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EXHIBIT 10.20
[DIGITAL LOGO]
AGREEMENT BETWEEN
SIMPLEX SOLUTIONS, INC.
AND
DIGITAL EQUIPMENT CORPORATION
FOR LICENSING OF CAD TOOLS
License # SEG/CAD-92195-1 Dated September 21, 1995
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Table of Contents
1.0 DEFINITIONS
2.0 TITLE AND LICENSE GRANTS
3.0 LICENSE FEES AND PAYMENTS (CONSIDERATION)
4.0 CONFIDENTIALITY
5.0 UPDATES, TRAINING AND SUPPORT SERVICES
6.0 TECHNOLOGY TRANSFER
7.0 WARRANTIES
8.0 LIMITATION OF LIABILITY
9.0 REMEDIES
10.0 INJUNCTIVE RELIEF
11.0 TERMINATION
12.0 NOTICES
13.0 GENERAL TERMS
APPENDIX A LICENSED SOFTWARE AND DOCUMENTATION
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SOFTWARE LICENSE AGREEMENT
This Agreement is entered into as of September 21, 1995 (EFFECTIVE DATE) by and
between Digital Semiconductor a business unit of Digital Equipment Corporation,
a Massachusetts Corporation with principle offices at 000 Xxxxxxxxxx Xxxx,
Xxxxxxx, Xxxxxxxxxxxxx 00000-0000 (hereinafter "DIGITAL") and Simplex
Solutions, Inc., a Delaware Corporation with principal offices at 0000 Xxxxx
Xxxxx Xxxxxx, Xxxxx 000, Xxx Xxxx, XX 00000 ("SIMPLEX").
SIMPLEX desires to acquire an EXCLUSIVE LICENSE, except for Digital
Semiconductor's own internal use, for four (4) after which this LICENSE reverts
to a NON-EXCLUSIVE LICENSE, to use, modify, develop and create derivative works
of the LICENSED SOFTWARE in source code and binary format, as defined in
Appendix A in order to create SIMPLEX SOFTWARE, and to market, promote and
distribute, in binary format only, such SIMPLEX SOFTWARE internationally.
DIGITAL desires to grant SIMPLEX such EXCLUSIVE LICENSE, except for Digital
Semiconductor's own internal use, for four (4) after which this LICENSE reverts
to a NON-EXCLUSIVE LICENSE to use in source code format, and a limited
non-exclusive right to sublicense in binary format only the LICENSED SOFTWARE,
as defined in Appendix A, as part of SIMPLEX SOFTWARE subject to the terms and
conditions hereinafter set forth.
Therefore, for and in consideration of the mutual covenants expressed herein
and other good and valuable consideration, except which the parties hereby
acknowledge, the parties hereby agree as follows:
1. ARTICLE 1 - DEFINITIONS
As used in this Agreement, the following terms shall have the following
respective meanings:
1.1. CONTRACT YEAR shall mean the twelve month period beginning on
the first anniversary date of the EFFECTIVE DATE and on each
anniversary of the EFFECTIVE DATE thereafter. CONTRACT YEARS
shall be referred to by the calendar year in which such CONTRACT
YEAR began.
1.2. DIGITAL and SIMPLEX are hereafter occasionally referred to as
"party" or "parties" as indicated by the context.
1.3. INTELLECTUAL PROPERTY RIGHTS shall mean any of the following
rights owned or licensed by DIGITAL with respect to LICENSED
SOFTWARE as delivered hereunder during the term hereof.
1.3.1. All rights, title and interests in all Letters Patent
including any reissue, division, continuation or
continuation-in-part applications throughout the world
now or hereafter filed; and
1.3.2. All mask work rights including mask work registration
rights, all copyright rights, and all other literary
property and author rights whether or not copyrightable;
and all rights, title and interests in all copyrights,
mask work registrations and copyrighted interests; and
1.3.3. All rights, title and interests in all know-how and
show-how whether or not protectable by patent,
copyright, mask work registration or trade secret.
