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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
AMENDMENT NUMBER 1
Amendment, dated as of October 1, 1995, by and between
CrossComm Corporation, a Delaware corporation having an office at
000 Xxxxxx Xxxxx Xxxxxxxxx, Xxxxxxxx, Xxxxxxxxxxxxx 00000
("CrossComm") and Applied Network Technology, Inc., a Massachusetts
corporation having an office at Regency Park, 000 Xxxxxxxxx Xxxx,
Xxxxxxxx, XX 00000 ("ANT")
WHEREAS, Crosscomm and ANT are parties to a certain Product
Development, Technology License and Manufacturing Agreement dated
July 19, 1994 (the "Agreement") to which reference is hereby made;
capitalized terms herein shall have the same meanings ascribed to
them in the Agreement; and
WHEREAS, Crosscomm and ANT desire to amend the Agreement in
accordance with the terms and conditions set forth herein;
NOW THEREFORE, CrossComm and ANT hereby agree, for good and
valuable consideration, the receipt of which is hereby
acknowledged, as follows:
A. AMENDMENTS TO AGREEMENT
The parties agree to amend the Agreement as follows:
1. Delete the phrase "and the A Logic Chip" at the end of
Section 1.3.
2. Add the following to the end of Section 1.4:
"and all source code, libraries, design and technical
documentation, flow charts, layouts, diagrams and other
technical information in the possession of ANT relating to the
design and operation of an ASIC."
3. Add the following phrase to the end of Section 1.12:
"and the ESM 10-16, ESM 10-8 and EMCP daughter boards."
4. Add the following new section to the end of Section 1:
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"1.25 STAND-ALONE BASIS means the sale of a product (or, in
the context of this Agreement, an ASIC) as a separate
commodity product, and not as part of or a component of
another product, such as a network switch. Sale on a Stand-
alone Basis does not include sale of a product as a
replacement part for a product originally sold or manufactured
by the selling party (such as a network switch) into which the
replacement part will be incorporated."
5. Delete the last paragraph of Section 2.2 ("CrossComm will
own . . .under this Agreement.") in its entirety.
6. Add the following to the end of the first sentence of
Section 2.4:
"and (for the SEC 100 ASIC only) to determine whether the
Deliverable is interoperable with the National Semiconductor
NIC card, such interoperability to be defined as substantial
completion of certain interoperability tests attached hereto,
including 100 Base-T testing at a mutually acceptable,
regional, recognized laboratory"
7. Add the following to line 6 of Section 2.4, after the
word "criteria":
"and (for the SEC 100 ASIC only) the Deliverable is
interoperable with the National Semiconductor NIC card as
aforesaid,"
8. Add the following to the end of Section 3.1:
"Notwithstanding the foregoing, the ESM 10-16, ESM 10-8 and
EMCP daughter boards shall be deemed to have been finally
accepted by CrossComm upon Initial Product Acceptance, shall
not be required to undergo Production Acceptance and, because
they are owned by Crosscomm, shall not be subject to the
provisions of Sections 5 or 15 hereof in any respect."
9. Add the following sentences to the end of Section 3.3:
"CrossComm shall have the right to purchase each ASIC directly
from LSI Logic Corporation or other ASIC vendors, provided
that CrossComm notifies ANT (during the Maintenance Period (as
defined in Section 5.1)) of the quantity, type and timing of
such purchases within fifteen days following the end of the
month in which such purchases were made. All such information
shall be deemed the Confidential Information of CrossComm."
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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
10. In Section 4.3(a), replace each reference to "********"
with "********," and delete the last five lines in their entirety
and replace them with the following:
"SEC 10 and SEC 100 ** per ship for the first ****** chips
********"
11. Section 4.3(b) shall be restated in its entirety as
follows:
"The parties acknowledge and agree that the Prepaid Royalties
are nonrefundable, and that no amounts previously paid or to
be paid by CrossComm to ANT hereunder, once such amounts are
paid, shall be refundable."
12. In Section 4.4, replace both occurrences of "January 1,
1996" with "March 31, 1996".
