EXHIBIT 10.4
LICENSE AND TECHNICAL ASSISTANCE AGREEMENT
This LICENSE AND TECHNICAL ASSISTANCE AGREEMENT, ("Agreement") is made
and entered into as of the 14th day of December, 1994, ("Effective Date")
between TRW INC., an Ohio corporation ("TRW"), ESL INCORPORATED, a California
corporation and wholly owned subsidiary of TRW INC. ("ESL") (TRW and ESL are
together referred to as "Licensor"), and PHONEPRINT, INC., a Delaware
corporation ("Licensee").
WHEREAS, Licensor has * * * a *** that * * *
and * * * a * * * based on * * * or * * *
and is able to * * * activities in the "Wireless
Communications Field," as defined below; and
WHEREAS, Licensee desires to avail itself of this * * *
, and Licensor desires to license the technology to Licensee;
NOW THEREFORE, in consideration of the mutual promises contained
herein and the mutual benefits to be derived therefrom, Licensor and Licensee
agree as follows:
ARTICLE 1
DEFINITIONS
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The following words and phrases will have the meanings set forth
below:
1.1 AGREEMENT. This Agreement and the following Schedules attached
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hereto:
Schedule 1 Trade Secrets
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Schedule 2 Licensed Products
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Schedule 3 Licensed Services
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Schedule 4 Patent Rights
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1.2 *** . Those particular Trade Secrets identified as
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*** in Schedule 1 and which consist of mechanical, technological or
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computational procedures for solving a problem or achieving a particular result.
1.3 ASSET PURCHASE AGREEMENT. The Asset Purchase Agreement of even
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date herewith between the parties.
1.4 BUSINESS SUCCESSOR. For purposes of Section 1 of this Agreement,
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"Business Successor" is defined as the Tactical and National Lines of Business
of TRW's
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Confidential Treatment and filed separately with the commission.
Avionics and Surveillance Group and any successor unit or subunit (whether or
not separately incorporated), of TRW conducting some or all of those businesses
currently carried on by ESL.
1.5 * * * . Any * * * technology
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* * * Business Successor that consists of * * *
intended for or that have application with respect to * * *
and that * * * major system * * * . * * *
shall not include any * * * ; the parties intend that * * *
will consist only of * * * described in Schedule 1.
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1.6 COOPERATION AGREEMENT. The Cooperation Agreement of even date
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herewith between Licensee and TRW.
1.7 COPYRIGHTS. All existing copyrights that have been used in or
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for manufacture of the Licensed Products, the provision of Licensed Services or
in connection with Trade Secrets (and all * * *
related thereto) in connection with which Licensor owns and has the right to
grant licenses to Licensee, and future copyrights used or created by Business
Successor that have use in, for or with respect to products, services or trade
secrets (including, without limitation, the Licensed Products, Licensed
Services, Trade Secrets, and * * * ) relating to fraud
detection or mitigation in the Wireless Communications Field.
1.8 GOVERNMENTAL ENTITY. Any department, agency, organization,
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activity, office or the like ("agency") of the United States Government or in
which the United States is a participant; and any agency of the government of
another sovereign state or country throughout the world or in which such
government participates; any contractor or vendor to any such agency or
government proposing to purchase with funds derived from or reimbursable by any
such agency or state, or any other customer under circumstances such that
Licensee knows or has reason to know or believe that the customer intends to use
the product or service in any activity funded by any such agency or state.
1.9 INVESTORS. Xxxxxxx Xxxxxxx Xxxxxxxx & Xxxxx VII, KPCB VII
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Founders Fund, Xxxxx-Xxxxx IV, Xxxxx-Xxxxx-Xxxxxxx Management Company, Norwest
Equity Partners IV, Xxxxxxx Capital SBIC, L.P., and Xxxxxxx Emerging Growth
Partners.
1.10 LICENSED PRODUCT(S). Each of * * * products that recognizes
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and identifies a transmitter based on * * * or * * *
for the purpose of detecting fraudulent activities, listed on Schedule 2 or
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* * * by Business Successor, whether or not Licensee hereafter
makes any changes, including, without limitation, * * * or other
modifications thereto.
