EXHIBIT 10.16
LICENSE AGREEMENT
License Agreement dated and effective as of the Effective Date between
AUTOMATED DISPATCH SERVICES, INC., a Delaware corporation, and RADIOSOFT, INC.,
a Delaware corporation. Capitalized terms used in this Agreement and not
otherwise defined are used as defined in Section 1.
PRELIMINARY STATEMENT
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ADS holds the Licensed Rights described below, and Radiosoft wishes to
obtain rights to exploit the Licensed Rights in certain commercial settings
described below. Therefore, in consideration of the mutual obligations set forth
herein and other valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, ADS and Radiosoft agree as follows:
ARTICLE I
DEFINITIONS
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Each of the following capitalized terms are used in this Agreement with
the following ascribed meaning:
"ADS" means Automated Dispatch Services, Inc., a Delaware corporation,
and its permitted successors and assigns.
"ADS USERS" means Trans Care, any Affiliate of ADS, and any Affiliate of
Trans Care.
"AFFILIATE" means, as to any person or entity, any other person or
entity which is controlling, controlled by, or is under common control with,
such person or entity. For purposes of the preceding definition, "control" means
the right to control, or actual control of, the management of such other entity,
whether by ownership of voting securities, by agreement, or otherwise.
"ADS DERIVATIVE WORKS" means any patented or unpatented, or copyrighted
or uncopyrighted, now or hereafter existing translation (including any
translation into other computer language), portation, modification, addition,
improvement, abridgement or other form in which the Licensed Rights or any
portion of the Licensed Rights may be used or recast, transformed or adapted by
or at the direction of ADS, and regardless of whether any of the foregoing shall
include source or object codes, algorithms, data, copyrighted materials, patent
rights or other intellectual property owned or controlled by ADS or any of its
Affiliates.
"EFFECTIVE DATE" MEANS the date on which this Agreement is executed by
the later to execute of ADS and Radiosoft, evidenced by the dates set forth next
to the names of the parties on the signature page of this Agreement.
"GENERAL TRANSPORT DISPATCH" means two-way mobile transport dispatch
functions performed through a mobile wireless communications network, whether
performed by the user for itself or by the user for the benefit of a third
party.
"GOVERNMENTAL PROVIDER" means a local, municipal, state or federal
governmental authority operating the business of transport dispatch directly or
through a subdivision or unit of such governmental authority, and excludes any
transport dispatch conducted on behalf of a local, municipal, state or federal
governmental authority under a contract or license by a private or quasi-public
service provider.
"LICENSED COPYRIGHTS" means (a) the copyrights and copyrighted materials
listed on Schedule I attached to this Agreement, and (b) copyrights and
copyrighted materials arising from the services performed by ADS pursuant to
Section 3.3 of this Agreement, including in all cases without limitation all
source code, object code and algorithms included in such copyrights and
copyrighted material.
"LICENSED PATENT RIGHTS" means (a) the patents and patent applications
listed on Schedule II attached to this Agreement, and (b) patents and patent
applications with respect to inventions conceived or first reduced to practice
in the course of the services performed by ADS pursuant to Section 3.3 of this
Agreement, and (c) all patents and patent applications which are divisions,
continuations, continuations-in-part, reissues, renewals, re-examinations,
foreign counterparts, substitutions, or extensions of or to any patent
applications or patents described in clause (a) or clause (b) of this sentence.
"LICENSED RIGHTS" means the Licensed Patent Rights, the Licensed
Copyrights, and the Technical Information, collectively.
"LICENSED USES" means (a) through March 31, 1997, General Transport
Dispatch excluding Private Ambulance Dispatch, and (b) on and after April 1,
1997, General Transport Dispatch.
"PRIVATE AMBULANCE DISPATCH" means two-way mobile dispatch functions for
medical, paramedical, ambulance or health-related transport performed through a
mobile wireless communications network by any person other than a Governmental
Provider, whether performed by the user for itself or by the user for the
benefit of one or more third parties (including local, municipal, state and
federal governmental authorities).
"RADIOSOFT" means Radiosoft, Inc., a Delaware corporation, and its
permitted successors and assigns.
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"RADIOSOFT DERIVATIVE WORKS" means any patented or unpatented, or
copyrighted or uncopyrighted, now or hereafter existing translation (including
any translation into other computer language), portation, modification,
addition, improvement, abridgement or other form in which the Licensed Rights or
any portion of the Licensed Rights may be used or recast, transformed or adapted
by or at the direction of Radiosoft, and regardless of whether any of the
foregoing shall include source or object codes, algorithms, data, copyrighted
materials, patent rights or other intellectual property owned or controlled by
Radiosoft or any of its Affiliates.
"SOFTWARE SUPPORT" means installation and maintenance support with
respect to the software subject to the Licensed Rights, and does not include
software development.
"TECHNICAL INFORMATION" means the technical information and know-how, if
any, in ADS's possession relating to the Licensed Rights.
