Exhibit 10.12
OEM Private Label License Agreement
This Original Equipment Manufacturer (OEM) License Agreement (the Agreement)
is entered into on this __________ day of ________-___________,1998 (the
Effective Date) between Renaissance Network Technology Corporation a
California Corporation with principal offices at 000 Xxxxxxx Xxxx Xxxx, Xxxxx
000, Xxx Xxxxx, XX 00000 (the Licensor) and AltiGen Communications Corporation
with principal offices at 00000 Xxxxxxxxxx Xxxx Xxxx, Xxxxxxx, XX 00000 (the
Licensee).
WHEREAS, Licensor has proprietary hardware and software for the interface of
Windows NT servers to ISDN networks.
WHEREAS, Licensee develops and markets communications servers and certain
applications for those servers.
WHEREAS, Renaissance Network Technology wishes to grant to Licensee and Licensee
desires to obtain certain license rights to manufacture and to distribute
Licensor's hardware and software described below in accordance with the terms
and conditions of this Agreement.
NOW THEREFORE, in consideration of the foregoing and the mutual covenants and
promises contained herein, the Parties agree to the following terms and
conditions, which set forth the rights, duties, and obligations of the parties.
1 Definitions
For the purpose of this Agreement, the following terms shall have the following
meanings:
1.1 Attachment(s) are the attachments and exhibits to this Agreement which are
attached hereto and incorporated herein.
1.2 Confidential Information means any information disclosed by one party (the
Disclosing Party) to the other party (the Receiving Party), which, if in
written, graphic, machine readable or other tangible form is marked as
"Confidential" or "Proprietary", or which, if disclosed orally or by
demonstration, is identified at the time of disclosure as confidential and
such information is reduced to writing and delivered to the Receiving Party
within thirty (30) days of such disclosure.
1.3 Distributor means any third party which acquires possession of the
Licensor's Licensed Products from the Licensee without becoming an
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[*]=CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
End User and distributes such products to an End User or to another
Distributor.
1.4 Derivative Work means a revision, modification, condensation or expansion
of the Hardware Product design or the Software, which if prepared without
the consent of Renaissance Network Technology, would be a copyright or
trade secret infringement.
1.5 Documentation means any user manuals, technical manuals, reference manuals,
drawings, schematics, software listings, test scripts, installation guides,
requirements specifications or portions thereof, which are delivered by the
Licensor to the Licensee.
1.6 End User is any third party licensed by Licensee or a Distributor to use,
but not further distribute, the Licensed Products.
1.7 Hardware means computer systems or printed circuit cards for use in a
computer system or any components supplied by the Licensor under this
Agreement or manufactured by the Licensee under this OEM License. These are
identified in Attachment A.
1.8 Initial Manufacturing License Quantity means the quantity of hardware
components to be manufactured and shipped by AltiGen for which royalty fees
have been pre-paid. This quantity will be determined at the time that
actual accumulated royalties owed exceeds the pre-paid license fees.
1.9 Licensed Product means the Hardware and Software licensed for manufacture
and distribution by Licensee from the Licensor under this Agreement.
1.10 Licensee Acceptance Tests are activities conducted by the Licensee and/or
their Distributors for determination of licensed product stability and
conformance to requirements. These tests include explicit formal testing
and product characterization (e.g. homolugation testing), in-house and
field trial testing (e.g. Alpha/Beta testing) and the first 180 days
following the conclusion of field trial testing (e.g. the first 180 days
after product release).
1.11 Manufacturing Contractors are business entities that the Licensee
contracts with to manufacture, test and/or produce the Licensed Hardware
Products.
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1.12 Manufacturing License refers to the license granted under this Agreement
to the Licensee to manufacture the Licensed Hardware Products either
directly or through Manufacturing Contractors.
1.13 Manufacturing Specifications means the detailed drawings, schematics,
test procedures, bills of materials, operation lists and other
Documentation provided to the Licensee to enable the manufacture of the
Licensed Hardware Products.
1.14 Product Defects means one or more reproducible deviations in Licensor's
products from the applicable specifications shown in the Documentation.
1.15 Quarterly Royalty Reports means the information supplied by the Licensee
to the Licensor reflecting the royalties owed due to Hardware products
shipped during the preceding three months. This information will include
quantity and price of product shipped, and a breakdown of associated
manufacturing costs (i.e. component costs, cost of outside services for PCB
fabrication/assembly/test/rework, and costs of scrapped material).