13. Insert the following at the end of Section 4.4:
"ANT may solicit such PBI ASIC business during the period from
the execution date of this Agreement through March 31, 1996.
Notwithstanding the foregoing or anything to the contrary in
Section 6.2 or elsewhere in this Agreement, ANT shall not be
prohibited from selling the PBI ASIC if it is incorporated
into a networking product developed or sold by ANT or a
parent, subsidiary or entity under common control with ANT (an
"ANT Switch").
14. The title of Section 5 shall be changed to "Maintenance"
and Section 5.1 shall be deleted in its entirety.
15. Section 5.2 shall be renumbered Section 5.1 and shall be
restated in its entirety to read as follows:
"During the time period commencing on the date hereto and
ending on March 31, 1996 (the "Maintenance Period"), ANT will
provide Maintenance Services to Crosscomm in respect of the
SEC 10 (Rev C) and the PBI ASICs; the Maintenance Period for
the SEC 100 ASIC shall end on May 15, 1996. "Maintenance
Services" means reasonable efforts by ANT to correct bugs and
other non-conformities with existing specifications, and shall
not include the addition of new features, functions or
performance enhancements. Notwithstanding anything to the
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contrary contained herein, ANT agrees that it shall, prior to
December 31, 1995, deliver to CrossComm a revised PBI ASIC
which corrects those errors set forth on Attachment B to this
Amendment and which conforms to the Rev. 1.2 specifications
dated October 16, 1995.
The Maintenance Period with respect to the SEC 100 ASIC shall
be extended until June 30, 1996 in the event that a working
model which conforms to the Rev. 0.6 specifications dated July
27, 1995 has not been delivered by ANT to CrossComm by
December 31, 1995."
16. Delete Section 5.2 in its entirety.
17. Add the word "irrevocable" to the second line of Section
6.1(a), after the word "perpetual".
18. Add the word "irrevocable" to the second line of Section
6.1(b), after the word "perpetual".
19. Delete Section 6.1(c) and replace it with the following:
"Upon the commencement of training under Section 15 of the
Agreement, as amended, for each ASIC, but no later than the
expiration of the Maintenance Period for each ASIC:
(i) ANT shall provide CrossComm with the ASIC Design for
that ASIC;
(ii) ANT shall grant, and shall be deemed hereby to have
granted, to CrossComm a non-transferable, (except that
CrossComm may assign the Agreement, as amended by this
Amendment, and all of its rights and obligations hereunder, in
connection with the sale or other transfer of all or
substantially all of its assets or business related to the
Agreement or other "change in control," as defined below,
provided, however, that no such assignment may be made to one
of the companies listed on Attachment A hereto), irrevocable,
worldwide, royalty-free right and license (with the right to
sublicense only to Crosscomm subsidiaries, parents, entities
under common control with CrossComm and third party
subcontractors who agree to be bound by obligations as to
confidentiality no less restrictive than those contained
herein) to install, store, read, modify, use, enhance and
create derivative works of such ASIC Design for any purpose
and to make, use, sell, have made, have used and have sold
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ASICs based in whole or in part on the ASIC Designs, under all
Intellectual Property therein; provided, that CrossComm shall
not sell or distribute ASICs incorporating or based
principally or substantially on the ASIC Designs on a Stand-
alone Basis, and provided further, that all licenses set forth
in this Section 6.1(c)(ii) shall terminate immediately upon a
"change of control" of CrossComm, which results in a company
set forth on Attachment A having "control" of CrossComm.
