EXHIBIT 10.35
REDACTED
CONFIDENTIAL TREATMENT REQUESTED = [*]
FACSIMILE PRODUCT DEVELOPMENT AGREEMENT
BY AND BETWEEN
JETFAX, INC. AND XEROX CORPORATION
This Facsimile Product Development Agreement (the "Agreement") is entered into
and is effective as of November 23, 1994 (the "Effective Date"), by and between
JetFax, Inc., a Delaware Corporation having its principal place of business at
0000 Xxxxxx Xxxx, Xxxxx Xxxx, Xxxxxxxxxx 00000 ("JetFax"), and Xerox
Corporation, a New York corporation having its principal place of business at
000 Xxxx Xxxxx Xxxx, Xxxxxxxx, Xxxxxxxxxxx 00000-0000 ("Xerox").
WHEREAS, JetFax desires, upon the terms and conditions set forth in this
Agreement, to perform certain Services and provide certain Hardware Designs,
Xxxx of Materials and Source List and Software (as hereinafter defined); and
WHEREAS, Xerox desires to perform certain Services as more fully set forth
herein;
NOW, THEREFORE, it is agreed by and between the parties as follows:
AGREEMENT
1. DEFINITIONS
1.1 "Acceptance" shall mean the date of acceptance pursuant to Section
4.2(c) hereof.
1.2 "Xxxx of Materials and Source List" shall mean the identification by
manufacturer and model of certain components and the source from which such
components compliant with the Specifications may be obtained.
1.3 "Errors" shall mean: (i) reproducible defects in any Deliverable which
causes it not to function in conformance with the Specifications, and (ii)
Software miscoding which results in the Software failing to function in
conformance with the Specifications, if such failure is reproducible.
1.4 "Hardware Designs" shall mean those [*].
1.5 "JetFax Deliverables" shall mean, collectively or individually, JetFax
developed Software, Hardware Designs, and Xxxx of Materials and Source List. A
more detailed description of the JetFax Deliverables and the requirements for
same are set forth in Exhibit A to this Agreement.
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CONFIDENTIAL TREATMENT REQUESTED = [*]
1.6 "Product" shall mean the [*].
1.7 "Project Schedule" shall mean the schedule of events and coordinate
time for the parties' performance under this Agreement, as set forth in Exhibit
D.
1.8 "Services" shall mean the work and labor necessary for the performance
of the respective obligations of the parties to this Agreement.
1.9 "Software" shall mean software object code, as set forth in Exhibit A,
designed in accordance with the Specifications.
1.10 "Specifications" shall mean the engineering, operational and/or
functional descriptions, details and requirements for the Product and the
Software and Hardware Designs, as set forth in Exhibits A and B as the same may
be modified as provided herein. Included are any standards for performance or
operation of the item to which such Specifications pertain.
1.11 "User Interface" shall mean a [*].
1.12 "Xerox Affiliates" shall mean Xerox Canada, Inc., Rank Xerox Ltd.,
Fuji Xerox Ltd., and any subsidiary or affiliate at least 40% of the ownership
of which is held directly or indirectly by Xerox, Xerox Canada Inc., Rank Xerox
Ltd., or Fuji Xerox Ltd.
1.13 "Xerox Deliverables" shall mean [*].
2. SCOPE OF WORK
2.1 Services. Upon the terms and conditions set forth in this
Agreement, jetfax and Xerox agree to perform the Services in
accordance with Exhibits A and B, respectively. Each party will
be responsible for obtaining all the technology, labor, material,
tooling and facilities necessary for the completion of its
portion of the Services, except as otherwise set forth in this
Agreement.
2.2 Progress Reports.
Each party hereto shall provide the other
party with progress reports, as reasonably requested by the other
party, starting after the Effective Date and ending on the date
of
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Acceptance. Each report shall be in such form and contain such information as
may be mutually agreed by the parties, including but not limited to, progress to
current scheduled milestones, description of any problems in meeting milestone,
and if problems, proposed recovery methods.
2.3 Agency Approvals. The parties agree that JetFax shall be
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responsible for any and all engineering and development work with respect to the
JetFax Deliverables necessary for obtaining any required governmental or
necessary private agency approvals or certifications for the Product (such as,
by way of example and not limitation, Underwriter's Laboratories, CSA, U.S.
F.C.C. regulations parts 15 and 68) in the United States and Canada. The actual
costs (including protesting consultant fees and expenses and testing costs and
expenses) and filing fees for the submission for such approvals in the United
States and Canada and such other jurisdictions as the parties mutually agree in
writing they shall enter are to be borne by Xerox. In addition to the
foregoing, for the period ending on the date that is 24 months from the
Effective Date, JetFax agrees to use its reasonable efforts to design the JetFax
Deliverables to meet the agency approval requirements of other jurisdictions.
JetFax further agrees to use its reasonable efforts to provide design services
with respect to the JetFax Deliverables, after such 24 month period, if
necessary in conjunction with any changes required by jurisdictions in which
agency approvals have been obtained during such 24 month period. In order for
JetFax to perform its reasonable efforts obligations hereunder, Xerox shall
provide JetFax with customary English language summaries of the specifications
of each individual jurisdiction's requirements where agency approval is to be
sought. Xerox shall provide all reasonable assistance to Jet Fax for obtaining
approvals and certifications, including use by JetFax of any relevant testing,
test results, documents, applications and approvals and certificates with regard
to the Product. Xerox shall bear f he cost of any JetFax travel, lodging and
related expenses incurred in support of approval activities in connection with
the Product. Except as set forth above, all costs for agency approvals for
other jurisdictions shall be borne fully by the party seeking such approvals,
unless otherwise mutually agreed. If is further agreed that after such 24 month
period, JetFax agrees to provide such design services as may be requested by
Xerox to meet the requirements of any jurisdiction. Xerox agrees to compensate
JetFax at customary rates for such design services rendered after the end of
such 24 month period.
2.4 Xxxx of Materials and Source List Approval. The Xxxx of Materials and
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Source List shall be subject to review and approval by Xerox, and all component
vendors providing materials set forth on the Xxxx of Materials shall be subject
to qualification as a vendor to Xerox under Xerox standards for vendor
certification then in effect. Such approval shall not be unreasonably withheld.
Xerox reserves the right to make final selection of component vendors.
Notwithstanding anything to the contrary contained herein, neither
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such Xerox approval nor such vendor qualification shall be a basis for any
rejection pursuant to Section 4.2(a) or Section 4.3, or condition precedent to,
or a basis for any delay in, Acceptance hereunder and any component vendor
approved and/or qualified by Xerox under or in connection with the Facsimile
Product Development Agreement between the parties dated as of June 9, 1994 shall
be deemed to be approved and qualified by Xerox hereunder.