1.16 Software means computer programs supplied by the Licensor under this
Agreement for integration with products distributed by Licensee under this
OEM License. These are identified in Attachment A.
2 Grant of Licenses and Rights
2.1 License
2.1.1 License. Subject to the terms and conditions of this Agreement,
Renaissance Network Technology Corporation hereby grants and Licensee
accepts, a non-exclusive, non-transferable license to (i) manufacture,
without change to the design, the Licensed Hardware Products indicated
in Attachment A unless explicitly noted in Attachment A as an exception
to this clause, (ii) use and reproduce, without change, the Licensed
Software Products (in executable form only) and (iii) distribute by
sublicense these Licensed Products to Distributors and End Users only
in conjunction with a product of the Licensee. Licensee may grant its
authorized Distributors the right to distribute Licensed Products to
other Distributors and to End Users.
2.1.2 Source Code Restrictions. Licensee agrees not to decompile, reverse
engineer, disassemble or otherwise attempt to determine source code for
the executable code of the Licensed Software Products or to create any
Derivative Works based upon the Licensed Products or
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Documentation, and agrees not to permit or authorize anyone else to do
so.
2.1.3 Documentation License. Subject to the terms and conditions of this
Agreement, Licensor hereby grants and Licensee hereby accepts, a non-
exclusive, non-transferable license to use and reproduce the
Documentation and to distribute same solely in conjunction with the
Licensed Products. Such distribution may only be to Manufacturing
Contractors, Distributors or End Users. Any such distribution shall
contain the restriction that the Documentation may not be subsequently
reproduced. The licensee is permitted to translate the above
Documentation for distribution to international customers.
2.1.4 Use of Manufacturing Contractors.
2.1.4.1 Manufacturing Contractors Agreement. Licensee shall procure from each
of its Manufacturing Contractors an executed copy of a Contract for
Work (Manufacturing Contractors' Agreement) sufficient to ensure that
such Manufacturing Contractors are required to comply with the
relevant terms of this Agreement.
2.1.4.2 Enforcement of Manufacturing Contractors' Agreements. Licensee shall
use commercially reasonable efforts to enforce each Manufacturing
Contractors' Agreement, with at least the same degree of diligence
used in enforcing similar agreements covering others, which in any
event shall be sufficient to adequately enforce such agreements.
Licensee shall use commercially reasonable efforts to protect
Licensor's copyright, shall notify Licensor of any breach of material
obligation under a Manufacturing Contractors' Agreement affecting
Licensed Products, and will cooperate with Licensor in any legal
action to prevent or stop unauthorized use, reproduction or
distribution of the Licensed Products or the relevant technology.
2.2 Export Controls. None of the Software or Hardware technology or information
underlying the technology may be downloaded or otherwise exported or re-
exported (i) into any countries to which the United States has embargoed
goods; or (ii) to anyone on the U.S. Treasury Department's list of
Specifically Designated Nationals or the U.S. Commerce Department's Table
of Denial Orders.
3 Purchase of Licensed Products
3.1 Sale of Hardware Products. In addition to granting the Manufacturing
License detailed in paragraph 2.1.1 above, Licensor will sell to the
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Licensee quantities of the Hardware Products requested by the Licensee.
Such products will be ordered by the Licensee via purchase order or other
valid document as indicated by the Licensee from time to time.
3.2 Terms of Sale. The sale of these products will be consistent with the
terms and conditions of this OEM License Agreement and the Licensee will
treat purchased Hardware Products in the same manner as Products
manufactured under this Agreement. The price, delivery and other terms of
sale for completed Hardware Products sold to Licensee not detailed in this
Agreement will be those then in effect by Licensor with its other
customers.
3.3 Quantity of Products Sold. Products sold to the Licensee will not be
counted as a part of the Initial Manufacturing License Quantity.
4 Marketing
4.1 Non-exclusivity. Licensee understands that Licensor may enter into
arrangements similar to this Agreement with third parties.
4.2 Public Announcements and Promotional Material. Renaissance Network
Technology and AltiGen Communications Corporation shall cooperate with each
other so that each Party may issue a press release concerning this
Agreement, provided that each Party must approve any press release prior to
its release. Licensor shall cooperate with Licensee in its development of
the initial marketing and sales materials used to promote the distribution
of the Licensed Products.
