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Exhibit 10.17
AMENDMENT NO. 4
TO
LICENSE AGREEMENT
This Amendment No. 4 to License Agreement (the "Amendment") is made and
entered into this 1st day of October, 1995, by and between Dialogic
Corporation, a corporation organized and existing under the laws of the State
of New Jersey, having its principal place of business at 0000 Xxxxx 00,
Xxxxxxxxxx, Xxx Xxxxxx 00000 ("Licensee") and Voice Control Systems, Inc., a
corporation organized and existing in the laws of the State of Delaware,
successor by merger to VCS Industries, Inc., having its principal place of
business at 00000 Xxxxxx Xxxx, Xxxxxx, Xxxxx 00000 ("Licensor").
WHEREAS, Licensee and Licensor entered into a License Agreement dated
June 8, 1990, which agreement was amended by an Amendment to License Agreement
dated September 20, 1991, an Amendment No. 2 to License Agreement dated January
31, 1993, an Omnibus Amendment Agreement dated March 14, 1994, and an Amendment
No. 3 to License Agreement dated September 1, 1993 (as so amended, the "License
Agreement"); and
WHEREAS, the parties wish to amend the License Agreement to incorporate
therein certain provisions which will make the License Agreement applicable to
a new version of the Licensed Technology which will provide voice recognition
on Dialogic's Antares Platform.
NOW, THEREFORE, IN CONSIDERATION of these premises and the mutual
covenants and conditions contained herein, Licensee and Licensor agree as
follows:
1.A. The following definitions are hereby added to the License
Agreement as Sections 1.19 and 1.20, with the intention that, except as
expressly amended hereby the new versions of the Licensed Technology shall be
subject to the License Agreement:
1.16 "Antares Platform" shall mean Dialogic's open DSP
platform developed for high density telecommunications applications
based on the SCSA standard.
1.20 "Antares VR Software" shall mean that subset of Licensed
Technology consisting of the various speaker-independent telephone
channel, discrete or continuous utterance, voice recognition
algorithms and reference tables of Licensor which are presently, or
are to be, implemented in software to operate on the Antares Platform
with the basic discrete and continuous vocabulary sets Licensee
generally makes available to its customers. Antares VR Software shall
be distributed as a separate medium to be input onto the Antares
Platform.
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1.B. Section 1.08 of the License Agreement is hereby amended to
provide that the definition of Technological Improvements shall also include,
but not be limited to, improvements, refinements, or perfections of the Antares
VR Software.
2. Article II of the License Agreement is hereby amended to
provide that the term of the License granted to Dialogic thereunder shall
extend with respect to Antares VR Software for a period that ends on September
30, 1997.
3. Article III of the License Agreement is amended to include the
following new Sections as 3.01C and 3.03B:
3.01C Notwithstanding the provisions of Section 3.01, the
rights under the License with respect to the Antares VR Software may
be exercised solely in conjunction with the Antares Platform, and
Dialogic shall not distribute Antares VR Software until mutually
agreed upon protection against unlicensed copying of the Antares VR
Software is implemented. Since the Antares VR Software is not
imbedded in an Antares Platform but is distributed as a separate
medium (such as a floppy disk) with the Antares Platform, Licensee may
either (i) distribute a single copy of the Antares VR Software with
each unit of the Antares Platform; (ii) distribute a single master
copy of the Antares VR Software and authorize the purchaser to make
only as many copies of the Antares VR Software as it has purchased
Antares Platforms; or (iii) distribute Antares VR Software in its
purchased configuration to a customer who already owns an Antares
Platform.
3.03B The License shall be an exclusive license of the
Antares VR Software for use on the Antares Platform.
4. Article IX of the License Agreement is amended by adding the
following new Section as 9.04B:
9.04B This Article shall not diminish Licensee's or any
sublicensee's right to authorize purchasers of Antares Platforms to
make copies of the Antares VR Software as provided by Section 3.01C,
or to require payment of any additional compensation therefor. The
right of any purchaser of an Antares Platform Board to copy the
Antares VR Software as provided by Section 3.01C, shall survive
termination of this License Agreement for any reason.