2.5 Software.Etc. Escrow. Promptly after the Effective Date, JetFax shall
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place with an independent third party escrow agent acceptable to Xerox one
complete set, under seal, of source code, object code and supporting
documentation for any and all Software, ASICS, FPGAS, and any other programmable
devices (including their schematic capture and VHDL files, their ACTEL files,
test patterns and test parameters and timing diagrams, to the extent available
to JetFax, used to confirm the d6sign) included in the JetFax Deliverables (the
"Escrowed Materials"). The Escrowed Materials shall be retained in strict
confidence by the chosen escrow agent under the terms of the escrow agreement
(which escrow agreement shall be mutually acceptable to both JetFax and Xerox
and consistent with the terms of this Section 2.5) and the escrow agent shall
not disclose the Escrowed Materials to Xerox except pursuant to this Section
2.5. All costs associated with the escrow, including any fees of the escrow
agent, shall be borne by Xerox. In the event one of f he events set forth below
occurs, Xerox may, at its option, notify the escrow agent of such event and
request the release of the Escrowed Materials to Xerox. Xerox shall
simultaneously notify JetFax pursuant to Section 14.11 of this Agreement of such
notification to the escrow agent, specifying the basis upon which such request
for the release of the Escrowed Materials is based. In addition, the escrow
agent shall notify JetFax of the Xerox request for the release of the Escrowed
Materials. The escrow agent shall, only after fen (10) calendar days have
passed from the date Xerox' notice to JetFax hereunder is given (pursuant to
Section 14.11 of this Agreement), release the Escrowed Materials to Xerox unless
such action is prohibited by order of a court of competent jurisdiction. The
only events which shall entitle Xerox to request the release of the Escrowed
Materials are as follows: (i) JetFax ceases to support and maintain the Software
and Hardware Designs as required pursuant to the terms of Section 4.4 of this
Agreement and such failure remains uncured for a period of sixty (CO) days offer
written notice thereof from Xerox, or (ii) the specified items of the Software
or Hardware Designs listed on the Project Schedule to be performed by JetFax
fail to be accepted pursuant to Section 4.2(a) and (b) within ninety (90) days
of the applicable Milestone Dates therefore set forth in the Project Schedule
due primarily to the failure of JetFax to perform its obligations under this
Agreement, or (iii)JetFax grants its prior written consent to such release, or
(iv) a Petition is filed by or against JetFax under Chapter 7 of the Bankruptcy
Act of the United States and such Petition is not discontinued, vacated or
terminated within sixty (60) days. Xerox
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shall use such released Escrowed Materials solely for the purpose of
maintenance and support of the Product or, in the event subparagraph (ii) of
this Section 2.5 shall occur, for the purpose of maintenance, support and
production and Xerox completion of development of the Product and for the uses
stated in the second paragraph of Section 5.1 (b). Any Xerox use of the Escrowed
Materials will be subject at all times to the terms and conditions of this
Agreement. JetFax agrees to update and maintain monthly the Escrowed Materials
held in safekeeping by the selected Escrow Agent to reflect all changes made to
the Escrowed Materials pursuant to the terms of this Agreement.
3. DESIGN REVIEW AND SPECIFICATION CHANGES
3.1 Design Review. The parties agree to promptly meet at the request of
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either party with respect to any material issues a party may have with the
performance of the other party of its obligations under this Agreement.
3.2 Changes to the Specification. Each party is entitled to request
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modifications in the form of changes or additions to the Specifications at any
time during the term of this Agreement. Such requests shall be submitted in
writing, and shall not be deemed or considered binding unless accepted by the
other party in writing. If any such modification of the Specifications is
agreed, the parties will negotiate an equitable adjustment to the Agreement,
including the apportionment of any additional development, testing or tooling
costs. Upon mutual agreement to any change to the Specifications, both parties
will proceed with the implementation of the prescribed changes, and the
Specifications and other Exhibits to the Agreement shall be modified accordingly
to reflect such agreed upon changes.
3.3 Modification to Specifications. JetFax and Xerox agree that upon
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acceptance of each Deliverable pursuant to Section 4.2 and upon Acceptance the
Specifications shall be modified as necessary to conform to the Deliverables, as
accepted, excepting mutually agreed (in writing) deviations from the
Specification which require additional development work to achieve conformance
to the Specification. After and upon acceptance of each Deliverable pursuant to
Section 4.2 and after and upon Acceptance, the term "Specifications" as used
herein shall refer in all cases to the Specifications as so modified.
4. DELIVERABLES AND DELIVERY; ACCEPTANCE; AND REJECTION
4.1 Deliverables.. Xerox and JetFax agree to use reasonable
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efforts to perform their respective Services and deliver their respective
Deliverables in accordance with the Project Schedule (Exhibit D). Each party's
obligation shall be contingent
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upon the other party successfully providing any prerequisite Deliverable (as
specified in the Project Schedule) in a timely fashion in accordance with the
Specifications for same. All Deliverables shall be delivered by the times set
forth in the Project Schedule and stated dates are date of delivery unless
otherwise specified. The parties shall use such Deliverables for testing and
acceptance and marketing purposes only and shall not sell, lease or transfer the
same to any third party.
4.2 Acceptance.
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(a) Each party, with the reasonable assistance of the other party if requested,
will examine and test each respective Deliverable (and/or item thereof) as
specified on the Project Schedule of the other party upon delivery. Each
receiving party shall, as soon as reasonably practicable following the
delivery of same, but in no event later than fifteen (15) business days
offer receipt of notice of delivery: (i) accept the Deliverable (or item
thereof) and so inform the other party in writing; or (ii) if the
Deliverable (or item thereof) contains material Errors, reject f he
Deliverable (or item thereof) and provide the other party with a written
statement of such material Errors. The failure of a party to respond
within the specified fifteen (15) day period shall be deemed acceptance of
the Deliverable (or item thereof), but shall not limit the provisions of
Section 4.4 hereof. Either party may request a reasonable extension in the
time to complete such testing if the same is required under the
circumstances, and both parties shall reasonably consider such requests,
provided that no such extension shall be effective unless in writing and
signed by a duly authorized representative of the party granting such
extension.
(b) The developing party will promptly correct the material Errors set forth in
the statement of material Errors with respect to any Deliverable (or item
thereof) and redeliver the Deliverable (or item thereof) to the receiving
party within such reasonable period of time as may be agreed upon by JetFax
and Xerox with regard to all circumstances affecting the Product or the
Deliverables. The receiving party shall, as soon as reasonably practicable
after such redelivery but in no event later than fifteen (15) business days
thereafter, accept or reject the redelivery in accordance with the
procedure set forth in Section 4.2(a), which procedure shall be repeated
until the Deliverables are accepted or the receiving party invokes the
provisions of Section 4.3 hereof.