4.3 Terms Relating to Distribution.
4.3.1 General Restrictions on Distribution. Licensee agrees to comply with and
shall require its Distributors to comply with all applicable laws, rules,
and regulations to preclude the acquisition of unlimited rights to
technical data, Software and Documentation provided with the Licensed
Products to any governmental agency, and ensure the inclusion of the
appropriate "Restricted Rights" or "Limited Rights" notices required by
U.S. Government Agencies.
4.3.2 Distributor License Agreement. Licensee shall procure from each of its
Distributors an executed copy of a distribution license (Distributor
License Agreement) sufficient to ensure that such Distributors are
required to comply with the relevant terms of this Agreement.
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4.3.3 End User License Agreements. Licensee and its Distributors shall
distribute the Licensed Products to End Users only under the terms of,
and shall ensure that the Licensed Products are subject to applicable
End User License Agreements with terms at least as restrictive as those
of, this Agreement.
4.4 Enforcement of Sublicense Agreements. Licensee and its Distributors shall
use commercially reasonable efforts to enforce each Distributor License
Agreement and End User License Agreement, whichever may be relevant, with
at least the same degree of diligence used in enforcing similar agreements
covering others, which in any event shall be sufficient to adequately
enforce such agreements. Licensee shall use commercially reasonable efforts
to protect Licensor's copyright, shall notify Licensor of any breach of
material obligation under a Distributor License Agreement or an End User
License Agreement affecting Licensed Products, and will cooperate with
Licensor in any legal action to prevent or stop unauthorized use,
reproduction or distribution of the Licensed Products or the relevant
technology.
5 Fees and Payment
5.1 Prepaid License Fees. Licensee will pay to Renaissance Network Technology
non-refundable royalty license fees (License Fees) as specified in
Attachment A.
5.2 Royalties. In addition, upon the exhaustion of the Initial Manufacturing
License Quantity as described in section 1.8, Licensee shall pay to
Licensor the per board royalties indicated in Attachment A for each
Hardware Product shipped. Such Royalties will be due and payable [*]
following the end of the quarter in which the boards were shipped. Each
payment shall be accompanied by a Quarterly Royalty Report as described
in paragraph 5.5 below.
5.3 Service and Technical Support Fees. Licensor will transfer to Licensee
manufacturing skills and know-how sufficient to allow Licensee to
manufacture Licensed Hardware Products. The cost of such support will be
borne by the Licensor except that Licensee agrees to pay for all travel to
sites out of the State of California made at their request for such
support, and all expenses for support after completion of the Licensee
Acceptance Test.
5.4 Payment and Taxes
5.4.1 Payments. All payments shall be made in United States dollars at
Licensor's address indicated in this Agreement or at such other
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[*]=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.
address as Licensor may from time to time indicate by proper notice
hereunder.
5.4.2 Taxes. All fees and royalties are exclusive of all taxes, duties or
levies, however designated or computed. Licensee shall be responsible
for and pay all taxes based on the transfer, use, distribution of
Licensed Products, or the program storage media, or upon payments due
under this Agreement including, but not limited to, sales, use or value-
added taxes, duties, withholding taxes and other assessments now or
hereafter imposed on or in connection with this Agreement or with any
sublicense granted hereunder, exclusive of taxes based upon Licensor's
net income. In lieu thereof, Licensee shall provide to Licensor a tax
or other levy exemption certificate acceptable to the taxing or other
levying authority.
5.5 Quarterly Royalty Reports. Licensee and its Distributors shall maintain
accurate records of End Users, including the name and address of each End
User and any further information as Licensor may from time to time
reasonably request. Licensee shall report to Licensor within thirty (30)
calendar days after the end of each quarter (i.e. on or before 1/30, 4/30,
7/30 and 10/30), the type and number of Hardware Products shipped in the
prior three months and their associated prices and costs as described in
section 1.15.
5.6 Audit of Records. Licensee shall keep full, true and accurate records
containing all data reasonably required for verification of the amounts to
be paid, and the quantity of Licensed Products manufactured and
distributed. Licensor shall have the right, during normal business hours
upon at least five (5) business days' prior notice, to audit and analyze
the relevant records of Licensee to verify compliance with the provisions
of this Agreement. The audit shall be conducted at Licensor's expense
unless there is inadequate record keeping or the results of such audit
establish that inaccuracies in the monthly reports have resulted in
underpayment of royalties to Licensor of more than five percent (5%) of the
amount actually due in any month, in which case the Licensee will bear the
cost of the audit. In any case any underpayment must be rectified within
thirty (30) calendar days.
