AGREEMENT AND LICENSE
THIS AGREEMENT AND LICENSE (this "Agreement") is made and entered into
as of August 25, 2000 between California Amplifier, Inc. ("Supplier"), and
Telaxis Communications Corporation ("Telaxis").
RECITALS
A. Supplier and Telaxis previously entered into a Supply Agreement,
dated October 14, 1999 (the "Supply Agreement"), pursuant to which Supplier was
going to manufacture Telaxis' existing broadband wireless transceiver and design
a lower-cost broadband wireless transceiver for Telaxis.
B. Supplier and Telaxis desire to terminate the Supply Agreement on
the terms and conditions set forth herein and provide for Telaxis receiving
rights to certain Supplier property.
NOW, THEREFORE, in consideration of the foregoing premises and other
good and valuable consideration and in reliance upon the covenants, limitations
and agreements hereinafter set forth, the parties hereto do hereby agree as
follows.
1. Termination of Supply Agreement.
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(a) The Supply Agreement is hereby terminated.
(b) Each of Telaxis and Supplier hereby releases and
discharges the other, and their respective affiliates, directors, officers,
employees, agents, successors and assigns (collectively, "Related Persons"),
from any and all claims, demands, causes of action, obligations, agreements, and
liabilities whatsoever, both at law and in equity, which one party now has, has
ever had or may hereafter have against the other party or the other party's
Related Persons on account of or arising out of the Supply Agreement. Each of
Telaxis and Supplier hereby irrevocably covenants to refrain from, directly or
indirectly, asserting any claim or demand, or commencing, instituting or causing
to be commenced, any proceeding of any kind against any released party based
upon any matter purported to be released by this Section 1(b).
2. Grant of License; Intellectual Property Issues.
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(a) Supplier hereby grants Telaxis (i) a non-exclusive,
irrevocable, perpetual, worldwide, nontransferable, royalty-free license,
without right to sublicense, to use and copy the Work Product (as defined in
Section 3(a) below) solely for the purpose of designing, developing,
manufacturing and testing millimeter-wave transceivers and any other products or
devices developed using, based on or incorporating any of the Work Product that
transmit and/or receive at a frequency in excess of twelve gigahertz and (ii) a
non-exclusive, irrevocable, perpetual, worldwide, transferable, royalty-free
license, with right to sublicense, to develop, design, make, use, import, copy,
modify, license, offer to sell, sell, lease and otherwise distribute the Product
(as defined in Section 3(a) below) and any other products or devices developed
using, based on or incorporating the Work Product that transmit and/or receive
at a frequency in excess of twelve gigahertz. Supplier agrees and acknowledges
that the foregoing license includes a license to any
and all of Supplier's patents, know-how, trade secrets, and other technical
information and intellectual property (in whatever form) contained or
incorporated into, reflected in or necessary to develop, manufacture, test and
sell the Product, along with any goodwill associated with any Licensed Property
(as defined in the immediately following sentence). All the Work Product,
intellectual property and other items to which Telaxis is granted a license
pursuant to the foregoing provisions of this Section 2(a) are referred to
collectively as the "Licensed Property". Supplier acknowledges and agrees that,
without limiting the generality of the foregoing, any and all patents, know-how,
trade secrets, and other technical information or intellectual property
discovered, developed or designed by or under the direction of Supplier in
connection with the transactions contemplated by the Supply Agreement,
including, without limitation, the design and development of the Product, are
included in the scope of the foregoing license and are part of the Licensed
Property. As part of the license, Supplier grants Telaxis the right to commence
proceedings to protect the Licensed Property, to enjoin infringements of the
Licensed Property, and to xxx for damages resulting from infringement of the
Licensed Property and, if required by law, Supplier agrees, at Telaxis' expense,
to be joined in and to participate in such proceedings. Telaxis shall retain any
damages awarded or settlement amount obtained in connection with litigation paid
for by Telaxis.
(b) Subject to Section 2(a) above, (i) all intellectual
property (in whatever form) of Telaxis (including, without limitation, any
intellectual property of Telaxis contained or incorporated into the Product or
Work Product) shall remain the exclusive property of Telaxis and (ii) all
intellectual property (in whatever form) of Supplier shall remain the exclusive
property of Supplier. Subject to Section 2(a) above, neither Telaxis nor
Supplier shall use or distribute in any manner, directly or indirectly, any
intellectual property of the other. Any intellectual property created by Telaxis
in the course of exercise of its rights under Section 2(a) above shall be and
remain the exclusive property of Telaxis, including, without limitation,
derivative works based on the Licensed Property.