1.4. LICENSED SOFTWARE shall mean DIGITAL's CAD software tools in
both object code and source code forms, as more particularly
identified and described in Appendix A hereto and shall also
include DIGITAL's User Guides and reference manuals listed in
Appendix A.
1.5. EXCLUSIVE LICENSE shall mean a license which permits SIMPLEX to
use the LICENSED SOFTWARE as licensed, but which does not
prohibit DIGITAL in any manner from making, using and selling
LICENSED SOFTWARE and products embodying the LICENSED SOFTWARE
throughout the world, and which does not prohibit DIGITAL from
granting non-exclusive rights to third parties to use
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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LICENSED SOFTWARE for any purpose throughout the world, except for the
first four (4) years of this LICENSE, for which time Digital shall not
license any other third party.
1.5.1. The term "use" as employed in Article 1.4 above shall
include but not be limited to the rights to design,
implement, develop, copy, reproduce, manufacture, package,
install, operate, test, correct, maintain, repair, enhance,
extend, translate, transliterate, and create or sublicense
other derivative works.
1.6. SIMPLEX SOFTWARE shall mean SIMPLEX's [*] (which will incorporate the
LICENSED SOFTWARE) and [*] (which will not incorporate the LICENSED
SOFTWARE) software programs as well as any other software owned or
marketing by SIMPLEX which may incorporate LICENSED SOFTWARE,
including any manuals and related documentation.
1.7. TERM shall mean the term of this Agreement commencing on the EFFECTIVE
DATE and continuing thereafter for a term of five (5) years or until
otherwise terminated in accordance with Article 10 below. Prior to the
end of the TERM of this Agreement the parties shall confer and
negotiate in good faith any extension of this Agreement.
1.8. USE SUBLICENSE shall mean any agreement or arrangement between SIMPLEX
and any of its end user customers for the lease, license or use of
SIMPLEX SOFTWARE. USE SUBLICENSES shall only grant end users the right
to use the SIMPLEX SOFTWARE in binary format.
1.9. References to an Article in this Agreement shall be deemed to include
all Articles numerically depending therefrom. For example, a reference
to Article 2.2 shall be deemed to include Articles 2.2.1 and 2.2.2,
and a reference to Article 3 shall be deemed to include Article 3.1.
2. ARTICLE 2 - TITLE AND LICENSE GRANTS
2.1. Subject to the limited EXCLUSIVE LICENSE granted to SIMPLEX as
expressly set forth in this Article 2, DIGITAL Owns and shall retain
all rights, title and interests including INTELLECTUAL PROPERTY RIGHTS
in the LICENSED SOFTWARE. SIMPLEX shall retain ownership of all
corrections, adaptations, enhancements and extensions to the SIMPLEX
SOFTWARE, as well as any derivative works created from the LICENSED
SOFTWARE, developed by or for SIMPLEX pursuant to the rights licensed
hereunder.
2.2. DIGITAL agrees to grant and hereby grants to SIMPLEX under DIGITAL's
INTELLECTUAL PROPERTY RIGHTS, and subject to the terms of Article 4
below, a perpetual, irrevocable, worldwide EXCLUSIVE LICENSE, except
for Digital Semiconductor's own internal use, to use, reproduce,
develop, modify and create derivative works of the LICENSED SOFTWARE
in order to create SIMPLEX SOFTWARE, and to use, reproduce,
distribute, perform and display the SIMPLEX SOFTWARE in binary code
format only pursuant to the USE SUBLICENSES with the right to further
sublicense in binary format only to any tier as may be necessary to
distribute SIMPLEX SOFTWARE to end user customers.
2.2.1. SIMPLEX shall label all SIMPLEX SOFTWARE which includes
LICENSED SOFTWARE in whole or in part with the following
notice: "Portions of this product incorporates technology
licensed from Digital Equipment Corporation".