6 Deliverables, Updates and Technical Support
6.1 Deliverables. The Deliverables under this Agreement include the
Manufacturing Specifications and other documentation necessary for Licensee
to build and test the Licensed Hardware and the Documentation and object
code modules necessary for the Licensee to integrate the Licensed Software
into its products.
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6.2 Updates. Licensor will provide Licensee with updates in the form of new
Manufacturing Specifications for hardware revision levels, and software
versions and releases, from time to time without charge for the Licensed
Products listed on Attachment A of this Agreement.
6.3 Technical Support.
6.3.1 Product Defects. Licensor will use its best efforts to repair any
Product Defects as defined in paragraph 1.14. Licensee agrees to
provide Licensor with a written product defect report and evidence of
the Defect. Licensor agrees to notify Licensee, within thirty (30)
calendar days of delivery of documented evidence by the Licensee of any
Product Defects that it does not intend to repair.
6.3.2 General Support. General support for technical issues other than fixing
Product Defects and assisting with product integration prior to
completion of Licensee Acceptance Test will be available from the
Licensor at its then prevailing rates for support.
7 Trademarks
7.1 License to Use. Not Applicable.
8 Proprietary Rights
8.1 Proprietary Rights. Title to and ownership of all copies of the Licensed
Software, Manufacturing Specifications and the Documentation whether in
machine readable or printed form, and including, without limitation,
Derivative Works, compilations or collective works thereof and all related
technical know-how and all rights therein (including without limitation
rights in patents, copyrights and trade secrets applicable thereto), are
and shall remain the exclusive property of Renaissance Network Technology
and its suppliers. Licensee shall not take any action to jeopardize, limit
or interfere in any manner with Licensor's ownership of and rights with
respect to the Licenses Products and Documentation. Licensee shall have
only those rights on of to the Licensed Products and Documentation granted
pursuant to this Agreement.
8.2 Proprietary Notices. Not Applicable.
9 Confidential information and Disclosure
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9.1 The Receiving Party agrees to retain the Confidential Information in
confidence for a period of five (5) years from the date of receipt of the
Confidential Information and shall use reasonable care not to disclose the
received Confidential Information to any party by using the same degree of
care as the Receiving Party employs with respect to its own information of
like importance.
9.2 Notwithstanding any other provisions of this Agreement, each Party
acknowledges that Confidential Information shall not include any
information which: (a) is not clearly marked at the time of disclosure as
being Confidential or Proprietary or if orally disclosed is not confirmed
in writing as confidential within ten (10) days of disclosure; (b) is or
becomes publicly known through no wrongful act on the Receiving Party's
part; (c) is already known to the Receiving Party at the time of
disclosure; (d) is rightfully received by the Receiving Party from a third
party without breach of this Agreement; (e) is independently developed by
the Receiving Party without breach of this Agreement; (f) is furnished to a
third party by the Disclosing Party without a similar restriction on the
third party's rights; (g) is explicitly approved for release by written
authorization of the Disclosing Party; or (h) is disclosed pursuant to the
lawful requirement or request of a Government Agency or disclosure is
permitted by operation of law, provided that the Party making the
disclosure has given prior notice to the other Party and has made a
reasonable attempt to obtain a protective order limiting the use of the
information so disclosed.
9.3 Each party agrees to return to the disclosing party upon written request,
the writings containing Confidential Information referred to in paragraph
1.2 of this Agreement except that one copy of same may be retained for
archival purposes only if requested by the receiving party.
9.4 Nothing contained in this agreement shall be construed as granting or
conferring any rights by license or otherwise, expressly implied, or
otherwise, for any patents, copyrights, trademarks, know-how or other
proprietary rights of either party acquired prior to or after the date of
this Agreement.
9.5 Remedies. If a Party breaches any of its obligations with respect to
confidentiality or the use of Confidential Information hereunder, the
relevant Disclosing Party shall be entitled to seek equitable relief to
protect its interest therein, including but not limited to injunctive
relief, as well as monetary damages.
10 Warranties
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10.1 Limited Warranty. Subject to the limits set forth in this Agreement,
Licensor warrants only to Licensee that the Licensed Products when properly
adapted, integrated, installed and used will conform to the mutually agreed
upon requirements specifications. Licensor's warranty and obligation shall
extend to completion of the final phase of the Licensee's Acceptance Test.
All warranty claims not made in writing or not received by Licensor within
the Warranty Period specified above shall be deemed waived. Licensor
warranty and obligation is solely for the benefit of the Licensee, who has
no authority to extend this warranty to any other person or entity.