1.11 LICENSED SERVICES. Each of * * * that relates to
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the * * * of a transmitter based on * * * or
* * * for the purpose of detecting fraudulent
activities, listed on Schedule 3 or * * *
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Confidential Treatment and filed separately with the commission.
by Business Successor, whether or not Licensee hereafter makes any changes
or modifications thereof. * * * (a) will include, by way of example
but not of limitation, services for * * * ,
such as * * * for * * * and * * * and the
development of * * * for * * * or * * * and
(b) will not include work in the * * * that involves a
Licensed Product in the * * * .
1.12 LICENSEE IMPROVEMENTS. Any new technology used or developed by
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Licensee that consists of improvements to the * * * intended for or that
have application with respect to * * *
and that do not require major system redesign. Licensee Improvements shall not
include any * * * ; the parties intend that Licensee Improvements will
consist only of modification to the * * * described in Schedule 1.
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1.13 LICENSEE NOTE. The certain promissory note of even date herewith
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made by Licensee in favor of TRW, in the principal amount of $3,000,000.
1.14 LICENSOR. TRW and ESL.
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1.15 MILITARY/INTELLIGENCE FIELD. Uses or applications of Trade
---------------------------
Secrets and Copyrights under contract or in collaboration with a Governmental
Entity for the purpose of * * *
and other similar applications.
1.16 NEW INVENTIONS. Any technology, trade secrets, copyrights,
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patents, patent applications, products or services in the * * *
developed by * * * other than * * * .
1.17 PATENT RIGHTS. All rights, benefits and privileges under: (i)
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United States Letters Patent and pending United States patent applications owned
by Licensor that are identified in Schedule 4, Part A; (ii) any future United
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States patent applications or patents that relate to the inventions listed on
Schedule 4, Part B; and (iii) all patents now or subsequently issuing throughout
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the world based on the subject matter described in such patents and
applications, including, without limitation, any continuation, division, reissue
or foreign country counterpart thereof.
1.18 TRADE SECRETS. All of Licensor's existing technical expertise,
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and all proprietary information, data or confidential know-how pertaining to the
design, manufacture, installation, use, repair, maintenance, and operation of
Licensed Products or Licensed Services (and all * * *
) which were developed or acquired by Licensor and are owned by Licensor and
which have been applied to or used or tested for the purpose of fraud detection
or mitigation in the * * * , including, but not limited
to, the methods, processes, * * * , computer programs, databases, formulae,
devices, specifications, drawings and items listed in Schedule 1, and all of the
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foregoing that may in the future be developed or created by Business Successor
that which have use in, for, or with respect to products, services or trade
secrets (including, without limitation, the Licensed Products, Licensed Services
and * * * ) relating to fraud detection or mitigation
in the * * * .
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Confidential Treatment and filed separately with the commission.
1.19 * * * . The conduct of business pertaining to
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products or services for use in connection with * * * .
1.20 * * * . The business of * * *
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based on combining or * * * products or services (including without
limitation, the Licensed Products and Licensed Services) * * * other products
and services.
1.21 * * * . The process of transmitting and
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receiving signals used for communications purposes that can be accomplished
without * * * .
1.22 * * * . The conduct of business
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pertaining to * * * .
ARTICLE 2
LICENSE, PATENT ASSIGNMENT AND GRANT-BACK
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2.1 LICENSE. Subject to the provisions of Section 2.2, Licensor
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hereby grants to Licensee:
(a) an exclusive (even as to Licensor), worldwide, perpetual,
sublicensable, fully paid up, royalty-free right and license under the Trade
Secrets and the Copyrights (i) to make, have made, manufacture, use or sell
any products, including without limitation, the Licensed Products and
components of the Licensed Products, in the Wireless Communications Field; and
(ii) to provide or deliver any services, including without limitation, the
Licensed Services to customers, in the Wireless Communications Field and
(b) a non-exclusive, worldwide, perpetual, sublicensable, fully
paid up, royalty-free right and license under the Trade Secrets and the
Copyrights to make, have made, manufacture use or sell products (including,
without limitation, the Licensed Products), or provide or deliver services
(including, without limitation, the Licensed Services) in the Transportation
Field and the Systems Integration Field.
2.2 RESERVATION OF RIGHT. * * * reserves * * * to * * *
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the Trade Secrets or the Copyrights for * * * or * * *
and in the * * * , and * * * is granted to * * * to
practice or use the Trade Secrets or the Copyrights in the * * * .