3. Obligations of Supplier.
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(a) Supplier has made substantial progress on designing,
developing, and testing a lower-cost broadband wireless transceiver to Telaxis'
specifications, called the "Phase 2 Product" in the Supply Agreement (referred
to as the "Product" in this Agreement). Within twenty (20) business days after
the date of this Agreement, Supplier shall deliver to Telaxis all work in
process on the Product (including all prototypes) and one paper copy and, to the
extent it exists, one electronic copy of all documentation, work product,
diagrams, designs, schematics, drawings, software, firmware, specifications,
test results, in whatever state of completion (including, without limitation,
any Confidential Information (as defined in Section 3(b) below) of Supplier) in
Supplier's possession, custody or control reasonably necessary for Telaxis to
complete the development of the Product and to manufacture and test the Product
(collectively, the "Work Product").
(b) Within twenty (20) business days after the date of this
Agreement, Supplier shall return to Telaxis all documents and other materials
(and all copies) containing Confidential Information of Telaxis and certify in
writing to Telaxis that Supplier has complied with the requirements of this
clause. As used in this Agreement, "Confidential Information"
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means information of a party deemed confidential to that party relating to the
design, development and supply of its products that was previously disclosed to
the other party.
(c) Within twenty (20) business days after the date of this
Agreement, Supplier shall ship to Telaxis all material, capital equipment and
tooling which has been paid for or rented by Telaxis, including, without
limitation, approximately $10,000 of inventory and a chiller worth approximately
$18,000 (the payment for which is included in the sum described in Section 4(a)
below). Supplier shall ship these materials, freight collect, using the method
reasonably designated by Telaxis.
4. Obligations of Telaxis.
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(a) Within twenty (20) business days after the date of this
Agreement, Telaxis shall pay Supplier the sum of Two Hundred Fifty Thousand
Dollars ($250,000.00).
(b) Within twenty (20) business days after the date of this
Agreement, Telaxis shall return to Supplier all documents and other materials
(and all copies) containing Confidential Information of Supplier (except to the
extent such materials contain Confidential Information of Supplier to which
Telaxis is granted rights under Section 2(a) above) and certify in writing to
Supplier that Telaxis has complied with the requirements of this clause.
(c) Within a reasonable time (not to exceed thirty (30) days)
after presentation of an invoice by Supplier, Telaxis shall pay all shipping,
handling and insurance costs incurred by Supplier in performing under Section
3(c) above.
5. Confidentiality.
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(a) The Nondisclosure Agreement, dated as of June 1, 1998, and
all obligations and restrictions under that agreement are hereby terminated.
(b) Supplier agrees to keep confidential and not disclose to
third parties (i) all technical specifications for the Product, whether such
specifications were provided to Supplier by Telaxis or were established by
Supplier in connection with development of the Product, (ii) all of the Licensed
Property created or provided, in whole or in part, by Telaxis, and (ii) all of
the Licensed Property created or provided by Supplier (except to the extent that
Supplier is required to disclose a portion of such Licensed Property during the
normal course of its business).
6. Miscellaneous.
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(a) Notices. All notices and instructions to be given by any
party to any other party shall be given by the parties hereto in writing and by
hand delivery, with a receipt being obtained therefor, by registered mail,
return receipt requested, or by reputable overnight courier at the following
addresses and to the following persons, or at such other addresses and persons
as to which the parties hereto may be notified in accordance herewith from time
to time. If mailed, any such notice shall be deemed to have been given seven (7)
business days after mailing in a post office or branch post office regularly
maintained by the United States Government. If
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delivered by personal delivery, any such notice shall be deemed to have been
given on the date personal delivery is effected. If sent by overnight courier,
any such notice shall be deemed to have been given three (3) business days after
delivery to the courier.
(i) If to Supplier:
California Amplifier, Inc.