(c) "Acceptance" shall be deemed to occur upon the earlier of (i) acceptance,
pursuant to this Section 4.2, of all JetFax and Xerox Deliverables (as
specified in the Project Schedule) or (ii) the first sale, lease, license
or other distribution or transfer of a unit of Product by Xerox to a
customer or other third party other than solely for test purposes. The
date of such Acceptance shall be deemed the "date of Acceptance."
Notwithstanding anything to the contrary contained herein, Acceptance shall
not be conditioned upon any
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design or development of the JetFax Deliverables to meet any criteria of any
agency approvals other than those of the United States or Canada.
(d) The parties further agree that in the event a dispute arises as to whether
any Deliverable (or item thereof) is acceptable under the procedure set
forth in Sections 4.2(a) and 4.2(b), and the parties are unable after good
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faith negotiation to resolve such dispute, the parties agree to submit the
acceptability of any such Deliverable (or item thereof) to Genoa
Technology, Inc., or other independent third party mutually acceptable to
the parties, who shall test such Deliverable (or item thereof) and
determine if such Deliverable (or item thereof) is acceptable as set forth
in Sections 4.2(a) and 4.2(b). The determination of such independent third
party shall as to the acceptance or rejection of any Deliverable (or item
thereof), be deemed final. The cost, if any, of employing such independent
third party shall be borne by f he losing party.
4.3 Rejection. Should any Deliverable fail to be accepted after the final
delivery of that Deliverable pursuant to Section 4.2(b) then the parties shall
promptly meet in accordance with Section 3.1 to resolve the problem. Any
subsequent rejection of the same Deliverable (unless otherwise resolved pursuant
to Section 4.2(d)) shall be deemed a breach of this Agreement by such delivering
party, and the non-breaching party may elect to terminate this Agreement
pursuant to Section ll.l(a) hereof, or may elect to accept further resubmission
of the applicable Deliverable.
4.4 Error Fixes. JetFax shall at its expense, from the Effective Date
until the date that is eighteen (18) months from the date of Acceptance, use its
reasonable efforts promptly to correct documented and reproducible material
Errors in the Software and Hardware Designs which are reported in writing by
Xerox to JetFax. Provided, however, that prior to Acceptance, this obligation
shall apply only to Deliverables (or items thereof) that have been delivered by
JetFax in accordance with the Project Schedule. Xerox shall provide such
assistance in correction as JetFax may reasonably request. All such corrections
to the Software and Hardware Designs shall be deemed to be included in the
licenses granted under Section 5.1 hereof, and copies of any such corrections
shall be promptly furnished in source code to the escrow agent set forth in
Section 2.5 of this Agreement. JetFax will have no obligation under this
Section 4.4 with respect to any Error in the Software or Hardware Designs caused
by any person or entity other than JetFax or its sources identified on the Xxxx
of Materials and Source List and JetFax is not obligated to correct any Errors
in the Software unless such Error or defect causes the Software to fail to
function in conformance with the Specifications as defined in Section 3.3
herein.
4.5 JetFax Support. JetFax further acknowledges and agrees that, for a
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period of one (1) year following Acceptance and subject to
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the provisions of this Section 4.5, it shall provide Xerox with such reasonable
engineering support as Xerox shall reasonably request, necessary for the
manufacture of the Product. All travel, lodging and associated expenses (save
salary and benefits of JetFax employees) shall be borne by Xerox. In addition,
after the one (1) year period following Acceptance, Xerox shall pay JetFax the
reasonable and customary personnel, service and related charges for any such
support provided by JetFax.
5 OWNERSHIP RIGHTS AND LICENSES
5.1 Software and Hardware Designs, Etc.
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(a) Subject to the terms and conditions of this Agreement, JetFax hereby grants
to Xerox, effective only upon and after the date of Acceptance, a
nonexclusive, perpetual (except if terminated pursuant to Section 11.1
herein), worldwide license to the Software, the Hardware Designs, and any
other JetFax confidential information disclosed to Xerox under this
Agreement and necessary or useful for the following licensed activities
(and JetFax intellectual property corresponding to the above recited
items), to manufacture or have manufactured, the Product and to use and
distribute and sell and service the Product.
Provided however, if the Escrowed Materials are released to Xerox pursuant to
Section 2.5 of this Agreement, the above license as it applies to the Product
shall automatically extend, if and only if there has not been Acceptance, to
enable Xerox to complete the Product and shall automatically encompass all of
the Escrowed Materials. In such event, the royalty set forth in Section 6.2(a)
of this Agreement in the sum of $21.00 (reduced, if applicable as set forth in
such Section 6.2(a)) shall also apply to such license. In such event, JetFax
shall promptly and fully disclose the fully or partially completed JetFax
Deliverables to Xerox, but shall have no further obligations under Sections 2.1,
2.3, 2.5, 4.1, 4.4 and 4.5 of this Agreement.
(b) The Software and the Hardware Designs are confidential information of
JetFax subject to the CDA defined in Section 8.1 of this Agreement and
shall be used by Xerox solely in connection with the Product in accordance
with the terms of this Agreement. Subject to the terms and conditions of
this Agreement, JetFax hereby grants to Xerox a nonexclusive, perpetual
(except if terminated pursuant to Section 11.2(a) of this Agreement),
worldwide license (with the Xerox right to sublicense Xerox Affiliates) to
the Hardware Designs (excluding the ASICs and the Field Programmable Gate
Arrays (FPGAS) themselves and a majority of the designs of each such ASIC
or FPGA), and any other confidential information of JetFax disclosed to
Xerox under this Agreement (excluding the Software and the above excluded
items) and necessary or useful for the following licensed activities (and
JetFax intellectual property corresponding to the above recited licensed
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items) to manufacture or have manufactured any other products (i.e. products
other than the Product) and to use and distribute and sell and service such
other products. Provided, however, notwithstanding any sublicense made pursuant
to the above right to sublicense, Xerox shall remain fully liable for compliance
with all of its obligations under this Agreement, including without limitation
the payment of all royalties.
Provided however, if the Escrowed Materials are released to Xerox pursuant to
Section 2.5 of this Agreement, the above license of this Section 5.1 (b) shall
automatically extend, if and only if there has not been Acceptance, to include
all fully or partially completed JetFax Deliverables including Software, ASICS,
and FPGAs and shall automatically encompass all of the Escrowed Material. To
the extent that Xerox uses a material amount of such extended materials (not
already included in the license in the immediately preceding paragraph) under
this extended license, Xerox shall be obligated to pay the royalty as set forth
in the last sentence of Section 6.2(b) of this Agreement.