2.3 PATENT ASSIGNMENT AND GRANT BACK. Pursuant to the Assignment of
--------------------------------
Patents by TRW Inc. dated as of even date herewith, Licensor will assign to
Licensee its Patent Rights in those inventions (including without limitation all
foreign counterpart applications) identified in Schedule 4, Part A. Licensor
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will execute such additional documents provided by Licensee as are necessary to
record the Assignment of Patents and for the assignment of the foreign
counterpart applications and to assign and record the assignment to Licensee of
the Patent Rights to any inventions from Schedule 4, Part B that are filed as
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patent applications. In consideration thereof, Licensee shall and
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hereby does grant back to Licensor an * * *
right and license to the Patent Rights * * * in the
* * * , and for * * * ,
except that the foregoing license shall be * * * in the
* * * .
ARTICLE 3
TERM
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3.1 TERM. This Agreement commences as of the Effective Date and will
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remain in effect indefinitely unless and until terminated by mutual agreement
of the parties or in accordance with Section 11.3.
3.2 NO TERMINATION. Except as otherwise expressly provided in
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Sections 3.1 and 11.3, this Agreement will not be subject to termination during
its term.
ARTICLE 4
DELIVERY AND TECHNICAL ASSISTANCE
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4.1 DELIVERY.
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4.1(a) Delivery Upon Closing. Licensor has furnished Licensee copies
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of such documents, information and other materials in possession of Licensor,
including without limitation, materials relating to the Trade Secrets and the
Copyrights, as Licensor believes are reasonably necessary for Licensee to
understand, implement and use the Trade Secrets, Copyrights, Patent Rights,
Licensed Products and Licensed Services and to be able to manufacture Licensed
Products and provide Licensed Services.
4.1(b) Future Deliveries. Upon Licensee's reasonable written request
-----------------
from time to time and without charge (other than photocopy expense), Licensor
will furnish to Licensee copies of such additional documents, information and
other materials, in possession of Licensor, which have not previously been
provided to Licensee, including without limitation all materials relating to the
* * * , the Trade Secrets and the Copyrights as are reasonably
necessary for Licensee to understand, implement and use the Trade Secrets,
Copyrights, Patent Rights, Licensed Products and Licensed Services and to be
able to manufacture Licensed Products and provide Licensed Services.
4.2 TECHNICAL ASSISTANCE. Upon Licensee's reasonable written request
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* * * , Licensor shall, * * * and subject to mutual
agreement in good faith between the parties as to scheduling, scope of work and
the * * * , provide technical assistance to
Licensee in connection with the Trade Secrets, Copyrights and Patent Rights, and
in connection with the manufacture, use, delivery or sale of Licensed Products
and the provision, delivery or sale of Licensed Services. At Licensee's
request, such technical assistance shall include, without limitation:
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Confidential Treatment and filed separately with the commission.
(a) Advice and assistance by qualified engineers and other
personnel who have knowledge of the Copyrights or the Trade Secrets, or
experience in the manufacture and use of Licensed Products or the delivery of
Licensed Services; and
(b) Such other technical services and technical information that
Licensee may reasonably request in connection with this Agreement.
4.3 COMPENSATION. For any services rendered upon Licensee's request
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pursuant to Section 4.2, Licensee will pay Licensor's normal rates customarily
charged to third parties consisting of Licensor's actual labor costs
(including, without limitation, direct costs by labor category, overhead,
burden and general and administrative expenses) plus a reasonable profit, and
will reimburse Licensor for all reasonable expenses incurred in connection
with the performance of such services (including but not limited to travel,
lodging and meal expenses).
ARTICLE 5
PROTECTION OF TRADE SECRETS
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5.1 USE AND NON-DISCLOSURE. Licensee and Licensor will not use or
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permit the use of any Trade Secrets for any purpose not authorized by this
Agreement. Subject to the provisions of Section 5.2 and 5.3, Licensee and
Licensor will hold in confidence, and will not disclose or communicate to any
third person, any * * * . Licensee and Licensor will take or cause to be
taken all reasonably necessary precautions to prevent the disclosure or
communications of such * * * to third persons.
