Exhibit 10.15
[CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE
CONFIDENTIAL PORTIONS HAVE BEEN REDACTED AND ARE DENOTED BY A TRIPLE
ASTERISK (***). THE CONFIDENTIAL PORTIONS HAVE BEEN SEPARATELY FILED WITH
THE COMMISSION.]
[ADAPTIVE NETWORKS LOGO] [NEW VISUAL LOGO]
NEW VISUAL CORPORATION
DEVELOPMENT AND LICENSE AGREEMENT
This Development and License Agreement (this "Agreement") is made and entered
into as of April 17, 2002 (the "Effective Date") by and between Adaptive
Networks, Inc. ("ANI"), a Massachusetts corporation with its principal place of
business at 00 Xxxxx Xxxxxx, Xxxxxx, XX 00000, and New Visual Corporation
("NVC"), a Utah corporation with its principal place of business at 0000 Xxxxxx
Xxxx, Xxxxx 000, Xxx Xxxxx, XX 00000 (individually hereinafter sometimes a
"Party" and collectively, the "Parties").
BACKGROUND
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WHEREAS, ANI is the owner of and is developing certain technologies for
communications over various media, including powerlines and copper telephone
wire, that are degraded by noise, signal attenuation and/or signal distortion;
WHEREAS, NVC is the owner of and is developing certain technologies for
high-speed communications over metallic media, including copper telephone wire;
WHEREAS, NVC desires to receive from ANI, and ANI desires to grant to NVC, a
perpetual, worldwide right and license to its PowerStream Technology in the
Field (each as defined below);
WHEREAS, NVC and ANI have been jointly working to develop a multiple wideband
high-speed communications technology (defined below as "MWB Technology");
WHEREAS, NVC desires to engage ANI to perform certain development services for
it pursuant to the terms of this Agreement; and
WHEREAS, ANI and NVC desire to clarify their ownership rights in the MWB IP and
MWB Deliverables (each as defined below);
NOW, THEREFORE, in consideration of the mutual promises, obligations and
agreements contained herein and other good and valuable consideration, the
receipt and adequacy of which each party acknowledges, and intending to be
legally bound, the parties hereto agree as follows:
1. PURPOSE AND SCOPE OF AGREEMENT
This Agreement sets forth the terms and conditions under which ANI will
license the PowerStream Technology to NVC, ANI will perform development
services for NVC, and NVC and ANI will clarify their respective rights
in the MWB IP and MWB Deliverables.
2. DEFINITIONS
2.1 "AFFILIATE" of a Party means any person that is directly or indirectly
controlled by, under common control with, or that controls such Party.
2.2 "CODE" means programming instructions for any Deliverables. Unless
otherwise stated herein, to the extent applicable, Code includes, but
is not limited to, the following Deliverables: chip design code,
firmware, system simulation software, source code, system modules,
emulations, test benches, design validation code, run time software,
and object code.
2.3 "COMPETITOR" of a Party shall mean any person that is not an Affiliate
of such Party that derives substantial revenues at the relevant time
from the sale or license of products, services or intellectual property
directly competitive with those of such Party, or is actively preparing
to do so.
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2.4 "DELIVERABLES" means MWB Deliverables and PowerStream Deliverables.
2.5 "DELIVERY DATE" means the date ANI has delivered all of the
Deliverables to NVC.
2.6 "DEVELOPMENT SCHEDULE" means the schedule described in the documents
entitled "Project Plan for Design and Verification of a Multiple Wide
Band (MWB) Communications System Prototype, Nov 19, 2001 Revision 0.3"
and "High-Data-Rate Long-Distance Communications for Noisy and
Attenuated Media such as VDSL, Rev 1.00, September 10, 2001", as the
same may be completed, amended and/or supplemented by the mutual
agreement of the Parties pursuant to Section 4.1.