"TRANS CARE" means Trans Care Corporation, a Texas corporation, and
includes any successor to or assignee of substantially all of the health-related
transport business of Trans Care.
ARTICLE II
GRANT OF LICENSE
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2.1 Grant by ADS.
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(a) Effective on and after the Effective Date, ADS hereby grants to
Radiosoft an Exclusive License, as defined in Section 2.2 below, to use, and
sublicense the use of, the Licensed Rights for General Transport Dispatch
excluding Private Ambulance Dispatch.
(b) Effective on and after April 1, 1997, ADS hereby grants to Radiosoft
an Exclusive License, as defined in Section 2.2 below to use, and sublicense the
use of, the Licensed Rights for Private Ambulance Dispatch.
(c) Effective on and after the Effective Date, ADS hereby grants to
Radiosoft the right to incorporate source code and any other matters included in
the Licensed Rights in Radiosoft Derivative Works for, but only for, any and all
Licensed Uses.
(d) The licenses and rights granted in this Section 2.1 shall extend
worldwide, to the extent ADS has Licensed Rights anywhere in the world.
(e) Radiosoft's rights to sublicense the use of Licensed Rights pursuant
to clauses (a) and (b) of this Section 2.1 shall not include the right of any
sublicensee to grant any further sublicense to any Licensed Rights.
2.2 Exclusivity. An "EXCLUSIVE LICENSE" under this Agreement shall at
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any time exclude ADS, other ADS Users, and all other third parties from the
Licensed Uses at the
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time, except as follows:
(a) nothing in this Agreement shall limit the rights at any time of
any person licensed by ADS prior to the Effective Date to use any of the
Licensed Rights for General Transport Dispatch or any part thereof ADS hereby
represents and warrants to RadioSoft that no license granted by ADS prior to the
Effective Date to use any of the Licensed Rights for General Transport Dispatch
or any part thereof permits any licensee to sublicense any of its licensed
rights; and
(b) nothing in this Agreement shall limit the rights at any time of
any person licensed by ADS prior to April 1, 1997, to use any of the Licensed
Rights for Private Ambulance Dispatch or any part thereof; ADS hereby agrees not
to grant the right to sublicense in any such license; and
(c) subject to the provisions of Section 5. 1 (b) below, nothing in
this Agreement shall limit the rights of ADS to use, and to license other ADS
Users to use, and of other ADS Users to use (but, not to license or sublicense),
Licensed Rights for Private Ambulance Dispatch.
2.3 Reservations. Notwithstanding any contrary provision of this
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Agreement, all rights to any Licensed Rights which are not expressly granted to
Radiosoft hereunder or reserved to third parties are hereby expressly reserved
to ADS for any and all purposes. None of ADS or any other ADS User shall have
any obligation to pay Radiosoft a royalty or any other consideration for the
rights excluded in Section 2.2 above, reserved in this Section 2.3 or otherwise
not specifically granted to Radiosoft under Section 2.1 above.
ARTICLE III
PAYMENTS AND OTHER FEES
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3.1 Fees. For the licenses and rights granted in Section 2 of this
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Agreement, Radiosoft shall pay ADS the sum of $150,000.00 in immediately
available funds, payable within three business days after the execution of this
Agreement (the "License Fee"). Within three business days after ADS receives
payment of the License Fee, ADS shall deliver to Radiosoft one copy of the
complete current software subject to the Licensed Rights, including both source
code and object code, on floppy disks in standard machine-readable format,
together with one copy of ADS's current technical manuals and software
documentation related thereto. Upon Radiosoft's receipt of the foregoing, the
License Fee shall thereafter be non-refundable under any and all circumstances.
3.2 Royalties. Radiosoft shall not be obligated to pay any fee, royalty
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or other charge for the licenses and rights granted in Section 2 of this
Agreement other than the License Fee.
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3.3 Consulting Services. For the period from the Effective Date through
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May 31, 1995, ADS agrees to perform, or cause to be performed, for Radiosoft the
consulting services described on Parts l and 2 of Schedule III attached to this
Agreement (the "CONSULTING WORK"). In consideration of the performance of the
Consulting Work described in Part I of Schedule III, Radiosoft will pay ADS the
sum of $50,000.00, payable on the completion of the Consulting Work described in
Part I of Schedule III, but not later than sixty (60) days after the Effective
Date. In consideration of the performance of the Consulting Work described in
Part 2 of Schedule III, Radiosoft will pay ADS the sum of $100,000.00, payable
in installments as described in Part 2 of Schedule III. Such payments will be
made by wire transfer or by delivery of a check or other instrument representing
immediately available funds. Any payment not paid when due shall bear interest
at the rate of 18% per annum for the days actually elapsed until paid, based on
a year consisting of 365 days. In addition to the fees for the Consulting Work
described above, Radiosoft will pay, or promptly reimburse ADS for actual out-
of-pocket expenses incurred by ADS personnel in connection with the performance
of the Consulting Work, to the extent authorized in advance by Radiosoft in
writing and upon presentation of appropriate documentation for such expenses.