Forth the purposes hereof, a "change of control" shall mean
the sale or other transfer of more than 50% of the outstanding
stock or all or substantially all of the assets or business of
CrossComm related to the Agreement, and "control" shall mean
the ownership or voting control, whether direct or indirect,
of more than 50% of the outstanding stock of CrossComm or to
the entity owning all or substantially all of the assets or
business of CrossComm related to the Agreement. Immediately
upon any change of control of Crosscomm which results in a
company set forth on Attachment A having control of Crosscomm,
Crosscomm (or such other company) shall immediately return to
ANT the ASIC Designs and all other Proprietary Information of
ANT (including all copies thereof), and the only right which
CrossComm shall have with respect to ASIC Designs is the right
to have corrected any errors or other failures of the ASICs to
conform to applicable specifications by retaining a third
party, unrelated to CrossComm or any parent, subsidiary or
affiliate of CrossComm to make such correction (hereinafter
referred to as the "Subcontractor"), provided that such
Subcontractor executes a non-disclosure agreement in a form
reasonably acceptable to ANT. ANT agrees that, following the
return to it of the ASIC Designs and other Proprietary
Information referenced in the preceding sentence, it shall
retain such ASIC Designs and Proprietary Information for a
reasonable period of time, and shall provide the Subcontractor
with access to, and a license to use, such portion of the ASIC
Designs reasonably necessary to perform any required
correction, for the limited and sole purpose of performing
such correction."
20. Delete the second and third sentences of Section 6.1(a).
21. Delete the last two sentences of Section 6.2 in their
entirety and add the following to the end of Section 6.2.
"The pricing of ANT Switches will not be considered in such
determination, and CrossComm acknowledges that the pricing of
ANT Switches shall not be constrained hereby."
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22. Delete the second and third sentences of the first
paragraph of Section 6.4 and add a new subsection (ix) after
subsection (viii) of Section 6.4:
"(ix) the EMCP daughter board"
23. Add the following to the end of Section 6.4.
"CrossComm acknowledges that the SEC 10 and PBI ASICs which
have been delivered by ANT do not include any CrossComm
Specific Technology, and that the SEC 100 ASIC, if it is
designed in conformance with the specifications referenced in
Article B of this Amendment, is not intended to include any
CrossComm Specific Technology."
24. Add a new Section 7.6 at the end of Section 7:
"7.6 ASSIGNMENT. ANT acknowledges and agrees that the ESM 10-
16, ESM 10-8 and EMCP daughter boards which it developed for
CrossComm for consideration of $80,000 were "works made for
hire" under applicable copyright law, and that Crosscomm owns
all right, title and interest in and to the ESM 10-16, ESM 10-
8 and EMCP daughter boards and all Intellectual Property
contained therein, other than any Core ANT Technology. ANT
hereby assigns to CrossComm all right, title and interest in
and to the ESM 10-16, ESM 10-8 and EMCP daughter boards and
all Intellectual Property therein, other than any Core ANT
Technology. ANT shall execute and deliver any and all
assignments, instruments and documents requested by CrossComm
to effectuate the foregoing assignment."
25. Add a new Section 7.7 at the end of Section 7:
"7.7 OWNERSHIP OF DERIVATIVE WORKS. ANT acknowledges that
CrossComm shall own all intellectual property rights in any
enhancements or modifications it may create in the SEC 10, PBI
or SEC 100 ASICs, provided, however, that such ownership shall
not affect in any way ANT's ownership of any intellectual
property rights in the underlying ASICs to which such
enhancements or modifications relate, and shall not confer
upon Crosscomm any ownership rights in such ASICs."
26. Delete Section 8 in its entirety.
27. Delete Section 15 in its entirety and replace it
with the following:
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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
"15. TRAINING
"15.1 TRAINING. On such dates and at such times as
ANT and CrossComm may mutually agree (the agreement of
ANT not to be unreasonably withheld), ANT shall (at no
charge to CrossComm) provide "Training Services" (**
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B. OTHER AGREEMENTS
1. SEC 10 ASIC. CrossComm acknowledges that the 0.6 micron
version of the SEC 10 ASIC (the "Rev A SEC 10") has successfully
passed Acceptance testing, and that ANT's obligation under the
Agreement to achieve Initial Product Acceptance of the SEC 10 ASIC
and all Ethernet Switch Modules based thereon has thereby been
discharged. Notwithstanding the foregoing, ANT has developed and
delivered to CrossComm Rev B and Rev C versions of the SEC 10 ASIC
for CrossComm's use in its products, and CrossComm acknowledges and
agrees that ANT shall have no further obligation with respect to
any version of the SEC 10 ASIC other than to provide Maintenance
Services, pursuant to Section 5.1 hereof, with respect to the Rev C
version of the SEC 10 ASIC during the Maintenance Period."
