EXHIBIT 10.14
CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been
omitted and are filed separately with the Commission
WIRELESS TECHNOLOGY POOL
LICENSE AGREEMENT
BETWEEN
PARKERVISION, INC
AND
SYMBOL TECHNOLOGIES, INC.
This Agreement is entered into this 12th day of October, 1999 (hereinafter
called Effective Date), by and between ParkerVision, Inc, a Florida Corporation
with principal offices at 0000 Xxxxxxxxxx Xxx, Xxxxxxxxxxxx, XX 00000
(hereinafter called ParkerVision), and Symbol Technologies, Inc., a Delaware
corporation with principal offices at Xxx Xxxxxx Xxxxx, Xxxxxxxxxx, Xxx Xxxx
00000-0000 (hereinafter called Licensee).
WHEREAS ParkerVision has developed and is developing certain wireless receiver
and transmitter technology, and
WHEREAS ParkerVision is developing certain trademarks for use with this
technology, and
WHEREAS ParkerVision desires to grant, and Licensee desires to obtain a license
to use, make, have made, sell, and offer to sell cores and integrated circuit
parts incorporating such certain technology, and products using such integrated
circuit parts, and accompanying such certain trademarks with same, and to
sublicense such license to others.
NOW, THEREFORE, IN CONSIDERATION OF THE ABOVE PREMISES AND THE MUTUAL COVENANTS
AND UNDERTAKINGS OF THE PARTIES BELOW, PARKERVISION AND LICENSEE AGREE AS
FOLLOWS:
1. DEFINITIONS
1.1. AVERAGE SELLING PRICE.
The "Average Selling Price" of a Royalty Bearing Unit for an
Assessment Period
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is the cumulative selling price of all Royalty Bearing Units Shipped
by Licensee and/or its sub-licensees during the Assessment Period
which have the same part, core, or product number or designator
divided by the number of Royalty Bearing Units Shipped by Licensee
and/or its sub-licensees during the Assessment Period which have
that same part, core, or product number or designator.
1.2. BASE FOREIGN COUNTRIES.
"Base Foreign Countries" means Japan, the Republic of Korea with
respect to Samsung only, United Kingdom, Austria, Belgium, Cyprus,
Denmark, Finland, France, Germany, Greece, Ireland, Italy,
Luxembourg, Monaco, Netherlands, Portugal, Spain, Sweden, and
Switzerland/Liechtenstein.
1.3. BLUETOOTH.
"Bluetooth" shall mean a short range wireless connection that is
implemented according to and that operates within only the following
standards: (1) the Bluetooth system and future extensions thereof;
(2) other short range wireless connections existing as of the
Effective Date of this Agreement and functionally equivalent to the
Bluetooth system and including only the following: IEEE 802.15
(wireless personal area networking products), Licensee Nomad Radio,
Licensee Phaser Radio, Licensee RadPad Radio, Licensee Eclipse
Radio, and Licensee Saturn Radio; and (3) other short range wireless
connections existing as of the Effective Date of this Agreement and
functionally equivalent to the Bluetooth system, IEEE 802.15
(wireless personal area networking products), Licensee Nomad Radio,
Licensee Phaser Radio, Licensee RadPad Radio, Licensee Eclipse
Radio, or Licensee Saturn Radio. Additional specifications for short
range wireless connections that (a) are promulgated after the
Effective Date of this Agreement, and (b) are functionally
equivalent to the standards and specifications cited above, may be
added to the list with ParkerVision's consent, which shall not be
unreasonably withheld. In the event that the parties are not able to
reach agreement on (a) and/or (b), then the parties agree to accept
the findings of a neutral third-party expert in the wireless field
to be selected by mutual agreement of the parties. In no case shall
Bluetooth include WAN, WLL, WLAN.
1.4. COLLABORATOR.
"Collaborator" means any third party with whom ParkerVision is
collaborating.
1.5. CONFIDENTIAL INFORMATION.
"Confidential Information" shall mean any and all information
proprietary to one of the parties, which is designated in writing
(or by an appropriate stamp or legend) by the disclosing party to be
of a proprietary or confidential nature, and may be used only for
purposes of this Agreement, whether or not reduced to writing or
other 1tangible medium of expression, whether or not patented,
patentable, capable of trade secret protection, or protected as an
unpublished or
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published work under the United States Copyright Act of 1976 as
amended. Confidential Information shall include information
disclosed orally only if identified as Confidential Information at
the time of the first oral disclosure thereof to a party to this
Agreement, and reduced to writing and so designated within thirty
(30) days of the first oral disclosure.
Confidential Information does not include information that
a) was already known to the receiving party prior to its
disclosure by the disclosing party as established by
written records;
b) becomes generally available to the public other than as
a result of breach of this Agreement;
c) is furnished to the receiving party by a third party who
is lawfully in possession of such information and who
lawfully conveys such information; or
d) is subsequently developed by the receiving party
independently of the information received from the
disclosing party.
1.6. DESIGN-IN PERIOD.
"Design-In Period" shall begin on the effective date of this
Agreement and ends [*] months thereafter.
1.7. FIRST CUSTOMER SHIPMENT.
"First Customer Shipment" means the first Shipment by Licensee or by
its sub-licensee(s) of any Royalty Bearing Unit.
1.8. [*].
1.9. INTELLECTUAL PROPERTY POOL LICENSEE.
"Intellectual Property Pool Licensee" means a party to a Wireless
Technology Pool License Agreement (containing all material
provisions regarding the ParkerVision Intellectual Property Pool
pursuant to Section 2.6) with ParkerVision other than a party to
this Agreement.
1.10. JOINTLY DEVELOPED TECHNOLOGY.
"Jointly Developed Technology" means all extensions, enhancements
and modifications based on the ParkerVision Technology, the
ParkerVision Technology Improvements, the ParkerVision Intellectual
Property Pool, and/or Licensee Technology Improvements, created or
developed jointly by ParkerVision and by Licensee.
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respect to the omitted portion.
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1.11. LEGACY PRODUCTS.
"Legacy Products" means radio-based products of Licensee listed on
Exhibit D attached hereto that are in commercial production and
being commercially shipped by Licensee prior to the effective date
of this Agreement.
1.12. LICENSED CORE.
"Licensed Core" means a design for an implementation as one or more
integrated circuits, directed to the Sole and Open Fields, having at
least one Licensed Sub-Part, and at least one of: (1) at least one
fully functional WLAN baseband processor as specified and required
by WLAN as defined herein; or (2) at least one fully functional WLAN
MAC (media access controller) as specified and required by WLAN as
defined herein, wherein such WLAN baseband processor or WLAN MAC is
a significant value added component, and is comparable to that
required by one or more of the following standards: IEEE 802.11,
IEEE 802.11a, IEEE 802.11b, HomeRF, Proxim Range LAN, Proxim Range
LAN2, Symbol Spectrum 1, Symbol Spectrum 24 as it existed prior to
adoption of IEEE 802.11, HiperLAN1, or HiperLAN2. Any Proprietary
Information from the ParkerVision Intellectual Property Pool
contained in a Licensed Core must be concealed within the Licensed
Core, such that no Proprietary Information from the ParkerVision
Intellectual Property Pool is apparent from or exposed in the
Licensed Core except through legally permissible reverse
engineering.
1.13. LICENSED PARKERVISION TRADEMARKS.
"Licensed ParkerVision Trademarks" means the trademarks itemized in
Exhibit C attached hereto and any other Trademarks which
ParkerVision elects to add to Exhibit C with Licensee's consent,
which shall not be unreasonably withheld.
1.14. LICENSED PART.
"Licensed Part" means an integrated circuit chip set, directed to
the Sole and Open Fields, having one or more integrated circuit dies
and having at least one Licensed Sub-Part, and at least one of: (1)
at least one fully functional WLAN baseband processor as specified
and required by WLAN as defined herein; or (2) at least one fully
functional WLAN MAC (media access controller) as specified and
required by WLAN as defined herein, wherein such WLAN baseband
processor or WLAN MAC is a significant value added component, and is
comparable to that required by one or more of the following
standards: IEEE 802.11, IEEE 802.11a, IEEE 802.11b, HomeRF, Proxim
Range LAN, Proxim Range LAN2, Symbol Spectrum 1, Symbol Spectrum 24
as it existed prior to adoption of IEEE 802.11, HiperLAN1, or
HiperLAN2. Any Proprietary Information from the ParkerVision
Intellectual Property Pool contained in a Licensed Part must be
concealed within the Licensed Part, such that no
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Proprietary Information from the ParkerVision Intellectual Property
Pool is apparent from or exposed in the Licensed Part except through
legally permissible reverse engineering.
1.15. LICENSED PRODUCT.
"Licensed Product" means a radio-based product including one or more
Licensed Parts and/or based on one or more Licensed Cores and
directed to the Sole and Open Fields, and must include an integrated
circuit chip set having at least one Licensed Sub-Part, and at least
one of: (1) at least one fully functional WLAN baseband processor as
specified and required by WLAN as defined herein; or (2) at least
one fully functional WLAN MAC (media access controller) as specified
and required by WLAN as defined herein, wherein such WLAN baseband
processor or WLAN MAC is a significant value added component, and is
comparable to that required by one or more of the following
standards: IEEE 802.11, IEEE 802.11a, IEEE 802.11b, HomeRF, Proxim
Range LAN, Proxim Range LAN2, Symbol Spectrum 1, Symbol Spectrum 24
as it existed prior to adoption of IEEE 802.11, HiperLAN1, or
HiperLAN2.
1.16. LICENSED SUB-PART.
"Licensed Sub-Part" is one of a receiver, a transmitter, a
transceiver or a transmitter/receiver pair implemented in integrated
circuit form, which incorporates Proprietary Information included in
the ParkerVision Intellectual Property Pool. Licensed Sub-Part
specifically excludes discrete implementations of a receiver, a
transmitter, a transceiver or a transmitter/receiver pair which
incorporates Proprietary Information included in the ParkerVision
Intellectual Property Pool.
1.17. LICENSEE PATENTED IMPROVEMENT.
"Licensee Patented Improvement" means any patent claim owned by
Licensee, and/or licensed by Licensee with a royalty free right to
sublicense to ParkerVision and to Intellectual Property Pool
Licensees, which covers one or more Licensee Technology
Improvements, and which has a priority date under 35 U.S.C. ss. 119
and/or 35 U.S.C. ss. 120 that is prior to a date equal to [*] after
termination of this Agreement, if this Agreement terminates after
the conclusion of [*], or (2) if this Agreement terminates prior to
the conclusion of [*], then the sooner of [*] after termination of
this Agreement, or [*] if this Agreement terminated at the
conclusion of [*].
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1.18. LICENSEE TECHNOLOGY IMPROVEMENTS.
"Licensee Technology Improvements" means all extensions,
enhancements and modifications based on the ParkerVision Technology,
and/or the ParkerVision Intellectual Property Pool, created or
developed by or for Licensee. Licensee Technology Improvements do
not include Proprietary Information in any patent applications owned
by Licensee, that were filed prior to the Effective Date of this
Agreement, and that are not based on ParkerVision Technology or
ParkerVision Technology Improvements. Notwithstanding Section 19(a)
of the Mutual Non-Disclosure Agreement (Exhibit F), ParkerVision
acknowledges that Licensee has pending applications in direct
conversion of EM signals technology using non-heterodyne techniques
filed prior to the Effective Date of this Agreement. Licensee agrees
that all work resulting from the [*] on behalf of Licensee [*] to
[*] thereafter, is presumed to be Licensee Technology Improvements,
and Licensee shall have the burden to rebut this presumption. Any
issued or granted patent claim, that was filed or amended after [*],
in patent applications covering work resulting from the [*], that
reads on any Proprietary Information in the ParkerVision
Intellectual Property Pool, is presumed to be Licensee Patented
Improvements, and Licensee shall have the burden to rebut this
presumption. [*].
1.19. MARKET SHORTFALL ROYALTY.
"Market Shortfall Royalty" is the difference between [*] for a
specific Measurement Period and the lesser of [*] that would have
been due if Licensee had achieved (1) a ranking by two or more
National Research Organizations as the [*] of market provider of
worldwide WLAN units Shipped; or (2) be identified by two or more
National Research Organizations as having a market share of at least
[*] of worldwide WLAN units Shipped.
1.20. MEASUREMENT PERIOD.
A "Measurement Period" shall consist of [*]. The first "Measurement
Period" shall begin at the end of the Design-In Period and end [*]
thereafter. Each successive Measurement Period shall last for the
succeeding [*] thereafter.
1.21. NATIONAL RESEARCH ORGANIZATION.
"National Research Organization" means any mutually agreed upon
organization that tracks and publishes statistics on the WLAN market
such as Gartner Group, IDC, Allied Business Intelligence, Dataquest,
etc.
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1.22. NEW LICENSED CORES, NEW LICENSED PARTS AND NEW LICENSED PRODUCTS.