2.2.2. In addition to the foregoing, SIMPLEX shall have the right
to transfer possession of the source code of the LICENSED
SOFTWARE as incorporated in the SIMPLEX SOFTWARE as part of
a source code escrow of the SIMPLEX SOFTWARE established for
the benefit of end user customers to allow such end users to
use such software solely to support and maintain SIMPLEX
SOFTWARE in their possession in the event SIMPLEX is unable
to do so, in each case subject to escrow terms
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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approved by DIGITAL, which approval may not be unreasonably
withheld, and confidentiality restrictions and restrictions on use
of the LICENSED SOFTWARE at least as restrictive as those contained
in this Agreement. Except for above, SIMPLEX shall have no right to
distribute the source code of the LICENSED SOFTWARE to any third
parties.
2.3. SIMPLEX hereby grants to DIGITAL for its internal purposes only, a fully
paid, irrevocable, non-exclusive, perpetual, license to use within
Digital Semiconductor business unit worldwide, under SIMPLEX's
INTELLECTUAL PROPERTY RIGHTS including patent, copyright, mask work and
trade secret rights, no more than [*] copies of Simplex's [*] software
products in executable code form and including documentation. For
purposes of clarification, DIGITAL may request up to [*] copies of any
combination of [*]. Each copy may be used only on a single
workstation/CPU. For SIMPLEX SOFTWARE upgrades which included DIGITAL's
LICENSED SOFTWARE [*], Digital will receive such upgrades at no charge
for a period of four (4) years from the effective date of this
agreement. For SIMPLEX SOFTWARE upgrades that do not include DIGITAL's
LICENSED SOFTWARE [*], Digital xxxxxxxxxxxx at SIMPLEX's prevailing
prices. For the purposes of this subsection, an "upgrade" is an optional
module that may be added to a base software product to provide
additional functionality or performance. Digital will receive
maintenance/support for the SIMPLEX SOFTWARE through a single DIGITAL
support coordinator at DIGITAL's Xxxxxx facility for a period of four
(4) years from the effective date of this agreement at no additional
charge.
2.3.1. It is understood by the parties that the license grant to DIGITAL
under this Article 2.3 shall permit DIGITAL to design, distribute
and use the SIMPLEX SOFTWARE internally. But, unless otherwise
agreed by the parties in writing, DIGITAL shall have no right to
distribute, sublicense or grant access to the SIMPLEX SOFTWARE to
any third party.
2.4. DIGITAL and SIMPLEX agree that Articles 2.1 and 2.3 shall survive the
termination of this Agreement for any reason whatsoever including
expiration of TERM.
3. ARTICLE 3 - FEES AND ROYALTIES
3.1. In consideration for DIGITAL's performance under this Agreement, and the
rights and licenses granted to SIMPLEX under this Agreement, SIMPLEX
shall grant Digital the licenses defined in Section 2.3 above. SIMPLEX
[*] any royalty payments.
3.2. Within four weeks of the execution of this Agreement, DIGITAL shall
deliver to SIMPLEX one DIGITAL Alpha workstation and related software
configured as previously specified by SIMPLEX which may be used by
SIMPLEX for developmental purposes. Such workstation and software shall
be subject to a separate AGREEMENT FOR LOAN OF PRODUCTS between the
parties.
4. ARTICLE 4 - CONFIDENTIALITY
4.1. As used in this Agreement, the term "CONFIDENTIAL INFORMATION" shall
mean any information disclosed by one party to the other pursuant to
this Agreement which is in written, graphic, machine readable or other
tangible form and is marked with the identity of the disclosing party
and "Confidential", "Proprietary" or in some other manner to indicate
its confidential nature. CONFIDENTIAL INFORMATION may also include oral
information disclosed by one party to the other pursuant to this
Agreement, provided that such information is designated as confidential
at the time of disclosure and reduced to a written summary by the
disclosing party, within thirty (30) days after its oral disclosure,
which is marked in a manner indicated above in Section 4.1 and delivered
to the receiving party. Notwithstanding any failure to so identify it,
however, the source
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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code for the LICENSED SOFTWARE and the SIMPLEX SOFTWARE shall be deemed
to be "CONFIDENTIAL INFORMATION" hereunder.