5.2 EXCEPTIONS. Licensee and Licensor may disclose * * * to its
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employees or to any person or entity in connection with bona fide business or
financing transactions to the extent that each such disclosure is reasonably
necessary for the purpose of manufacturing, selling, delivering, providing,
installing, repairing or servicing any product (including, without limitation
Licensed Products) or providing any services (including, without limitation
Licensed Services) or procuring goods and services required in connection
therewith or discussing or conducting such business or financing transaction;
provided that: (a) Licensee or Licensor clearly marks any document or other
material containing any * * * so disclosed to indicate that such documents
or materials contain the * * * , (b) Licensee or Licensor requires each
entity to whom such documents or materials are disclosed to sign a written
agreement limiting use thereof to the purpose stated in such agreement,
prohibiting the reproduction thereof and the disclosure thereof to any other
person and requiring the prompt return thereof when no longer needed or such
agreement is terminated, and (c) any reproduction, note or summary of such
documents or materials immediately upon the making thereof will become the
property of Licensor. The foregoing restrictions on the use and disclosure of
the * * * shall not apply with respect to any * * * (i) that is in or
(through no improper action or inaction by the disclosing party or any agent or
employee) enters the public domain (and is readily available without substantial
effort), or (ii) in the case of Licensee only, that was rightfully in its
possession or known by Licensee prior to receipt from Licensor, or (iii) in the
case of Licensee only, that was rightfully disclosed to
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Licensee by another person without restriction, or (iv) ten (10) years after the
Effective Date.
5.3 ACCESSIONS. Each modification, improvement and revision of any
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of the Trade Secrets (except for direct reproductions thereof) that is made by
or for Licensee will become the property of Licensee.
ARTICLE 6
IMPROVEMENTS; FIRST RIGHT OF OFFER
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6.1 * * * . * * * shall promptly
---------------------------------
disclose to Licensee in writing all * * * .
6.2 FIRST RIGHT OF OFFER FOR NEW INVENTIONS. Licensee will have a
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right of first offer to license New Inventions in the * * *
. Licensor shall not license or sell any New Inventions to any third party,
* * * , without first offering such New
Inventions to Licensee. Upon receipt of written notification from Licensor as
to the details of the New Invention and the specific terms of an offer ("Offer")
by Licensor to sell or license such New Inventions to Licensee, Licensee shall
have * * * to accept the Offer. In the event that Licensee
* * * , and no other
terms shall apply. If Licensee does * * * , then for a period of
* * * thereafter, Licensor may license such New Inventions to a third
party, but * * * .
6.3 LICENSEE IMPROVEMENT(S). Licensee shall * * *
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all Licensee Improvements.
6.4 * * * RIGHT OF FIRST OFFER AND OBLIGATION TO DISCLOSE
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* * * AND LICENSEE IMPROVEMENTS. Notwithstanding anything to
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the contrary in this Agreement, the * * * shall
* * * after the Effective Date, and any * * * or
Licensee Improvements developed or created at any time after * * *
after the Effective Date * * * be included as part of the licenses granted
hereunder.
ARTICLE 7
TRADEMARKS
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7.1 PHONEPRINT TRADEMARK. Pursuant to the terms of an Assignment of
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U.S. Intent-To-Use Trademark Application executed by TRW as of even date
herewith, TRW will assign to Licensee its entire right, title and interest in
and to the application for the trademark "PhonePrint" and any and all trademarks
and service marks related thereto throughout the world. As of the Effective
Date, TRW and ESL will abandon and cease all use of the PhonePrint name and
xxxx.
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7.2 TRW TRADEMARK. Licensee may use printed material bearing the
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name and xxxx "TRW PhonePrint" for a period from the Effective Date through
* * * specifically in support of the * * * ; provided it
disclaims its affiliation with TRW Inc. when and as appropriate. Thereafter,
Licensee will cease use of the TRW name, xxxx or logo either by itself or in
connection with the PhonePrint name and xxxx. Notwithstanding anything in this
Agreement to the contrary, TRW reserves all right, title and interest to the TRW
name, xxxx and logo and Licensee may not use the TRW name, xxxx or logo in any
way except as provided in this Section 7.2. Licensor shall abandon and shall
not use the "TRW PhonePrint" name and xxxx, and will execute all documents and
take all action reasonably requested by Licensee to permit Licensee to use the
"PhonePrint" name and xxxx.