(c) For the confidence period of the CDA defined in Section 8.1 of this
Agreement, Xerox shall not alter, reverse engineer, decompile or
disassemble the Software or the ASICs and the FPGAs included in the
Hardware Designs, and Xerox may copy the Software, the Hardware Designs,
and any other confidential information of JetFax which is disclosed to
Xerox only as necessary for the exercise of the licenses granted in
Sections 5.1 (a) and 5.1 (b) and/or the provisions of Section 2.5. JetFax
retains its ownership rights in and to the Software, Hardware Designs, and
corresponding intellectual property.
(d) Subject to the terms and conditions and for the purposes of this Agreement,
Xerox hereby authorizes JetFax to use the Xerox Deliverables and any other
Xerox confidential information disclosed to JetFax under this Agreement and
necessary or useful for the following activity (and Xerox intellectual
property corresponding to the above recited items) to develop the JetFax
Deliverables. During the term of this Agreement, JetFax may reverse
engineer, decompile or disassemble any software provided by Xerox only as
necessary for f he development of the JetFax Deliverables.
5.2 Product. Xerox retains its ownership rights in and to any and all
intellectual property contained in the Xerox Deliverables.
5.3 Third Party Confidential Disclosure Agreements. Prior to
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disclosing any JetFax Deliverables to any third party (including Goldstar) in
connection with Xerox' "have manufactured" license pursuant to Section 5.1 (a),
Xerox shall procure from such third party a Confidential Disclosure Agreement
(substantially similar to the CDA as defined in Section 8.1) naming JetFax and
such third party as parties thereto.
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CONFIDENTIAL TREATMENT REQUESTED = [*]
6. PAYMENTS
6.1 Advance Royalty.
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(a) In consideration for the Services to be performed by JetFax hereunder,
Xerox agrees to pay to JetFax a nonrefundable advance royalty payment of
[*], payable in those increments and upon completion of the C1, C2, C3 and
C4 Milestones as set forth in the Project Schedule set forth in Exhibit D.
(b) JetFax agrees to provide to Xerox, upon request, audited financial
statements for the JetFax accounting year of 1993 as well as quarterly
financial statements (audited if available) for each accounting quarter of
1994 and 1995 (prior to the date of Acceptance). Any and all such
information provided to Xerox shall be deemed Confidential Information
subject to the provisions of the CDA as defined in Section 8.1.
(c) In the event that JetFax fails to meet any of the last three (3) Milestone
Dates set forth in the Project Schedule by more than fifteen (15) calendar
days and such failure is due primarily to the fault of JetFax, the amount
of the incremental advance royalty payment corresponding to such missed
Milestone Date shall be reduced by [*].
6.2 Royalty Payments.
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(a) In further consideration of the Services performed hereunder and the
licenses granted herein by JetFax, Xerox shall pay JetFax a royalty, with
respect to each and any sale, lease, license or other distribution or
transfer of a unit of Product to a customer or other third party (including
any Xerox Affiliates) (and excluding up to [*] production units of Product
to be internally used by Xerox, which units shall be without royalty), in
an amount equal to [*] for each such unit sold, leased, licensed or
otherwise distributed or transferred. [*]
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CONFIDENTIAL TREATMENT REQUESTED = [*]
(b) In further consideration of the Services performed hereunder and the
licenses granted herein, Xerox shall pay JetFax a royalty, with respect to
each and any sale, lease, license or other distribution or transfer to a
customer or other third party (including Xerox Affiliates) of a unit of any
product (other than the Product) with respect to the design or manufacture
of which all or part of that portion of the Hardware Designs licensed to
Xerox pursuant to Section 5.1 (b) and/or any corresponding JetFax
intellectual property, or any of her JetFax confidential information
disclosed to Xerox and/or any corresponding JetFax intellectual property
have been used, in an amount equal to [*] for each such unit sold, leased,
licensed or otherwise distributed or transferred. The above royalty shall
be payable, for JetFax information only if the information used was subject
to Clause 2 of the CDA defined in Section 8.1 of this Agreement when such
information was first communicated to Xerox by JetFax (provided, however,
all parts drawings and schematics for circuit boards are, and shall be,
deemed to have been subject to Clause 2 of the CDA when first communicated
to Xerox by JetFax), and only for units sold, leased, licensed or otherwise
distributed or transferred within five (5) years after the Effective Date
of this Agreement. Two-thirds of such royalties payable by Xerox under
this Section 6.2(b) shall be applied against the prepaid royalty set forth
in Section 6.1 (b) (and the remaining third of such payment shall be made
to JetFax) until such time as the prepaid royalty is fully offset. The
total of all royalties payable pursuant to this Section 6.2(b) shall not
exceed [*] in the aggregate. When the Section 6.2(b) royalties paid to
JetFax reach the sum of [*], the license set forth in Section 5.1 (b) to
Xerox shall automatically become royalty free and paid up. For units sold,
leased, licensed or otherwise distributed or transferred after the five (5)
year period referred to above in this Section 6.2(b), the license to Xerox
set forth in Section 5.1 (b) shall automatically become royalty free and
paid up. No royalties payable pursuant to Section 6.2(a) shall be subject
to, nor included in the calculation of, the royalty cap of this Section
6.2(b). Provided, further, in the event Xerox shall use a material amount
of any of the Escrowed Materials not included in the license under the
first paragraph of Section 5.1 (b) in products under the license set forth
in the second paragraph of Section 5.1(b) of this Agreement, Xerox shall
pay to JetFax the royalty amount set forth in Section 6.2(a) and not the
royalty set forth in this Section 6.2(b) provided however, that for
uncopyrighted and unpatented such materials the sentence "the above
royalty(s) ... of this Agreement," above in this Section 6.2(b) shall
apply.
(c) All royalty payments as specified in Sections 6.2(a) and (b) shall be paid
by Xerox to JetFax monthly until such time as the prepaid royalty is
totally offset pursuant to Section 6.2(a), and quarterly thereafter
(beginning with the first full calendar quarter) within thirty (30) days
after the end of each month or calendar quarter, as applicable and shall be
due and payable with respect to each and all units sold, leased, licensed,
or otherwise distributed or
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transferred, without regard to whether or not Xerox shall have received payment
with respect thereto.
(d) JetFax acknowledges and agrees that Xerox shall have the right, without the
payment of any additional royalty, to remanufacture units of the Product
returned from its customers for any reason, and to resell or release the
same to its customers.
(e) Xerox shall pay to JetFax interest (at the prime rate of interest as
published in the Wall Street Journal Eastern edition on the last business
day of each month plus five percentage points (prime% + 5%)) on any amounts
payable by Xerox to JetFax hereunder if such amounts are not paid within,
five (5) business days of the applicable due date thereof.