4.2. Each party shall treat as confidential all CONFIDENTIAL INFORMATION of
the other party, shall not use such CONFIDENTIAL INFORMATION except as
expressly set forth herein or otherwise authorized in writing, shall
implement reasonable procedures to prohibit the disclosure, unauthorized
duplication, misuse or removal of the other party's CONFIDENTIAL
INFORMATION and shall not disclose such CONFIDENTIAL INFORMATION to any
third party except as may be necessary and required in connection with
the rights and obligations of such party under this Agreement, and
subject to confidentiality obligations at least as protective as those
set forth herein. Without limiting the foregoing each of the parties
shall use at least the same procedures and degree of care which it uses
to prevent the disclosure of its own CONFIDENTIAL INFORMATION of like
importance to prevent the disclosure of CONFIDENTIAL INFORMATION
disclosed to it by the other party under this Agreement, but in no event
less than reasonable care.
4.3. The TERM of this Agreement, and for [*] years thereafter SIMPLEX shall
maintain in confidence and not use except as expressly authorized
herein, all LICENSED SOFTWARE and derivative works thereof made by
SIMPLEX that either directly or indirectly discloses LICENSED SOFTWARE.
ALL LICENSED SOFTWARE shall be referred to hereafter as "CONFIDENTIAL
INFORMATION".
4.4. SIMPLEX agrees that the confidentiality of the LICENSED SOFTWARE is an
integral part of the ascribed value of the LICENSED SOFTWARE.
4.5. CONFIDENTIAL INFORMATION shall not include and SIMPLEX shall not be
required to protect in confidence any information disclosed to SIMPLEX
under this Agreement which;
4.5.1. was in the receiving party's possession or was know to the
receiving party prior to receipt under this Agreement, as
evidenced by a signed and dated document created in the normal
course of business or other equally probative evidence;
4.5.2. is or becomes public knowledge without breach of this Agreement
by the receiving party as evidenced by a printed publication or
other equally probative evidence;
4.5.3. is or becomes available to the receiving party from a source
other than the disclosing party without a confidentiality
restriction and without a breach of this Agreement; or
4.5.4. is developed by the receiving party independent of and without
reference to CONFIDENTIAL INFORMATION received under this
Agreement.
4.5.5. is disclosed with the prior written approval of the disclosing
party;
4.5.6. is disclosed pursuant to the order or requirement of a court,
administrative agency, or other governmental body; provided,
that the receiving party shall provide prompt, advanced notice
thereof to enable the disclosing party to seek a protective
order or otherwise prevent such disclosure.
4.6. Each party acknowledges that disclosure or use of any CONFIDENTIAL
INFORMATION by the other party in a manner inconsistent with this
Agreement will cause the other party irreparable injury which may not be
adequately compensated by damages. Accordingly, in addition to all other
remedies that a disclosing party shall have under this Agreement, the
disclosing party shall have the right to equitable and injunctive relief
to prevent the unauthorized use or disclosure of CONFIDENTIAL
INFORMATION, and shall have the right to such damages (including without
limitation court costs, and reasonable attorney fees awarded by a court
of final resort and competent jurisdiction) as are occasioned by such
unauthorized use or disclosure.
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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4.7. Neither party shall disclose any confidential third party information
to the other under this Agreement.
5. ARTICLE 5 -- UPDATES, TRAINING AND SUPPORT SERVICES
5.1. DIGITAL agrees that it shall provide SIMPLEX all error corrections,
updates, and upgrades to the LICENSED SOFTWARE which DIGITAL may, at
its discretion, develop and make available internally from time to
time, as to which DIGITAL shall own all rights, title, and interest.
It is understood by the parties that such product updates are not on
a scheduled or planned basis and entail no obligation by DIGITAL to
actually produce any such updates or upgrades to SIMPLEX.
5.2. DIGITAL shall provide SIMPLEX Two person (2) week of training (not
including time spent prior to execution hereof). Time spent via phone
communication shall count towards the 2 person/week equivalent.
DIGITAL, may at its discretion, provide training or support at
another site: if training/support is not at the Xxxxxx facility, the
hours spend shall be calculated at double the time (i.e., 2 hours at
other site = 0 xxxx xx Xxxxxx, XX) and all travel and lodging
expenses for any DIGITAL personnel involved in such other site
training will be paid by SIMPLEX. If additional training or support
is required, DIGITAL may, at its discretion, provide additional
support for a fee of [*] per day per person plus expenses.