2.7 "DOCUMENTATION" means any information in any medium, including training
materials, pertaining to the Deliverables, including product
descriptions, specifications, reference designs and technical manuals.
2.8 "ERROR" means any of the following:
(1) "Code Error" means Code that does not meet the Specifications
for any applicable Deliverables.
(2) "Documentation Error" means a material failure of the
Documentation to accurately describe a program function
contained in any applicable Deliverables; Documentation that
does not meet the Specifications for any applicable
Deliverables; or Documentation that does not enable a
reasonably competent developer to use the Code for further
development purposes, as described in the Deliverables.
(3) "Other Error" means any material non-conformance of the
Deliverable with all or any part of the Specifications for the
Deliverable, other than Code Error or Documentation Error.
2.9 "FIELD" means transmission products for any portion of the
telecommunications network comprised of copper telephone wire between
and including the carrier's facility and the termination of that wire
at the access point at the user premises, including in-building copper
telephone wire cable riser applications in multi-tenant units (MTUs)
and multi-dwelling buildings (MDUs). Other in-building applications are
not included in the Field.
2.10 "IMPROVEMENT" means an Invention or work of authorship which is a
revision, enhancement, modification, translation, abridgement,
condensation, expansion, improvement, refinement or embodiment of
PowerStream Deliverables or MWB Deliverables and is conceived and
reduced to practice, which if copied or used without a license from the
owner(s) of such technology would constitute an infringement of the
PowerStream IP or the MWB IP.
2.11 "INVENTION" means any idea, design, concept, technique, invention,
discovery or improvement, whether or not patentable, including without
limitation the inventions claimed in the PowerStream Patents and the
MWB Patents.
2.12 "IP" means (i) Patent Rights, (ii) rights of ownership in any Invention
underlying any Patent Rights, (iii) all United States and foreign
semiconductor mask work rights and registrations for such rights, (iv)
rights to trade secrets, know-how, technical information and technical
data, (v) copyrights and other literary property and author rights,
whether or not copyrightable, and (vi) all Improvements to any of the
foregoing. "IP" does not include any rights in any trademarks, trade
names, service marks or logos, or the goodwill associated therewith;
provided, however, that NVC may use ANI's xxxx "PowerStream", in a
manner approved in advance in writing by ANI, to indicate that NVC's
products include the PowerStream technology.
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2.13 "LICENSEE" is defined in Section 4.3.3(ii).
2.14 "LICENSE REVENUES" means consideration received by NVC from third
parties pursuant to a direct or indirect license under the MWB IP from
NVC.
2.15 "MAINTENANCE PERIOD" means the period commencing upon the Delivery Date
and ending twelve (12) months thereafter.
2.16 "MWB DELIVERABLES" means any and all hardware, firmware, software,
object code, source code, programs, Documentation, information, notes,
and materials, in whatever form, set forth in the Development Schedule
and to be delivered by ANI to NVC pursuant to this Agreement on the
delivery dates specified in the Development Schedule.
2.17 "MWB IP" means all IP embodied in the MWB Deliverables on the Delivery
Date, including without limitation the Patent Rights represented by the
MWB Patents, and all IP embodied in Improvements to the MWB
Deliverables, other than PowerStream IP.
2.18 "MWB PATENTS" means the patent application specified as such on Exhibit
D, any patent applications filed at any time to the extent that the
claims of such patent applications read on Inventions comprising MWB IP
conceived and reduced to practice prior to the end of the Maintenance
Period, and any and all divisions, continuations,
continuations-in-part, renewals and substitutes thereof or therefor,
and patents issued pursuant thereto.
2.19 "MWB TECHNOLOGY" means that multiple wideband, high speed
communications technology being jointly developed by ANI and NVC, as
further described in the document entitled "High-Data-Rate Long
Distance Communications for Noisy and Attenuated Media such as VDSL,"
rev. 1.00, dated September 10, 2001, and which will be further
developed jointly by ANI and NVC pursuant to this Agreement.