Licensor makes no warranty that all failures or errors will be corrected.
10.2 Exclusive Warranty. The express warranty set forth in paragraph 10.1
constitutes the only warranty with respect to the Licensed Products.
Licensor makes no other representation or warranty of any king whether
express or implied (either in fact or by operation of law) with respect to
the Licensed Products. Licensor expressly disclaims all warranties of
merchantability or fitness for a particular purpose. Licensor does not
warrant, for example, that the Licensed Products will be secure or
uninterrupted. There is also no implied warranty of non-infringement; the
sole remedy for infringement is provided in Section 11.
10.3 Defects not Covered by Warranties. If Licensor's ability to perform
warranty services is affected thereby, Licensor shall have no obligations
under the warranty provisions set forth in Section 10.1 (a) in the event
Licensee incorporates, integrates, attaches or otherwise engages any
attachment, feature, program or device to the Licensed Products, or any
part thereof; (b) if any nonconformance is caused by accident,
transportation, neglector misuse, alteration, modification or enhancement
of the Licensed Products by the Licensee; or (c) if Licensee fails to
provide a suitable installation environment, uses the Licensed Products for
other than their intended purpose, or on any systems other than the
specified hardware platform, or Licensee uses defective media to duplicate
or distribute the Licensed Software.
10.4 Exclusive Remedy. If Licensee finds what it believes to be errors or a
failure of the Licensed Products to meet specifications which significantly
affects performance, and provides Licensor with a written report during the
Warranty Period, Licensor will use reasonable efforts to correct promptly,
at no charge to the Licensee, any such errors or failures. This is the
Licensee's sole and exclusive remedy for any express or implied warranties
hereunder.
11 Indemnification
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11.1 Renaissance Network Technology shall defend any action brought against
Licensee to the extent it is based on a claim that reproduction or
distribution by Licensee of the Licensed Products furnished hereunder
within the scope of the license granted hereunder directly infringes any
valid U.S. or foreign patent, Copyright, trademark or trade secret.
Licensor will pay resulting costs, damages and legal fees finally awarded
against Licensee in such action which are attributable to such claim
provided that the Licensee (a) promptly (within twenty days) notifies
Licensor in writing of any such claim and Licensor has sole control of the
defense and all related settlement negotiations, and (b) cooperates with
Licensor at Licensor's expense, in defending or setting such claim.
11.2 Should a Renaissance Network Technology product become, or be likely to
become in Licensor's opinion, the subject of infringement of such
copyright, patent, trademark or trade secret, Licensor may procure for
Licensee (i) the right to continue using the same or (ii) replace or modify
it to make it non-infringing. Licensor shall have no liability for and
Licensee shall indemnify and hold harmless from and against any claim based
upon: (a) use of other than the current, unaltered version of the Licensed
Product, unless the infringing portion is also in the then current,
unaltered release; (b) use, operation or combination of the Licensed
Products with non-Licensor equipment, programs or documentation if such
infringement would have been avoided but for the use, operation or
combination; (c) Licensee's or its agents activities after Licensor has
notified Licensee that Licensor believes that such activities may result in
such infringement; (d) compliance with Licensee's designs, specifications
or instructions; (e) any modifications or marking of the Licensed Products
not specifically authorized in writing by the Licensor; (f) Licensee's use
of any trademarks not specifically authorized by Licensor; or (g) third
party software. The foregoing states the entire liability of Licensor and
the exclusive remedy of Licensee with respect to infringement of
copyrights, patents, trademarks and trade secrets.
12 Limitation of Liability
In no event shall Renaissance Network Technology or its suppliers be liable
for any loss of profits, loss of business, loss or use of data,
interruption of business or for indirect, special, incidental or
consequential damages of any kind, even if Renaissance Network Technology
has been advised of the possibility of such damages (and notwithstanding
any failure of essential purpose of any limited remedy), or for any claim
against Licensee by any third party, except as provided in the section
entitled "Indemnification". In no event will Licensor or its suppliers be
liable for (a) any representation or warranty made to any
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third party by Licensee, any agent of the Licensee or Distributor; (b)
failure of the Licensed Products to perform as specified herein except as,
and the extent, otherwise expressly provided herein; (c) failure of the
Licensed Products to provide security; or (d) any use of the Licensed
Products or the Documentation or the results or information obtained or
decisions made by End Users of the Licensed Products or the Documentation.