"New Licensed Cores, New Licensed Parts and New Licensed Products"
means commercial production model Licensed Cores, Licensed Parts and
Licensed Products, respectively, that were not Shipped by Licensee
or its sub-licensee(s) prior to termination of [*], and that differ
in design and/or implementation from Pre-Termination Licensed Units.
1.23. NEW NON-LICENSED PRODUCTS.
"New Non-Licensed Products" means all radio-based cores, parts, and
products commercialized by Licensee after execution of this
Agreement which do not incorporate Proprietary Information included
in the ParkerVision Intellectual Property Pool and/or the
ParkerVision Technology Improvements.
1.24. OPEN FIELDS.
"Open Fields" mean the following fields:
(1) WLAN Client Devices, compliant with WLAN as defined herein,
that support dual-mode operation of one or more WLAN
operations with one or more WAN operations (dual-mode
capability), compliant with WAN as defined herein; and
(2) WLAN Client Devices, compliant with WLAN as defined herein,
that support tri-mode operation of one or more WLAN operations
with one or more WAN operations and one or more Bluetooth
operations (tri-mode capability), compliant with WAN and
Bluetooth as defined herein.
1.25. OPEN RIGHT.
"Open Right" means a right granted by ParkerVision to Licensee,
which ParkerVision may also grant to one or more third parties.
1.26. PARKERVISION DELIVERABLES.
"ParkerVision Deliverables" means the deliverables listed in Exhibit
B that are to be delivered by ParkerVision to Licensee.
1.27. PARKERVISION INTELLECTUAL PROPERTY POOL.
"ParkerVision Intellectual Property Pool" means all ParkerVision
Technology Intellectual Property, ParkerVision Patented
Improvements, Licensee Patented Improvements, Technology Pool
Licensee Patented Improvements, and at the sole discretion of
ParkerVision, ParkerVision Technology Improvements.
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respect to the omitted portion.
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1.28. PARKERVISION PATENTED IMPROVEMENTS.
"ParkerVision Patented Improvements" means any patent claim of an
issued or granted patent owned by ParkerVision, or licensed by
ParkerVision with a royalty free right to sublicense to Intellectual
Property Pool Licensees and to Licensee, which covers one or more
ParkerVision Technology Improvements.
1.29. PARKERVISION TECHNOLOGY.
"ParkerVision Technology" means technology that is owned by
ParkerVision relating to D2DTM wireless communications technology,
and that is described in documents listed in Exhibit A. ParkerVision
Technology does not include Proprietary Information in any patent
applications owned by ParkerVision, that were filed prior to the
Effective Date of this Agreement, and that are not listed in Exhibit
A, unless designated as such by ParkerVision at ParkerVision's sole
discretion.
1.30. PARKERVISION TECHNOLOGY IMPROVEMENTS.
"ParkerVision Technology Improvements" means all extensions,
enhancements and modifications based on the ParkerVision Technology,
Licensee Patented Improvements, and Technology Pool Licensee
Patented Improvements and owned by ParkerVision.
1.31. PARKERVISION TECHNOLOGY INTELLECTUAL PROPERTY.
"ParkerVision Technology Intellectual Property" means all patent,
copyright, chip mask, trade secret, Confidential Information,
know-how, and contract rights (excluding trademarks, trade dress and
trade name rights) in or based on the ParkerVision Technology that
ParkerVision owns or has a royalty free right to sublicense to
Intellectual Property Pool Licensees and to Licensee.
1.32. PERCENTAGE SHIPPED.
"Percentage Shipped" means the total number of New Non-Licensed
Products Shipped by Licensee during a Measurement Period divided by
the total number of radio-based products Shipped by Licensee during
the same Measurement Period.
1.33. PRE-TERMINATION LICENSED UNITS.
"Pre-Termination Licensed Units" means any Licensed Cores, Licensed
Parts and/or Licensed Products that were Shipped by Licensee and/or
its sub-licensee(s) prior to the end of [*].
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respect to the omitted portion.
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1.34. PROPRIETARY INFORMATION.
"Proprietary Information" means any information in which a party to
this Agreement or a third party has an ownership interest.
1.35. RECIPIENT.
Recipient shall mean any party and/or any third party to whom
Licensee and/or its sub-licensee(s) Ships Licensed Cores, Licensed
Parts, and/or Licensed Products.
1.36. ROYALTY BEARING UNIT.
"Royalty Bearing Unit" means any Licensed Core, Licensed Part,
and/or Licensed Product Shipped by Licensee and/or its
sub-licensee(s).
1.37. SECOND TERM OF CONTRACT.
"Second Term of Contract" shall begin at [*] (assuming no
termination), and shall continue until terminated.
1.38. SELECTED PATENT CLAIMS.
"Selected Patent Claims" means [*] U.S. independent claims issued
from the two U.S. patent applications listed in Exhibit A, and any
continuation and/or divisional applications thereof, but not
including any continuation-in-part applications. Selected Patent
Claims also means [*] independent claims, that are most closely
equivalent in scope to such [*] issued U.S. patent claims, in each
foreign country in which claims have issued or been granted from
foreign counterpart applications corresponding to the two U.S.
patent applications listed in Exhibit A. Such Selected Patent Claims
shall be selected by mutual agreement of ParkerVision and Licensee
after issuance or grant of each such patent application according to
criteria that include the commercial significance of a given claim,
and the validity and enforcement of a given claim. In any given
country, if [*] independent claims do not issue or are not granted,
then the parties shall mutually agree on dependent claims issued or
granted in such country such that the total number of Selected
Patent Claims in any given country at any given time is [*].
Issuance or grant of less than [*] claims at any given time and in
any given country shall not be considered a breach of this
Agreement.
1.39. SHIPPED.
"Shipped" (and variations such as "Ships" and "Shipments" and
"Ship") means the physical transfer of a Licensed Part, Licensed
Core, and/or a Licensed Product, and shall not require the transfer
of ownership and/or any payment to the shipping party.
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1.40. SOLE FIELDS.
"Sole Fields" mean the following fields:
(1) WLAN Infrastructure Devices and WLAN Client Devices compliant
with WLAN as defined herein, that support only one or more
WLAN operations (single-mode capability); or
(2) WLAN Infrastructure Devices, compliant with WLAN as defined
herein, that support only dual-mode operation of one or more
WLAN operations with one or more WAN operations (dual-mode
capability), compliant with WAN as defined herein; or
(3) WLAN Infrastructure Devices and WLAN Client Devices, compliant
with WLAN as defined herein, that support only dual-mode
operation of one or more WLAN operations with one or more
Bluetooth operations (dual-mode capability), compliant with
Bluetooth as defined herein; or
(4) WLAN Infrastructure Devices, compliant with WLAN as defined
herein, that support only tri-mode operation of one or more
WLAN operations with one or more WAN operations with one or
more Bluetooth operations (tri-mode capability), compliant
with WAN and Bluetooth as defined herein.
1.41. SOLE RIGHT.
"Sole Right" means a right granted by ParkerVision to Licensee,
which ParkerVision may not grant to a third party or third parties.
1.42. SUB-LICENSEE COUNTRIES.
"Sub-Licensee Countries" means the United States, Japan, Republic of
Korea, United Kingdom, Austria, Belgium, Cyprus, Denmark, Finland,
France, Germany, Greece, Ireland, Italy, Luxembourg, Monaco,
Netherlands, Portugal, Spain, Sweden, and Switzerland/Liechtenstein.
1.43. TECHNOLOGY POOL LICENSEE IMPROVEMENTS.
"Technology Pool Licensee Improvements" means all extensions,
enhancements and modifications based on the ParkerVision Technology,
and/or the ParkerVision Intellectual Property Pool, created or
developed by or for an Intellectual Property Pool Licensee.
1.44. TECHNOLOGY POOL LICENSEE PATENTED IMPROVEMENT.
"Technology Pool Licensee Patented Improvement" means any patent
claim of an issued or granted patent owned by an Intellectual
Property Pool Licensee or licensed by an Intellectual Property Pool
Licensee with a royalty free right to sublicense to ParkerVision and
to Intellectual Property Pool Licensees and to Licensee, which
covers one or more Technology Pool Licensee Improvements.
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1.45. WAN.
"WAN" shall mean a Wide Area Network that is implemented according
to and that operates within only the following standards: ITU IS-54,
ITU IS-95, or the cellular telephony standard based on 3G
promulgated by ITU after the Effective Date of this Agreement,
DCS1800 (GSM), IMT-2000 (Wideband CDMA Europe), PDC (Japan), ITU
IS-136, AMPS/NAMPS, TACS, NMT, US-136, GSM, CT2, DECT, PHF, CDPD,
UMTS, ITU/IMT 2000, RAM, MOBITEX, XXXXX. Additional specifications
that (a) are promulgated after the Effective Date of this Agreement,
and (b) are functionally equivalent to WAN as defined by the WAN
standards listed above, may be added to the list with ParkerVision's
consent, which shall not be unreasonably withheld. In the event that
the parties are not able to reach agreement on (a) and/or (b), then
the parties agree to accept the findings of a neutral third-party
expert in the wireless field to be selected by mutual agreement of
the parties. In no case shall WAN include WLAN, WLL, Bluetooth.
1.46. WLAN.
"WLAN" shall mean a Wireless Local Area Network that is implemented
according to and that operates within only the following standards:
IEEE 802.11, IEEE 802.11a, IEEE 802.11b, HomeRF, Proxim Range LAN,
Proxim Range LAN2, Symbol Spectrum 1, Symbol Spectrum 24 as it
existed prior to adoption of IEEE 802.11, HiperLAN1, or HiperLAN2.
Additional specifications that (a) are promulgated after the
Effective Date of this Agreement, and (b) are functionally
equivalent to WLAN as defined by the WLAN standards listed above,
may be added to the list with ParkerVision's consent, which shall
not be unreasonably withheld. In the event that the parties are not
able to reach agreement on (a) and/or (b), then the parties agree to
accept the findings of a neutral third-party expert in the wireless
field to be selected by mutual agreement of the parties. In no case
shall WLAN include WAN, WLL, Bluetooth.
1.47. WLAN CLIENT DEVICES.
"WLAN Client Devices" means hand held computers, personal data
assistants (PDAs), automatic identification data collection devices
(such as bar code scanners/readers, electronic article surveillance
readers, and radio frequency identification readers) and other
similar user devices compliant with and implementing WLAN (as
defined herein) for wireless communications.
1.48. WLAN INFRASTRUCTURE DEVICES.
"WLAN Infrastructure Devices" means Access Points and other similar
devices, compliant with and implementing WLAN as defined herein, and
used to provide the ability for WLAN Client Devices to connect to a
wired network and/or to provide the network functionality of a WLAN.
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1.49. WLL.
"WLL" (Wireless Local Loop) means radio communications that provide
the capability to replace wired elements of an at least partially
wired network (such as WAN as defined herein) with wireless
technology, and includes but is not limited to LMDS (local
multipoint distribution system), MMDS (microwave multipoint
distribution system), and ADML (Asymmetric Digital Microcell Link).
2. LICENSE GRANTS
2.1. SOLE LICENSE GRANT BY PARKERVISION.
Subject to the terms of Paragraph 2.3 below, ParkerVision hereby
grants to Licensee a world-wide, Sole Right to make, have made, use,
sell, and offer to sell Licensed Parts and Licensed Products in the
Sole Fields, subject to all terms, conditions, limitations, and
restrictions contained in this Agreement. No rights are granted
herein to make, have made, use, sell, and/or offer to sell Licensed
Sub-Parts, except to carry out the license grant specified in the
foregoing sentence. No rights are granted herein to make, have made,
use, sell, and/or offer to sell Licensed Cores, except as specified
in Section 2.9.
2.2. OPEN LICENSE GRANT BY PARKERVISION.
ParkerVision hereby grants to Licensee a world-wide, Open Right to
make, have made, use, sell, and offer to sell Licensed Parts and
Licensed Products in the Open Fields, subject to all terms,
conditions, limitations, and restrictions contained in this
Agreement. No rights are granted herein to make, have made, use,
sell, and/or offer to sell Licensed Sub-Parts, except to carry out
the license grant specified in the foregoing sentence. No rights are
granted herein to make, have made, use, sell, and/or offer to sell
Licensed Cores, except as specified in Section 2.9.
2.3. MAINTENANCE OF SOLE RIGHTS.
In order to maintain the sole license grant of Section 2.1 above,
Licensee agrees to satisfy the following requirements.
2.3.1. PRODUCT SHIPMENTS.
Subject to the following exceptions in Sections
2.3.1.1-2.3.1.4, Licensee agrees that beginning with [*],
Licensee's Percentage Shipped shall be [*] or less. Otherwise,
the sole license grants provided in Section 2.1 shall
immediately become Open Rights, [*].