2.20 "NET SALES PRICE" means, in the case of sales by NVC, the actual sales
price (which does not include sales, tariff, duties and/or use taxes
directly imposed or outbound transportation costs charged to customers)
invoiced or shipped by NVC for Products sold by NVC to third parties in
bona fide arm's length transactions, less only: (i) discounts allowed
in amounts customary in the trade for quantity purchases, and (ii)
amounts allowed or credited on returns. No deductions shall be made for
commissions paid to individuals whether they be with independent sales
agencies or regularly employed by NVC or its subsidiaries and on its
payroll, or for cost of collections. Net Sales arise upon invoicing or
shipping by NVC. If a Product is distributed or invoiced to an
affiliated entity or otherwise for a discounted price substantially
lower than customary in the trade, Net Sales Price shall be based on
the customary amount billed by NVC for Products to unaffiliated third
parties.
2.21 "PATENT RIGHTS" means all rights arising from or related to any and all
patent applications, patents, and any and all divisions, continuations,
continuations-in-part, renewals and substitutes thereof or therefore,
in or under all patent classes or types, and any equivalent rights in
all countries of the world.
2.22 "POWERSTREAM DELIVERABLES" means any and all hardware, firmware,
software, object code, source code, programs, Documentation,
information, notes, and materials, in whatever form, set forth in
Exhibit B.
2.23 "POWERSTREAM IP" means all IP embodied in the PowerStream Deliverables
on the Delivery Date, including without limitation the Patent Rights
represented by the PowerStream Patents, and all IP embodied in
Improvements to the PowerStream Deliverables, other than Improvements
that relate only to the MWB Deliverables.
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2.24 "POWERSTREAM PATENTS" means the patents and patent applications
specified as such on Exhibit C, any patent applications filed by ANI at
any time to the extent that such claims read on inventions comprising
PowerStream Technology conceived and reduced to practice prior to the
end of the Maintenance Period, any and all divisions, continuations,
continuations-in-part, renewals and substitutes thereof or therefor,
and patents issued pursuant thereto.
2.25 "POWERSTREAM TECHNOLOGY" means ANI's high speed powerline technology,
which includes a synchronizer, a digital equalizer, a
modulator/demodulator, a forward error correction encoder/decoder, an
error detection encoder/decoder, physical layer management,
segmentation and reassembly, link protocol, quality of service, and
applicable interfaces.
2.26 "PRODUCTS" means products that are designed for use only in the Field
implementing the PowerStream Technology and/or MWB Technology and that,
but for the provisions of this Agreement, would infringe the
PowerStream IP and/or MWB IP.
2.27 "SPECIFICATIONS" means the specifications for the MWB Deliverables as
set forth in the documents entitled "Project Plan for Design and
Verification of a Multiple Wide Band (MWB) Communications System
Prototype, Nov 19, 2001 Revision 0.3" and "High-Data-Rate Long-Distance
Communications for Noisy and Attenuated Media such as VDSL, Rev 1.00,
September 10, 2001", as the same may be completed, amended and/or
supplemented in accordance with Section 4.1.
2.28 "UPDATES" means any modifications or revisions to the Deliverables that
correct Errors, provide other incidental corrections or embody
Improvements.
3. POWERSTREAM LICENSE
3.1 GRANT OF LICENSE. Subject to, and effective upon, NVC's completion of
payment of the license fee specified in Section 5.1(i) and (ii), ANI
hereby grants to NVC and NVC hereby accepts from ANI a worldwide,
perpetual, nontransferable (except as provided in Section 15.2) license
under the PowerStream IP:
(i) to make, use, create, develop, sell, offer to sell, rent,
lease, distribute, market, commercialize, export and/or import
Products anywhere in or throughout the world;
(ii) to have Products made, used, created, developed, sold, offered
for sale, rented, leased, distributed, marketed,
commercialized, exported and/or imported anywhere in or
throughout the world, provided that NVC may not have Products
made, created or developed by a Competitor of ANI without
ANI's prior written consent; and
(iii) to grant sublicenses (which may authorize further sublicensing
through one or more layers of sublicensees) to third parties
to do the things permitted in clauses (i) and (ii), provided
that NVC may not grant such sublicenses to a Competitor of ANI
without ANI's prior written consent.