7. REPRESENTATIONS AND INDEMNIFICATION
7.1 Representations. Each party represents and warrants that:
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(a) if has full right and authority to enter into this Agreement, to perform
its obligations hereunder; and
(b) if has full right and authority to grant the rights granted to the other
party herein.
7.2 Xerox' Infringement Indemnity.
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(a) Subject to the terms hereof, Xerox agrees to indemnify, defend and hold
JetFax harmless from and against any claim or suit alleging that the Xerox
Deliverables and/or the User Interface (including, without limitations the
interface to the User Interface software as set forth in Exhibit A)
infringes any patent rights, copyrights or other proprietary rights of any
third party when used for their intended purposes in conjunction with the
Product and/or development of the JetFax Deliverables; provided that: (i)
JetFax gives Xerox prompt notice in writing of any such suit and permits
Xerox, through counsel of its choice, to answer the charge of infringement
and defend such claim or suit, (ii) Xerox has sole control of the defense
and all related settlement negotiations, (iii) JetFax has not further
modified or altered the Xerox Deliverables'(other than the User Interface)
following their delivery to JetFax if such claim or suit would have been
avoided if such modification or alteration had not been made, and (iv)
JetFax provides Xerox with the assistance, information and authority to
perform the above. In the event Xerox agrees to settle the suit, both
Xerox and JetFax agree not to publicize the settlement nor to permit the
party claiming infringement to publicize. the settlement without first
obtaining the other party's written permission.
(b) Subject to the terms hereof, JetFax will deliver to Xerox, as developed,
source code of the interface layer between the User Interface software and
the JetFax firmware which implements the
12
functionality as set forth in the Specification. Xerox shall use such source
code solely for purposes of conducting an intellectual property infringement
search, shall not disclose such source code to any third party and shall
promptly return such source code to JetFax immediately upon the conclusion of
such search.
7.3 JetFax Indemnify and Related Provisions
---------------------------------------
(a) JetFax Indemnity. Subject to the terms hereof, JetFax agrees
----------------
to indemnify, defend and hold Xerox harmless from and against any claim or suit
alleging that the Software and/or the Hardware Designs provided by JetFax
pursuant to this Agreement when used for their intended purposes in conjunction
with the Product, infringes the patent rights, copyrights or other proprietary
rights of any third party; provided that (i) Xerox notifies JetFax in writing
within fifteen (15) business days of any claim, (ii) JetFax has sole control of
the defense and all related settlement negotiations and (iii) Xerox provides
JetFax with the assistance, information and authority necessary to perform the
above. Notwithstanding the foregoing, JetFax shall have no liability hereunder
for any claim or suit based on (i) modifications or other alterations made to
the Software or the Hardware Designs by a party other than by or for JetFax or
the combination, operation or use of the Software or the Hardware Designs with
other hardware or software not furnished or developed by or for JetFax if such
infringement would have been avoided by the use of the Software and the Hardware
Designs without such modification or alteration or without such other hardware
or software or (ii) any infringement or alleged infringement related to or
arising out of the User Interface (including, without limitation, the interface
to the User Interface software as set forth in Exhibit A) or the Xerox
Deliverables, or (iii) any infringement or alleged infringement of any
proprietary rights of third parties to the extent and for the time period and
activities such proprietary rights are licensed to Xerox. In the event that the
Software or the Hardware Designs are the subject of a claim of infringement for
which JetFax is liable under this Section 7.3(a), JetFax may at its option and
expense (i) modify the same to be non-infringing or (ii) obtain for Xerox a
license (and any royalties required to obtain such license shall be paid by
JetFax) to continue using the same. The provisions of this Section 7.3 state the
entire liability and obligations of JetFax and the exclusive remedy of Xerox
with respect to any infringement or alleged infringement of proprietary rights
by the Software or the Hardware Designs. Except as set forth herein, JetFax
assumes no liability for, and expressly disclaims any liability with respect to,
any infringement or alleged infringement of any proprietary rights by the
Software or the Hardware Designs.
(b) JetFax Right to Use Study. JetFax may conduct a right to use
-------------------------
study with respect to the JetFax Deliverables when used in conjunction with
the Product. If:
(i) prior to one (1) month after the design of the Product is fixed by
Xerox and that fact is disclosed by Xerox to JetFax (and Xerox shall
promptly disclose such fact to JetFax) along
13
with Product information reasonably needed by JetFax to conduct its right to use
study (and Xerox shall promptly disclose such information to Jet Fax);
(ii) JetFax identifies unlicensed third party patent(s) which JetFax
reasonably believes will be infringed by use by or for Xerox or its customers of
the Jet Fax Deliverables when used in conjunction with the Product and JetFax
clearly identifies in writing (including patent or application numbers and issue
or filing dates respectively) to Xerox any such patent(s); then the parties
agree as follows. If JetFax is unable to promptly obtain a license under such
patents on reasonable terms (and any royalties or other payments required to
obtain such license shall be paid by JetFax) and the parties are unable to
reasonably design around such patent(s); then the parties shall meet to further
work in good faith to resolve this problem. In the event such resolution cannot
be achieved within one (1) month after the parties first met to further work to
try to resolve the problem, such patent(s) shall be excluded from the indemnity
provided by JetFax in this Section 7.3; however, in such event Xerox shall have
the option to negotiate with JetFax (and JetFax will negotiate in good faith)
for a lower Section 6.2 royalty and/or cancel its Product activities.
7.4 Xerox for the Xerox Deliverables and JetFax for the JetFax
Deliverables, shall promptly identify to the other party any third party patents
known by Xerox for its Deliverables and known by the President and/or CEO of
JetFax for its Deliverables to cover such Deliverables. Each party has disclosed
to the other prior to the Effective Date all such patents known prior to the
Effective Date.
8. CONFIDENTIALITY
8.1 Each party's information disclosed to the other party pursuant to this
Agreement shall be governed by the terms of the "CONFIDENTIAL DISCLOSURE
AGREEMENT" (the "CDA") between the parties attached as Exhibit E and which is
entered into and effective as of the Effective Date of this Agreement.
8.2 The provisions of the CDA are hereby adopted by the parties and shall
remain in full force and effect as a part of this Agreement as though fully set
forth herein.
8.3 Without limitation to any other provision of this Agreement, the CDA
referred to in Section 8.1 applies to all source code and supporting
documentation including concepts and algorithms embedded in the source code. In
addition, Xerox agrees not to make available any part of any program listing
obtained pursuant to Section 2.5 of this Agreement to a third party within the
meaning of the CDA unless that part of the program listing is subject to one or
more provisions of CDA clause 3. (a)- (f), notwithstanding the fact that the
period for this obligation may extend beyond the 3.5 years of the CDA.