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2.3.1.1. During the first Measurement Period, the Percentage
Shipped may be up to and including [*]. In order to
maintain the Sole Rights under Section 2.1 of this
Agreement, Licensee agrees to pay ParkerVision for the
first Measurement Period a minimum fee equal to [*]
times (minus any royalty bearing Shipments made by
Licensee during the Design-In Period) the greater of (a)
the respective royalty rate specified in the Royalty Fee
section of Exhibit E times the [*] of Royalty Bearing
Units actually Shipped by Licensee and its
sub-license(s) during the first Measurement Period, or
(b) [*].
2.3.1.2. During the second Measurement Period, the Percentage
Shipped may be up to and including [*]. In order to
maintain the Sole Rights under Section 2.1 of this
Agreement, Licensee agrees to pay ParkerVision for the
second Measurement Period a minimum fee equal to [*]
times the greater of (a) the respective royalty rate
specified in the Royalty Fee section of Exhibit E times
the [*] of Royalty Bearing Units actually Shipped by
Licensee and its sub-licensee(s) during the second
Measurement Period, or (b) [*].
2.3.1.3. During the third Measurement Period, the Percentage
Shipped may be no more than [*].
2.3.1.4. During the fourth Measurement Period, the Percentage
Shipped may be no more than [*].
2.3.1.5. During the fifth Measurement Period and all
Measurement Periods thereafter, the Percentage Shipped
may be no more than [*].
2.3.1.6. [*].
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2.3.1.7. Subject to Sections 2.3.1.1-2.3.1.4, should Licensee
decide to utilize a technology other than a technology
based on Proprietary Information from the ParkerVision
Intellectual Property Pool and/or ParkerVision
Technology Improvements in its radio-based products at
any time after the Effective Date of this Agreement such
that Licensee projects that the Percentage Shipped will
be greater than [*], Licensee agrees to immediately
notify ParkerVision of such decision and agrees not to
Ship New Non-Licensed Products with such other
technology for [*] from the date of such notice. Upon
receipt of such notice by ParkerVision, the Sole Rights
granted herein to Licensee shall immediately become Open
Rights for the remaining term of this Agreement.
Subject to Sections 2.3.1.1 - 2.3.1.4, if the total
Shipments by Licensee of New Non-Licensed Products that
utilize such other technology during a time period equal
to the [*] of Shipment of such New Non-Licensed Products
is greater than [*] of all radio-based products Shipped
by Licensee during the applicable time period, and
Licensee has not provided notice to ParkerVision [*]
prior to the start of the time period as specified in
this Section, then all Sole Rights granted herein shall
immediately revert to Open Rights, and Licensee shall
immediately pay to ParkerVision an amount equal to [*]
of such New Non-Licensed Products Shipped [*] of all
radio-based products Shipped by Licensee during the time
period (except that the amount shall be no less than [*]
for parts and cores, and [*] for products).
2.3.2. MARKET HURDLES.
To maintain the Sole Rights provided in Section 2.1, Licensee
must also satisfy the following requirements:
2.3.2.1. [Intentionally Left Blank.]
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2.3.2.2. Beginning with the third Measurement Period and
continuing for each subsequent Measurement Period during
the term of this Agreement, the Sole Rights granted
herein to Licensee shall remain Sole Rights so long as
Licensee shall be (1) ranked by two or more National
Research Organizations as the [*] of market provider of
worldwide WLAN units Shipped; or (2) be identified by
two or more National Research Organizations as having a
market share of at least [*] of worldwide WLAN units
Shipped.
The parties recognize that the National Research
Organizations may not track the same type of products as
contemplated in this Agreement and the parties agree to
make reasonable accommodations to take into account any
discrepancies. Specifically, any unit that is not
tracked by the National Research Organizations, that is
conclusively demonstrated by either party to be a WLAN
unit, shall be included for purposes of this section.
For example, to the extent that sales of radio-based
computer terminals are not tracked by the National
Research Organizations, sales of radio-based computer
terminals should be included for purposes of this
section. Furthermore, for purposes of this section,
sales by sub-licensees of Licensed Products should be
included in Licensee's sales, and omitted from
sub-licensee's sales.
If in any Measurement Period Licensee fails to meet both
of the two above requirements (i.e., Licensee has
satisfied the requirements of this Section if Licensee
satisfies either (1) or (2)), then the Sole Rights shall
become Open Rights [*].
2.3.2.3. Each party has the right to challenge the market
share and ranking information provided by the other
party. Both parties agree to negotiate in good faith to
reach an agreement on market share and ranking
information for Licensee. In the event that the parties
are not able to reach an agreement, the parties agree to
mediation as specified in Section 12.2.
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2.4. RIGHTS LIMITATIONS CONCERNING LICENSED SUB-PARTS AND/OR LICENSED
CORES AND/OR LICENSED PARTS.
No rights are given to Licensee and/or its sub-licensees by
ParkerVision under this Agreement to have made, sell, offer to sell,
and/or Ship Licensed Sub-Parts and/or Licensed Cores, except as
provided in Section 2.9.
All Licensed Parts made, have made, and/or sold pursuant to all
license grants contained herein must be used to make Licensed
Products in the Sole and Open Fields, and any other operation is
agreed to be operation outside the Sole and Open Fields.
2.5. RESERVATION OF RIGHTS BY PARKERVISION.
ParkerVision reserves the right to make, have made, use, sell,
and/or offer to sell, without restriction, Licensed Sub-Parts,
Licensed Cores, Licensed Parts, Licensed Products, and/or integrated
circuits that incorporate Proprietary Information included in the
ParkerVision Intellectual Property Pool and/or ParkerVision
Technology Improvements, in the Sole and Open Fields, by itself or
in collaboration with one or more Collaborators.
When collaborating in the Sole Fields, ParkerVision agrees that: (1)
ParkerVision will be responsible for designing Licensed Sub-Parts,
although ParkerVision may contract with any third party who is not a
Collaborator with ParkerVision in the Sole Fields, and who is not a
parent or subsidiary of a Collaborator with ParkerVision in the Sole
Fields, and who is not collaborating on a WLAN application with a
Collaborator with ParkerVision in the Sole Fields, to assist
ParkerVision with same; and (2) ParkerVision will be responsible for
integrating RF (radio frequency) front ends that incorporate
Proprietary Information included in the ParkerVision Intellectual
Property Pool and/or ParkerVision Technology Improvements, and that
optionally include one or more WLAN baseband processors and/or one
or more WLAN MACs, and ParkerVision may contract with any third
party who is not a Collaborator with ParkerVision in the Sole
Fields, and who is not a parent or subsidiary of a Collaborator with
ParkerVision in the Sole Fields, and who is not collaborating on a
WLAN application with a Collaborator with ParkerVision in the Sole
Fields, to assist ParkerVision with same. ParkerVision reserves the
right to make, have made, use, sell, and/or offer to sell, without
restriction, integrated circuits, Licensed Sub-Parts, Licensed
Cores, Licensed Parts, and/or Licensed Products, using and/or based
on such RF front ends, by itself or in collaboration with one or
more Collaborators.
ParkerVision reserves the right to sell and/or offer to sell in the
Sole and Open
100
Fields, Licensed Sub-Parts, Licensed Cores, Licensed Parts, Licensed
Products, and/or integrated circuits that incorporate Proprietary
Information included in the ParkerVision Intellectual Property Pool
and/or ParkerVision Technology Improvements, made in collaboration
with one or more Collaborators, to any third party including any
Collaborator without restriction.
To the extent allowed by law, ParkerVision agrees that
ParkerVision's gross margin on any Licensed Part and Licensed
Product sold by ParkerVision in the Sole Fields shall be no less
than [*] and [*], respectively.
Further, all rights not granted herein by ParkerVision to Licensee
are hereby reserved by ParkerVision.
2.6. OPEN LICENSE GRANT BY LICENSEE.
Licensee hereby grants to ParkerVision a world-wide, non-exclusive,
royalty-free right to make, have made, use, sell, and/or offer to
sell sub-parts, cores, parts and products incorporating Licensee
Patented Improvements so long as those sub-parts, cores, parts and
products are used in conjunction with ParkerVision Intellectual
Property Pool and/or the ParkerVision Technology Improvements.
ParkerVision shall have the right to sublicense the rights granted
to ParkerVision by Licensee under this Section to all Intellectual
Property Pool Licensees that have agreed to a substantially similar
grant back provision to Licensee, except that if Licensee is sued by
an Intellectual Property Pool Licensee (or its successor, subsidiary
or affiliate) on a patent claim from the ParkerVision Intellectual
Property Pool, then the license rights granted herein by Licensee to
that Intellectual Property Pool Licensee may be terminated by
Licensee upon filing of such claim. Licensee agrees that, in the
event that Licensee sues an Intellectual Property Pool Licensee on a
patent claim from the ParkerVision Intellectual Property Pool, then
the license rights granted herein by that Intellectual Property Pool
Licensee to Licensee may be terminated by that Intellectual Property
Pool Licensee upon filing of such claim. Notwithstanding any other
provision of this Agreement, Licensee reserves to itself all
intellectual property rights except for those expressly stated
herein. Also, this Agreement does not restrict any right Licensee
may have on or in subject matter other than Licensee Technology
Improvements and/or Licensee Patented Improvements. Except as
provided in this Section, no licenses are granted by Licensee to
ParkerVision and/or any Intellectual Property Pool Licensee, and no
rights to grant sub-licenses are granted. The rights granted herein
to ParkerVision shall survive termination of this Agreement.
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101
2.7. COVENANT BY LICENSEE NOT TO XXX AND RELEASE OF CLAIMS.
Licensee hereby covenants not to xxx, and releases from any and all
claims arising after the Effective Date of this Agreement that
Licensee may have had, may have, or may have in the future,
ParkerVision, and any third party and/or third parties in
collaboration with or assisting ParkerVision pursuant to Section
2.5, under any Licensee Patented Improvement. The covenant and
release contained herein shall survive termination of this
Agreement.
2.8. REVERSION TO OPEN GRANT.
Subject to the following, in the event that any of the Sole Rights
granted in Section 2.1 of this Agreement become Open Rights under
any term of this Agreement, such Open Rights shall be in effect for
the remaining [*] and the Second Term of Contract (if extended).
For each Measurement Period after the Sole Rights granted in Section
2.1 become Open Rights under any term of this Agreement, Licensee
agrees to pay ParkerVision a minimum fee of [*]. This minimum fee
shall be credited against any Royalty Fee actually due from Licensee
to ParkerVision under Section 4 of this Agreement. Thereafter, this
minimum fee will be increased [*]. If this fee is not paid by
Licensee to ParkerVision for each Measurement Period after the Sole
Rights granted in Section 2.1 become Open Rights under any term of
this Agreement, then ParkerVision shall have the right to terminate
this Agreement.
2.9. RIGHT TO SUB-LICENSE.
2.9.1.Licensee shall have the right to sub-license some or all of
the following rights in Sub-Licensee Countries, and companies
in other countries [*]:
The right to make, use, sell, and offer to sell Licensed Parts
and Licensed Products in the Sole and Open Fields, subject to
all terms, conditions, limitations, and restrictions contained
in this Agreement. All Licensed Parts made and/or sold
pursuant to this grant must be used to make Licensed Products
in the Sole and Open Fields. No rights are granted herein to
sub-license any right to make, have made, use, sell, and/or
offer to sell Licensed Sub-Parts or Licensed Cores, except to
carry out the license grant specified in the foregoing
sentence.
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102
2.9.2.The Royalty Fee according to Exhibit E shall be due and
payable to ParkerVision by Licensee for all Shipments of
Licensed Products and/or Licensed Parts by each sub-licensee.
2.9.3.Before any of the rights of Section 2.9.1 may be sub-licensed
by Licensee, [*]. Any material changes to the standard
sub-license agreement must be approved in writing by
ParkerVision [*]. If Licensee is uncertain whether a proposed
change is material, it shall request clarification from
ParkerVision prior to agreeing to such change, without having
to reveal to ParkerVision the identity of the potential
sub-licensee until after a sub-licensee agreement, if any, is
reached. After the standard sub-license agreement (and any
material changes contained therein) have been approved by
ParkerVision, then Licensee may sub-license the rights
specified in Section 2.9.1. Licensee agrees to provide the
identity of each sub-licensee and a copy of each sub-license
agreement to ParkerVision within thirty (30) days after
execution of each sub-licensee agreement, but Licensee shall
used reasonable efforts to inform ParkerVision of the
sub-license agreement prior to any public disclosure of the
sub-license agreement. [*]. The identity and sub-license
agreement of any of Licensee's sub-licensee shall be
maintained as Confidential Information by ParkerVision.
ParkerVision may disclose any such sub-license agreement to a
third party who is negotiating with ParkerVision to acquire
ParkerVision (or substantially all of the D2DTM division of
ParkerVision, and/or ParkerVision's rights in the ParkerVision
Intellectual Property Pool), as long as the third party agrees
in writing to maintain as confidential any terms and
conditions of such sub-licensee agreement disclosed to the
third party.