Notwithstanding the foregoing, NVC shall have no rights under clauses
(i) and (ii) outside of the Field and shall not make, have made for it,
use, sell, offer to sell, export or import Products that are designed
to permit general commercial use outside the Field without substantial
modification. ANI shall deliver to NVC all PowerStream Deliverables in
accordance with the Development Schedule.
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3.2 EXCLUSIVITY. ANI shall not, during the term of this Agreement, directly
or indirectly, without the prior written consent of NVC:
(i) make, use, develop, sell, offer to sell, rent, lease,
distribute, market, commercialize, export and/or import any
Products, or have any Products made, used, sold, developed,
offered for sale, rented, leased, distributed, marketed,
commercialized, exported and/or imported for itthat are
designed to permit general commercial use within the Field
without substantial modification, nor
(ii) agree with or grant licenses to third parties to do so.
Notwithstanding the foregoing, ANI may perform the development services
under this Agreement and may engage in research and development in the
Field without restriction on its own behalf, but may not perform
research and development in the Field for third parties. NVC
acknowledges that ANI has previously granted non-exclusive licenses
under the PowerStream IP in the Field to two parties with worldwide
businesses headquartered in the United States, and the exclusivity
given to NVC by this Section is subject to those licenses.
3.3 TERMINATION OF EXCLUSIVITY. If NVC fails to complete the payment of the
license fee specified in Section 5.1(i) and (ii) and the development
fee set forth in Section 5.2.2 in accordance with the payment schedule
set forth therein, then unless NVC shall complete such payments within
120 days after receiving written notice from ANI of its intention to
commence the activities described in clause (i) of Section 3.2, said
clause shall thereafter no longer apply, and, unless NVC shall complete
such payments within 120 days after receiving written notice from ANI
of its intention to grant a license or licenses to others as described
in clause (ii) of Section 3.2, said clause shall no longer apply.
3.4 RESERVATION OF RIGHTS. ANI retains all rights in respect of the
PowerStream IP outside the Field, directly or indirectly, through the
grant of licenses to third parties or otherwise.
3.5 ASSIGNMENT OF POWERSTREAM IMPROVEMENTS. NVC hereby assigns to ANI all
right, title and interest in and to all Improvements under the
PowerStream IP or the PowerStream Technology made by NVC during the
term of this Agreement that do not meet the definition of MWB
Technology or MWB IP; such Improvements shall be included within the
license granted in Section 3.1, and shall accordingly be subject to
Sections 3.2 and 3.3.
4. DEVELOPMENT OF MWB TECHNOLOGY
4.1 DEVELOPMENT PROJECT. ANI shall undertake and diligently pursue,
directly or through one or more subcontractors, a development program
for a working MWB prototype in accordance with the Development Schedule
and the Specifications. ANI and NVC shall amend and supplement the
Development Schedule to reflect their current informal agreement
regarding the currently contemplated Development Schedule within thirty
(30) days after the Effective Date, and shall thereafter use their good
faith best efforts to mutually agree in writing regarding appropriate
amendments and/or supplements to the Specifications and the Development
Schedule by mutual written agreement. ANI shall use its best efforts to
develop and deliver, directly or through one or more subcontractors,
the Deliverables, in accordance with the Specifications and the
Development Schedule.