ADS will not be required to purchase any additional machinery or equipment, hire
any additional personnel, or otherwise incur any additional general overhead
costs in order to perform its obligations under this Section 3.3. ADS will not
be obligated to perform any Consulting Work during such times as any payment or
reimbursement under this Section 3.3 shall be due but not paid. All products,
codes, algorithms or other intellectual property created by ADS in the
performance of its obligations under this Section 3.3 shall belong to and be the
property of ADS and shall be included within the "Licensed Rights" subject to
this Agreement.
ARTICLE IV
NO WARRANTIES~ INDEMNIFICATION
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4.1 Knowledge of Infringement. To the actual knowledge of the of ficers
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of ADS, the subject matter of the Licensed Copyrights does not as of the
Effective Date infringe the United States copyright rights of any other person,
and the use of the subject matter of the Licensed Rights for General Transport
Dispatch does not infringe any United States patent issued prior to the
Effective Date.
4.2 Disclaimer of Warranties. Except as expressly set forth in Section
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4.1 above, ADS HEREBY EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND OR
NATURE, WHETHER EXPRESS OR IMPLIED, RELATING TO THE LICENSED RIGHTS, OR ANY
SERVICE PERFORMED FOR RADIOSOFT PURSUANT TO SECTION 3.3 ABOVE. ADS FURTHER
HEREBY EXPRESSLY DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE OR THAT THE PRACTICE OF THE LICENSED RIGHTS,
ANY SERVICE PERFORMED FOR RADIOSOFT PURSUANT TO SECTION 3.3 ABOVE, OR THE
RADIOSOFT DERIVATIVE WORKS WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK,
OR OTHER RIGHTS OF THIRD PARTIES. Without limiting the generality of
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the foregoing, ADS expressly does not warrant (i) the patentability or
copyrightability of any of the Licensed Rights, (ii) the accuracy of any
Technical Information, or (iii) the accuracy, safety, or usefulness for any
purpose of the Licensed Rights or the Radiosoft Derivative Works. Nothing
contained in this Agreement shall be construed as either a warranty or
representation by ADS as to the validity or scope of any Licensed Rights. ADS
assumes no liability in respect of any infringement of any patent, copyright or
other right of third parties due to the activities of Radiosoft or any Affiliate
of Radiosoft under this Agreement.
4.3 Indemnification.
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(a) None of ADS, any Affiliate of ADS, any ADS User, or any director, of
ficer, employee, agent or representative of any of the foregoing (each an
"Indemnified Person") shall have any liability whatsoever to Radiosoft, any of
its Affiliates or any other person for or on account of (and Radiosoft agrees
and covenants, and agrees to cause each of its Affiliates to agree and covenant,
not to xxx any Indemnified Person in connection with) any injury, loss, or
damage, of any kind or nature, sustained by, or any damage assessed or asserted
against, or any other liability incurred by or imposed upon, Radiosoft, any of
its Affiliates or any other person, arising out of or in connection with or
resulting from (i) the use of any Licensed Rights or Radiosoft Derivative Works
by Radiosoft or any of its Affiliates, (ii) any advertising or other promotional
activities with respect to either of the foregoing, or (iii) the production, use
or sale of any product identified, characterized or otherwise developed by
Radiosoft or any Affiliate with the aid of the Licensed Rights or any Radiosoft
Derivative Works.
(b) This Agreement is entered into by ADS independently from its
Affiliates and the other ADS Users. Correspondingly, it is understood and agreed
that no Affiliate of ADS or any other ADS User is a party to this Agreement and
in no manner shall be liable for nor assume any responsibility or obligation for
any claim, cost or damages arising out of or resulting from this Agreement, the
subject matter licensed, or any action or lack thereof by ADS, any Affiliate of
ADS, any other ADS User, Radiosoft or any of Radiosoft's Affiliates with respect
thereto.
(c) Radiosoft's obligations under this Section 4.3 shall survive the
expiration or earlier termination of all or any part of this Agreement.
ARTICLE V
PROSECUTION AND MAINTENANCE OF LICENSED PATENT RIGHTS
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5.1 Prosecution and Maintenance of Patent Rights.
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(a) During the term of this Agreement, and subject to the provisions of
Section 5. 1 (b) below, ADS shall be responsible for prosecuting and maintaining
the patents and copyrights under the Licensed Rights (other than the Radiosoft
Derivative Works, which shall be the sole responsibility of Radiosoft). At
either party's request, the other party shall use its best efforts to provide
copies of all of ficial actions and other communications received by such party
or its
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patent or copyright counsel with respect to patents and copyrights under the
Licensed Rights or incorporating any Radiosoft Derivative Work, as the case may
be, and, prior to submission to the recipients, copies of all draft filings with
governmental agencies from such party or its patent or copyright counsel with
respect to the Licensed Rights.
