EXHIBIT 10.2
DEVELOPMENT AND LICENSE AGREEMENT
TEXAS INSTRUMENTS INCORPORATED, acting through its Semiconductor Group ("TI")
and DSP TELECOMMUNICATIONS INC. ("DSPT") agree that this Agreement shall have
an effective date of May 1, 1993, and shall include Attachments I and II. The
parties agree as follows:
1. DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
a. "ROM Code" shall mean the DSPT implementation of software which DSPT
provides to TI hereunder in object code format, including any updates,
revisions or enhancements that DSPT deems necessary and DSPT makes to
that software and provides to TI.
b. "ROM 320" shall mean the masked ROM version of TI's 320 device which
TI shall produce incorporating the ROM Code.
c. "TI Subsidiaries" shall mean any company fifty percent (50%) or more
of whose capital stock is owned by TI.
2. SCOPE
This Agreement contemplates the development and sale by TI of masked ROM
versions of TI's TMS320 devices which incorporate the ROM Code developed by
DSPT. TI and DSPT shall execute project Amendments to this Agreement in
the basic format as is included in Attachment I for each masked ROM TMS320
device to be developed and sold pursuant to this Agreement.
3. RESPONSIBILITIES
For each ROM 320 TI is to develop, DSPT shall provide the following items
to TI:
a. Executable object code software for the ROM release according to the
system specification;
b. Document source for product brochure;
c. Document source for product data sheet;
d. Document source for appropriate application reports;
e. Demonstration/evaluation modules.
The ROM Code shall be furnished by DSPT to TI in an agreed upon code
format. The data shall be transmitted to TI on floppy disk (MS-DOS
Compatible) or via upload to TI's bulletin board (000) 000-0000. Upon
receipt and verification
of the ROM Code, TI will generate the necessary tooling to manufacture ROM Coded
TMS320 Devices.
TI shall be responsible for developing the ROM 320, and pursuant to the
marketing limitation provisions set forth in Attachment II, marketing the
ROM 320 through TI's channels of distribution to a DSPT customer listed in
Attachment II. Except as specifically authorized under this Agreement TI
agrees not to use the ROM Code provided to TI hereunder to manufacture and
sell any products to any customer including DSPT's customers listed on
Attachment II.
4. OWNERSHIP/LICENSES
a. DSPT shall have and retain all rights, title and interest in the ROM
Code which it provides pursuant to this Agreement. Subject to the
terms and conditions of this Agreement and the Amendment(s), DSPT
agrees to; and hereby grants to TI a nonexclusive, worldwide,
non-transferable license to incorporate the ROM Code into ROM 320
devices, manufacture the ROM 320 devices, and distribute those ROM 320
devices to the companies listed on Attachment II at the prices listed
therein. Further, TI shall be restricted from, and shall restrict
others from, reverse assembling or decompiling the ROM Code or
otherwise using the ROM Code, ROM 320, or TI's relationship with DSPT
to appropriate for itself or others the underlying software or
technology.
b. TI shall be solely responsible for determining the price and terms of
its sales of ROM 320's.
c. TI shall include DSPT's copyright notice on the ROM 320 devices
produced hereunder along with TI's standard copyright and other
markings.
d. TI shall have and retain all rights, title and interest in the ROM 320
devices produced by TI pursuant to this Agreement, provided that such
rights shall not be construed to conflict with DSPT's ownership of the
ROM Code.
e. TI agrees that in the event of breach of either the license
restrictions or the copy right obligations identified in this
Agreement, DSPT shall have the right to enforce such restrictions and
obligations in law or at equity at DSPT's option. These restrictions
and obligations, and DSPT's right to enforce them, shall survive the
termination of this Agreement for any reason.
5. ROYALTIES
TI agrees to pay DSPT the royalties specified in the particular project
Amendment. Such royalties shall be payable quarterly. Ti will provide
DSPT with a statement certified by the responsible TI Business Manager
showing (a) the quantity sold by TI, its subsidiaries and affiliates during
such period. While this Agreement is in effect and for two (2) years after
its termination, TI shall keep accurate records reflecting the performance
of its obligations under this Agreement, and DSPT, at its expense, shall
have the right no more than one (1) time per year to have an independent
Certified Public Accountant, mutually agreeable to TI and DSPT, inspect and
audit TI's books and records pertaining to TI's distribution of the
particular ROM 320. If the audit reveals that TI has under paid royalties
by an amount equal to or greater than ten percent (10%) of the royalties
owed, then TI shall bear all expenses reasonably incurred by DSPT in
connection with the audit.