4.2 CO-OWNERSHIP OF MWB IP. It is the Parties' intention that they be joint
owners of all right, title and interest of either party in the MWB IP
and any Improvements thereon developed prior to the end of the
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Maintenance Period. 'Accordingly, subject to, and effective upon, NVC's
completion of payment of the license fee specified in Section 5.1(i)
and (ii), to the extent necessary to effect such joint ownership, each
Party hereby assigns and agrees to assign to the other Party a one-half
undivided interest in any MWB IP and any Improvements thereon developed
prior to the end of the Maintenance Period, without royalty or other
consideration, except as expressly provided herein. Each Party agrees
to execute any documents, provide any affidavit, testimony, statement
and information, and render any assistance necessary to register
(including, but not limited to, any patent, copyright or other
registry), prove or evidence the other Party's co-ownership rights set
forth in this section, or to otherwise carry out the intent of this
section. Without limiting the generality of the foregoing, ANI agrees
to take such steps as are necessary to register NVC as a co-owner of
the MWB Patents.
4.3 RESTRICTIONS ON OWNERSHIP RIGHTS.
4.3.1 RESTRICTIONS ON NVC'S OWNERSHIP RIGHTS. During the term of
this Agreement, NVC shall not, directly or indirectly:
(i) make, have made, use, sell, offer to sell, rent,
lease, distribute, market, commercialize, export or
import Products that are designed to permit general
commercial use outside the Field without substantial
modification, nor allow any of its Licensees (as
hereinafter defined) to do the same, without the
prior written consent of ANI (which may be withheld
or made subject to conditions in ANI's sole
discretion); or
(ii) grant licenses under the MWB IP to, or have Products
made by, a Competitor of ANI without ANI's prior
written consent.
4.3.2 RESTRICTIONS ON ANI'S OWNERSHIP RIGHTS. During the term of
this Agreement, ANI shall not, directly or indirectly:
(i) make, have made, use, sell, offer to sell, rent,
lease, distribute, market, commercialize, export or
import Products that are designed to permit general
commercial use within the Field without substantial
modification, nor allow any of its Licensees to do
the same, without the prior written consent of NVC
(which may be withheld or made subject to conditions
in NVC's sole discretion); provided, however, that
ANI may perform the development services hereunder
and may engage in research and development in the
Field without restriction on its own behalf, but may
not perform research and development in the Field for
third parties, or
(ii) grant licenses under the MWB IP to third parties to
do the things prohibited in clause (i).
4.3.3 GENERAL PROVISIONS REGARDING RESTRICTIONS.
(i) Each Party expressly agrees that the restrictions to
which it is subject are reasonable in scope and are
to be enforced to the full extent of their reasonable
meanings, and that this Agreement, including any
ambiguities in the expression of the restrictions,
shall be interpreted to maximize the scope and
enforcement of the restrictions.
(ii) Each Party shall impose the restrictions to which it
is subject by legally enforceable written agreement
on all third parties that acquire Products or rights
under the MWB IP directly or indirectly from such
Party, including any successor, acquiror, assignee or
transferee ("Licensees"). Any agreement granting or
transferring rights under the MWB IP which fails to
do so shall be void and of no effect.
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(iii) Each Party shall be responsible for the compliance or
noncompliance of its Licensees with the restrictions
to which it is subject.
(iv) If NVC intentionally and materially violates the
restrictions set forth in Section 4.3.1 and fails to
cease such violations within thirty (30) days after
receiving written notice thereof from ANI, then, in
addition to any other remedies to which ANI may be
entitled, Section 4.3.2 shall thereafter no longer
apply.
4.4 BENEFITS FROM EXERCISE OF OWNERSHIP RIGHTS. Except as specifically
provided herein, a Party shall not be liable to the other Party in any
way for damages, revenues, profits, accounting, income, royalties or
any other benefits, monetary or other, derived by such Party from or in
connection with exercising its ownership right, title or interest in or
to the MWB IP in accordance with the provisions of Sections 4.2 and 4.3
of this Agreement. Each Party shall be solely responsible for any
taxes, liabilities, damages, duties, fines, penalties, fees, charges or
other burdens arising from or in connection with such Party's exercise
of its ownership right, title or interest in or to the MWB IP.