(b) In the event that ADS determines to abandon a patent application or
copyright application included within the Licensed Patent Rights or the Licensed
Copyrights, or to cease the maintenance of any patent or copyright included
within the Licensed Patent Rights or the Licensed Copyrights, it will use
reasonable efforts to give Radiosoft at least 90 days prior written notice of
its intention to do so. Radiosoft may, by written notice to ADS, elect to
continue such prosecution or maintenance at Radiosoft's sole expense but in
ADS's name. In the event that Radiosoft continues the prosecution or maintenance
of any patent or copyright pursuant to the preceding sentence, then the rights
reserved to ADS and its Affiliates (although not the rights reserved to arty ADS
Users which are not Affiliates of ADS) under clause (c) of Section 2.2 above
shall terminate.
5.2 Cooperation. Each party agrees to cooperate with the other in the
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preparation, filing, prosecution and maintenance of patents or copyrights under
the Licensed Rights or incorporating any Radiosoft Derivative Work, by
disclosing such information as may be necessary and by promptly executing such
documents as the filing party may request to effect such efforts. Each party
shall bear its own costs in connection with its cooperation with ADS or
Radiosoft under this Section. All patents and copyrights under the Licensed
Rights shall be filed, prosecuted and maintained in ADS's name or as ADS shall
designate, provided that all patents and copyrights incorporating any Radiosoft
Derivative Work shall be filed, prosecuted and maintained in Radiosoft's name or
as Radiosoft shall designate.
5.3 Confidentiality.
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(a) Both Radiosoft and ADS agree to treat (and to cause their respective
Affiliates to treat) as confidential all proprietary information with respect to
the Licensed Rights and Radiosoft Derivative Works made available by ADS to
Radiosoft or by Radiosoft to ADS. Each party acknowledges that the other party
may find it beneficial to disclose such information during the conduct of such
other party's business. Under such circumstances, such other party may make such
information available to third parties, provided that it shall first obtain from
any recipient a fully-executed confidentiality agreement which is at least as
restrictive as the confidentiality agreement such party employs to protect its
own most valuable trade secrets.
(b) Neither Radiosoft nor ADS, nor their respective Affiliates, shall be
bound by the provisions of Section 5.3(a) with respect to information which (i)
was previously known to the recipient at the time of disclosure; (ii) is in the
public domain at the time of disclosure; (iii) becomes a part of the public
domain after the time of disclosure, other than through disclosure by the
recipient or some other third party who is under an agreement of confidentiality
with respect to the subject information; or (iv) is required to be disclosed by
law.
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(c) Radiosoft ard ADS shall each take such actions as the other party
may reasonably request from time to time to safeguard the confidentiality of any
information subject to the terms of this Section 5.3.
(d) To the extent that United States Export Control Regulations apply,
neither Radiosoft nor ADS (nor their respective Affiliates) shall, without
having first fully complied with such regulations, (i) knowingly transfer,
directly or indirectly, any unpublished technical data obtained or to be
obtained from the other party hereto to a destination outside the United States,
or (ii) knowingly ship, directly or indirectly, any product produced using such
unpublished technical data to any destination outside the United States.
(d) The obligations of Radiosoft and ADS under this Section 5.3 shall
survive the expiration or earlier termination of all or any other part of this
Agreement.
ARTICLE VI
INFRINGEMENT
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6.1 Notification. If Radiosoft becomes aware of the infringement of any
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patent or copyright under the Licensed Rights, it shall immediately inform ADS
in writing of all details available. If ADS becomes aware of the infringement of
any patent or copyright under the Licensed Rights, it shall immediately inform
Radiosoft in writing of all details available.
6.2 Rights to Prosecute.
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(a) Licensed Uses Only and Radiosoft Derivative Works.
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(i) In the event of infringement by a third party of any patent or
copyright under the Licensed Rights relating solely to Licensed Uses or
Radiosoft Derivative Works, Radiosoft may, but shall not be obligated to,
enforce the Licensed Rights at Radiosoft's expense against the infringers by
appropriate legal proceedings. Radiosoft may request the cooperation of ADS in
any such proceeding, such cooperation not to be unreasonably withheld, and shall
pay ADS's expenses incurred in such cooperation. Radiosoft shall regularly
inform ADS of the status of any proceedings under this Section 6.2(a).
(ii) All recoveries by way of royalties, damages and claims with
respect to infringement actions instituted, and claims made (including penalties
and interest), with respect to infringement of Licensed Rights relating solely
to Licensed Uses or to Radiosoft Derivative Works, during the term of this
Agreement shall belong to Radiosoft.
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(b) Licensed Uses and Other Uses.