ARTICLE 8
PRODUCT LIABILITY * * *
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8.1 PRODUCT DEFECTS. With respect to Licensed Products sold, leased
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or manufactured after the Effective Date, * * * will have * * *
for determining that the designs of the Licensed Products and components
* * * are manufactured in accordance with customary commercial
standards.
8.2 GENERAL INDEMNIFICATION. Except as provided in Section 8.3,
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Licensee will indemnify and hold Licensor harmless in respect of any and all
expenses, damages, losses and liabilities resulting from a claim that
Licensee's use of any Patent Rights, the Trade Secrets, the Copyright,
PhonePrint trademark and/or Licensee's manufacture, use and/or sale of
Licensed Products, components of such Licensed Products, or Licensed Services
causes injury or damage to persons or property; provided that (i) Licensor
reasonably promptly notifies Licensee in writing of any claims in this regard,
(ii) Licensor provides Licensee information, assistance and authority to
enable Licensee to defend such claim, and (iii) Licensee assumes control of
the defense and settlement of the claim.
8.3 INTELLECTUAL PROPERTY * * * .
-------------------------------------
a. * * *
and its officers, directors, agents, employees, consignees and customers * * *
from any and * * *
resulting from: (i) the * * * of any Trade Secrets, or (ii) * * *
of any United States or foreign copyright or United States patent issued on or
before * * * , by the Patent Rights listed in Schedule 4 (Part A), Trade
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Secrets, Copyrights, or PhonePrint trademark in connection with Licensee's
manufacture, use and/or sale of products (including, without limitation, the
Licensed Products), components of any such products, or * * * provision of
services (including, without limitation, the Licensed Services); * * *
.
The foregoing obligation of Licensor * * * with respect to
* * * (i) * * * of the Patent Rights,
Trade Secrets, Copyright, or PhonePrint trademark, (ii) not relating to the
Patent Rights, Trade Secrets, Copyright, or PhonePrint
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trademark or portions or components thereof, or * * * the * * *
relates to * * * of the license granted under this
Agreement, (iii) to the extent the Licensed Products * * *
Trade Secrets and Copyrights licensed to Licensee hereunder and
* * * (and
* * * ), (iv) where
* * * activity after being * * * thereof or after being
* * * that would have avoided the * * * , (v) to the
extent * * * to * * * ,
except to the extent that the * * *
working in connection with * * * (and who had knowledge of the
* * * ) * * * of such * * * at the time * * * was
required to notify * * * of such * * * pursuant to
* * * , or (vi) of a * * * to the extent that the * * *
relates to * * * to a Licensed Product or Licensed Service,
* * * (and the * * *
would not have occurred but for * * * ).
b. Licensee shall defend, indemnify and hold Licensor and its
officers, directors, agents, employees, consignees or customers harmless from
any and all liability, damages, settlements, attorneys' fees and expenses
resulting from infringement of any United States patent issued on or after * *
* (including, without limitation, of the rights of * * * and/or * * * in * * *
), in connection with Licensee's manufacture, use and/or sale of products
(including, without limitation, the Licensed Products or components of such
Licensed Products or Licensed Services).
ARTICLE 9
GOVERNMENT APPROVAL
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9.1 COOPERATION. Licensor and Licensee promptly will seek all
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necessary governmental approvals and licenses that may be required in connection
herewith and will cooperate with each other in every reasonable way to obtain
such approval. Nothing in this Agreement will be deemed to require either party
to agree to any revision or modification of this Agreement that may be required
to obtain any governmental approval.
ARTICLE 10
DEFAULT; REMEDY; TERMINATION
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10.1 DEFAULT. A "default" shall exist under this Agreement if either
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party fails to perform any written obligation to be performed by it hereunder
within * * * after written notice from the other party that time for
such performance has passed or, if no such time is prescribed, within * * *
after written notice from the other party.
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10.2 REMEDY. If a party is in default hereunder, the party not in
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default may pursue any remedy available to it at law or in equity if the noticed
default is not cured within the notice period. * * *
; this Agreement may be * * * only pursuant to * * * .
10.3 TERMINATION BY * * * . * * * may terminate this Agreement
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only in the event that (i) * * * has not * * * under the
* * * ; and (ii) * * * has provided * * * to the * * * and
* * * of such * * * ; and (iii) * * * has * * * ,
within * * * after the receipt by * * * and the * * * of the
* * * described in (ii) above, of the * * * under the * * *
; and (iv) * * * to * * * and the * * * a * * *
following such * * * period and before * * * by * * *.