6. NONRECURRING ENGINEERING
DSPT or TI shall pay nonrecurring engineering costs, if applicable, as
specified in the particular project Amendment.
7. PROPRIETARY INFORMATION
In the event that either party hereto wishes to disclose to the other party
information which it deems proprietary, such disclosing party shall notify
the receiving party in writing of its desire and if the receiving party
wishes to accept such information, the parties, prior to disclosure, shall
execute a separate agreement to cover such disclosure.
8. TERMINATION
a. This Agreement and the license contained herein shall continue in full
force and effect unless and until terminated as set forth below. Upon
termination under Paragraph 8.c. below for TI's default or for TI's
convenience under Paragraph 8.b., TI's license to distribute ROM 320's
shall terminate and, TI immediately shall cease further distribution
of ROM 320's and shall return the ROM Code to DSPT (except that TI may
retain one archival copy of the ROM Code).
b. Either party may terminate this Agreement in whole or in part for its
convenience upon sixty (60) days prior written notice to the other
party.
c. Either party has the right to terminate this Agreement and any
licenses it has granted hereunder if the other
party is in default of any obligation hereunder and such default is not cured
within thirty (30) days of the defaulting parties' receipt of notice of such
default (or such additional cure period as the nondefaulting party may
authorize). Default shall include, without limitation, failure to comply with
any of the material terms and conditions hereof and violating the terms of any
licenses granter hereunder.
d. Upon expiration or termination by DSPT under Paragraph 8.b. above or
by TI after following the provisions of Paragraph 8.c. above, TI's
licenses as set forth in Paragraph 4 shall survive as to any project
Amendments executed hereunder and the royalty obligations as set forth
in Paragraph 5 above shall also survive such expiration or
termination.
e. The termination of this Agreement shall not be deemed to affect any
orders which have already been entered and acknowledged by TI prior to
the date of such termination.
9. TI SALES TO DSPT
It is understood and agreed that DSPT may order ROM 320 devices directly
from TI.
10. WARRANTIES AND INDEMNITY
a. DSPT represents and warrants that DSPT has no knowledge that the ROM
Code infringes any patents, copyrights, trade secrets, trademarks, or
other proprietary rights of any third party.
b. DSPT shall defend any suit or proceeding brought against TI insofar as
such suit or proceeding is based on a claim that any goods
manufactured and supplied by DSPT to TI constitute direct infringement
of any duly issued United States patent or copyright and DSPT shall
pay all damages and costs finally awarded therein against TI, provided
that DSPT is promptly informed and furnished a copy of each
communication, notice or other action relating to the alleged
infringement and is given authority, information and assistance (at
DSPT's expense) necessary to defend or settle said suit or proceeding.
DSPT shall not be obligated to defend or be liable for costs and
damages if the infringement arises out of compliance with TI's
specifications, or from a combination with, an addition to, or a
modification of the goods after delivery by DSPT, or from use of the
goods, or any part thereof, in the practice of a process. DSPT's
obligations hereunder shall not apply to any infringement occurring
after TI
has received notice of said suit or proceeding or other communication alleging
the infringement unless DSPT has given written permission for such continuing
infringement. If any goods manufactured and supplied by DSPT to TI shall be
held to shall be enjoined from using same, DSPT will exert all reasonable
efforts, at its option and at its expense, (a) to procure for TI the right to
use such goods free of any liability for patent or copyright infringement, or
(b) to replace such goods with a noninfringing substitute otherwise complying
substantially with all requirements of this Agreement, or (c) refund any costs
incurred by TI with respect to goods already manufactured under this Agreement.
c. TI's warranty for the ROM 320 shall be TI's standard warranty as set
forth in TI's Standard Terms and Conditions of sale (TI-5059) which
are attached hereto as Exhibit C. NEITHER PARTY MAKES ANY OTHER
WARRANTY, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO ANY
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE REGARDING THE PRODUCTS AND SERVICES PROVIDED HEREUNDER.
d. TI shall defend any suit or proceeding brought against DSPT insofar as
such suit or proceeding is based on a claim that any goods
manufactured and supplied by TI to DSPT constitute direct infringement
of any duly issued United States patent or copyright and TI shall pay
all damages and costs finally awarded therein against DSPT, provided
that TI is promptly informed and furnished a copy of each
communication, notice or other action relating to the alleged
infringement and is given authority, information and assistance (at
TI's expense) necessary to defend or settle said suit or proceeding.