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(i) In the event of infringement by a third party of any patent or
copyright under the Licensed Rights relating to Licensed Uses and other uses,
Radiosoft and ADS shall consult with each other regarding the enforcement of the
Licensed Rights against the infringers by appropriate legal proceedings. If both
ADS and Radiosoft wish to commence and prosecute such proceedings, they shall do
so jointly. If only one of ADS and Radiosoft wishes to commence and prosecute
such proceedings, the party wishing to commence and prosecute such proceedings
may do so at its expense, and shall regularly inform the other party of the
status of any such proceedings.
(ii) All recoveries by way of royalties, damages and claims with respect
to infringement actions instituted, and claims made (including penalties and
interest), with respect to infringement of Licensed Rights relating to Licensed
Uses and other uses during the term of this Agreement shall belong to (A)
Radiosoft, if ADS did not participate in the proceedings, or (B) ADS, if
Radiosoft did not participate in the proceedings, or (C) Radiosoft and ADS in
equal shares, if both Radiosoft and ADS participated in the proceedings.
(c) Uses Other Than Licensed Uses. The prosecution, settlement, or
-----------------------------
abandonment of any legal proceedings with respect to infringement by a third
party of any patent or copyright under the Licensed Rights not described in
Section 6.2(a) or (b) above shall be at ADS's sole and complete discretion. All
recoveries by way of royalties, damages and claims with respect to infringement
actions instituted, and claims made (including penalties and interest), with
respect to infringement of Licensed Rights not relating to Licensed Uses during
the term of this Agreement shall belong to ADS. ADS may request the cooperation
of Radiosoft in any such proceeding, such cooperation not to be unreasonably
withheld, and shall pay Radiosoft's expenses incurred in such cooperation.
(d) Settlement. No settlement by Radiosoft of any action or claim
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described in Section 6.2(a) or (b) shall grant any right in connection with the
Licensed Rights, or impose any restriction on any of the Licensed Rights, not
already granted or imposed in this Agreement.
ARTICLE VII
TERMINATION
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7.1 ADS Right to Terminate. ADS shall have the right (without prejudice
----------------------
to any of its other rights conferred on it by this Agreement) to terminate this
Agreement if Radiosoft is in breach of any provision of this Agreement, and
Radiosoft fails to remedy any such default within 30 days after written notice
thereof by ADS.
7.2 Radiosoft Right to Terminate. Radiosoft may terminate this
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Agreement at any time by written notice to ADS, given at least 90 days prior to
the termination date specified in the notice.
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7.3 Effect of Termination.
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(a) If this Agreement is terminated for any reason, whether by Radiosoft
or ADS, Radiosoft shall immediately cease and shall cause each of its Affiliates
to immediately cease using the Licensed Rights, and shall return to ADS, or
deliver as ADS directs, all materials relating to the Licensed Rights then in
the possession of ADS and any of its Affiliates.
(b) Notwithstanding the termination of this Agreement pursuant to
Section 7.1 or 7.2 above, the following provisions of this Agreement shall
survive:
(i) Radiosoft's obligations under Section 2.2, Articles 3 and 4 (to
the extent still applicable), Article S and, to the extent proceedings
have been initiated, Section 6.2 and this Section 7.3(b), and
(ii) any cause of action or claim of Radiosoft or ADS, accrued or to
accrue, because of any breach or default of this Agreement by the other
party.
(c) Notwithstanding the termination of this Agreement pursuant to
Section 7.1 or 7.2 above, any sublicensee of any of Radiosoft's rights under
this Agreement other than an Affiliate of Radiosoft shall continue to have the
rights to use (but not sublicense) the Licensed Rights granted to it by
Radiosoft prior to the termination of this Agreement, as if this Agreement had
not been terminated.
7.4 Expiration of Licensed Rights. This Agreement shall terminate
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automatically upon the expiration of the last-to-expire patent or copyright,
including any renewal, included within the Licensed Rights.
ARTICLE VIII
ADVERTISING
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Each party agrees not to use the name of the other party in any
commercial activity, marketing, advertising or sales brochures except with the
prior written consent of the other party, which such consent may be granted or
with held in such party's sole and complete discretion.
ARTICLE IX
MISCELLANEOUS
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9.1 Assignment.
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(a) This Agreement may not be assigned by ADS without the prior written
consent of Radiosoft, which will not be unreasonably with held, except that ADS
may at any time assign its
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the remaining obligations to perform Consulting Work to any entity controlled by
the present executive management of ADS.
(b) This Agreement may not be assigned by Radiosoft without the prior
written consent of ADS, which will not be unreasonably withheld, except to a
wholly-owned subsidiary of Radiosoft or to the successor or assignee of
substantially all of Radiosoft's business related to Licensed Rights. Any such
attempted assignment which is not permitted shall be null and void and of no
force or effect whatsoever.
9.2 Entire Agreement. Amendment and Waiver. This Agreement (including
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any schedules attached) contains the entire understanding of the parties with
respect to the subject matter hereof. This Agreement may be amended, modified or
altered only by an instrument in writing duly executed by the parties hereto.