6. ARTICLE 6 -- TECHNOLOGY TRANSFER
6.1. DIGITAL shall deliver to SIMPLEX one complete copy of the LICENSED
SOFTWARE within 2 weeks of the EFFECTIVE DATE of this Agreement.
6.2. If the event this Agreement is terminated in accordance with the
terms of Article 7, SIMPLEX shall return to DIGITAL all whole or
partial copies of LICENSED SOFTWARE which are in SIMPLEX's
possession or control, whether direct or indirect.
7. ARTICLE 7 -- WARRANTY PROVISIONS
7.1. THE LICENSED SOFTWARE AND THE SIMPLEX SOFTWARE ARE PROVIDED "AS IS"
UNDER THIS AGREEMENT. NEITHER PARTY MAKES ANY WARRANTIES UNDER THIS
AGREEMENT, WHETHER EXPRESS OR IMPLIED, AND SPECIFICALLY DISCLAIMS
ANY IMPLIED WARRANTY OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE. THE LICENSED SOFTWARE IS DEVELOPED FOR INTERNAL USE, AND IS
NOT A DIGITAL LIST PRICE COMMERCIAL PRODUCT WHICH HAS BEEN SUBJECTED
TO DIGITAL'S FULL COMMERCIAL QUALITY CONTROL AND PRODUCT VALIDATION
PROCESSES. THE LICENSED SOFTWARE THUS MAY CONTAIN DEFECTS WHICH
DIGITAL HAS NO OBLIGATION TO REMEDY.
7.2. To the best of DIGITAL's knowledge without conducting product
clearance analyses or searches in the public records of the patent,
copyright, and trademark offices throughout the world, DIGITAL has
the right to use and to license the use of the LICENSED SOFTWARE in
accordance with the terms and conditions of this Agreement.
7.3. The names used to identify each tool are for reference only. These
names have been used internal to DIGITAL Only. These names are not
to be confused with any external commercial product by the same name
and may not be available for public use. SIMPLEX shall adopt its own
unique and distinct names for each such CAD tool which it licenses
to its customers and shall be solely responsible for clearance of
the use of such names as trademarks/service marks for any SIMPLEX
SOFTWARE and for defending and selling or otherwise satisfying any
claim for infringement of any trademark or service rights anywhere
in the world regarding the use by SIMPLEX of any such name.
7.4. THE WARRANTIES SET FORTH IN THIS ARTICLE 7 ARE IN LIEU OF ALL OTHER
WARRANTIES, EXPRESS OR IMPLIED, AND DIGITAL EXPRESSLY DISCLAIMS ANY
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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8. ARTICLE 8 - LIMITATION OF LIABILITY
8.1. IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR SPECIAL,
INCIDENTAL, OR CONSEQUENTIAL DAMAGES, INCLUDING LOST PROFITS OR
LOSS OF USE, OR OTHER ECONOMIC LOSS OF ANY SORT. EXCEPT AS
PROVIDED UNDER SECTION 9.3 BELOW, DIGITAL SHALL NOT BE LIABLE TO
SIMPLEX, AND DISCLAIMS ALL LIABILITY TO ANY OTHER PERSON OR
ENTITY IN CONNECTION WITH THIS AGREEMENT, FOR THE USE OR
PERFORMANCE OF THE LICENSED SOFTWARE, INCLUDING WITHOUT
LIMITATION ANY LIABILITY FOR NEGLIGENCE IN TORT. SIMPLEX SHALL
NOT BE LIABLE TO DIGITAL, AND DISCLAIMS ALL LIABILITY TO ANY
OTHER PERSON OR ENTITY IN CONNECTION WITH THIS AGREEMENT, FOR
THE USE OR PERFORMANCE OF THE SIMPLEX SOFTWARE INCLUDING,
WITHOUT LIMITATION, ANY LIABILITY FOR NEGLIGENCE IN TORT.