2.9.4.Licensee may disclose ParkerVision Proprietary Information
included in the ParkerVision Intellectual Property Pool and/or
ParkerVision Technology Improvements (to the extent Licensee
has been provided with same from ParkerVision) to a
sub-licensee or a potential sub-licensee who is headquartered
in one of the Sub-Licensee Countries, provided that the
following requirements are satisfied prior to any such
disclosure to the sub-licensee or potential
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103
sub-licensee: (1) the sub-licensee or the potential
sub-licensee has executed a non-disclosure agreement which has
been previously approved by ParkerVision in writing, which
approval shall not be unreasonably withheld; and (2) all
persons associated with the sub-licensee or potential
sub-licensee who are to receive ParkerVision Proprietary
Information included in the ParkerVision Intellectual Property
Pool and/or ParkerVision Technology Improvements have executed
individual Non-Disclosure Agreements similar to that attached
in Exhibit G. Licensee agrees that ParkerVision Proprietary
Information included in the ParkerVision Intellectual Property
Pool and/or ParkerVision Technology Improvements will not be
disclosed to [*] for any given sub-licensee or potential
sub-licensee, without first obtaining the consent of
ParkerVision [*]. Upon request of ParkerVision, Licensee shall
provide to ParkerVision copies of the non-disclosure
agreements referenced above. The foregoing restrictions on
disclosure in this Section 2.9.4 do not apply to information
contained in issued patents and published foreign patent
applications, and Licensee Technology Improvements that do not
disclose ParkerVision Confidential Information.
2.9.5.Licensee shall have the right to Ship Licensed Parts and
Licensed Products to its sub-licensees. Also, Licensee shall
have the right to Ship Licensed Cores to its sub-licensees for
the sole purpose of carrying out the license grant specified
above in Section 2.9.1.
2.9.6. No sub-license granted by Licensee may:
(1) Include the right to sub-license.
(2) Extend beyond the term of this Agreement.
2.9.7.Termination of this Agreement pursuant to Section 10 shall
immediately terminate all sub-licenses that have been granted
by Licensee, and Licensee shall so notify all of its
sub-licensees of such termination.
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104
2.9.8.Licensee agrees that if Licensee identifies any sub-licensee
(of Licensee) who is operating outside the Sole Fields, if
any, or the Open Fields, to the extent the sub-licensee's
actions are attributable to Licensee or caused by Licensee's
actions, whether by notice from ParkerVision or otherwise,
then Licensee agrees to notify ParkerVision of the
non-compliance, and agrees to take appropriate action at
Licensee's expense to ensure that the sub-licensee operates
only within the Sole Fields, if any, or the Open Fields. If
Licensee does not take action to ensure that the sub-licensee
operates only within the Sole Fields, if any, or the Open
Fields, then ParkerVision may take such action, and
ParkerVision's reasonable and actual costs associated with
such action shall be paid by Licensee [*].
2.9.9.Licensee agrees to require each of its sub-licensees to
maintain sufficient shipping records and sales records of
Licensed Cores, Licensed Parts and Licensed Products to
accurately record sub-licensee's activity, and to allow that
at ParkerVision's option and expense, ParkerVision may have an
accounting firm of ParkerVision's choosing, and to which
sub-licensee has no reasonable objection, conduct an audit of
sub-licensee for the sole purpose of determining the accuracy
of sub-licensee's accounting of shipments and sales of
Licensed Cores, Licensed Parts and Licensed Products. Each
sub-licensee shall agree to provide the accounting firm with
reasonable access to its shipping and sales records during
normal business hours.
2.10. ENFORCEMENT OF SOLE AND OPEN FIELDS OF USE BY LICENSEE.
Licensee agrees to notify and require in writing any Recipient to
whom Licensee Ships any Licensed Part in the Sole Fields and/or the
Open Fields that such Licensed Part shall be used, sold, or offered
for sale by Recipient only in the applicable Sole Fields and/or Open
Field. Licensee shall maintain copies of such writings, and shall
provide copies of such writings to ParkerVision upon request of
ParkerVision. If Licensee identifies any Recipient who is operating
outside the Sole and Open Fields, whether by notice from
ParkerVision or otherwise, then Licensee agrees to notify
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105
ParkerVision of the non-compliance, and further agrees to take
appropriate action at Licensee's expense to ensure that the
Recipient operates within the Sole Fields and/or the Open Fields. If
Licensee does not take action to ensure that the Recipient operates
only within the Sole Fields, if any, or the Open Fields, then
ParkerVision may take such action, and ParkerVision's reasonable and
actual costs associated with such action shall be paid by Licensee
[*].
2.11. FUTURE LICENSES BY PARKERVISION.
2.11.1. ParkerVision represents and warrants that, prior to the
Effective Date of this Agreement, ParkerVision has not
licensed any third party under the ParkerVision Intellectual
Property Pool and/or ParkerVision Technology Improvements in
the Sole Fields defined herein. ParkerVision agrees that,
after the Effective Date of this Agreement, it will not grant
any license to any third party under the ParkerVision
Intellectual Property Pool and/or ParkerVision Technology
Improvements in the Sole Fields defined herein, as long as
Licensee retains any Sole Rights. ParkerVision agrees to
notify any future Intellectual Property Pool Licensee of
Licensee's rights in the Sole and Open Fields.
2.11.2. If ParkerVision identifies that another licensee of
ParkerVision is operating within the Sole Fields, whether by
notice from Licensee or otherwise, then ParkerVision agrees to
notify Licensee, and further agrees to take appropriate action
at ParkerVision's expense to cause the other licensee to cease
operation in the Sole Fields, as long as Licensee retains any
Sole Rights.
3. TRADEMARK LICENSE GRANTS AND RESTRICTIONS
3.1. TRADEMARK LICENSE.
ParkerVision hereby grants to Licensee, for the term of this
Agreement and not longer, a limited world-wide, Open Right to sell
Licensed Parts and Licensed Products bearing the Licensed
ParkerVision Trademarks. Licensee shall not use the Licensed
ParkerVision Trademarks except as expressly stated in this
Agreement. All rights in and to the Licensed ParkerVision Trademarks
not specifically granted to Licensee by this
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106
Agreement are reserved to ParkerVision for ParkerVision's own use
and benefit.
3.2. NO SUBLICENSE OF TRADEMARK LICENSE.
Licensee shall not have the right to license or sublicense any of
the rights granted herein with respect to the Licensed ParkerVision
Trademarks, except to the extent necessary under Section 5.2.6.
3.3. PROHIBITED USE OF LICENSED PARKERVISION TRADEMARKS.
In addition to all other restrictions imposed on Licensee pursuant
to this Agreement, during the term of this Agreement and thereafter,
Licensee shall not use any of the Licensed ParkerVision Trademarks:
a) as a portion of or in combination with any other trademarks,
except that during the term of this Agreement, Licensee may
use the Licensed ParkerVision Trademarks in combination with
Licensee's own trademarks including the Licensee trademark on
or in connection with Licensed Cores, Licensed Parts and
Licensed Products, provided that Licensee does not make the
Licensed ParkerVision Trademarks and Licensee's trademarks
appear to form a single trademark;
b) as all or part of a corporate name, trade name or any other
designation used by Licensee to identify its business;
c) for any other purpose other than as trademarks for Licensed
Cores, Licensed Parts and Licensed Products. At no time shall
Licensee or any parent, subsidiary, affiliated, or related
company, or any person or entity owned or controlled by
Licensee, use any name, trademark, service xxxx, trade name,
trade dress, or logo likely to cause confusion with any of the
Licensed ParkerVision Trademarks.
3.4. OWNERSHIP OF LICENSED PARKERVISION TRADEMARKS.
Licensee acknowledges that ParkerVision has sole and exclusive
ownership of all right, title, and interest in and to the Licensed
ParkerVision Trademarks, and all registrations and applications
therefor. All use by Licensee of the Licensed ParkerVision
Trademarks and all good will and benefit arising from such use shall
inure to the sole and exclusive benefit of ParkerVision.
3.5. LICENSEE NON-OWNERSHIP OF LICENSED PARKERVISION TRADEMARKS.
Licensee further acknowledges, represents, and warrants that it has
not acquired, and shall not acquire, whether by operation of law,
this Agreement, or otherwise, any right, title, interest, or other
ownership in
107
or to the Licensed ParkerVision Trademarks or any part thereof.
Should any such right, title, interest, or other ownership become
vested in Licensee by operation of law, this Agreement, or
otherwise, Licensee agrees to assign (with any reasonable and actual
out-of-pocket expenses to be paid by ParkerVision), and hereby
assigns, all such right, title, interest, and other ownership to
ParkerVision free of additional consideration. Licensee shall
provide and execute all documents necessary to effectuate and record
such assignments to ParkerVision (with any reasonable and actual
out-of-pocket expenses to be paid by ParkerVision).
3.6. LICENSEE NOT TO INJURE.
Licensee shall not, during the term of this Agreement or thereafter,
do anything which would in any way damage, injure, or impair the
validity and substance of the Licensed ParkerVision Trademarks, nor
shall Licensee attack, dispute, or challenge, nor aid others to
dispute or challenge, ParkerVision's right, title, and interest in
and to the Licensed ParkerVision Trademarks.
3.7. REGISTRATIONS AND LICENSING FORMALITIES.
Licensee shall cooperate with ParkerVision in the execution, filing
and prosecution of any trademark applications that ParkerVision may
desire to file, and for that purpose Licensee shall supply to
ParkerVision from time to time samples, packaging, containers,
labels, tags, and similar materials as may be reasonably required
(with any reasonable and actual out-of-pocket expenses to be paid by
ParkerVision). Licensee also agrees to execute and deliver to
ParkerVision at any time whether during or after the term of this
Agreement and without further consideration, such instruments of
transfer and other documents as ParkerVision may reasonably request
for ParkerVision's trademark applications or to confirm
ParkerVision's ownership rights (with any reasonable and actual
out-of-pocket expenses to be paid by ParkerVision).
3.8. SEPARATE TRADEMARK AGREEMENTS.
The license to use the Licensed ParkerVision Trademarks granted to
Licensee by this Agreement shall be confirmed by a separate
trademark agreement for any country which requires a separate
agreement, including without limitation registered user agreements,
or where a separate trademark agreement is deemed appropriate by
ParkerVision. At ParkerVision's request, Licensee shall execute
whatever documents or forms are necessary to confirm the license, to
record Licensee as a registered user, and/or to record the license,
in any country in which Licensed Products are sold by Licensee (with
108
any reasonable and actual out-of-pocket expenses to be paid by
ParkerVision).
3.9. TERMINATION OR CANCELLATION.
Expiration or termination of this Agreement shall immediately
terminate all registered user and other license recordal documents
filed or recorded pursuant to this Agreement. The parties expressly
agree that all documents filed or recorded with any trademark office
or other authority relating to the trademark license granted by this
Agreement may be canceled at any time by ParkerVision alone and
Licensee hereby agrees and consents to such cancellation.
3.10. NO LIMITATIONS OF PARKERVISION.
Nothing contained in this Agreement shall in any way restrict,
impair, limit, or affect ParkerVision's rights to use, permit others
to use, or license third parties to use the Licensed ParkerVision
Trademarks.
4. LICENSE FEES
4.1. PRE-PAID ROYALTY.
In consideration of the rights granted herein, Licensee agrees to
pay ParkerVision the Pre-paid Royalty specified in Exhibit E without
further invoice from ParkerVision. [*].
4.2 ROYALTY FEE.
In consideration of the rights granted herein, Licensee further
agrees to pay ParkerVision the Royalty Fee specified in Exhibit E
without further invoice from ParkerVision.
4.3. ASSESSMENT PERIOD.
The assessment period for the Royalty Fee specified in Exhibit E, is
[*] during the term of the Agreement.
4.4. SALES REPORTING.
Within [*] of the close of each Assessment Period during the term of
this Agreement, Licensee agrees to provide ParkerVision with an
accounting of all Royalty Bearing Units Shipped from Licensee or its
Sub-licensee(s) during the Assessment Period. Such accounting shall
include a list of
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Shipments by Licensee and any Sub-Licensee(s) of Royalty Bearing
Units during the Assessment Period by part number, average selling
price and total number of Royalty Bearing Units Shipped.
ParkerVision will treat this sales reporting information as
Confidential Information of Licensee, and shall not use it for any
purpose other than for Licensee's royalty calculations.
4.5. PAYMENT TERMS.
Licensee agrees that it shall pay ParkerVision all Royalty Fees due
within [*] of the close of the Assessment Period for which they are
due, and all payments made by Licensee after the close of the [*]
period shall incur a late fee of [*].
4.6. [Intentionally Left Blank]
4.7. INDEPENDENT AUDIT.
Licensee agrees to maintain sufficient shipping records and sales
records of Licensed Cores, Licensed Parts and Licensed Products to
accurately record Licensee's activity. At ParkerVision's option and
expense, ParkerVision may have an accounting firm of ParkerVision's
choosing, and to which Licensee has no reasonable objection, conduct
an audit of Licensee for the sole purpose of determining the
accuracy of Licensee's accounting of shipments and sales of Licensed
Cores, Licensed Parts and Licensed Products. Licensee agrees to
provide the accounting firm with reasonable access to its shipping
and sales records during normal business hours.