The waiver of a breach hereunder may be effected only by a writing signed by the
waiving party and shall not constitute a waiver of any other breach.
9.3 Notices. Any notice or report required or permitted to be given or
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made under this Agreement by one of the parties hereto to the other shall be in
writing and shall be given by personal delivery or by United States registered
or certified mail, return receipt requested, addressed as follows:
If to ADS: Automated Dispatch Services, Inc.
0000 Xxxxxxxxx 00xx Xxxxxx
Xxxxx, Xxxxxxx 00000
Attention: President
with a copy, to:
Xxxxxx X. Xxxxxxxxxxx, Esq.
Xxxxxxxxxxx Law Offices
00 Xxxxx Xxxxxx Xxxxx, Xxxxx 0000
Xxxxxxx, Xxxxxxxx 00000
If to Radiosoft: Radiosoft, Inc.
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: General Manager
or to such other address of which the intended recipient shall have notified the
sender by a written notice given in accordance with the terms of this Section.
Any notice under this Agreement shall be effective when received.
9.4 Severability. In the event that any one or more of the provisions of
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this Agreement should for any reason be held by any court or authority having
jurisdiction over this
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Agreement, or either of the parties hereto, to be invalid, illegal or uner
forceable, such provision or provisions shall be reformed to approximate as
nearly as possible the intent of the parties, and the validity of the remaining
provisions shall not be affected.
9.5 Governing Law. The interpretation and performance of this Agreement
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shall be governed by the laws of the State of New York applicable to contracts
made and to be performed in that state by residents of that state:.
9.6 Implementation. Each party shall, at the request of the other party,
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execute any document reasonably necessary to implement the provision of this
Agreement.
9.7 Counterparts. This Agreement May be executed in multiple
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counterparts, each of which when taken together shall constitute one and the
same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this agreement to be
executed by their respective duly authorized officers or representatives on the
respective dates set forth below next to the names of the parties.
ADS: AUTOMATED DISPATCH SERVICES, INC., a
Delaware corporation
By:
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Xxxx Xxxxxxxx, President
Date of Execution: April 2l, l994
Radiosoft: RADIOSOFT, INC., a Delaware corporation
By:
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Its: Vice President
Date of Execution: April 26, 1994
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Schedule I
Custom 2000 (Dispatch, Order-Entry, MDDS Modules), United States Copyright
Office Registration No. TX 2 818 347.
EMTRACK (Dispatch, Order-Entry, MDDS Modules), United States Copyright Office
Registration No. TX 2 818 348.
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Schedule II
U.S. Patent No. 5,122,959, dated June 16, 1992
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Schedule III
Part 1
ADS will assist Radiosoft at its request in the development of a business plan
to exploit the Licensed Rights for Licensed Uses, including qualitative market
assessments based on information in the possession of ADS.
Part 2
ADS will provide up to a total of 2,000 person hours of Software Support during
the period ending May 31, 1995, as follows: ADS commits to provide at least 500
person-hours of Software Support during each of the four periods (each a
"Support Period") beginning and ending respectively:
(1) from the Effective Date through the 90th day after the Effective
Date, and
(2) from the 91st day after the Effective Date through the 180th day
after the Effective Date, and
(3) from the 181st day after the Effective Date through the 270th day
after the Effective Date, and
(2) from the 271st day after the Effective Date through May 31, 1995,
to the extent requested by Radiosoft, and will use reasonable efforts to provide
Software Support in addition to 500 hours in any one Support Period, to the
extent requested by Radiosoft. Any person-hours of Software Support not used on
or before May 31, 1995, shall expire at that time.
The fee under this Part 2 shall be payable to ADS in four installments of
$25,000.00 each, due respectively as follows:
(a) on the completion of the first 500 person-hours of Software Support
or, if earlier, the 90th day after the Effective Date, and
(b) on the completion of the first 1,000 person-hours of Software
Support or, if earlier, the 180th day after the Effective Date, and
(c) on the completion of the first l,500 person-hours of Software
Support or, if earlier, the 270th day after the Effective Date, and
(d) on the completion of 2,000 person-hours of Software Support or, if
earlier, May 31, 1995.
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FIRST AMENDMENT TO LICENSE AGREEMENT
This First Amendment to License Agreement ("First Amendment") is entered
into this 14th day of December, 1994 (the "Effective Date"), by Automated
Dispatch Services, Inc., a Delaware corporation ("ADS") and Radiosoft, Inc., a
Delaware corporation ("Radiosoft").
In consideration of the mutual agreements set forth herein and other
valuable consideration the receipt and sufficiency of which are hereby
acknowledged, ADS and Radiosoft hereby amend the License Agreement dated April
26, 1994 (the "Radiosoft License Agreement"), all effective as of the Effective
Date, as follows:
1. Article I of the Radiosoft License Agreement is hereby amended by adding
the following definition:
"General Transport Third Party Dispatch means two-way mobile transport
dispatch functions performed by the user through a mobile wireless
communications network for the benefit of a third party."