The remedies provided herein are the Licensee's sole and exclusive
remedies. NOTWITHSTANDING ANYTHING IN THIS AGREEMENT TO THE CONTRARY,
LICENSOR'S ENTIRE LIABILITY TO LICENSEE FOR DAMAGES CONCERNING PERFORMANCE
OR NON- PERFORMANCE BY LICENSOR OR IN ANY WAY RELATED TO THE SUBJECT MATTER
OF THIS AGREEMENT, AND REGARDLESS OF WHETHER THE CLAIM FOR SUCH DAMAGES IS
BASED IN CONTRACT OR IN TORT, SHALL NOT EXCEED THE AMOUNT RECEIVED BY THE
LICENSOR FROM THE LICENSEE FOR THE LICENSED PRODUCTS GIVING RISE TO SUCH
CLAIM.
13 Term of Agreement
13.1 Term. The term of this Agreement shall be five (5) years from the
Effective Date.
13.2 Termination for Default. If either Party defaults in any of its
obligations under this Agreement, the non-defaulting Party, at its option
shall have the right to terminate the Agreement by written notice unless,
within thirty (30) days after the written notice of such default, the
defaulting Party remedies the default, or, in the case of default which
cannot with due diligence be cured within a period of thirty (30) calendar
days, the defaulting Party institutes within that period steps necessary to
remedy the default and thereafter diligently prosecutes the same to
completion.
13.3 Bankruptcy. Either Party shall have the right to terminate this Agreement
if the other Party ceases to do business in the normal course, becomes or
is declared bankrupt or insolvent, is the subject of any proceeding
relating to its liquidation or insolvency which is not dismissed within
ninety (90) calendar days, or makes an assignment for the benefit of its
creditors.
13.4 Source Documentation Escrow. Licensor will make available periodic
hardware and software source code baselines to the Licensee's escrow agent
for backup archival. In the event that the Agreement is terminated because
the Licensor ceases to do business, the Licensee has the right to access
and modify this source base to correct product defects in support of the
installed customer base. In this case, the
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modified source code modules and the resulting work products will be solely
owned by the Licensee. Nonexclusive access to the original source material
will be available equally to all Licensees. If the Licensor ceases to do
business prior to completion of the Licensee Acceptance Test, the Licensee
may use this documentation to complete the development of the product. In
this case, sole ownership of the resulting work products will then revert
to the Licensee.
13.5 Effect on Rights
13.5.1 Termination of this Agreement by either Party shall not act as a
waiver of any breach of this Agreement and shall not act as a release of
either Party from any liability for breach of such Party's obligations
under this Agreement.
13.5.2 Except as specified in Sections 13.5 and 13.6 below, upon termination
of this Agreement, all licenses for Licensor's Licensed Products and
Documentation granted under this Agreement shall terminate.
13.5.3 Except where otherwise specified, the rights and remedies granted to a
Party under this Agreement are cumulative and in addition to, and not
in lieu of, any other rights or remedies which the Party may possess
at law or in equity, including without limitation rights or remedies
under applicable patent, copyright, trade secrets, or proprietary
rights laws, rules or regulations.
13.6 Effect on Termination. Within thirty (30) calendar days after termination
of this Agreement, Licensee shall either deliver to Licensor or destroy all
copies of the Licensed Software and Documentation an the drawings,
schematics and Documentation relating to the Licensed Hardware (except as
provided for in Section 13.6) mad any other materials provided by Licensor
to Licensee hereunder in its possession or under its control, and shall
furnish to Licensor an affidavit signed by an officer of the Licensee
certifying that, to the best of its knowledge, such delivery or destruction
has been fully and completely effected. Notwithstanding the foregoing, and
provided Licensee fulfills, its obligations specified in this Agreement
with respect to such items, Licensee may continue to use and retain copies
of the Licensed Software and related Documentation, to the extent, but only
to the extent necessary to support and maintain Licensed Software Products
rightfully distributed to End Users by Licensee prior to the termination of
this Agreement.
13.7 Continuing Obligations
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13.7.1 Payment of Accrued Fees and Royalties. Within thirty (30) calendar
days of the termination of this Agreement, Licensee shall pay to
Licensor all sums then due and owing. Any other such sums shall
subsequently be promptly paid as they become due and owing.
13.7.2 Continuance of Sublicenses. Notwithstanding the termination of this
Agreement, all End User sublicenses which have been properly granted by
Licensee and Distributors pursuant to this Agreement prior to its
termination will survive.