4.8. INDEPENDENT AUDIT FREQUENCY.
Audits by the independent accounting firm will be conducted not more
than once a year, unless a preceding audit revealed a discrepancy.
4.9. ADJUSTMENTS.
Prompt adjustment shall be made by Licensee to compensate for any
errors or omissions which resulted in an underpayment to
ParkerVision. Prompt refund of overpayment shall be made by
ParkerVision to correct for any errors or omissions which resulted
in an overpayment by Licensee, or a credit may be issued against
future amounts due, at ParkerVision's option.
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4.10. UNDERPAYMENT.
If an underpayment by Licensee exceeds [*] of the payments due in a
period covered by an audit, Licensee will pay the cost of the
independent audit.
4.11. [*].
4.12. [*].
5. OBLIGATIONS OF THE PARTIES
5.1. OBLIGATIONS OF PARKERVISION
5.1.1. NOTICE OF ISSUED PATENTS.
Within three (3) months of the issue or grant date of a patent
falling within the scope of the ParkerVision Technology
Intellectual Property or the ParkerVision Patented
Improvements, ParkerVision agrees to notify Licensee of the
country, patent number, issue date, and title of the patent.
Within three (3) months of being notified by any Intellectual
Property Pool Licensee of the issuance or grant of a patent
falling within the scope of the ParkerVision Intellectual
Property Pool, ParkerVision agrees to notify Licensee of the
country, patent number, issue date, and title of patent.
5.1.2. PARKERVISION DELIVERABLES.
All ParkerVision Deliverables shall be provided to Licensee by
ParkerVision before the Effective Date of this Agreement.
Licensee agrees that by executing this Agreement it has
received all ParkerVision Deliverables.
5.2. OBLIGATIONS OF LICENSEE
5.2.1. RESTRICTED ACCESS TO PARKERVISION INTELLECTUAL PROPERTY POOL.
Licensee agrees that only those persons listed in Exhibit H
will have access to the Confidential Information contained in
the ParkerVision Intellectual Property Pool, and that those
persons will maintain such information as confidential
consistent with the confidentiality terms of this Agreement
and the Mutual Non-Disclosure Agreement of [*] attached hereto
as Exhibit F.
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5.2.2. SEPARATION.
Licensee agrees to notify ParkerVision when any of the persons
listed in Exhibit H is no longer employed by or associated
with Licensee, and the last known location, if known, of the
person.
5.2.3. ADDITIONAL PERSONS.
Additional persons may be added to Exhibit H by Licensee with
ParkerVision's consent, which consent shall not be
unreasonably withheld. If the parties agree to add a person or
persons to the list in Exhibit H, then Licensee and
ParkerVision shall execute an Addendum to Exhibit H. Persons
listed in an Addendum to Exhibit H are bound by the same
obligations as persons in Exhibit H. Licensee is bound by the
same obligations for persons in an Addendum to Exhibit H as
for persons listed in Exhibit H. Attached as Exhibit G is an
individual Non-Disclosure Agreement form to be signed by each
person to be added to the list in Exhibit H.
5.2.4. SINGLE POINT OF CONTACT FOR LICENSEE.
The individual designated in Exhibit H as the Single Point of
Contact will act as the single point of contact for Licensee
for all technology transfer during the term of this Agreement.
Licensee may change this designee from time to time with
written notice to ParkerVision as Licensee deems necessary to
perform under this Agreement.
5.2.5. NOTICE OF ISSUED PATENTS.
Within three (3) months of the issue or grant date of a
Licensee Patented Improvement to Licensee, Licensee agrees to
notify ParkerVision of the country, patent number, issue date,
and title of the patent.
5.2.6. REQUIRED MARKINGS AND STATEMENTS.
Licensee agrees as follows:
a) Licensee shall include the Licensed ParkerVision
Trademarks, and the text "Technology Licensed From
ParkerVision," on all marketing materials, product
documentation, user manuals, data sheets, and packaging
accompanying Licensed Cores, Licensed Parts, and
Licensed Products Shipped by Licensee, and at Licensee's
sole option, on Licensed Cores, Licensed Parts, and/or
Licensed Products Shipped by Licensee and/or Licensee's
sub-licensees, to the same extent that Licensee includes
its own trademarks on same.
b) Licensee shall require each of its sub-licensees to
include the Licensed ParkerVision Trademarks on all
marketing materials,
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product documentation, user manuals, data sheets, and
packaging accompanying Licensed Cores, Licensed Parts,
and Licensed Products Shipped by the sub-licensee, to
the same extent that the sub-licensee includes
Licensee's trademarks on same.
c) After the Effective Date of this Agreement and prior to
the first anniversary of the Effective Date of this
Agreement, and at each anniversary of the Effective Date
of this Agreement, ParkerVision shall provide to
Licensee a list of patents in the ParkerVision
Intellectual Property Pool applicable to Licensed Cores,
Licensed Parts, and/or Licensed Products being Shipped
by Licensee. Licensee shall include a legally
appropriate patent notice of such list of patents on all
Licensed Cores, Licensed Parts, and Licensed Products
Shipped by Licensee.
d) After the Effective Date of this Agreement and prior to
the first anniversary of the Effective Date of this
Agreement, and at each anniversary of the Effective Date
of this Agreement, ParkerVision shall provide to each of
Licensee's sub-licensees a list of patents in the
ParkerVision Intellectual Property Pool applicable to
Licensed Cores, Licensed Parts, and/or Licensed Products
being Shipped by the sub-licensee. Licensee shall
require the sub-licensee to include a legally
appropriate patent notice of such list of patents on all
Licensed Cores, Licensed Parts, and Licensed Products
Shipped by the sub-licensee.
e) Licensee shall place and display such other legends,
markings, and notices as may be required by any law or
regulation in countries requiring separate agreements,
and Licensee's sub-licensees shall place and display
such other legends, markings, and notices as may be
required by any law or regulation in countries requiring
separate agreements, to the same extent that
sub-licensees place and display same on behalf of
Licensee.
5.2.7. QUALITY CONTROL.
The quality of Licensed Cores, Licensed Parts and Licensed
Products shall conform to the reasonable quality standards of
ParkerVision as it may issue from time to time; and are of a
standard consistent with the prestige and reputation which the
Licensed ParkerVision Trademarks have heretofore developed or
develop in the future.
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5.2.8. LIMITATIONS ON USE OF INFORMATION CONTAINED IN EXHIBIT A.
Licensee agrees that it will not use the information contained
in Exhibit A or the information referred to therein for any
purpose other than to perform its obligations under this
Agreement.
5.3. PARKERVISION AS A CUSTOMER OF LICENSEE.
During the term of this Agreement, Licensee agrees to sell its
Legacy Products, New Non-Licensed Products, Licensed Parts and
Licensed Products relating to the Sole and Open Fields to
ParkerVision for use in ParkerVision products under the same terms
and conditions as other customers of Licensee are offered similar
products under similar purchasing conditions, to the extent Licensee
sells same to resellers and/or OEMs. Should similar purchasing
conditions not exist, Licensee will offer ParkerVision the closest
most favorable terms to ParkerVision's purchasing conditions.
Notwithstanding the foregoing, ParkerVision shall only resell Legacy
Products, New Non-Licensed Products, Licensed Parts and Licensed
Products to end-users. Licensee reserves the right to not sell to
ParkerVision any Legacy Products, New Non-Licensed Products,
Licensed Parts and Licensed Products if ParkerVision violates the
foregoing restriction in this Section.
6. INTELLECTUAL PROPERTY OWNERSHIP
6.1. PARKERVISION OWNERSHIP.
All ParkerVision Technology and all ParkerVision Technology
Improvements are the sole property of ParkerVision.
6.2. LICENSEE OWNERSHIP.
All Licensee Technology Improvements are the sole property of
Licensee. Licensee agrees not to assign ownership rights in any
Licensee Technology Improvements and/or any Licensee Patented
Improvements during the term of this Agreement to any third party
who does not agree to be bound by the terms of Sections 1.17, 1.18,
1.27, 2.6, 2.7, 5.2.5, and 6.2 of this Agreement relating to such
Licensee Technology Improvements and/or any Licensee Patented
Improvements.
6.3. JOINTLY DEVELOPED TECHNOLOGY.
All Jointly Developed Technology is the joint property of
ParkerVision and Licensee. Either party to this Agreement may
initiate prosecution of any patent application to protect such
Jointly Developed Technology. If
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both parties agree to equally share the cost of filing and
prosecuting such patent application, then the parties shall equally
control such filing and prosecution. If only one party wishes to pay
for such filing and prosecution, then only that party shall control
the filing and prosecution of such patent application. In all cases,
any such patent application and any patents issued or granted
therefrom shall be jointly owned by ParkerVision and Licensee. The
parties agree to fully cooperate with each other, including signing
any documents, to perfect such rights.
6.4. FOREIGN PATENT APPLICATIONS.
ParkerVision agrees to provide Licensee with at least six (6) months
notice of deadlines for filing foreign patent applications
corresponding to the two currently pending U.S. patent applications
which contain the subject matter included in the documents listed in
Exhibit A. Licensee agrees that within three (3) months of such
notice, Licensee shall advise ParkerVision if it wishes ParkerVision
to file and prosecute patent applications corresponding to such U.S.
applications in Xxxxxxxxx, Xxxxx, Xxxxxxxx xx Xxxxx, xxx/xx Xxxxx
Xxxxxx. All reasonable and actual costs associated with filing and
prosecuting such foreign patent applications will be paid to
ParkerVision by Licensee as such costs are incurred. Prosecution of
such foreign applications shall be controlled solely by
ParkerVision, and all such patent applications and any patents
issued or granted therefrom shall be solely owned by ParkerVision.
The parties agree that non-compliance with any provision of this
Section 6.4 by either party, other than non-payment of costs by
Licensee to ParkerVision, and other than willful non-compliance with
any other term contained in this Section 6.4, does not constitute a
material breach of this Agreement.
7. ENFORCEMENT OF RIGHTS
7.1. INFRINGEMENT OF IP OWNED BY PARKERVISION.
Licensee shall use reasonable efforts to inform ParkerVision if
Licensee learns of any activities which may infringe any of the
rights now or hereafter in the ParkerVision Intellectual Property
Pool. [*].
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7.2. ASSISTANCE BY LICENSEE.
In the event that ParkerVision takes action to enforce its rights in
the ParkerVision Intellectual Property Pool, Licensee agrees to
cooperate with ParkerVision in such enforcement action, and
ParkerVision agrees it will reimburse Licensee for Licensee's
actual, reasonable expenses. Notwithstanding the foregoing, and
subject to Sections 2.6 and 2.7, Licensee reserves the right to
control or direct enforcement of its own intellectual property,
including its Licensee Patented Improvements.
7.3. RECOVERIES BY PARKERVISION.
Except as noted below, ParkerVision shall be entitled to retain all
recovery, including reimbursements of any costs and expenses
resulting from such enforcement action by ParkerVision, including
without limitation sums which might otherwise be due Licensee by
operation of law or otherwise.
7.4. ENFORCEMENT OF PARKERVISION IP IN THE SOLE FIELDS.
Within three (3) months after Licensee has objectively established
(1) a prima facie case of literal infringement by a third party of
one or more Selected Patent Claims in the Sole Fields in any
individual country; and (2) that such third party has generated
gross revenue in excess of [*] from such infringement in such
individual country, ParkerVision must inform Licensee whether it
intends to take action against the third party in the country in
which (1) and (2) above have been satisfied. If the parties disagree
over whether (1) and/or (2) are satisfied, then the parties agree to
accept the findings of a neutral third party or neutral third
parties agreeable to both parties.
In the event that ParkerVision elects to take such action, then all
decisions concerning such action shall be made solely by
ParkerVision, and such action shall be controlled solely by
ParkerVision, and all costs associated therewith will be (a) paid by
ParkerVision if enforcement occurs in the United States, (b) paid
equally by ParkerVision and Licensee if enforcement occurs in Base
Foreign Countries, and/or (c) [*] paid by ParkerVision and [*] paid
by Licensee if enforcement occurs in any other country. In the event
that ParkerVision is awarded damages by a court and/or jury as a
result of such enforcement, such damages shall be (a) the property
of ParkerVision if enforcement occurs in the United States, (b)
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first used to reimburse the parties for the actual costs paid
thereby, and then divided equally among the parties, if enforcement
occurs in Base Foreign Countries, and/or (c) first used to reimburse
the parties for the actual costs paid thereby, and then divided
equally among the parties, if enforcement occurs in any other
country. In all cases, if ParkerVision elects to take action, then
such action shall be controlled solely by ParkerVision.