2. Section 2.1 (e) of the Radiosoft License Agreement is hereby deleted
in its entirety.
3. Section 2.2 of the Radiosoft License Agreement is hereby amended by adding a
new subsection (d) that reads in its entirety as follows:
"(d) Radiosoft's Exclusive License shall not include the use, or sublicense
of the use, of the Licensed Rights for General Transport Third Party
Dispatch in any or all of Monroe, Dade, Broward and Palm Beach Counties,
Florida."
4. Section 3.3 of the Radiosoft License Agreement is hereby amended by
inserting the following at the end of such section:
"Radiosoft acknowledges that ADS has performed in full all of the Consulting
Work described on Part I of Schedule III attached to this Agreement, and ADS
acknowledges that Radiosoft has paid in full for the Consulting Work
described on Part 1 of Schedule III attached to this Agreement. ADS and
Radiosoft agree that, notwithstanding any contrary provision of this
Agreement, ADS shall have no obligation to perform any of the Consulting
Work described on Part 2 of Schedule III attached to this Agreement, and
Radiosoft shall have no obligation to purchase or pay for any part of the
Consulting Work described on Part 2 of Schedule III attached to this
Agreement."
5. Except as set forth in this First Amendment, the Radiosoft License
Agreement remains in full force and effect in accordance with its terms.
IN WITNESS WHEREOF, the parties hereto have caused this First Amendment
to be executed by their respective duly authorized of ficers as of the date
first above written.
16
AUTOMATED DiSPATCH SERVICES, INC. RADIOSOFT, INC.
By: By:
------------------------- ----------------------------
Its President Its
----------------------------
17
FIRST AMENDMENT TO LICENSE AGREEMENT
This First Amendment to License Agreement ("First Amendment") is entered
into this 14th day of December, 1994 (the "Effective Date"), by Automated
Dispatch Services, Inc., a Delaware corporation ("ADS") and Radiosoft, Inc., a
Delaware corporation ("Radiosoft").
In consideration of the mutual agreements set forth herein and other
valuable consideration the receipt and sufficiency of which are hereby
acknowledged, ADS and Radiosoft hereby amend the License Agreement dated April
26, 1994 (the "Radiosoft License Agreement"), all effective as of the Effective
Date, as follows:
1. Article I of the Radiosoft License Agreement is hereby amended by adding the
following definition:
"General Transport Third Party Dispatch means two-way mobile transport
dispatch functions performed by the user through a mobile wireless
communications network for the benefit of a third party."
2. Section 2.1 (e) of the Radiosoft License Agreement is hereby deleted
in its entirety.
3. Section 2.2 of the Radiosoft License Agreement is hereby amended by adding a
new subsection (d) that reads in its entirety as follows:
"(d) Radiosoft's Exclusive License shall not include the use, or sublicense
of the use, of the Licensed Rights for General Transport Third Party
Dispatch in any or all of Monroe, Dade, Broward and Palm Beach Counties,
Florida."
4. Section 3.3 of the Radiosoft License Agreement is hereby amended by
inserting the following at the end of such section:
"Radiosoft acknowledges that ADS has performed in full all of the Consulting
Work described on Part I of Schedule III attached to this Agreement, and ADS
acknowledges that Radiosoft has paid in full for the Consulting Work
described on Part 1 of Schedule III attached to this Agreement. ADS and
Radiosoft agree that, notwithstanding any contrary provision of this
Agreement, ADS shall have no obligation to perform any of the Consulting
Work described on Part 2 of Schedule III attached to this Agreement, and
Radiosoft shall have no obligation to purchase or pay for any part of the
Consulting Work described on Part 2 of Schedule III attached to this
Agreement."
5. Except as set forth in this First Amendment, the Radiosoft License Agreement
remains in full force and effect in accordance with its terms.
IN WITNESS WHEREOF, the parties hereto have caused this First Amendment
to be executed by their respective duly authorized officers as of the date
first above written.
18
AUTOMATED DISPATCH SERVICES, INC. RADIOSOFT, INC.
By: ____________________________ By: ____________________________
Its __________________________ Its Vice President
19
SECOND AMENDMENT TO LICENSE AGREEMENT
This Second Amendment to License Agreement ("Second Amendment") is
entered into this 14th day of December, 1994 (the "Effective Date"), by
Automated Dispatch Services, Inc., a Delaware corporation ("ADS") and Radiosoft,
Inc., a Delaware corporation ("Radiosoft").
In consideration of the mutual agreements set forth herein and other
valuable consideration the receipt and sufficiency of which are hereby
acknowledged, ADS and Radiosoft hereby amend the License Agreement dated
December April 26, 1994 and first amended on December 14, 1994 (as amended, the
"Radiosoft License Agreement"), all effective as of the Effective Date, as
follows:
1. All capitalized terms not defined in this Second Amendment shall have the
meanings ascribed to them in the Radiosoft License Agreement.