14
8.4 This Agreement shall be deemed Confidential Information and shall not be
disclosed to third parties other than as provided in Section 14.18 of this
Agreement.
9. PROPRIETARY RIGHTS NOTICES
The Product shall bear any and all reasonable and customary proprietary rights
notices associated with or carried by any of the Deliverables. Neither party
will remove, cover or deface any such proprietary rights notices.
10 TERM
This Agreement will commence on the Effective Date and will continue to be in
force and effect until such time as it is otherwise terminated as herein
provided.
11. TERMINATION
11.1 Termination for Cause By Either Party. Either party may
-------------------------------------
terminate this Agreement:
(a) Upon sixty (60) days written notice to the other party in the event the
other party breaches any of its material obligations hereunder and fails to
cure same during the notice period, or if it is not reasonable to expect
such a cure within that period, does not fake effective action within such
period to promptly cure the material breach; or
(b) Upon sixty (60) days written notice to the other party in the event a
petition in bankruptcy or similar debtor protection law is filed by or
against the other party, or if the other party makes an assignment for the
benefit of creditors, or a receiver is appointed, and such events are not
discontinued, vacated or terminated during the notice period.
Xerox may terminate this Agreement in the event JetFax fails to meet any of the
Milestone Dates set forth in the Project Schedule by more than thirty (30)
calendar days and such failure is due primarily to the fault of Jet Fax.
11.2 Effect of Termination.
---------------------
(a) The license set forth in Section 5.1 (b) hereof is perpetual (and shall
survive a termination under Section 1 1.1 of this Agreement), subject, however,
to the royalty obligations of Section 6.2 hereof and all title and
confidentiality provisions of this Agreement, provided, however, that the
license set forth in Section 5.1 (b) is subject to termination upon sixty (60)
days written notice from JetFax to Xerox in the event Xerox breaches any of its
material obligations with respect to such royalty, title or confidentiality
provisions as they apply to such license and fails to cure the same during such
sixty (60) day notice period, or if it is not reasonable to expect such a
15
cure within that period, does not take effective action within such period to
promptly cure the material breach.
(b) Upon termination of this Agreement each party shall return to the other
party all unlicensed confidential or proprietary information of the other
party and shall make no other or further use of such unlicensed
information. Upon termination of this Agreement pursuant to the second
sentence of Section I 1.1, Xerox shall pay JetFax advance royalty payments
in connection with any Milestones met by JetFax under the Project Schedule
for which JetFax has not yet been paid.
12. RIGHT TO DEVELOP INDEPENDENTLY
Nothing in this Agreement will impair either party's right to acquire, license,
develop, manufacture or distribute for itself, or have others develop,
manufacture or distribute for it, similar technology performing the same or
similar functions as the technology contemplated by this Agreement except as
provided in Sections 5 and 8, or to market and distribute such similar
technology or products.
13. DISCLAIMER OF CONSEQUENTIAL DAMAGES AND IMPLIED WARRANTIES
In no event shall either party be liable to the other for any indirect, special,
incidental or consequential damages for breach of or failure to perform under
this Agreement, even if that party has been advised of the possibility of such
damages. EXCEPT AS EXPRESSLY SET FORTH IN SECTION 7.1, NEITHER PARTY MAKES ANY
REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO ANY
DELIVERABLE OR OTHERWISE, INCLUDING WITHOUT LIMITATION, THE WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, TECHNICAL PERFORMANCE, OR
COMMERCIAL SUCCESS AND HEREBY DISCLAIMS ALL SUCH OTHER WARRANTIES. EXCEPT AS
EXPRESSLY PROVIDED IN THIS AGREEMENT, NEITHER PARTY ASSUMES ANY RESPONSIBILITIES
WHATEVER WITH RESPECT TO THE DEVELOPMENT, MANUFACTURE, USE, SALE, LEASE, OR
OTHER DISPOSITION BY THE OTHER PARTY OR ITS VENDEES OF PRODUCTS INCORPORATING
DELIVERABLES LICENSED OR PROVIDED UNDER THIS AGREEMENT.
14. GENERAL
14.1 Force Maieure Neither party shall be liable for any failure or
-------------
delay in its performance under this Agreement due to causes which are beyond its
reasonable control, including, but not limited to, acts of God, acts of civil or
military authority, fires, epidemics, floods, earthquakes, riots, wars,
sabotage, labor shortages or disputes, and governmental actions; provided that
(a) the delayed party: (i) gives
16
the other party written notice of such cause promptly, and in any event within
fifteen (15) days of discovery thereof; and (ii) uses its reasonable efforts to
correct such failure or delay in its performance, and (b) the delayed party's
time for performance or cure under this Agreement shall be extended for a period
equal to the duration of the cause or sixty (60) days, whichever is less.
14.2 Relationship of Parties. Xerox and JetFax are independent
-----------------------
contractors. Neither company nor its respective employees, consultants,
contractors or agents are agents, employees or joint venturers of the other, nor
do they have any authority to bind the other by contract or otherwise to any
obligation. They will not represent to the contrary, either expressly,
implicitly, by appearance or otherwise. Each party will determine, in its sole
discretion, the manner and means by which the Services are accomplished, subject
to the express condition that each party will at all times comply with
applicable law.
14.3 Use of Name. Neither party will, without first obtaining the
-----------
other's prior written consent, be entitled to use the name of the other party in
promotional, advertising and other materials other than as provided in Section
14.18 of this Agreement.
14.4 Personnel. The respective employees, consultants, contractors
---------------
and agents of each party will observe the working hours, working rules and
holiday schedule of the other while working on the other's premises.
Notwithstanding the foregoing, employees of a party shall be and remain
employees of that party and shall not be deemed or claim to be employees of the
other party even when working on such other party's premises.
14.5 Employment Taxes and Benefits. Each party shall be responsible
-----------------------------
for any and all employment taxes and benefits payable to its employees,
representatives, contractors, subcontractors and other engaged by it to perform
Services hereunder and in no event shall either party look to the other for such
payments.
14.6 Other Tax Implications. The purpose of development of the
----------------------
Deliverables under this Agreement is to demonstrate that the Product developed
hereunder will conform to the Specifications. The Deliverables have no
intrinsic value as an item. As such, no value added, sales, or use taxes have
been assessed or are anticipated to be required as a result of the Services
performed under this Agreement.
14.7 Export Controls. Both parties shall comply with all
---------------
applicable United States laws and regulations respecting the export, directly or
indirectly, of any technical data acquired from the other under this Agreement
or any product or Deliverables utilizing any such data.