In the event that ParkerVision elects to not take such action in any
country in which (1) and (2) have been satisfied, and Licensee has
requested that ParkerVision take action, the Royalty Fee otherwise
due under this Agreement in that country [*] if the infringing
activity in the country had been performed by Licensee and
authorized by ParkerVision [*], beginning three (3) months after
Licensee has objectively established (1) in that country, and [*]
ParkerVision takes action against the third party in that country.
7.5. ENFORCEMENT OF PARKERVISION IP IN THE OPEN FIELDS.
Licensee has no authority to enforce the intellectual property
rights owned by ParkerVision in the ParkerVision Intellectual
Property Pool in the Open Fields. Licensee has no right to demand or
control any enforcement action taken by ParkerVision to enforce such
rights in the Open Fields.
7.6. ENFORCEMENT BY LICENSEE AND ASSISTANCE BY PARKERVISION.
Licensee reserves the sole right to enforce Licensee Patented
Improvements.
In the event that Licensee takes action to enforce any Licensee
Patented Improvement, ParkerVision agrees to cooperate with Licensee
in such enforcement action, and Licensee agrees it will reimburse
ParkerVision for ParkerVision's actual, reasonable expenses.
7.7. RECOVERIES BY LICENSEE.
Licensee shall be entitled to retain all recovery, including
reimbursements of any costs and expenses resulting from such
enforcement action by Licensee according to Section 7.6, including
without limitation sums which might otherwise be due ParkerVision by
operation of law or otherwise.
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7.8. TRADEMARK ENFORCEMENT.
Licensee shall use reasonable efforts to inform ParkerVision
forthwith if Licensee learns of any goods or activities which may
infringe any of the Licensed ParkerVision Trademarks [*]. At the
request of ParkerVision, Licensee shall provide to ParkerVision any
necessary information, cooperation, and assistance concerning any
suspected infringements of the Licensed ParkerVision Trademarks,
including without limitation any further investigation or legal
action, and ParkerVision shall reimburse Licensee for all
reasonable, actual expenses. ParkerVision shall use reasonable
efforts to take whatever action, in ParkerVision's sole discretion,
it determines is necessary or appropriate under the circumstances to
enforce its rights in the Licensed ParkerVision Trademarks,
including without limitation legal action to suppress or eliminate
any such infringement where such infringement is or will materially
injure Licensee's business with respect to Licensed Cores, Licensed
Parts or Licensed Products on which, or with which, the Licensed
ParkerVision Trademarks are used. ParkerVision shall be entitled to
retain all recovery, including reimbursements of any costs, expenses
and damages resulting from such infringements, including without
limitation sums which might otherwise be due Licensee by operation
of law or otherwise. Licensee shall have no authority to enforce any
trademark rights of ParkerVision, nor shall Licensee have any right
to demand or control any action by ParkerVision to enforce such
rights.
8. CONFIDENTIAL INFORMATION.
8.1. USE AND DISCLOSURE.
Each party agrees to take reasonable steps to protect the
Confidential Information and the media containing such Confidential
Information. The parties agree not to:
a) use such Confidential Information except as required by the
normal and proper course of performing under this Agreement;
b) disclose such Confidential Information to a third party,
including any sub-licensee of Licensee who has not satisfied
the requirements of Section 2.9; and
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c) allow third party access, including access by any sub-licensee
of Licensee who has not satisfied the requirements of Section
2.9, to such Confidential Information without the prior
written approval of the other party.
8.2. DESIGNATION.
All Confidential Information and media containing such Confidential
Information is the property of the party whose Confidential
Information it is. The Parties agree to xxxx all Confidential
Information with the legend "Confidential".
8.3. ORAL CONVEYANCE.
If Confidential Information is provided orally, within 30 days the
disclosing party agrees to provide the receiving party with a
written summary of such Confidential Information, marked
"Confidential".
8.4. DISCLOSURE TO PROSPECTS, CUSTOMERS, AND DISTRIBUTION CHANNELS.
Licensee may not disclose any ParkerVision Confidential Information
to prospective customers who are not current Intellectual Property
Pool Licensees.
9. INDEMNIFICATIONS AND LIMITATIONS OF LIABILITY.
9.1. ABILITY TO LICENSE.
Each party represents and warrants that it has the ability to
license the rights granted herein for the purpose of this Agreement,
and that it has not made and will not make any commitments to third
parties that are inconsistent with or in derogation of such rights.
9.2. DISCLAIMER.
Nothing in this Agreement shall be deemed to be a representation or
warranty of (1) the accuracy, safety, or usefulness for any purpose
of the ParkerVision Technology and/or ParkerVision Technology
Improvements, or (2) that Licensed Sub-Parts, Licensed Cores,
Licensed Parts and/or Licensed Products will be free from claims of
infringement of any Patent, trademark, trade dress, copyright, or
other intellectual property right of any third party. Except for its
own negligence, ParkerVision shall have no liability whatsoever to
Licensee or any other person for or on account of any injury, loss,
or damage, of any kind or nature, sustained by, or any damage
assessed or asserted against, or any other liability incurred by or
imposed upon Licensee or any other person,
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arising out of or in connection with or resulting from (a) the
manufacture, use, or sale of Licensed Sub-Parts, Licensed Cores,
Licensed Parts and/or Licensed Products, or (b) any advertising or
promotional activities in connection with Licensed Sub-Parts,
Licensed Cores, Licensed Parts and/or Licensed Products.
9.3. REPRESENTATION BY PARKERVISION.
ParkerVision represents that ParkerVision has conducted a
patentability search related to the subject matter described in the
documents listed in Exhibit A (the references identified as a result
of such search have been delivered to Licensee as part of item 6 of
Exhibit B), and based on that search, ParkerVision has no knowledge
that the ParkerVision Technology or ParkerVision Technology
Improvements infringe any patents, copyrights, trade secrets, or
other applicable proprietary rights of any third party.
9.4. INDEMNIFICATION BY PARKERVISION.
ParkerVision agrees to indemnify and hold Licensee harmless from and
against any claim, suit, loss, damage, or expense (including
reasonable attorneys' fees) against Licensee, arising out of or
relating to any negligence by ParkerVision or breach by ParkerVision
of any representation and warranty by ParkerVision in this
Agreement. ParkerVision shall have the right, at its own expense, to
enter and defend against any such claim or suit against Licensee,
using counsel of ParkerVision's choice, or to settle such claim or
suit. Licensee shall have the right, at its own expense, to
participate in such claim or suit using Licensee's own counsel.
9.5. INDEMNIFICATION BY LICENSEE.
Licensee agrees to indemnify and hold ParkerVision harmless from and
against any claim, suit, loss, damage, or expense (including
reasonable attorneys' fees) against ParkerVision arising out of or
relating to any negligence or fault by Licensee or breach by
Licensee of any representation or warranty by Licensee in the
Agreement, or arising out of or relating to negligence or fault by
Licensee in the manufacture, marketing, or sale of any Licensed
Sub-Parts, Licensed Cores, Licensed Parts, and/or Licensed Products.
Licensee shall have the right, at its own expense, to enter and
defend against any such claim or suit against ParkerVision, using
counsel of the Licensee's choice, or to settle such claim or suit.
ParkerVision shall have the right, at its own expense, to
participate in such claim or suit using ParkerVision's own counsel.
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9.6. NOTIFICATION OF CLAIM.
Each party agrees to notify the other party of any claim or suit for
which the other party may have an obligation to indemnify the
notifying party within sixty (60) days of when the notifying party
learns of such claim or suit.
9.7. PROVIDED "AS IS".
THE PARKERVISION TECHNOLOGY, PARKERVISION TECHNOLOGY INTELLECTUAL
PROPERTY, PARKERVISION TECHNOLOGY IMPROVEMENTS, PARKERVISION
PATENTED IMPROVEMENTS, PARKERVISION INTELLECTUAL PROPERTY POOL, AND
JOINTLY DEVELOPED TECHNOLOGY ARE PROVIDED TO LICENSEE "AS IS"
WITHOUT WARRANTY OF ANY KIND, EXPRESS, IMPLIED, STATUTORY, OR
OTHERWISE, INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
9.8. REMEDY.
Notwithstanding any other provision of this Agreement, a party's
monetary remedy for breach of this Agreement by the other party
cannot exceed the amount paid by Licensee to ParkerVision under this
Agreement up to the time of the breach. Notwithstanding the
foregoing, each party retains all applicable specific performance
remedies provided in law or equity against the other party.
9.9. ENTIRE LIABILITY.
The foregoing provisions of this Section 9 state the entire
liability and obligations of each party with respect to any causes
of action covered in this Section 9.
10. TERM AND TERMINATION
10.1. TERM.
The term of this Agreement shall commence as of the Effective Date
and unless and until terminated or extended by the parties, shall
continue until the end of [*]. Subject to the restrictions set forth
herein, the Second Term of Contract shall begin immediately
following the expiration of [*].
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10.2. TERMINATION.
This Agreement cannot be terminated by Licensee during the Design-In
Period, except pursuant to Section 10.2.4.
10.2.1. If Licensee breaches by (a) failing to pay to ParkerVision
the fees and amounts as specified herein, including but not
limited to the requirements of Section 2.8 and/or Exhibit E,
or (b) willfully violating the requirements of Sections 2.1,
2.2, and 2.4, then ParkerVision shall have the right, without
prejudice to any other rights ParkerVision may have, to
terminate this Agreement by giving thirty (30) days written
notice to Licensee. This notice shall automatically become
effective unless Licensee remedies the breach to
ParkerVision's reasonable satisfaction within the said thirty
(30) day period.
10.2.2. If ParkerVision materially fails to perform or otherwise
materially breaches any of its obligations under this
Agreement, Licensee shall have the right, without prejudice to
any other rights Licensee may have, to terminate this
Agreement by giving thirty (30) days written notice to
ParkerVision, or to adopt the rights and obligations of
Sections 10.9(a)-(c). This notice shall automatically become
effective unless ParkerVision remedies the breach to
Licensee's reasonable satisfaction within the said thirty (30)
day period.
10.2.3. After the end of [*], if Licensee objectively establishes
that (1) no patent claim in the ParkerVision Intellectual
Property Pool reads on any Licensed Sub-Part, Licensed Core,
Licensed Part, and/or Licensed Product that was made, had
made, used, sold, and/or offered for sale by Licensee and/or
any of its sub-licensees during the preceding twelve (12)
month period, and (2) there are no trade secrets in the
ParkerVision Intellectual Property Pool applicable to any
Licensed Sub-Part, Licensed Core, Licensed Part, and/or
Licensed Product that was made, had made, used, sold, and/or
offered for sale by Licensee and/or any of its sub-licensees
during the preceding twelve (12) month period, then Licensee
shall have the right to terminate this Agreement by giving
thirty (30) days written notice to ParkerVision.
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10.2.4. If (1) Licensee has made best efforts to use ParkerVision
Technology and ParkerVision Technology Improvements (to the
extent such ParkerVision Technology Improvements have been
provided by ParkerVision to Licensee) to develop a WLAN
implementation according to IEEE 802.11b, and (2) both parties
reasonably agree that ParkerVision Technology or ParkerVision
Technology Improvements (to the extent such ParkerVision
Technology Improvements have been provided by ParkerVision to
Licensee) cannot be used to develop a commercially reasonable
WLAN implementation according to IEEE 802.11b (or another
standard that the parties may reasonably agree upon), then (a)
this Agreement terminates as of the date of such mutual
agreement of (2), and (b) ParkerVision agrees that the
eighteen (18) month term specified in Section 19(a) of the
Mutual Non-Disclosure Agreement (attached hereto as Exhibit F)
shall be accelerated to the date of such mutual agreement.
10.3. EFFECT OF TERMINATION.
Upon termination of this Agreement under Sections 10.2 and
10.10.1.1, all rights granted herein by ParkerVision to Licensee
shall terminate.
10.4. SURVIVAL.
Certain provisions of this Agreement impose duties and obligations
or convey rights beyond the termination of this Agreement, and such
provisions shall be operative until such duties and obligations are
fully discharged or the specific time prescribed therefor expires or
such rights are exercised or the specific time therefor expires.
Those duties and obligations are:
a) In the event that this Agreement is terminated for any reason,
any amounts due and owing to ParkerVision will immediately
become due and payable, and payments made by Licensee to
ParkerVision prior to termination shall not be refundable to
Licensee;
b) The provisions of paragraphs 5.2.1. (Restricted Access to
ParkerVision Intellectual Property Pool) and 5.2.2.
(Separation), 5.2.5. (Notice of Issued Patents), 8.
(Confidential Information), 12. (Governing Law and Mediation),
and 14. (Miscellaneous) shall survive any termination of this
Agreement for any reason.
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10.5. RIGHT OF SELL-OFF.
Licensee has the right to sell off existing inventory of Licensed
Parts and Licensed Products for a period of [*] after termination of
this Agreement.