9. ARTICLE 9 - REMEDIES
9.1. In the event a third party asserts a claim of intellectual
property infringement, DIGITAL has no obligations to obtain
rights to continue the use of any such LICENSED SOFTWARE which
is the subject of such claim.
9.2. DIGITAL agrees, at its own expense, to defend or at its option
to settle, any claim or action brought against SIMPLEX on the
issue of infringement of any copyright or trade secret right of
any third party by the LICENSED SOFTWARE as used or distributed
within the scope of the licenses granted under this Agreement
and to indemnify SIMPLEX against all damages and costs,
including legal fees, which may be incurred by SIMPLEX under any
such claim or action; provided that SIMPLEX provides DIGITAL
with (i) prompt written notice of such claim (ii) sole control
and authority over the defense or settlement thereof, and (iii)
proper and full information and assistance (at DIGITAL's
expense, except for the cost of SIMPLEX's employee's time) to
settle and/or defend any such claim or action.
9.3. Notwithstanding the provisions of Section 9.2 above, DIGITAL
assumes no liability for infringement claims which would not
exist but for (i) the combination of any LICENSED SOFTWARE with
other software not provided by DIGITAL, or (iii) the
modification of the LICENSED SOFTWARE unless such modification
was made by DIGITAL.
9.4. SIMPLEX agrees, at its own expense, to defend or at its option
to settle, any claim or action brought against DIGITAL on the
issue of infringement of any copyright or trade secret right of
any third party by the SIMPLEX SOFTWARE as used or distributed
within the scope of the licenses granted under this Agreement
and to indemnify DIGITAL against all damages and costs,
including legal fees, which may be incurred by DIGITAL under any
such claim or action; provided that DIGITAL provides SIMPLEX
with (i) prompt written notice of such claim (ii) sole control
and authority over the defense or settlement thereof, and (iii)
proper and full information and assistance (at SIMPLEX's
expense, except for the cost of DIGITAL's employee's time) to
settle and/or defend any such claim or action.
9.4.1. Notwithstanding the provisions of Section 9.4 above,
SIMPLEX assumes no liability for infringement claims
which would not exist but for (i) the combination of
any SIMPLEX SOFTWARE with other software not provided
by SIMPLEX, or (iii) the modification of the SIMPLEX
SOFTWARE unless such modification was made by SIMPLEX.
9.5 THE REMEDIES SET FORTH IN THIS ARTICLE 9 CONSTITUTES EACH
PARTY'S EXCLUSIVE REMEDIES FOR INTELLECTUAL PROPERTY
INFRINGEMENT, AND DEFECTS (WHETHER PATENT OR LATENT) IN THE
LICENSED SOFTWARE OR SIMPLEX SOFTWARE AS APPLICABLE.
10. ARTICLE 10 - INJUNCTIVE RELIEF
10.1. The parties hereby declare that the respective rights of the
parties under Sections 2 or Section 4 are of a unique nature,
the loss of which may cause
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irreparable harm, and that it may be impossible to measure in money
the damages which will accrue to a party hereto by reason of the
loss of such rights. Accordingly, in the event of any breach or
threatened breach of Sections 2 or Section 4, the party whose
software or CONFIDENTIAL INFORMATION are the subject of such breach
or threatened breach shall be entitled to a final order from a court
of competent jurisdiction of injunctive and other equitable relief,
and if any party hereto shall institute any action or proceeding to
enforce by specific performance or other equitable relief the
provisions hereof, any the party against whom such action or
proceeding in brought hereby waives the claim or defense therein
that such party has an adequate remedy at law, and such part shall
not urge in any such action or proceeding the claim or defense that
such remedy at law exists. This Section 10 shall not limit or
constrain the right of a party to pursue and recover damages at law
for breaches of this Agreement, including breaches of Section 2 or
Section 4.