14.8 Assignment. Except as expressly provided herein, neither party
----------
may assign or delegate this Agreement, or any of its respective rights or
17
obligations hereunder without the prior written consent of the other party
hereto; PROVIDED, however, that JetFax may, without Xerox' consent, assign or
delegate this Agreement and JetFax's rights and obligations hereunder to any
successor in interest to JetFax in connection with any sale or transfer of all
or substantially all of its assets or upon any merger, consolidation, or
dissolution. Either party may, from time to time and upon prior written notice
to the other party, subcontract with one of its subsidiaries for the
performance of certain obligations under this Agreement, provided that the
party so subcontracting shall remain fully liable for performance of its
obligations hereunder. Any attempted assignment in violation of the provisions
of this Section 14.8 shall be void and without force or effect. In the event of
a permitted assignment hereunder, this Agreement or the applicable provisions
shall be binding upon the successors, executors, and assigns of the parties
hereto.
14.9 Applicable Law. This Agreement shall be governed by and construed in
--------------
accordance with the laws of the State of New York, U.S.A. without giving effect
to the principles of conflicts of law thereunder.
14.10 Severability. If for any reason a court of competent jurisdiction
------------
finds any provision of this Agreement, or portion thereof, to be unenforceable,
that provision of the Agreement shall he enforced to the maximum extent
permissible so as to effect the intent of the parties, and the remainder of this
Agreement shall continue in full force and effect.
14.11 Notices. All notices required or permitted under this Agreement shall
-------
be in writing, reference this Agreement and be deemed given when: (i) delivered
personally; (ii) when sent by confirmed telex or facsimile; (iii) five (5) days
after having been sent by registered or certified mail, return receipt
requested, postage prepaid; or (iv) one (1) day after deposit with a commercial
overnight carrier, with written verification of receipts All communications will
be sent to the addresses set forth below. Either party may change its address
by giving notice pursuant to this Section 14.1 1.
JetFax: Xerox:
Xx. Xxxx Xxxxxx Xxxx Xxxxxxxxxxx
President, Jet Fax, Inc. V. P., Engineering
0000 Xxxxxx Xxxx 0000 Xxxxxxxx Xxxxxx
Xxxxx Xxxx, Xxxxxxxxxx 00000 Xxxxxxxx 0
Xxxx Xxxx, Xxxxx. 00000
With a copy to:
Xxxxxxxx X. Xxxxxxx, Esq.
General Counsel Associates
0000 Xxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000
With a copy to:
Xxxxx X. Xxxxx, Esq.
Xerox Corp. OGC
Xerox Square 21 D
Rochester, N. Y. 14644
18
14.12 No Waiver. Failure by either party to enforce any provision of this
Agreement shall not be deemed a waiver of future enforcement of that or any
other provision.
14.13 No Rights in Third Parties. This Agreement is made for the benefit of
----------------
Xerox and JetFax and not for the benefit of any third parties.
14.14 Counterparts. This Agreement may be executed in one or more
------------
counterparts, each of which shall be deemed an original, but collectively shall
constitute but one and the same instrument.
14.15 Headings and References. The headings and captions used in this
--------------
Agreement are used for convenience only and are not to be considered in
construing or interpreting this Agreement.
14.16 Construction. This Agreement has been negotiated by the parties and
------------
their respective counsel. This Agreement will be fairly interpreted in
accordance with its terms and without any strict construction in favor of or
against either party.
14.17 Trademark Usage. Neither party shall make any use of any trademark,
---------------
service xxxx or trade name of the other in connection with its advertising,
promotional material or packaging for the Product without first obtaining the
other party's written consent.
14.18 Non-Publicity. Neither party shall directly or indirectly, without f
-------------
he prior written consent of the other party, such consent not to be unreasonably
withheld, make any news release or public announcement or other public
disclosure regarding this Agreement or the existence thereof. Notwithstanding
the foregoing, JetFax shall be free to make disclosures to its shareholders,
directors, officers, employees, attorneys, accountants and other professional
representatives of JetFax and to Ailicec and as necessary or appropriate for
compliance with federal or state securities laws and regulations. It is
JetFax's intent to make confidential factual disclosures, in accordance with the
terms and conditions of this Section 14.18, to a limited number of potential
lenders, investors and underwriters. Neither party shall disclose information
with respect to the other's confidential business plans.
14.19 Complete Agreement. This Agreement, including all Exhibits
------------------
constitutes the entire agreement between the parties with respect to the subject
matter hereof, and supersedes and replaces all prior or contemporaneous
understandings or agreements, written or oral, regarding such subject matter.
No amendment to or modification of this Agreement shall be binding unless in
writing and signed by duly authorized representatives of both parties. To the
extent any terms and conditions of this Agreement conflict with the terms and
conditions of any invoice, purchase order or purchase order acknowledgement
placed hereunder, the terms and conditions of this Agreement shall govern and
control.
19
14.20 Survival. The provisions of Sections 5.1 (b) (first sentence only),
--------
5.1 (c), 5.2, 8, 11.2, 12 and 13 shall survive the expiration or termination of
this Agreement for any reason.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives.
JETFAX, INC. XEROX CORPORATION
BY:/s/ Xxxxxx X. Xxxxxx III BY:/s/ Xxxx Xxxxxxxxxxx
NAME: Xxxx Xxxxxx NAME: Xxxx Xxxxxxxxxxx
TITLE: President TITLE: Vice President,
Engineering
20
A Jet Fax Deliverables
B Xerox Deliverables
C [INTENTIONALLY OMITTED]
D Project Schedule
E Confidential Disclosure Agreement
CONFIDENTIAL TREATMENT REQUESTED = [*]
EXHIBIT A
DEVELOPMENT AGREEMENT BETWEEN XEROX CORPORATION AND JETFAX INC.
JETFAX DELIVERABLES
[*]
OTHER
[*]
CONFIDENTIAL TREATMENT REQUESTED = [*]
EXHIBIT B
DEVELOPMENT AGREEMENT BETWEEN XEROX CORPORATION AND JETFAX INC.
XEROX DELIVERABLES
[*]
OTHER
Specification
-------------
[*]
CONFIDENTIAL TREATMENT REQUESTED = [*]
EXHIBIT D
DEVELOPMENT AGREEMENT BETWEEN XEROX CORP. AND JETFAX INC.
PROJECT SCHEDULE
C1 MILESTONE - [*]
Xerox Deliverables [*]
JetFax Deliverables [*]
PAYMENT DATE: [*]
C2 MILESTONE - [*]
. Xerox Deliverables: [*]
. JetFax Deliverables: [*]
C3 MILESTONE - [*]
Xerox Deliverables:
. [*]
CONFIDENTIAL TREATMENT REQUESTED = [*]
Jet Fax Deliverables: [*]
C4 MILESTONE - [*]
Xerox Deliverables: [*]
JetFax Deliverables: [*]
[*]
EXHIBIT E
DEVELOPMENT AGREEMENT BETWEEN XEROX CORP. AND JETFAX INC.