4.5 TERMINATION OF EXCLUSIVITY. If NVC fails to complete the payment of the
license fee specified in Section 5.1(i) and (ii) and the development
fee set forth in Section 5.2.2 in accordance with the payment schedule
set forth therein, then unless NVC shall complete such payments within
120 days after receiving written notice from ANI of its intention to
commence the activities described in clause (i) of Section 4.3.2, said
clause shall thereafter no longer apply, and, unless NVC shall complete
such payments within 120 days after receiving written notice from ANI
of its intention to grant a license or licenses to others as described
in clause (ii) of Section 4.3.2, said clause shall no longer apply.
5. LICENSE FEE, DEVELOPMENT FEE AND ROYALTIES.
5.1 LICENSE FEE. In consideration of the rights granted under Article 3 of
this Agreement, NVC shall pay ANI a license fee totaling four million,
one hundred ninety two thousand dollars (US$4,192,000.00), payable as
follows:
(i) $3,442,000.00 shall be paid by the issuance by NVC of shares
of its capital stock and the payment of cash by NVC to Zaiq
Technologies, Inc. ("Zaiq") for consideration consisting of
the receivable in approximately the same amount owed by ANI to
Zaiq, which will occur simultaneously with the execution of
this Agreement and pursuant to a separate agreement among NVC
and Zaiq, and the immediate forgiveness and cancellation of
such receivable; and
(ii) $750,000 shall be paid by the issuance by NVC of shares of its
capital stock to TLSI, Inc. ("TLSI") for consideration
consisting of the receivable in the same amount owed by ANI to
TLSI, which will occur simultaneously with the execution of
this Agreement and pursuant to a separate agreement among NVC
and TLSI, and the immediate forgiveness and cancellation of
such receivable.
5.2 DEVELOPMENT FEE AND ROYALTIES.
5.2.1 DEVELOPMENT FEE AND ROYALTIES. In consideration of the rights
granted under Article 4 of this Agreement, NVC shall pay ANI
the development fee set forth in Section 5.2.2 and the
royalties set forth in Section 5.2.3.
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5.2.2 DEVELOPMENT FEE. NVC shall pay ANI a Development Fee in the
total amount of one million five hundred fifty nine thousand
dollars (US$1,559,000.00), to be paid as follows:
(a) ***
(b) ***
(c) ***
(d) ***
(e) ***
(f) ***
(g) ***
5.2.3 ROYALTIES. NVC shall pay ANI the following royalties:
(i) *** percent (***%) of the Net Sales Price of all
Products sold by NVC; and
(ii) *** percent (***%) of License Revenues received by
NVC, provided that, for any period or periods in
which NVC's aggregate License Revenues are less than
or equal to *** percent (***%) of the aggregate
revenue base upon which they are calculated, ANI
agrees to renegotiate in good faith the royalty for
License Revenues with NVC with a view to reaching
mutual agreement on a royalty for License Revenues
that is economically viable for NVC.
A. REPORTS AND PAYMENTS. NVC shall provide to ANI within sixty
(60) days after the end of each calendar quarter a report
setting forth the calculation of the royalties due in respect
of such quarter, accompanied by payment of such royalties;
provided, however, that if by the time such report is due NVC
has not received payment of the amount upon which the royalty
is calculated, it may defer payment of the royalty in respect
of such amount until received, but not for more than an
additional sixty (60) days. If no Products have been sold in
such quarter, the report shall so state. All payments shall be
made by check or wire transfer in US Dollars to such address
or bank account as may be designated by ANI from time to time.
B. RECORDS AND AUDITS. NVC shall keep complete and accurate
books and records of all sales of Products by NVC, which may
be inspected by ANI from time to time upon reasonable notice.