000 Xxxxx Xxx Xxxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
Attn: Xx. Xxxx Xxxxxx
(ii) If to Telaxis:
Telaxis Communications Corporation
00 Xxxxxxxxxx Xxxxx Xxxx
Xxxxx Xxxxxxxxx, XX 00000
Attn: Xx. Xxxxx Xxxxxxx
(b) Entire Agreement and Modification. This Agreement is
intended by the parties hereto as a final expression of their agreement with
respect to the subject matter hereof, and is intended as a complete and
exclusive statement of the terms and conditions of that agreement. This
Agreement supersedes any and all prior and contemporaneous agreements and
understandings, oral or written, among the parties with respect to the subject
matter hereof.
(c) Amendments. This Agreement may not be amended, modified,
rescinded, terminated or waived orally, and no amendment, modification,
rescission, termination or waiver of any of the terms, provisions or conditions
thereof (including this subsection) shall be valid unless in writing and signed
by all parties.
(d) Assigns and Successors. This Agreement shall apply to,
shall be binding in all respects upon, and shall inure to the benefit of, the
respective successors, assigns and legal representatives of the parties hereto.
(e) Section Headings, Etc. Section headings contained in
this Agreement are for reference purposes only and shall not affect the meaning
or interpretation of this Agreement.
(f) Governing Law; Arbitration. This Agreement shall be
construed in accordance with and governed by the internal laws of the State of
Delaware. Any dispute, controversy or claim arising out of or relating to this
Agreement, or the breach, termination or invalidity thereof, shall be settled by
final and binding arbitration conducted pursuant to the Rules of Conciliation
and Arbitration of the American Arbitration Association (AAA); provided,
however, that nothing herein shall be deemed to prohibit any party from seeking
from relevant courts of law immediate injunctive relief to prevent or restrain
infringement of valid intellectual property rights. Such arbitration shall be
conducted in Boston, Massachusetts if commenced by the Supplier and in Los
Angeles, California if commenced by Telaxis. The number of arbitrators shall be
three (3) with each party appointing one arbitrator and those two arbitrators
choosing the
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third arbitrator. If a party hereto fails to appoint an arbitrator, such
arbitrator shall be appointed by the AAA. If the arbitrators chosen by the
parties (or by the AAA as the case may be) are unable to agree upon a third
arbitrator, such third arbitrator shall be appointed by the AAA. A judgement
upon any award rendered in such arbitration may be entered in any court having
jurisdiction over the party against whom the award is made. Prior to commencing
any arbitration proceeding, both Supplier and Telaxis shall use good faith
efforts to resolve the dispute, including at least one physical meeting attended
by personnel from each party with decision-making authority.
(g) Counterparts. This Agreement may be executed in one or
more counterparts, each of which shall be deemed to be an original copy of this
Agreement and all of which, when taken together, shall be deemed to be but one
and the same Agreement.
(h) Severability. Any provision of this Agreement which is
prohibited, unenforceable or not authorized in any jurisdiction shall, as to
such jurisdiction, be ineffective to the extent of such prohibition,
unenforceability or non-authorization without invalidating the remaining
provisions hereof or affecting the validity, enforceability or legality of such
provision in any other jurisdiction.
(i) Waiver. No failure to exercise and no delay in exercising
on the part of either party of any right, power or privilege shall preclude the
enforcement of that right, power or privilege or any other right, power or
privilege, nor shall the waiver of any breach of any such provision herein be
taken or held to be a waiver of any subsequent breach of any such provision or
be a waiver of the provision itself, nor shall any single or partial exercise of
any right, power or privilege hereunder preclude any other or further exercise
thereof or the exercise of any other right, power or privilege. Any waiver to be
effective must be in writing.
(j) Press Release; Filing. Supplier and Telaxis shall jointly
prepare and release a press release announcing this Agreement and the
termination of the Supply Agreement, which shall be acceptable to both parties,
which acceptance will not be unreasonably withheld. Supplier acknowledges that
Telaxis will file a copy of this Agreement with the Securities and Exchange
Commission.
IN WITNESS WHEREOF, the undersigned, intending to be legally bound
hereby, have duly executed this Agreement as of the day and year first written
above.
TELAXIS COMMUNICATIONS CALIFORNIA AMPLIFIER, INC.
CORPORATION
By: By:
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Name: Xxxxx X. Xxxxxxx Name: Xxxx Xxxxxx
Title: Vice President Title: Vice President
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