ParkerVision and any Intellectual Property Pool Licensee each has
the right to sell off existing inventory of sub-parts, parts, cores,
and/or products that include Licensee Patented Improvements for a
period of [*] after termination of this Agreement.
10.6. NO RIGHTS AFTER TERMINATION.
Licensee agrees that with the sole exception of the limited rights
of sell off under paragraph 10.5 above, no rights shall extend to
Licensee beyond the termination of this Agreement, and that Licensee
shall not be entitled to any compensatory payment on the termination
of this Agreement under Sections 10.2 and 10.10.1.1. Licensee
further agrees that upon termination of this Agreement under
Sections 10.2 and 10.10.1.1, Licensee shall immediately cease all
use of the Licensed ParkerVision Trademarks, with the sole exception
of Section 10.5, and that, at ParkerVision's request, Licensee shall
take all steps and actions as may be necessary to reflect or confirm
the termination, and/or surrender of Licensee's rights to use the
same.
10.7. IRREPARABLE INJURY
Licensee acknowledges and admits that failure herein to cease its
activities (except as provided in Section 10.5) as required upon
expiration or termination of this agreement will result in immediate
and irreparable damage to ParkerVision.
10.8. LICENSEE RIGHTS DURING SECOND TERM OF CONTRACT
In the event that this Agreement is not terminated prior to the end
of [*], and provided that Licensee satisfies the terms and
conditions of this Agreement including the license fee provisions of
Section 4, the Agreement shall continue for a Second Term of
Contract during which Licensee and its sub-licensees may:
(1) continue to operate according to the Sole Right of Section
2.1, subject to the maintenance of exclusivity provisions of
Section 2.3, and the Open Right of Section 2.2, with respect
to Pre-Termination Licensed Units; and
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(2) operate according to the Sole Right of Section 2.1, subject to
the maintenance of exclusivity provisions of Section 2.3, and
the Open Right of Section 2.2, with respect to New Licensed
Cores, New Licensed Parts and New Licensed Products, provided
that Licensee pays to ParkerVision an extended minimum royalty
fee per Measurement Period which shall be credited against any
Royalty Fee actually due from Licensee to ParkerVision for the
Measurement Period under Section 4 of this Agreement. The
initial extended minimum royalty fee is [*], and will be
increased [*] of the Second Term of Contract [*].
If Licensee does not pay to ParkerVision the extended minimum
royalty fee per each Measurement Period of the Second Term of
Contract as specified above, then Licensee and its
sub-licensees shall have no right thereafter to make, have
made, use, sell, and/or offer to sell any new Licensed Cores,
Licensed Parts and/or Licensed Products that differ in design,
implementation, technical specification or functionality from
Licensed Cores, Licensed Parts and/or Licensed Products that
were Shipped by Licensee or its sub-licensee(s) prior to such
non-payment.
10.9. EFFECT OF OTHER BREACH BY LICENSEE.
If Licensee (1) materially fails to perform or otherwise materially
breaches any of its obligations under this Agreement, other than
specified in Sections 10.2 and 10.10.1.1; or (2) commences or
becomes the subject of any case or proceeding under the bankruptcy,
insolvency, or equivalent laws of any country, or if a court
appoints a receiver, liquidator, assignee, trustee, custodian,
sequestrator (or other similar official) for Licensee or for any
substantial part of the property of Licensee, or if Licensee makes
an assignment for the benefit of creditors, or if Licensee takes
corporate action in furtherance of any of the foregoing; or (3)
asserts in a press release, to an administrative body including a
patent office, or a court, that any patent claim and/or patent
covering the ParkerVision Technology or the ParkerVision Patented
Improvements may be invalid or unenforceable, then:
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(a) All Sole Rights granted to Licensee and its sub-licensees
shall immediately revert to Open Rights, and Licensee shall
have no right to grant new sub-licenses after the occurrence
of (1), (2), and/or (3).
(b) Licensee and its sub-licensees shall be prohibited from
making, having made, using, selling, and/or offering to sell
any Licensed Sub-Part, Licensed Core, Licensed Part, and/or
Licensed Product that differ in design, implementation, and/or
technical specification or functionality from Licensed
Sub-Parts, Licensed Cores, Licensed Parts, and/or Licensed
Products commercially Shipped by Licensee and/or its
sub-licensees prior to the occurrence of (1), (2), and/or (3),
and all license grants contained herein and relating
theretoshall be revoked.
(c) provided that Licensee satisfies the terms and conditions of
this Agreement, including the license fee provisions of
Section 4, Licensee and its sub-licensees may continue to
operate in the Open Fields only with respect to Licensed
Sub-Parts, Licensed Cores, Licensed Parts, and/or Licensed
Products commercially Shipped by Licensee and/or its
sub-licensees prior to the occurrence of (1), (2), and/or (3).
10.10.BREACH OF TERMS RELATING TO SOLE AND/OR OPEN FIELDS.
10.10.1. WILLFUL BREACH.
10.10.1.1. If Licensee willfully violates the terms of Section
2.9.1, and/or willfully violates the requirement of
Section 2.10 to notify in writing any Recipient to whom
Licensee Ships any Licensed Part in the Sole Fields
and/or the Open Fields that such Licensed Part shall be
used, sold, or offered for sale by Recipient only in the
applicable Sole Fields and/or Open Field, and Licensee
fails to completely remedy the violation, then
ParkerVision at its option may terminate this Agreement.
10.10.1.2. If ParkerVision willfully violates the terms of
Section 2.11.1, and ParkerVision fails to completely
remedy the violation, then all fees specified herein as
to Licensee shall be reduced by [*] and all fees
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126
specified herein as to Licensee's sub-licensees shall be
reduced by [*] although no fees already paid to
ParkerVision by Licensee shall be refundable to
Licensee, and Licensee shall be allowed to continue to
sub-license rights pursuant to Section 2.9 in the Open
Fields and Sole Fields (the parties agree that at this
point no Sole Rights may remain), and ParkerVision is
not allowed to further license third parties in the Sole
Fields.
10.10.2. NON-WILLFUL BREACH.
10.10.2.1. If Licensee violates the terms of Section 2.9.1,
and/or violates the requirement of Section 2.10 to
notify in writing any Recipient to whom Licensee Ships
any Licensed Part in the Sole Fields and/or the Open
Fields that such Licensed Part shall be used, sold, or
offered for sale by Recipient only in the applicable
Sole Fields and/or Open Field, and such violation is not
willful, upon notice pursuant to Section 11 of such
violation, and upon failure to cure within thirty (30)
days thereof, then all fees specified herein as to
Licensee only shall be increased by [*] in the countries
in which such violation occurred, and the fees shall
remain increased until Licensee completely remedies the
violation.
10.10.2.2. If ParkerVision violates the terms of Section
2.11.1, and such violation is not willful, upon notice
pursuant to Section 11 of such violation, and upon
failure to cure within thirty (30) days thereof, then
all fees specified herein as to Licensee only shall be
decreased by [*] in the countries in which such
violation occurred, and the fees shall remain decreased
until ParkerVision completely remedies the violation.
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11. NOTICES
11.1. PARKERVISION.
Any notices or other communications which are required under this
Agreement shall be sent to ParkerVision at:
ParkerVision, Inc.
0000 Xxxxxxxxxx Xxx
Xxxxxxxxxxxx, Xxxxxxx 00000
Attn: Chief Financial Officer
11.2. LICENSEE.
Any notices or other communications which are required under this
Agreement shall be sent to Licensee at:
Symbol Technologies, Inc.
Xxx Xxxxxx Xxxxx
Xxxxxxxxxx, XX 00000-0000
Attn: President
11.3. EFFECTIVE DATE OF NOTICE.
Any notice shall be considered given and effective when delivered
personally, or three (3) business days after being sent by courier,
or seven (7) business days after being mailed via the United States
Post Office by registered or certified mail, return receipt
requested.
12. GOVERNING LAW AND MEDIATION
12.1. GOVERNING LAW.
This Agreement shall be governed by and interpreted in accordance
with the laws of the State of Delaware, U.S.A., without reference to
conflict of laws principles.
12.2. MEDIATION.
All disputes and differences between Licensee and ParkerVision
arising out of or in connection with this Agreement shall be settled
amicably through negotiations between the parties. In case such
dispute or difference cannot be settled by such means, the parties
agree to mediate in good faith in English, in a location mutually
agreeable to the parties.
12.3. LITIGATION.
All litigation between ParkerVision and Licensee arising out of or
in connection with this Agreement shall be filed and litigated in
the State of Delaware, U.S.A. For the purpose of same, the parties
agree that they are subject to personal jurisdiction in the State of
Delaware.
128
13. FORCE MAJEURE
Either party shall be excused from delays in performing or from its
failure to perform hereunder to the extent that such delays or failures
result from causes such as war or natural disasters which are beyond the
reasonable control of the party, provided that, in order to be excused
from delay or failure to perform, the party must act diligently to remedy
such delay or failure.
14. MISCELLANEOUS
14.1. CONFIDENTIALITY OF AGREEMENT.
Each party agrees that the terms and conditions of this Agreement
shall be treated as Confidential Information. Neither party will
disclose the terms or conditions to any third party without the
prior written consent of the other party, except that either party
may disclose the terms and conditions of this Agreement:
1) as required by any court or other governmental body;
2) as required otherwise by law;
3) to legal counsel of the parties, accountants, and other
professional advisors;
4) to a third party who is negotiating with ParkerVision or
Licensee to acquire ParkerVision (or substantially all of the
D2DTM division of ParkerVision, and/or ParkerVision's rights
in the ParkerVision Intellectual Property Pool) or Licensee
(or substantially all of the RF division of Licensee), as long
as the third party agrees in writing to maintain as
confidential any terms and conditions of this Agreement
disclosed to the third party;
5) to a third party who is negotiating with Licensee for a
sub-license, as long as the third party agrees in writing to
maintain as confidential any terms and conditions of this
Agreement disclosed to the third party, and all other
applicable conditions of Section 2.9 have been satisfied; or
6) to a third party who is negotiating with ParkerVision for a
license, as long as the third party agrees in writing to
maintain as confidential any terms and conditions of this
Agreement disclosed to the third party, except that no
financial terms of this Agreement shall be disclosed, and
Licensee's name and address will be redacted from any copy of
the Agreement shown to such third party, and ParkerVision
shall use reasonable efforts to otherwise protect against
disclosure of Licensee's identify to such third party.
129
14.2. ANNOUNCEMENTS.
Notwithstanding that the terms and conditions of this Agreement are
confidential, Licensee and ParkerVision agree to issue a joint press
release where Licensee announces that it has chosen ParkerVision
Technology for use in Licensee's new radio-based products, and where
ParkerVision announces that it has provided Licensee, a leader in
the WLAN and Information Technology market and radio design, with a
sole license to ParkerVision Technology for the WLAN market. Both
parties agree to a mutually agreeable press release at signing.
14.3. ASSIGNMENT BY LICENSEE.
This Agreement is personal to Licensee. However, Licensee may assign
or transfer any of its rights or delegate any of its obligations
under this Agreement without the prior written consent of
ParkerVision only to a party who acquires Licensee (or substantially
all of Licensee's RF business operations).
14.4. ASSIGNMENT BY PARKERVISION.
This Agreement is personal to ParkerVision. However, ParkerVision
may assign or transfer any of its rights or delegate any of its
obligations under this Agreement without the prior written consent
of Licensee only to a party who acquires ParkerVision, or only to a
party who acquires ParkerVision's rights in the ParkerVision
Intellectual Property Pool and the ParkerVision Technology
Improvements.
14.5. BIND AND BENEFIT.
This Agreement shall be binding upon and shall inure to the benefit
of, the parties' respective successor.
14.6. RELATIONSHIP OF THE PARTIES.
ParkerVision and Licensee have entered into this Agreement as
independent contractors only and in no way is one party to be
construed as the agent, or acting as the agent, of the other party
in any respect. Nothing contained in this Agreement places or shall
be construed to place the parties in the relationship of partners,
joint venturers, agency, or legal representation, and neither party
shall have any authority or power to obligate or bind the other
party in any manner.
130
14.7. PRIOR OBLIGATIONS.
Each party represents and warrants that by entering into and
performing under this Agreement they are not in conflict with any
prior obligations to any third party. Each party agrees that they
will not intentionally disclose to or use on behalf of the other
party any information proprietary to any third party, unless written
authorization from such third party is first obtained in form and
substance satisfactory to the other party.
14.8. SEVERABILITY.
The provisions of this Agreement are severable. If a court of
competent jurisdiction should declare any provision of this
Agreement unenforceable, the other provisions shall remain in full
force and effect, and the court is empowered to modify, if possible,
the unenforceable provision to the extent necessary to make it
enforceable.
14.9. HEADINGS.
The paragraph and section headings and numbering in this Agreement
are included solely for convenience of reference. They are not
intended to be complete or accurate descriptions of the section
contents, and shall not affect the interpretation or be considered a
part of this Agreement.