TI shall not be obligated to defend or be liable for costs and damages
if the infringement arises out of compliance with DSPT's
specifications, or from a combination with, an addition to, or a
modification of the goods after delivery by TI, or from use of the
goods, or any part thereof, in the practice of a process. TI's
obligations hereunder shall not apply to any infringement occurring
after DSPT has received notice of said suit or proceeding or other
communication alleging the infringement unless TI has given written
permission for such continuing infringement. If any goods
manufactured and supplied by TI to DSPT shall be held to infringe any
duly issued United States patent or copyright and DSPT shall be
enjoined from using same, TI will exert all reasonable efforts, at its
option and at its expense, (a) to procure for DSPT the right to use
such goods free of any liability for patent or copyright
infringement, or
(b) to replace such goods with a noninfringing substitute otherwise
complying substantially with all requirements of this Agreement, or
(c) refund any sums paid by DSPT with respect to such goods under
this Agreement.
e. Neither party shall have any authority to make any representation or
warranty on the other party's behalf regarding the ROM 320 devices or
the ROM Code.
f. THE FOREGOING STATES THE SOLE AND EXCLUSIVE LIABILITY OF THE PARTIES
FOR PATENT AND/OR COPYRIGHT INFRINGEMENT AND IS IN LIEU OF ALL
CONDITIONS OR WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, IN REGARD
THERETO.
11. LIMITATION OF LIABILITY
TI's liability under this Agreement shall be limited to the amount of
royalties accrued under this Agreement, if any. UNDER NO CIRCUMSTANCES
SHALL EITHER PARTY BE LIABLE FOR ANY CONSEQUENTIAL, INCIDENTAL, SPECIAL, OR
PUNITIVE DAMAGES, WHETHER IN CONTRACT OR IN TORT INCLUDING NEGLIGENCE, EVEN
IF THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
12. INDEPENDENT CONTRACTOR
It is expressly understood that DSPT and TI are contractors independent of
one another, and that neither has the authority to bind the other to any
third person or otherwise to act in any way as the representative of the
other, or make representations or agreements on behalf of the other, unless
otherwise expressly agreed to in a writing signed by both parties hereto.
Each party represents that its efforts to market products referred to
herein shall be totally independent and each party shall compete with the
other as each unilaterally determines. Further, each party represents that
it shall not provide the other with cost data or pricing information, nor
otherwise exchange customer and market information. This provision does
not prohibit each party from identifying potential customers for products
referred to herein, provided that each party independently competes for the
markets and customers of its choice.
13. ASSIGNMENT
Neither party shall assign any of its rights or delegate any of its duties
pursuant to this Agreement without the express written consent of the other
party. Any attempted assignment, transfer, sale, or delegation in
derogation of this paragraph shall be void.
14. NON-WAIVER
No term or provision of this Agreement shall be deemed waived and no breach
excused unless such waiver or consent shall be in writing and signed by the
party claimed to have waived or consented. The waiver by either party of
any right created by this Agreement in one or more instances shall not be
construed as a further continuing waiver of such right or any other right
created by this Agreement.
15. COMMUNICATIONS AND ADMINISTRATION
The persons designated below shall have cognizance of the work performed
pursuant to this Agreement, and general administration of the Agreement
shall be through them.
For TI: For DSPT
------ --------
Xxxx Xxxxxx Xxxxxxx Hilevitz
Texas Instruments Incorporated DSP Telecomm.
X.X. Xxx 0000, M/S 701 00 Xxx Xxxxxx Xxxxxx
Xxxxxxx, Xxxxx 00000-0000 Xxxxx Xxxxxx, 00000, Xxxxxx
16. CONFLICTING AGREEMENTS
Each party represents that it is not a party to any other existing
agreement which would prevent it from entering into this Agreement or which
would adversely affect this Agreement.
17. RELEASE OF INFORMATION
Neither party shall, without the written consent of the other, publicly
announce the content of this Agreement, or advertise or release any
publicity in regard thereto except as may be required by a government
agency without the prior written consent of the other party. This
provision shall survive the expiration or termination of this Agreement.
18. APPLICABLE LAW
This Agreement and performance hereunder shall be governed by and construed
and enforced in accordance with the laws of the State of California.