5. Article X of the License Agreement is amended by adding the
following new Section as 10.01A:
10.01A Licensor represents and warrants that it has the right
to grant the License granted to Licensee herein, and that Licensor
will defend and hold Licensee harmless and their end users harmless
and shall pay any resulting costs, damages, and attorney fees that
arise in connection with any action brought against Licensee based on
an allegation that the
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Antares VR Software infringes any patent, copyright, trademark, or
other intellectual property rights of any third party conditioned on
the following:
(i) Licensee notifies Licensor in writing within
ten (10) business days of its knowledge of any allegations;
and
(ii) Licensor is given sole control of the defense
and all related settlement negotiations and settlements.
Should the Antares VR Software become, or in Licensor's
opinion be likely to become, the subject of a claim of infringement of
such intellectual property rights, Licensee shall permit Licensor at
its option and expense, either to procure for Licensee the right to
continue using the Antares VR Software or to replace or modify same so
that it becomes noninfringing but is still commercially marketable.
Notwithstanding the foregoing, Licensor shall have no
liability to Licensee with respect to any claim of infringement to the
extent that it is based upon the modification by Licensee of the
Antares VR Software, or is based on a claim that the application in
which the product is used, but not the Antares VR Software itself,
violates the intellectual property of any third party.
6. Exhibit A to the License Agreement is amended by adding the
following sentence in place of the sentence added by Section 8 of Amendment No.
2:
In lieu of a royalty of * of Net Invoice Value on any Royalty
Unit utilizing VR/40e or Antares VR Software, the royalty
shall be computed in the table attached as Appendix I.
and by replacing Appendix I to Exhibit A with a new Appendix I identical to
Appendix I attached to this Amendment No. 4 and incorporated herein by
reference.
7. Except as amended hereby, the License Agreement shall remain
in full force and effect as written and previously amended.
DIALOGIC CORPORATION VOICE CONTROL SYSTEMS, INC.
By: By:
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Its: Its:
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* Confidential treament requested.
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APPENDIX I
to
EXHIBIT A
to
LICENSE AGREEMENT
BETWEEN DIALOGIC CORPORATION AND
VCS INDUSTRIES, INC.
Annual Basic Basic
Purchase Speaker- Speaker-
Volume Independent Independent
(Recognizers) Discount Discrete Vocabulary Continuous Technology
------------- -------- ------------------- ---------------------
* * * *
A "Recognizer" is an individual channel capable of recognition using a Royalty
Unit with Licensed Technology. The recognizers can be used as a shared
resource in systems or they can be deployed on every line in a system. Partial
utilization of capabilities of a Royalty Unit shall not reduce the royalty
amount due.
1. The Annual Purchase Volume is based on the number of recognizers on any
Boards sold during the year, including VR/40, VRM/40, VRM/2C, Antares, and
others. It does not include VRSoft.
2. Licensor will initially grant Licensee a volume discount at the *% discount
level for the nine-month period commencing October 1, 1995. A review process
will take place semi-annually in June and December of each year, excluding
December 1995. The volume discount for the next six month period will be
adjusted to the appropriate discount level based on annualized actual sales
during the six months preceding any semiannual review.
A true-up process will take place annually in October of each year for the
prior twelve calendar months.
If actual sales were greater than were projected and entitle Licensee to a
higher volume discount, Licensor will issue Licensee a credit, within fifteen
(15) days following completion of the true-up, against future royalties due in
an amount equal to the difference between royalties actually paid in the prior
year and royalties which would have been paid based upon the higher volume
discount level.
If actual sales were less than projected and entitle Licensor to additional
royalties, Licensee shall pay Licensor, within fifteen (15) days following
completion of the true-up, an amount equal to the difference between the
royalties actually paid in the prior year and the amount of royalties due based
on the proper discount level.
* Confidential treatment requested.