10.4 PERFORMANCE AFTER TERMINATION. Upon termination of this
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Agreement pursuant to Section 11.3, Licensee will promptly (a) discontinue the
use of, and will destroy or return to Licensor or its designee, all copies of
Trade Secrets and all notes, summaries and other documents or materials
containing information relating to the Trade Secrets, and (b) refrain from any
manufacture, delivery or sale involving in any manner whatsoever, directly or
indirectly, use or utilization of the Trade Secrets, that (i) is not contained
in a printed publication bearing a date prior to the Effective Date, or (ii)
has not become available to the public or generally known in the trade other
than as a result of the improper action of Licensee, its agents or employees,
or its former agents or employees who have knowledge thereof.
10.5 LIMITATION OF LIABILITY. Subject to the exceptions noted below,
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no party shall have liability exceeding $2,000,000 in the aggregate under this
Agreement, that certain Cooperation Agreement of even date herewith and that
certain Non-Competition Agreement of even date herewith ("Non-Competition
Agreement"). The foregoing limitation of liability shall not apply with respect
to: (i) a willful or intentional breach of this Agreement or the Non-
Competition Agreement; or (ii) matters relating to or arising in connection with
* * * of this Agreement. In the event any party to this
Agreement becomes aware of a breach hereunder by any other party to this
Agreement, the non-breaching party shall provide the breaching party with
written notice of the breach and a * * * period in which to cure such
breach.
ARTICLE 11
MISCELLANEOUS
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11.1 NOTICES. All notices and communications required or permitted to
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be given under this Agreement shall be sufficient only if written in English and
personally delivered, delivered by a major commercial rapid delivery courier
service with tracking capabilities or mailed by certified or registered mail,
return receipt requested, with postage or delivery charges prepaid and addressed
to a party at its address set forth below (unless by such notice a different
person or address will have been designated by notice pursuant to this Section).
If not received sooner, notice by mail will be deemed received five (5) days
after deposit in the U.S. mails.
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Licensee: PhonePrint Inc.
000 X. Xxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
Attention: Xxxxx Xxxxxxx
Licensor: TRW Avionics & Surveillance Group
000 Xxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
Attention: TRW Law Department
11.2 ASSIGNMENTS. TRW and ESL will have no right to assign or
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transfer any of their respective rights or to delegate any of their duties under
this Agreement without the prior written consent of Licensee,
* * * .
Licensee can assign or sublicense any of its rights or licenses under this
Agreement at its sole option.
11.3 HEADINGS. The headings and titles to the Articles and Sections
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of this Agreement are inserted for convenience only and will not be deemed a
part hereof or affect the construction or interpretation of any provision
hereof.
11.4 REMEDIES. Unless otherwise expressly provided herein, the rights
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and remedies hereunder are in addition to, and not in limitation of, other
rights and remedies under this Agreement, and exercise of one right or remedy
will not be deemed a waiver of any other right or remedy.
11.5 MODIFICATION - WAIVER. No cancellation, modification, amendment,
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deletion, addition or other change in this Agreement or any provision hereof, or
waiver of any right or remedy herein provided, will be effective for any purpose
unless specifically set forth in a writing signed by the party to be bound
thereby. No waiver of any right or remedy in respect of any occurrence or event
on one occasion will be deemed a waiver of such right or remedy in respect of
such occurrence or event on any other occasion.
11.6 ENTIRE AGREEMENT. This Agreement supersedes all other
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agreements, oral or written, heretofore made with respect to the subject hereof
and the transactions contemplated hereby and, with the Schedules hereto and in
conjunction with the Cooperation Agreement and Asset Purchase Agreement,
contains the entire agreement of the parties.
11.7 CONTROLLING LAW. All questions concerning the validity and
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operation of this Agreement and performance of the obligations imposed upon the
parties hereunder will be governed by the substantive laws of the State of
California.
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11.8 SUCCESSORS AND ASSIGNS. The provisions of this Agreement will be
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binding upon and inure to the benefit of Licensor and Licensee and their
respective successors and authorized assigns. This provision will not be deemed
to expand or otherwise affect the limitations on assignment and delegation set
forth in Section 12.2.