11. ARTICLE 11 - TERMINATION
11.1. If either party hereto shall fail to perform or observe any of the
terms and conditions to be performed or observed by it under this
Agreement, the other party shall give written notice to the
defaulting party specifying the respects in which the defaulting
party has failed to perform or observe the terms and conditions of
this Agreement, and in the event that any default so indicated is
not remedied by the defaulting party within thirty (30) days after
receipt of such notice, the party not in default may in its sole
discretion thereafter elect to terminate this Agreement, and,
except as otherwise provided herein to survive termination, this
Agreement and all the future obligations owed and future rights
granted herein to the defaulting party shall immediately terminate.
11.1.1. As used in this Agreement the term "breach" or "default"
by a party shall mean a failure to perform or observe a
material term or provision hereof which remains uncurled
after the notice and time period set forth above. The
following events may constitute the breach of material
term of this Agreement.
11.1.1.1. a knowing and material violation of the
restrictions on license rights set forth herein.
11.1.1.2. failure by a party to follow proper procedures
for safeguarding CONFIDENTIAL INFORMATION under
this Agreement;
11.1.1.3. failure by SIMPLEX to make payment when due;
11.1.1.4. breach of warranty of either SIMPLEX or DIGITAL
and
11.1.1.5. failure of DIGITAL to provide training and
support services pursuant to Article 5 above.
11.2. On or before thirty (30) days prior to the expiration of the TERM
of this Agreement, the parties may meet in person or by phone to
determine whether and under what conditions this Agreement may be
renewed.
11.3. The parties hereto agree that the termination of this Agreement
shall not release either party from any other liability which shall
have accrued to the other party at the time such termination
becomes effective (provided that a remedy for such liability has
not been expressly provided in this Agreement), nor affect in any
manner the survival of any right, duty or obligation of either
party which is expressly stated elsewhere in this Agreement to
survive termination.
11.4. In the event of any termination of this Agreement for any reason,
SIMPLEX shall no longer be entitled to continue to receive error
corrections, updates and upgrades pursuant to section 5.1. However
its rights to the LICENSED SOFTWARE existing as of the termination
date shall continue.
12. ARTICLE 12 - NOTICES
12.1. Any notice required or permitted to be given under this Agreement
shall be sufficient as of three (3) days following the date of
mailing if given by prepaid, first class, registered or certified
mail addressed to the respective address, subject to change upon
written notice, of the other Party as follows:
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If DIGITAL:
Xxxx XxXxxxx
Acquisition Consultant
Digital Equipment Corporation
00 Xxxx Xxxx
Xxxxxx, XX 00000-0000
Copy to:
Digital Semiconductor General Counsel
Digital Equipment Corporation
000 Xxxxxxxxxx Xxxx, XXX0-0
Xxxxxxx, XX 00000
If to LICENSEE:
Resve Saleh
President
Simplex Solutions, Inc.
0000 Xxxxx Xxxxx Xxxxxx, Xxxxx 000
Xxx Xxxx, XX 00000
13. ARTICLE 13 - GENERAL TERMS
13.1. Waiver/Amendment: No waiver, amendment, or modification of any
provision of this Agreement shall be effective unless in writing and
signed by the party against whom such waiver, amendment or
modification is sought to be enforced.
13.2. Assignment or Transfer: Except as otherwise stated herein, SIMPLEX
may not assign or transfer in any manner, including by operation of
law, any of its rights or obligations under this Agreement to any
third party integrated circuit manufacturer (including, but not
limited to, Intel or National Semiconductor, etc.) without the
express written consent of DIGITAL. Any assignment or transfer made
without such consent shall be void.
13.3. The recipient of DIGITAL technical information agrees not to
export/re-export this technical information or any direct/immediate
product of the technical information to any country proscribed under
the U.S. Export Administrating Regulations, Parts 700 and 779.4
(Country Groups Q, S, W, Y, and Z and the People's Republic of China
and Afghanistan) without first receiving authorization from the U.S.
Department of Commerce.
13.4. Choice Of Law And Forum: The rights of the parties hereunder shall be
governed by the laws of the State of California, U.S.A. Any
litigation between the parties shall be commenced and prosecuted in
California.
13.5. Severability: If any provision of this Agreement shall be held by a
court of competent jurisdiction to be contrary to law, the remaining
provisions of this Agreement shall remain in full force and effect,
and shall be interpreted to effect the intentions of the parties
interpretations as if such provision has never been in this
Agreement.