2. The definition of "Affiliate" in Article I of the Radiosoft License Agreement
is hereby amended by inserting the words", or any other person or entity in
which such person or entity owns a twenty-five percent interest after "or is
under common control with, such person or entity".
3. The definition of "Licensed Uses" in Article 1 of the Radiosoft License
Agreement is hereby amended to read in its entirety as follows: " 'Licensed
Uses' means General Transport Dispatch."
4. Article 1 of the Radiosoft License Agreement is hereby amended to include the
following definitions:
"'Consolidator' means Xxxxxxx, AMR, Rural Metro, Careline, AmNet or AmStat."
"'Private Ambulance Self Dispatch' means dispatch functions for medical,
paramedical, ambulance or health-related transport performed through a
wireless communications network by any person other than a Governmental
Provider by the user for itself (and its Affiliates) and not for the benefit
of a third party."
5. Each of Section 2.1 (b) and Section 2.2 (b) of the Radiosoft License
Agreement is hereby amended by deleting "April 1, 1997" and replacing it with
"December 14, 1994".
6. Section 2.2 of the Radiosoft License Agreement is hereby amended by adding a
new subsection (e) that reads in its entirety as follows:
"(e) Radiosoft's Exclusive License shall not include the right to use or
sublicense the use of the Licensed Rights for Private Ambulance Self
Dispatch, except for the Single-Site Rights described in Section 9.9 hereof.
20
7. Article 9 of the Radiosoft License Agreement is hereby amended by adding a
new Section 9.9 that reads in its entirety as follows:
"9.9 Acknowledgment of TransCare Rights.
(a) Radiosoft acknowledges the grant by ADS to TransCare Corporation, a
Delaware corporation ("TransCare"), of an irrevocable, royalty-free
exclusive (except as set forth in subsection (b) below) license to use
for itself and its Affiliates (without the right to sublicense the use
of) the Licensed Rights for Private Ambulance Self Dispatch.
(b) TransCare acknowledges and agrees that its exclusive license for
Private Ambulance Self Dispatch shall not limit the right of ADS or
Radiosoft, as the case may be, to grant Single-Site Turnkey Licenses or
the right of ADS or Radiosoft, as the case may be, to copy, modify and
create derivative works from the source code and support materials
related to the Licensed Rights (such rights for Private Ambulance Self
Dispatch herein reserved for ADS or Radiosoft being herein called the
"Single-Site Rights").
(c) Radiosoft agrees with TransCare that, notwithstanding any provision in
this Radiosoft License Agreement, without the prior written consent of
TransCare, it shall not (i) grant a sublicense or any other rights in
respect of the SingleSite Rights to a Consolidator, (ii) grant to any
single entity more than one Single-Site Turnkey License for operation
within the New York City metropolitan area or (iii) grant to any single
entity more than two Single-Site Turnkey Licenses for operation outside
the New York City metropolitan area. Radiosoft agrees with TransCare
that it will not assign its interest, in whole or in part, in the
Single-Site Rights to any assignee unless such assignee agrees in
writing to be bound by the provisions of this Section 9.9(c).
(d) Radiosoft acknowledges that the ADS grant to TransCare to use the
Licensed Rights for Private Ambulance Self Dispatch, plays a vital,
necessary and unique role in TransCare's business plan and operations,
and that any breach by Radiosoft of the agreements made in this Section
9.9 could not be adequately compensated by damages. Accordingly, if
Radiosoft breaches its obligations to TransCare under this Agreement,
TransCare shall be entitled to enforcement of this Agreement by a
decree of specific performance requiring Radiosoft to fulfill its
obligations under this Agreement including without limitation,
enjoining the granting by Radiosoft of any rights in the Licensed
Rights in violation of this Section 9.9.
(e) For purposes of this Section 9.9, the term "Single-Site Turnkey
License" means any single license granted to a single entity, without
the right to sublicense, to use any or all of the Licensed Rights,
except for source code, for Private Ambulance
21
Self Dispatch conducted at a single dispatching site for no more than
forty (40) medical transportation vehicles.
(f) Radiosoft, ADS and TransCare agree that the provisions of this Section
9.9 have been made for good and sufficient consideration and may not be
modified or amended without the written consent of Radiosoft, ADS and
TransCare.
8. Except as set forth in this Second Amendment, the Radiosoft License
Agreement remains in full force and effect in accordance with its terms.
IN WITNESS WHEREOF, the parties hereto have caused this Second Amendment
to be executed by their respective duly authorized officers as of the Effective
Date.
AUTOMATED DISPATCH SERVICES, INC. RADIOSOFT, INC.
By: By:
---------------------------- -----------------------
Its President Its
-----------------
ACKNOWLEDGED AND AGREED:
TRANSCARE CORPORATION
By:
-------------------------------------
Xxxxxx X. Xxxxxxx, Chairman and
Chief Executive Officer
22