11.9 PRODUCT MARKING. Licensed Products and/or Licensed Services
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manufactured, delivered or sold by Licensee will be marked by Licensee in
conformance with the patent and copyright laws of the countries of manufacture,
use and sale.
11.10 PUBLICITY. Except as the other party gives its prior written
---------
consent, neither Licensor nor Licensee will use the name of the other party in
any publicity, product announcement, brochure, advertising, product labeling,
promotion or otherwise for any purpose.
11.11 COUNTERPARTS. This Agreement has been executed in several
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counterparts, each of which will be deemed to be an original copy hereof.
11.12 ATTORNEY'S FEES. In the event of any dispute or litigation
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relating to this Agreement, the prevailing party shall be entitled to reasonable
attorneys' fees and court costs from the other party(ies).
[Remainder of This Page Intentionally Left Blank]
12.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
PHONEPRINT INC.
/s/ Xxxxx Xxxxxxx
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Name
Chairman
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Title
12/14/94
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Date
TRW INC.
/s/ illegible
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Name
Vice President Finance
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Title
12/14/94
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Date
ESL INCORPORATED
/s/ Xxxxx Xxxxxxxxx
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Name
Senior Vice President
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Title
12/14/94
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Date
13.
ESL PROPRIETARY INFORMATION
SCHEDULE 1
TRADE SECRETS
-------------
1. Proprietary * * * processing * * * that perform the
following functions on the * * * :
. Reduces the effects of * * * with * * * .
. * * * the call information in the * * *
including the * * * .
. * * * various * * * that are useful in * * *
* * *.
. Calculate * * * of each * * * and the * * *
as a whole. Use these * * * the use of each * * *
based on * * *.
2. Proprietary * * * that perform the following
functions:
. * * * the * * * into a * * * of the phone
emitter.
. * * * from the * * * from * * *
, * * * and * * * .
. * * * from new * * * with * * * to determine if
the * * * comes from the original phone or a different (fraud)
phone.
. Use * * * techniques to determine if the * * * is
similar or dissimilar to the existing * * *.
. Compares new * * * against * * * that were * * *
by phones that were * * * to be either * * *.
. Determine if the * * * or * * * are on * * * the call
to be * * * if fraud is * * * .
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
ESL PROPRIETARY INFORMATION SCHEDULE 1 TRADE SECRETS (cont.)
. Compare new * * * against * * * that were produced by
the * * * that the * * * claims to be.
. Compare new * * * against * * * that were produced by
the * * * (from * * *) the * * * claims to be.
. Use of * * * to * * * which were recently used by
* * * or * * * by PhonePrint.
. Issue a * * * to * * * the call when Fraud is
detected.
. * * * the Good/Fraud * * * on * * * matching based on
the * * * , * * * , * * * and * * * with
that * * * and other * * * information.
. Use of * * * and * * *.
. * * * that will * * * calls for
a period of time that are from the same * * * that has
* * * * * * .
3. Proprietary * * * that perform the following
functions:
. * * * retrieve information, via * * * or network, on call
* * * from the real time PhonePrint systems. This information
includes the * * * , measured * * *
* * * .
. Combine * * * information from * * *
to * * * of all phones observed by all systems.
. Combine new * * * information with * * * to
* * * * * * .
. Transmit the * * * information to the * * *
PhonePrint Systems.
. Generate reports on various system functions from the * * *
information.
2
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
ESL PROPRIETARY INFORMATION SCHEDULE 1 TRADE SECRETS (cont.)
4. * * * and technologies involving methods of * * *
* * * . Use this information
to * * * the * * * that was * * *
. The * * * can come from a variety of means
including:
. Call was * * * that is known only to * * * of
the * *.
. Call was * * * on the * * * for the * * *
that * * * the call was * * * user.
. * * * with the * * * that he did ( * * * ) or did not
( * * * ) * * *.
. Combination of information from * * * that * * * in
good user's * * *.
. Calls flagged by * * * as from * * * or * * *
users.
5. * * * technology that perform the following functions to
* * * calls:
. Receive * * * and information from real time processes
indicating that a call is * * * .
. * * * to * * * containing information on the
call's * * * .
. * * * the * * * information in the * * *.
. * * * a * * * on the * * *.
. * * * both * * * and * * * .
6. Only the following portions of * * * software:
. All libraries and included modules necessary to link and compile
the * * * program, which only includes the * * *
directory and * * * .