19. NON-EXCLUSIVITY
Nothing contained in this Agreement shall be construed as a restriction on
either party's independent development, manufacture and sale, for itself or
others, of any product which is the same as products provided and developed
hereunder, provided that such development, manufacture or
sale does not violate any of the other provisions or licenses of this
Agreement.
20. ORDER OF PRECEDENCE
The terms and conditions contained in this Agreement take precedence over
any additional or different terms and conditions contained in any
attachment hereto.
21. NOTICES
Any notice, request, instruction or other document required or permitted to
be given hereunder shall be in writing or a facsimile and shall be valid
and sufficient if dispatched by registered or certified mail, postage
prepaid, in any post office in the United States, addressed as follows:
If to TI: If to DSPT:
-------- -----------
Texas Instruments Inc. Xxxxxxx Hilevitz
0000 XXX Xxxxxxx DSP Telecomm.
P.O. Box 655303, M/S 3684 00 Xxx Xxxxxx Xx
Xxxxxx, Xxxxx 00000 Xxxxx Xxxxxx, 00000, Xxxxxx
Attn: Manager, Business Services
or, in any case, to such changed address or person as TI or DSPT shall have
specified to the other by written notice.
22. MISCELLANEOUS
a. If any provision of this Agreement is determined to be illegal or
unenforceable, all other provisions shall remain in full force and
effect.
b. In the event that this Agreement is terminated, the payment date of
all royalties that already have accrued shall be accelerated and such
royalties shall become immediately due and payable as of the date of
termination.
c. This Agreement shall be binding upon, and inure to the benefit of,
successors in interest to, and permitted assigns of TI and DSPT.
23. ENTIRE AGREEMENT
This document, including any Attachments referred to herein and by this
reference hereby incorporated, constitute the entire agreement between the
parties with respect to the subject matter hereof, and supersedes all
previous communications, representations, understandings and agreements,
either oral or written, between the parties or any official or
representative thereof. This Agreement may
not be altered, amended, or supplemented in any respect except by a writing
signed by an authorized representative of each party.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed by their authorized representatives effective as of the date first
stated above.
TEXAS INSTRUMENTS INCORPORATED DSP TELECOMMUNICATIONS, INC.
Semiconductor Group
By: \s\ Xxxxxxx X. Xxxxxxxxx By: \s\ Xxxxxx Xxxxx
------------------------------ -------------------------
Printed Name: Xxxxxxx X. Xxxxxxxxx Printed Name: Xxxxxx Xxxxx
-------------------- ----------------
Title: Vice President, SC Group Title: President
--------------------------- -----------------------
Date: October 14, 1993 Date: 8/23/93
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ATTACHMENT I
A5001D AMPS Chipset
1. SCOPE:
D5001D Digital AMPS chipset is a two chip chipset made up of a ROM coded
DSP device and a Gate Array. Only the DSP and ASIC devices are covered under
this Attachment.
1. REQUIREMENTS:
DSP ASIC
a. Part Numbers
TI base set: XXX000X00
ROM Code Number: D78003U-PH F104284-PH
DSPT P/N: A5001D11AOC D5001D71AOC
b. Specification Per A5001D data sheet:
Voltage Range: 5V +/- 5% 5V +/- 5%
Frequency Range:
Temperature Range: 0 to 70C 0 to 70C
c. Other Requirements: Part numbers and specifications are the
latest as of the sign off of this Attachment.
Future releases and specification changes
of this chip set will be included in this
Agreement.
3. NONRECURRING ENGINEERING: None
4. MARKETING LIMITATIONS: None
5. ROYALTY:
DSP: $2.70/device
ASIC: $1.05/device
6. SIGNATURES:
TEXAS INSTRUMENTS INCORPORATED DSP TELECOMMUNICATIONS, INC.
Semiconductor Group
By: \s\ Xxxxxxx X. Xxxxxxxxx By: \s\ Xxxxxx Xxxxx
------------------------------ -------------------------
Printed Name: Xxxxxxx X. Xxxxxxxxx Printed Name: Xxxxxx Xxxxx
-------------------- ----------------
Title: Vice President, SC Group Title: President
--------------------------- -----------------------
Date: October 14, 1993 Date: 8/23/93
---------------------------- ------------------------
CONFIDENTIAL TREATMENT
REQUESTED
ATTACHMENT II
The following companies and such other companies as the parties hereto agree in
writing to add to this list shall be approved for direct (i) order placement
with, (ii) shipment from, (iii) invoicing from, and (iv) payment to TI.
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