13.6. Publicity:
13.6.1. Each party shall use its reasonable and diligent efforts not
to disclose to any third party the terms and conditions of
this Agreement during its TERM, except as required by law, or
by governmental regulation, requirement or order, or as may
be necessary to establish or assert its rights hereunder, or
pursuant to confidentiality obligations, to bankers and other
financing sources and to auditors, attorneys and other
experts as deemed necessary by SIMPLEX to obtain financing.
13.6.2. Notwithstanding the proscriptions of Article 13.6.1 above,
DIGITAL and SIMPLEX shall cooperate in preparing a press
release and a public announcement of the occurrence of this
Agreement, each of which shall occur within thirty (30) days
following the execution of this Agreement.
13.6.3. DIGITAL shall have the right to review any subsequent press
releases or other promotional advertising or materials of
SIMPLEX that refer to DIGITAL, which shall be provided to
DIGITAL thirty (30) days in advance
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of release. If such releases, advertising or materials is found
unacceptable by DIGITAL, SIMPLEX will revise the same in accordance
with DIGITAL's wishes. DIGITAL shall review any such releases,
plans or materials within 21 days and give written notice to
SIMPLEX of approval or disapproval. DIGITAL's review team shall
consist of at least one representative from the DIGITAL. SIMPLEX
understands and agrees that the guidelines which DIGITAL shall use
will be the absence from any such press release or other
promotional material of any mention that any LICENSED SOFTWARE
received from DIGITAL has been used, or is currently being used, by
DIGITAL to design any specific semiconductor device, including by
way of example only, DIGITAL's DECchip 21064 and subsequent chips
utilizing the "ALPHA" architecture, and including any names used
formally or informally by DIGITAL or in the industry or industry
press, such as "ALPHA chips" or "ALPHA microprocessors" or the
like. Once DIGITAL has found a particular press release, or piece
of advertising or promotional material to be accepted, further
publication approval by DIGITAL shall not be required for such
release or piece of material.
13.6.4. Notwithstanding the foregoing, SIMPLEX, without the approval of
DIGITAL, shall have the right to indicate to the public that
SIMPLEX has licensed the LICENSED SOFTWARE from DIGITAL, by using
the notice "portions of this product incorporated technology
licensed from DIGITAL EQUIPMENT CORPORATION", or the substantial
equivalent thereof.
13.7. No prior condemnation, waiver, overlooking or lack of notice of any act
or event giving rise to a right by either party to terminate shall operate
to restrict, limit, or otherwise affect a subsequent right to either party
to terminate this Agreement because of any act or event of a same or
different nature.
13.8. Entire Agreement: This Agreement constitutes the complete and entire
agreement between the parties with respect to the subject matter addressed
herein, and merges all prior proposals and negotiations, whether oral or
written, and all other prior communications and agreements between the
parties with respect to such matter.
IN WITNESS WHEREOF, the parties hereto have as of the effective date first above
written caused this Agreement, including Appendix A which hereby is incorporated
by reference, to be signed in duplicate by their duly authorized
representatives.
DIGITAL EQUIPMENT CORPORATION SIMPLEX SOLUTIONS, INC.
/s/ Xxxxxx Xx Xxxxxxxx /s/ Resve Saleh
---------------------------- ----------------------------
Name: Xxxxxx Xx Xxxxxxxx Name: Resve Saleh
Title: Vice President Title: President
Digital Semiconductor
Date: 9/22/95 Date: 9/25/95
12
APPENDIX A -- LICENSED SOFTWARE & DOCUMENTATION
The following are the CAD tools referenced in this agreement.
All these tools are purchased on the basis "as is". DIGITAL does not have any
obligation to add or change anything. It is a free will of DIGITAL
SEMICONDUCTOR / SEG / CAD group to release updates when and if they are
available. The Source Code will be supplied for all the software listed below.
[*]
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
13
6. Library Utilities
[*]
The following are the supporting documentation for the above tools:
[*]
*Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
