. Smart Components;
8. Merchandiser; and
9. UPE Clients.