CONFIDENTIAL DISCLOSURE AGREEMENT
Dated: November 23, 1994
Xerox Corporation (Xerox) of Stamford, Connecticut and JetFax Inc. (JetFax) of
Menlo Park, California, the parties to this Agreement, hereby agree as follows:
1 . To further the business relationship between the parties, and to enable
JetFax to perform its development obligations pursuant to that certain
Development Agreement of even date herewith (the "Development Agreement"), it is
necessary and desirable that each party disclose to the other Confidential
Information relating to the project described in the Development Agreement.
Included within the definition of Confidential Information shall be all source
code provided by either party to the other.
2. The receiving party shall not communicate the disclosing party's
confidential information (all information relating to this project and disclosed
to the receiving party for which the obligations of this Paragraph 2 have not
been terminated by operation of Paragraph 3 hereof to any third party and shall
neither use the disclosing party's Confidential Information nor circulate it
within its own organization except to the extent necessary for the development
work set forth in the Development Agreement or for any purpose the disclosing
party may hereafter authorize in writing or authorizes pursuant to the terms of
the Development Agreement. Disclosures to the receiving party's
subsidiaries and affiliates and consultants and suppliers and software
developers so long as these entities are similarly bound shall not be considered
disclosure to a third party within the meaning of the previous sentence.
3. The obligations of Paragraph 2 hereof shall terminate with respect to
any particular portion of the disclosing party's Confidential Information that:
(a) was in the public domain at the time of disclosing party's communication
thereof to receiving party,
(b) entered the public domain through no fault of receiving party subsequent to
the time of disclosing party's communication thereof to receiving party,
(c) was in receiving party's possession free of. any obligation of confidence
at that time of disclosing party's communication thereof to receiving
party,
(d) was rightfully communicated to receiving party free of any obligation of
confidence subsequent to the time of disclosing party's communication
thereof to receiving party,
(e) was developed by employees or agents of receiving party independently of
and without reference to any disclosing party Confidential Information,
(f) when it is communicated by disclosing party to a third party free of any
obligation of confidence, or
(g) in any event, 3.5 years after the Effective Date as defined in the
Development Agreement.
When and to the extent the obligations of Paragraph 2 shall not apply to a
particular portion of Information because of the operation of Paragraph 3
hereof, such Information is no longer Confidential Information hereunder.
4. All materials, including, without limitation, documents,
specifications, drawings, software, models, apparatus, sketches, designs, and
lists furnished to receiving party by disclosing party and which are designated
in writing to be the property of the disclosing party shall remain the property
of disclosing party and shall be returned to disclosing party promptly at its
request with all copies made thereof except as disclosing party may otherwise
agree in writing or has otherwise agreed pursuant to the terms of the
Development Agreement to which this CDA is an exhibit.
5. This Agreement shall govern all communications between the parties,
relating to the subject matter of this Agreement that are made from the 20th day
of October, 1994.
6. Communications from disclosing party to personnel and authorized
representatives of receiving party shall not be in violation of the proprietary
rights of any third party.
7. This Agreement shall be construed in accordance with the laws of the
State of New York.
XEROX CORPORATION JETFAX, INC.
By:/s/ Xxxx Xxxxxxxxxxx By:/s/ Xxxxxx X. Xxxxxx III
Xxxx Xxxxxxxxxxx Xxxx Xxxxxx
Vice President, Engineering President
CONFIDENTIAL DISCLOSURE AGREEMENT
Xerox Corporation (Xerox) of Stamford, Connecticut and JetFax Inc. (JetFax) of
Menlo Park, California, the parties to this Agreement, hereby agree as follows:
1 . To further the business relationship between the parties, and to enable
JetFax to perform its development obligations pursuant to that certain
Development Agreement of even date herewith (the "Development Agreement"), it is
necessary and desirable that each party disclose to the other Confidential
Information relating to this product. Included within the definition of
Confidential Information shall be all source code provided to JetFax by Xerox.
2. The receiving party shall not communicate the disclosing party's
confidential information (all information relating to this project and disclosed
to the receiving party for which the obligations of this Paragraph 2 have not
been terminated by operation of Paragraph 3 hereof to any third party and shall
neither use the disclosing party's Confidential Information nor circulate it
within its own organization except to the extent necessary for the development
work set forth in the Development Agreement or for any purpose the disclosing
party may hereafter authorize in writing or authorizes pursuant to the terms of
the Development Agreement to which this Confidential Disclosure Agreement is an
Exhibit. Disclosures to the receiving party's subsidiaries and affiliates and
consultants and suppliers and software developers so long as these entities are
similarly bound shall not be considered disclosure to a third party within the
meaning of the previous sentence.
3. The obligations of Paragraph 2 hereof shall terminate with respect to
any particular portion of the disclosing party's Confidential Information that:
(a) was in the public domain at the time of disclosing party's communication
thereof to receiving party,
(b) entered the public domain through no fault of receiving party subsequent to
the time of disclosing party's communication thereof to receiving party,
(c) was in receiving party's possession free of any obligation of confidence at
that time of disclosing party's communication thereof to receiving party,
(d) was rightfully communicated to receiving party free of any obligation of
confidence subsequent to the time of disclosing party's communication
thereof to receiving party,
(e) was developed by employees or agents of receiving party independently of
and without reference to any disclosing party Confidential Information,
(f) when it is communicated by disclosing party to a third party free of any
obligation of confidence, or
(g) in any event, 3.5 years after the Effective Date as defined in the
Development Agreement.
When and to the extent the obligations of Paragraph 2 shall not apply to a
particular portion of Information because of the operation of Paragraph 3
hereof, such Information is no longer Confidential Information hereunder.
4. All materials, including, without limitation, documents,
specifications, drawings, software, models, apparatus, sketches, designs, and
lists furnished to receiving party by disclosing party and which are designated
in writing to be the property of the disclosing party shall remain the
property of disclosing party and shall be returned to disclosing party promptly
at its request with all copies made thereof except as disclosing party may
otherwise agree in writing or has otherwise agreed pursuant to the terms of the
Development Agreement to which this CDA is an exhibit.
5. This Agreement shall govern all communications between the parties,
relating to the subject matter of this Agreement that are made from the 20th day
of October, 1994.
6. Communications from disclosing party to personnel and authorized
representatives of receiving party shall not be in violation of the proprietary
rights of any third party.
7. This Agreement shall be construed in accordance with the laws of the State of
New York.
XEROX CORPORATION JETFAX, INC.
By:/s/ Xxxx Xxxxxxxxxxx By:/s/ Xxxxxx X. Xxxxxx III
Xxxx Xxxxxxxxxxx Xxxx Xxxxxx
Vice President, Engineering President