2. SEC 100 ASIC. The parties agree and acknowledge that the
specifications for the SEC 100 ASIC shall be the specifications
known as "Rev. 0.6" dated July 27, 1995.
3. CROSSCOMM AND ITS AFFILIATES. Any reference in the
Agreement to CrossComm shall include CrossComm and any "affiliate"
of CrossComm, unless such affiliate is a company set forth on
Attachment A. For the purposes hereof, an "affiliate" is a company
controlling, controlled by, or under common control with,
CrossComm.
4. EXHIBIT F-1. Exhibit F to the Agreement shall be
replaced in its entirety by Exhibit F-1 attached hereto.
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5. TECHNICAL SUPPORT AGREEMENT. CrossComm agrees that the
Technical Support Agreement dated October 21, 1994 by and among
CrossComm, ANT, Willem A.H. Engelse and Xxxxx X. Xxxxxxx is hereby
terminated and that no party thereto shall have any obligation or
liability thereunder.
6. ESCROW AGREEMENT. CrossComm agrees that the Escrow
Agreement dated July 12, 1994 by and among CrossComm, ANT and Data
Securities International, Inc. is hereby terminated and that no
party thereto shall have any obligation or liability thereunder.
7. NO OTHER EFFECT. Except as stated in this Amendment, all
provisions of the agreement shall remain in full force and effect.
IN WITNESS WHEREOF, the parties have duly executed this
Amendment as an instrument under seal as of the date first written
above.
CROSSCOMM CORPORATION APPLIED NETWORK TECHNOLOGY, INC.
By:_______________________ By:_____________________________
Name:_____________________ Name:___________________________
Title:____________________ Title:__________________________
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ATTACHMENT A
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Cisco Systems, Inc.
3Com Corporation
Newbridge Networks Corporation
Bay Networks, Inc.
International Business Machines Corporation
General DataComm Corporation
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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
ATTACHMENT B
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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
Exhibit F-1
Revised Summary Payment Matrix Dated October 1, 1995
Nature of Payment
Original Actual Expected ----------------------------------------------------------
Due Check Revised License Prepaid PBI ASIC
Date Date Ck. Date Deliverable NRE Fee Royalty Exclusivity Fee TOTAL
-------- ------ -------- ------------------
7/19/94 7/19/94 Agreement Signed ******* ******* $ $ ********
N/A 1/04/95 ESM 10-16, 10-8
and EM-CP net
management module
and development
through initial
Product Acceptance
****** ******
10/7/94 1/04/95 Design Simulation
Acceptance of
SEC 10 and PBI ******* *******
ASICs *******
12/5/94 3/03/95 Initial Product
Acceptance of ESM
10-14 and 10-2
including ****** ****** *******
management
software
12/30/94 4/22/95 Final Product
Acceptance of ESM
10-14 and 10-2 ****** ******
12/30/94 4/25/95 Final Product
Acceptance of ESM
10-14 and 10-2
(follow-on payment
due to 4/22/95 ***** *****
check error)
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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS.
Nature of Payment
Original Actual Expected ----------------------------------------------------------
Due Check Revised License Prepaid PBI ASIC
Date Date Ck. Date Deliverable NRE Fee Royalty Exclusivity Fee TOTAL
-------- ------ -------- ------------------
10/7/94 10/5/95 Design Simulation
Acceptance of SEC
100 ASIC ****** ******
2/20/94 N/A Production
Acceptance of ESM
10-14 and 10-2,
using REV A of SEC * * * * *
10 ASIC
12/30/94 10/31/95 Initial Product ****** ******
Acceptance of ESM
100-2, including
management
software and
backplane
interface
1/20/95 11/10/95 Final Product
Acceptance of ESM
100-2 ****** ****** ******
2/20/95 12/8/95 Production
Acceptance ESM *******
100-2 *******
NA NA WAIVED * *
12/31/95 12/31/95 End of PBI Chip
Exclusivity Term
****** ******
******* ******* ****** ******* ********
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