If any such inspection discloses underpayments of royalties
for any period audited, NVC shall pay such amount promptly
with interest at a rate of 1.5% per month (or, if less, the
highest amount permitted by law); provided that if the amount
due exceeds 5% of the amount paid for such period, in addition
NVC shall reimburse ANI for the reasonable cost of the
inspection.
C. CREDIT AGAINST ROYALTIES. In appreciation of professional
services business previously given by NVC to ANI, the first
$400,000 of royalties otherwise payable by NVC shall be offset
by a credit in the same amount.
5.2.4 LATE PAYMENTS. Royalties not paid when due shall be subject to
interest at the rate of one-and-one-half percent (1-1/2%) per
month or, if less, the maximum rate of interest allowable
under law. If any royalties are not paid when due hereunder,
ANI shall be entitled to recover its costs and expenses
(including without limitation reasonable and necessary
collection fees and attorney fees) incurred in connection with
collecting such royalties.
*** Confidential material redacted and filed separately with the Commission.
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6. MWB IP PROGRAM
6.1 PROSECUTION. From and after the Effective Date, ANI shall diligently
and promptly file all applications in respect of all MWB IP on behalf
of both ANI and NVC as co-owners of an equal share of all MWB IP, and
shall diligently and competently conduct any prosecution and
maintenance of all MWB IP (the "MWB IP Program"). ANI will keep NVC
fully informed of the status of the MWB IP Program and promptly provide
NVC with all copies and documents related to the MWB IP Program. NVC
shall cooperate with ANI's filing, prosecution and maintenance under
the MWB IP Program in all respects reasonably requested by ANI, and
hereby appoints ANI as its attorney-in-fact to take any actions or
execute any documents necessary for reasonably conducting such filing,
prosecution and maintenance under the MWB IP Program in the event that
NVC fails to do so. If ANI fails to diligently and competently conduct
the prosecution and maintenance of a filed application or issued
patent, then NVC may do so, at its own expense. If NVC requests that
ANI seek patent protection for the MWB IP in one or more countries
where ANI is not seeking such protection, and if ANI refuses or fails
to diligently and promptly do so, then NVC may do so, at its own
expense. To the extent necessary, ANI shall cooperate with NVC's
filing, prosecution and maintenance of any such applications and
patents in all respects reasonably requested by NVC, and hereby
appoints NVC as its attorney-in-fact to take any actions or execute any
documents necessary for reasonably conducting such filing, prosecution
and maintenance in the event that ANI fails to do so.
6.2 COSTS OF THE MWB IP PROGRAM. Except with respect to an application
pursued solely by NVC, all reasonable costs of the MWB IP Program shall
be shared equally by both Parties, and NVC shall remit its share of
such costs to ANI promptly upon written demand therefor, accompanied by
supporting documentation setting forth in reasonable detail the costs,
including without limitation filing fees and invoices for services
rendered by third parties.
7. THIRD PARTY INFRINGEMENT OF IP RIGHTS
7.1 PROSECUTION. If at any time either Party obtains information that there
is occurring substantial infringement by any unlicensed party of the
PowerStream IP or the MWB IP, such Party shall promptly give written
notice thereof to the other Party.
7.1.1 INFRINGEMENT OUTSIDE FIELD. In the case of infringement of the
MWB IP outside of the Field, ANI shall determine in its sole
discretion whether and, if so, how to take action against such
infringement. If ANI for any reason does not bring suit
against or enter into negotiation for a settlement with any
alleged infringer of the MWB IP within a reasonable time after
receiving notice of the alleged infringement (it being agreed
that ANI's failure to so act for a period in excess of 90 days
shall be deemed to be unreasonable), then NVC may seek to
prevent such infringement by any means that NVC, in its sole
discretion, may deem to be necessary. If NVC takes action
against such infringement, ANI shall reimburse NVC for all
reasonable fees and costs, including attorney fees, incurred
by NVC in connection therewith. Any recovery obtained by NVC
or ANI, as the case may be, as the result of its proceeding
against infringement of the MWB IP by court action, settlement
or otherwise shall be paid over to, or retained by, ANI after
deducting from such recovery the reasonable expenses
(including attorneys' fees) incurred in connection with the
protection and enforcement of such IP.