14.10. CHANGES TO THIS AGREEMENT.
No alteration, amendment, waiver, cancellation or other change in
any term or condition of this Agreement shall be valid or binding on
either party, unless the same shall have been mutually agreed to in
writing by duly authorized representatives of both parties.
14.11. WAIVER.
The failure of either party to insist upon strict adherence to any
provision of this Agreement on any occasion shall not constitute a
waiver, or deprive or limit that party's right thereafter to insist
upon strict adherence to that provision in a particular instance or
any provision in any instance. Any waiver shall be in writing signed
by the party granting the waiver.
14.12. AGREEMENT ONLY UPON FULL EXECUTION AND DELIVERY.
This Agreement shall not be binding upon either party, or constitute
a note or memorandum of the material terms of an agreement, until
each party has received delivery of a copy of this Agreement
executed on behalf of both parties.
131
15. CHANGE OF CONTROL
In the event that ParkerVision is acquired by a third party who produces
or has produced semiconductors, and Licensee is outsourcing semiconductor
manufacturing for Licensee's Licensed Sub-Parts, Licensed Parts, and/or
Licensed Products in the Sole Field and/or the Open Field, then to the
extent Licensee is not otherwise restricted in its contract with a current
semiconductor manufacturing company, Licensee agrees to negotiate in good
faith to provide the acquiring party the first right of refusal to
manufacture the Licensed Sub-Parts, Licensed Parts, and/or Licensed
Products for Licensee as long as the acquiring party agrees to pay
Licensee's cost of transferring production to the acquiring party's
production line, and the quality and other terms of the acquiring party
are at least as favorable as those currently extended to Licensee by its
current semiconductor supplier for the same WLAN components.
16. PRIOR AGREEMENTS
16.1. This Agreement supercedes all prior agreements, understandings,
commitments, negotiations, and discussions between the parties,
whether oral or written, about the subject matter herein except for
the Mutual Non-Disclosure Agreement between the parties executed on
[*], attached hereto as Exhibit F. In the event that there is a
conflict between this Agreement and the Mutual Non-Disclosure
Agreement (see, for example, Sections 16 and 19), the terms of this
Agreement control.
16.2. NON-DISCLOSURE AGREEMENT FORMS. The parties agree to negotiate in
good faith to develop non-disclosure agreement forms that Licensee
can use with potential sub-licensees and with potential acquirers of
Licensee (or the RF division thereof). The parties agree that, in
developing such non-disclosure agreement forms, they will negotiate
in good faith to address Licensee's concern that third parties may
have difficulty with agreeing to at least the following provisions
of the Mutual Non-Disclosure Agreement (Exhibit F): Sections 3, 5,
16, and 19, and Section 7 of the Individual Non-Disclosure Agreement
(Exhibit G). The parties agree that they will work to finalize such
non-disclosure agreement forms within seven (7) days after the
Effective Date of this Agreement (Licensee will provide drafts of
such forms to ParkerVision), although failure to so finalize such
non-disclosure agreement forms shall not constitute a breach of this
Agreement. After the parties agree on such non-disclosure agreement
forms, Licensee may use such forms without further consultation with
ParkerVision. ParkerVision must approve in writing any material
changes to the non-disclosure agreement forms [*].
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17. ENTIRE AGREEMENT
Subject to Section 16 above, the terms and conditions contained herein
constitute the entire Agreement between the parties with respect to the
subject matter herein.
The undersigned represent that they are authorized to sign this Agreement on
behalf of the party for whom they are signing. Each party has relied upon said
representations in entering into this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed
by duly authorized representatives.
PARKERVISION, INC LICENSEE
/s/ Xxxxxxx X. Xxxxxx /s/ Xxxxxxx
---------------------------- ------------
(signature) (signature)
By: Xxxxxxx X. Xxxxxx By: Xxxxxxx
Title: CEO Title: SVP, GM
Date: 10/12/99 Date: 10/12/99
133
EXHIBIT A - LIST OF DOCUMENTS DESCRIBING PARKERVISION TECHNOLOGY
--------------------------------------------------------------------------------
DOCUMENT TITLE SERIAL NUMBER OF CORRESPONDING
U.S. PATENT APPLICATION
--------------------------------------------------------------------------------
Receiver [*]
--------------------------------------------------------------------------------
Transmitter [*]
--------------------------------------------------------------------------------
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EXHIBIT B - LIST OF PARKERVISION DELIVERABLES
1. One complete ParkerVision Wireless LAN prototype consisting of both
transmit and receive units, and one additional modulator and demodulator
board from the Wireless LAN prototypes.
2. Ten or more Dual D2DTM Integrated Circuits.
3. Spice decks for D2DTM simulations. Licensee understands that such Spice
decks include information confidential to [*]. Licensee agrees that it will
not access any information from the Spice decks until it has executed an
appropriate Non-Disclosure Agreement with [*].
4. IEEE 802.11 prototype test data, contained in the ParkerVision IEEE 802.11
Application Note which is representative of the latest transmit and receive
data.
5. Patent Documents listed in Exhibit A. Licensee shall make no more than one
(1) copy of each of these Patent Documents listed in Exhibit A.
6. References of record in the U.S. patent applications listed in Exhibit A.
7. Slides from presentation to Licensee by ParkerVision on [*], a copy of
which is to be sent to Licensee within seven (7) days of the Effective Date
of this Agreement.
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135
EXHIBIT C - LIST OF LICENSED PARKERVISION TRADEMARKS
1. D2D logo (to be provided to Licensee from ParkerVision within fourteen (14)
days after the Effective Date of this Agreement).
2. Stylized Direct2Data logo (to be provided to Licensee from ParkerVision
within fourteen (14) days after the Effective Date of this Agreement).
3. D2D/ParkerVision logo (to be provided to Licensee from ParkerVision within
fourteen (14) days after the Effective Date of this Agreement).
136
EXHIBIT D - LIST OF LICENSEE'S LEGACY PRODUCTS
[*]
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137
EXHIBIT E
The monies specified herein are in U.S. dollars.
LICENSE FEES
As provided in Sections 4.1 and 4.2, Licensee shall pay to ParkerVision both the
Pre-Paid Royalty Fee and the Royalty Fee as defined below. A Royalty Fee as
specified herein shall be due from Licensee to ParkerVision upon the Shipment of
each Royalty Bearing Unit by Licensee and each of its sub-licensees, pursuant to
Section 4.3 (Assessment Period), during the term of this Agreement, including
the Design-In Period.
PRE-PAID ROYALTY FEE.
[*] to be paid to ParkerVision upon execution of this Agreement, and [*] upon
the occurrence of the first tape-out that is objectively satisfactory to
Licensee, of a Licensed Sub-Part, Licensed Core, Licensed Part or Licensed
Product by Licensee or its sub-licensee(s). After the end of the Design-In
Period, if Licensee has not completely paid the Pre-Paid Royalty Fee of [*],
then ParkerVision has the option of terminating this Agreement pursuant to
Section 10.
[*].
[*].
ROYALTY FEE.
ONE LICENSED SUB-PART. During the Design-In Period, and for each Measurement
Period following the Design-In Period, the Royalty Fee is equal to the greater
of (1) [*]of each Royalty Bearing Unit having a single Licensed Sub-Part Shipped
by Licensee or its parent, subsidiaries, partners, joint ventures, and/or
affiliates, and/or Licensee's sub-licensees, during each Assessment Period of
this Agreement, or (2) the Minimum Royalty Fee defined below. Notwithstanding
(1) and (2), the Royalty Fee [*] for each Royalty Bearing Unit having a single
Licensed Sub-Part Shipped by Licensee or its parent, subsidiaries, partners,
joint ventures, and/or affiliates, and/or Licensee's sub-licensees.
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TWO LICENSED SUB-PARTS. During the Design-In Period, and for each Measurement
Period following the Design-In Period, the Royalty Fee is equal to the greater
of (1) [*]of each Royalty Bearing Unit having two Licensed Sub-Parts Shipped by
Licensee or its parent, subsidiaries, partners, joint ventures, and/or
affiliates, and/or Licensee's sub-licensees, during each Assessment Period of
this Agreement, or (2) the Minimum Royalty Fee defined below. Notwithstanding
(1) and (2), the Royalty Fee [*] for each Royalty Bearing Unit having two
Licensed Sub-Parts Shipped by Licensee or its parent, subsidiaries, partners,
joint ventures, and/or affiliates, and/or Licensee's sub-licensees.
THREE LICENSED SUB-PARTS. During the Design-In Period, and for each Measurement
Period following the Design-In Period, the Royalty Fee is equal to the greater
of (1) [*] of each Royalty Bearing Unit having three Licensed Sub-Parts Shipped
by Licensee or its parent, subsidiaries, partners, joint ventures, and/or
affiliates, and/or Licensee's sub-licensees, during each Assessment Period of
this Agreement, or (2) the Minimum Royalty Fee defined below. Notwithstanding
(1) and (2), the Royalty Fee [*] for each Royalty Bearing Unit having three
Licensed Sub-Parts Shipped by Licensee or its parent, subsidiaries, partners,
joint ventures, and/or affiliates, and/or Licensee's sub-licensees.
FOUR OR MORE LICENSED SUB-PARTS. During the Design-In Period, and for each
Measurement Period following the Design-In Period, the Royalty Fee is equal to
the greater of (1) [*] of each Royalty Bearing Unit having four or more Licensed
Sub-Parts Shipped by Licensee or its parent, subsidiaries, partners, joint
ventures, and/or affiliates, and/or Licensee's sub-licensees, during each
Assessment Period of this Agreement, or (2) the Minimum Royalty Fee defined
below. Notwithstanding (1) and (2), the Royalty Fee [*] for each Royalty Bearing
Unit having four or more Licensed Sub-Parts Shipped by Licensee or its parent,
subsidiaries, partners, joint ventures, and/or affiliates, and/or Licensee's
sub-licensees.
Further to the above, during the Design-In Period, and for each Measurement
Period following the Design-In Period, the Royalty Fee for each Licensed Product
that includes network interface card (NIC) functionality Shipped by Licensee or
its parent, subsidiaries, partners, joint ventures, and/or affiliates, and/or
Licensee's sub-licensees shall be [*] Licensee's stand-alone commercial NIC(s)
that has/have a substantially equivalent technical specification as the NIC
functionality in the respective Licensed Product, if such stand-alone commercial
NIC(s) is/are being commercially Shipped by Licensee during the applicable
Measurement Period, or [*] the Licensed Product if Licensee is not commercially
Shipping any stand-alone commercial NIC(s) that has/have a substantially
equivalent technical specification as the NIC functionality in the Licensed
Product during the applicable Measurement Period.
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139
In the event that this Agreement is terminated, any portion of the Royalty Fee
not already paid to ParkerVision will immediately become due and payable to
ParkerVision.
MINIMUM ROYALTY FEE.
[*] Royalty Bearing Units Shipped by Licensee and/or its sub-licensees, the
Minimum Royalty Fee is [*] per Royalty Bearing Unit Shipped by Licensee and/or
its sub-licensees to any Recipient.
For all Royalty Bearing Units Shipped by Licensee in excess of [*] Royalty
Bearing Units Shipped by Licensee and/or its sub-licensees, the Minimum Royalty
Fee is [*] per Licensed Part and/or Licensed Core Shipped by Licensee to any
Recipient, and [*] per Licensed Product Shipped by Licensee to any Recipient.
For all Royalty Bearing Units Shipped by Licensee's sub-licensees in excess of
[*] Royalty Bearing Units Shipped by Licensee and/or its sub-licensees, the
Minimum Royalty Fee is [*] per Royalty Bearing Unit Shipped by Licensee's
sub-licensees to any Recipient.
Licensee may allocate the [*] Royalty Bearing Units each having a Minimum
Royalty Fee of [*] over [*] Royalty Bearing Units Shipped by Licensee and/or its
sub-licensees, provided that Shipment of [*] Royalty Bearing Units occurs within
the first [*] years of [*].
In no event shall the Minimum Royalty Fee paid to ParkerVision by Licensee
during [*] be less than the fees specified in Sections 2.3.1.1 and 2.3.1.2. In
the event that this Agreement is terminated prior to the end of [*], and during
the first Measurement Period, then any portion of the fee specified in Section
2.3.1.1 not already paid to ParkerVision will immediately become due and payable
to ParkerVision. In the event that this Agreement is terminated prior to the end
of [*], and during or after the second Measurement Period, then any portion of
the fee specified in Sections 2.3.1.1 and 2.3.1.2 not already paid to
ParkerVision will immediately become due and payable to ParkerVision.
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EXHIBIT F - MUTUAL NON-DISCLOSURE AGREEMENT
141
EXHIBIT G - INDIVIDUAL NON-DISCLOSURE AGREEMENT FORM
142
EXHIBIT H - PERSONS HAVING ACCESS TO THE PARKERVISION INTELLECTUAL PROPERTY POOL
[*]
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143