3
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
ESL PROPRIETARY INFORMATION SCHEDULE 1 TRADE SECRETS (cont.)
. The executables and help files in the * * * directory.
. One * * * of how to interface to the * * * program, the
* * * program to be * * * .
7. All * * * and software developed on the * * * not
listed above including:
. * * * software to process * * * to evaluate
* * * with * * * .
. * * * and software to evaluate performance of
each * * * and * * * .
8. Other * * * techniques including:
. * * * . * * * the call via * * * the
* * * .
. * * * . Interface with the * * * to * * *
by the same * * * occurring at the * * * .
. * * * . * * * to * * * the * * * (as in
the * * * in item 5 above) and to the * * * the
signal.
. * * * . * * * network to * * * the
call * * * the carrier's * * *.
4
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
SCHEDULE 2
LICENSED PRODUCTS
-----------------
.
. * * *
.
.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
SCHEDULE 3
LICENSED SERVICES
-----------------
.
.
. * * *
.
.
.
.
.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
SCHEDULE 4
PATENT RIGHTS
-------------
PART A
------
1. Patent Applications.
-------------------
* * * Patent Application, * * * Serial No. * * * , by
* * * . Corresponding * * *
are listed below.
Country Serial No. Filing Date
------- ---------- -----------
* * *
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
TRADE SECRETS
SCHEDULE 4
PATENT RIGHTS
-------------
PART B
------
* * * INVENTIONS
---------------------
This is a list of the inventions that apply to * * * of
* * * calls, and are believed to have been * * *
and * * * . Where noted, * * * may
be the sole or joint inventor. These * * * subject to the usual
considerations of determining * * * and * * * sale, offer sale and
delivery dates. * * * may or * * * for
the inventions. If * * * are not * * *, these items remain ***.
1. * * * that perform the following functions
on the * * * of the phone signal:
. * * * the * * * of * * * with * * *
.
. * * *
. * * *
. * * *
2. Proprietary * * * that perform the following functions:
. * * *
. * * * from the signal * * * from * * * .
. Use * * * to determine if the * * * is * * * or
* * * to the * * *.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
TRADE SECRETS
SCHEDULE 4 PART B INVENTIONS (cont.)
. Determine if the * * * or * * * are on * * * the
call to be * * * if fraud is suspected.
. Compare * * * against * * * that were produced by the
* * * and * * * the * * * to be.
. Use of * * * to * * * which were recently used
by * * * or * * * by * * * . This is for the
* * * , where a * * * switches to a
* * * after * * * gets * * * . ( * * * may be a
* * * or * * *.)
. Vary the * * * on * * * based on the * * *
* * * and * * *
with that * * * and other * * * .
. Use of * * * and * * * .
(* * * may be a * * * or * * *.)
. * * * that will * * * for a * * *
that are from the * * * that has been
* * * over a * * * .
3. Proprietary * * * that perform the following functions:
. Combine * * * from * * * to * * *
of * * * observed by * * * using
* * * and * * * .
4. * * * and technologies involving methods of * * *
.
. * * * a signature as the * * * or a * * * by
identifying at least * * * or * * *
. Use this information to * * * that was
* * * by that * * *. ( * * * may be a * * * or
* * *.)
. Call was made to * * * that is known only to * * *
of the * * *.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
TRADE SECRETS
SCHEDULE 4 PART B INVENTIONS (cont.)
. Call was to * * * on the * * * list for the
* * * that indicates the call was by the * * *.
. Conversation with the * * * that he * * * or
* * * make a * * *.
. Calls * * * by * * * as from * * * or
* * * .
5. * * * technology that perform the following functions to
* * * calls (* * * may be a joint inventor or owner.):
. * * * to * * *
on the * * * .
. * * * the * * * in the * * *.
. * * * on the * * *.
. * * * both * * * and * * *.
6. Other * * * techniques that have been studied but have not been
implemented such as:
. * * * . * * * the call * * *
the * * * * * *.
. * * * . * * * with the * * * to
block * * * by the * * * occurring at the * * *.
. * * * . * * * to both the * * *
and to the * * * .
. * * * . * * * into the * * *
to * * * within the * * *.
7. The * * * initially drafted but not filed by * * *
for an * * *
including without limitation any and all inventions described in the * * *
.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