13.7.3 Other Continuing Obligations. The respective rights and obligations of
Licensor and Licensee under the provisions of Paragraphs 2.1.2, 2.2,
4.3.1, 4.4 and Sections 5, 7, 8, 9, 11, 12, and 14 shall survive
termination of this Agreement.
14 Arbitration of Disputes
14.1 Arbitration of Disputes
14.1.1 Any controversy, dispute or claim arising out of, in connection, with,
or in relation to the interpretation, performance or breach of this
Agreement, including any claim based on contract, tort or statute,
shall be settled, at the request of either Party, by arbitration
conducted in the State of California, or such other location
upon(which the Parties shall mutually agree, before and in accordance
with the then-existing Rules of Commercial Arbitration of the American
Arbitration Association (the AAA), and judgment upon any award
rendered by the arbitrator may be entered by any State or Federal
court having jurisdiction thereof.
14.1.2 The Parties hereby consent to the jurisdiction of an arbitration panel
and of the courts located in and venue in, the State of California, with
respect to any dispute arising under this Agreement.
14.1.3 Any controversy concerning whether a dispute is an arbitrable dispute
hereunder shall be determined by one of the arbitrators selected in
accordance with section 1 4.3 below.
14.1.4 The Parties intend that this agreement to arbitrate be valid,
specifically enforceable and irrevocable.
14.2 Initiation of Arbitration. A Party may initiate arbitration hereunder by
filing a written demand for arbitration with the other Party and with the
AAA. Arbitration hereunder shall be conducted on a timely, expedited basis.
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14.3 Selection of the Arbitrator. Any arbitration shall be held before a
single arbitrator, who shall be selected in accordance with the procedures
of the AAA, and shall be a member of the Large Complex Case Panel with
significant intellectual property and manufacturing experience. If the,
Parties are unable to agree on a single arbitrator, then each of the
Parties will select a single arbitrator and such arbitrators will select a
third arbitrator. Such arbitration shall then be held before the panel of
three arbitrators.
14.4 Awards. The arbitrator(s) may, in their discretion, award to the
prevailing Party in any proceeding commenced hereunder, and the court shall
include in its judgment for the prevailing Party in any claim arising
hereunder, the prevailing Party's costs and expenses (including expert
witness expenses and reasonable attorney's fees) of investigating,
preparing and presenting such arbitration claim or cause of action.
15 General Provisions
15.1 Notices. Any notice, request, demand or other communication required or
permitted hereunder shall be in writing and shall be deemed to be properly
given upon the earlier of (a) the actual receipt by the addressee or (b)
five (5) business days after deposit in the U.S. mail, postage prepaid,
when mailed by registered or Certified U.S. mail, return receipt requested,
or two (2) business days after being sent via private industry courier to
the respective Parties at the addresses set forth above or to such other
person or address as the Parties may from time to time designate in a
writing delivered pursuant to this paragraph 15.1. Notices to Licensor
and Licensee shall be attention to: Legal Department.
15.2 Waiver and Amendment. The waiver by either Party of a breach of or a
default under any provision of this Agreement, shall not be construed as a
waiver of any subsequent breach of the same or any other provision of the
Agreement, nor shall any delay or omission on the part of either Party to
exercise or avail itself of any right or remedy that it has or may have
hereunder operate as a waiver of any right or remedy. No amendment or
modification of any provision of this Agreement shall be effective unless
in writing and signed by a duly authorized signatory of both Licensor and
Licensee.
15.3 Assignment. This Agreement and the licenses granted hereunder are to a
specific legal entity, not including corporate subsidiaries or affiliates
of the Licensee, and are not assignable by Licensee, nor are the
obligations imposed on the Licensee delegable. Any attempt to
[15]
sublicense (except as expressly permitted herein) assign or transfer any of
the rights, duties or obligations of the Licensee in derogation hereof
shall be null and void.
15.4 Relationship of the Parties. No agency, partnership, joint venture, or
employment is created as a result of this Agreement and neither Licensee
nor its agents have any authority of any kind to bind Renaissance Network
Technology in any respect whatsoever.
15.5 Severability. If any provision of this Agreement shall be held to be
invalid or unenforceable for any reason, the remaining provisions shall
continue to be valid and enforceable. If a court finds that any provision
of this Agreement is invalid or unenforceable, but that by limiting such
provision it would become valid and enforceable, then such provision shall
be deemed to be written, construed, and enforced as so limited.
15.6 Force Majeure. Either Party shall be excused from any delay or failure in
performance hereunder, except the payment of monies by the Licensee to the
Licensor, caused by reason of any occurrence or contingency beyond its
reasonable control. The obligations and rights of the Party so excused
shall be extended on a day-to-day basis for the period of time equal to the
underlying cause of the delay. The Party experiencing such cause or delay
shall immediately notify the other Party of the circumstances which may
prevent its performance hereunder, and shall use its best efforts to
alleviate the effects of such cause or delay.
15.7 Entire Agreement. This Agreement, including the Attachments hereto,
constitutes the entire agreement between the Parties concerning the subject
matter hereof and supercedes all proposals or prior agreements, whether
oral or written, and all communications between the Parties relating to the
subject matter of this Agreement. The terms and conditions of this
Agreement shall prevail, notwithstanding any variance with any purchase
order or other written instrument submitted by the Licensee whether
formally rejected by the Licensor or not.
15.8 Governing Law. This Agreement shall be governed by the laws of the State
of California, without regard to that State's choice of laws.
[16]
AUTHORIZED SIGNATURES
AltiGen Communications Corp. Renaissance Network Technology Corp.
/s/ Xxxxxxx Xx /s/ G. Xxxxxxxx Xxxxxx
--------------------------------- ---------------------------------
Xxxxxxx Xx, President & CEO G. Xxxxxxxx Xxxxxx, President & CEO
5/28/98
--------------- ---------------
Date Date
[17]
Attachment A
Licensed Products
Hardware
The Products licensed under this agreement will be:
. Multifunction Resource Card (MRC) with one 4-channel BRI ISDN interface
daughter card (BRI I/F EDB). This product will conform to the ISDN "S/T"
interface standard.
. Multifunction Resource Card (MRC) with one 4-channel BRI ISDN interface
daughter card with an integrated NT-1 device (BRI I/F w DSU SDB). This
product will conform to the ISDN "U" interface standard. A waiver to the
restriction on design changes described in section 2.1.1 will be granted
for the development of the BRI I/F w DSU EDB by the licensee. Technical
support for transfer of design technology and design assistance are not
covered by this agreement. A separate Professional Services Agreement will
detail the terms and conditions of this project.
The Renaissance Network Technology's Multifunction Resource Cards provided under
this Agreement will be used by AltiGen only for ISDN connectivity, and AltiGen
agrees to protect this usage under its contract with its customers.
Software
1. On-board Firmware (Motorola 860 code)
2. Microsoft NT Driver
3. Service Provider Module, conforming to AltiGen's Service Provider Interface
(SPI)
4. Manufacturing Test Routines
[18]
Royalties
---------
-------------------------------------------------------------------------------
Products Royalty
-------------------------------------------------------------------------------
4-channel BRI Interface
(assumes external DSU) [*]
-------------------------------------------------------------------------------
4-channel BRI Interface with
Built-in DSU [*]
-------------------------------------------------------------------------------
Software (items 1-4 above) [*]
-------------------------------------------------------------------------------
Pre-Paid Licenses
-----------------
-------------------------------------------------------------------------------
Products Royalty
-------------------------------------------------------------------------------
4-channel BRI Interface
(either with or without integrated DSU capability) [*]
-------------------------------------------------------------------------------
Software (items 1-4 above) [*]
-------------------------------------------------------------------------------
Pre-Paide License Milestones*
-----------------------------
--------------------------------------------------------------------------------
Milestones Supplier
--------------------------------------------------------------------------------
1.1 License Agreement Approval AltiGen &
Renaissance NT
--------------------------------------------------------------------------------
1.2 Requirements Spec Approval AltiGen
--------------------------------------------------------------------------------
2.1 AM1 HW/SW Unit Tested Renaissance NT
--------------------------------------------------------------------------------
2.2 AM1 HW/SW Integration and AltiGen &
System Tested Renaissance NT
--------------------------------------------------------------------------------
3.1 AM2 Manufacturing Renaissance NT
Documentation Delivery
--------------------------------------------------------------------------------
3.2 AM2 HW System Regression AltiGen
Tested
--------------------------------------------------------------------------------
4.1 First Customer Shipment (Start AltiGen
of Final Acceptance Test)
--------------------------------------------------------------------------------
4.2 90 days of Customer Soak Test AltiGen
(End of first phase of Final
Acceptance Test)
--------------------------------------------------------------------------------
[19]
[*]=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.