7.1.2 INFRINGEMENT IN FIELD. In the case of infringement of the MWB
IP in the Field, NVC shall determine in its sole discretion
whether and, if so, how to take action against such
infringement. If NVC for any reason does not bring suit
against or enter into negotziation for a settlement with any
alleged infringer of the MWB IP within a reasonable time after
receiving notice of the alleged infringement (it being agreed
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that NVC's failure to so act for a period in excess of 90 days
shall be deemed to be unreasonable), then ANI may seek to
prevent such infringement by any means that ANI, in its sole
discretion, may deem to be necessary. If ANI takes action
against such infringement, NVC shall reimburse ANI for all
reasonable fees and costs, including attorney fees, incurred
by ANI in connection therewith. Any recovery obtained by ANI
or NVC, as the case may be, as the result of its proceeding
against infringement of the MWB IP by court action, settlement
or otherwise shall be paid over to, or retained by, NVC after
deducting from such recovery the reasonable expenses
(including attorneys' fees) incurred in connection with the
protection and enforcement of such IP, and shall be treated
for royalty purposes as License Revenues.
7.2 COOPERATION. In connection with any action taken by either
Party hereto to protect or enforce the PowerStream IP or the
MWB IP or to prevent infringement thereof, the other Party
shall, if requested, make available to the Party undertaking
such action, at the expense of such Party, any and all
relevant information, data, documents, consultants, expert
witnesses, and any other materials or assistance of any kind
whatsoever. In addition, as required by law or applicable
local procedural rules, either Party shall join as party
plaintiff in any suit filed by the other Party, and hereby
appoints the other Party as its attorney-in-fact to enter its
appearance as a party plaintiff and execute any necessary
documents in the event that the joining Party fails to do so.
The Party undertaking any such action shall reimburse the
other Party for all costs and expenses the other Party
reasonably incurs in connection with its involvement in such
action. Neither Party may enter into a settlement of a claim
of infringement of or by the MWB IP without the prior written
consent of the other Party, which consent shall not be
unreasonably withheld or delayed.
8. REPRESENTATIONS AND WARRANTIES; DISCLAIMER OF CERTAIN WARRANTIES
8.1 REPRESENTATIONS AND WARRANTIES. ANI represents and warrants to NVC as
follows:
(i) ANI is the sole owner of all right, title, and interest in and
to the PowerStream IP, or by license has the full power and
authority to enter into this Agreement and to grant the rights
provided herein,
(ii) the execution, delivery and performance of this Agreement has
been authorized by all required action on the part of ANI, and
does not violate any agreement to which ANI is a party or to
which its properties or assets are subject;
(iii) this Agreement is valid, legally binding and enforceable on
ANI in accordance with its terms, except as enforceability may
be limited by general equitable principles and laws affecting
creditors' rights generally;
(iv) the PowerStream IP constitutes all of the IP rights that
relate to the PowerStream Technology; (ii) ANI is not aware of
any infringement or claim of infringement of the PowerStream
IP or the MWB IP; (iii) ANI is not aware of any IP rights of
any other party that would be infringed or misappropriated by
the license granted to NVC in this Agreement, the MWB
Technology or the making, using, selling, offering for sale,
importing or exporting of Products in the Field; and (iv) no
interference or opposition proceeding is pending or threatened
relating to the PowerStream Patents or the MWB Patents; and
(v) all MWB Deliverables will, when delivered, comply with the
Specifications and be free of Errors, and all Deliverables
will, when delivered, be free of any back door, time bomb or
similar feature, and any virus or other component designed to
permit unauthorized access or disable, erase, or otherwise
harm software, hardware or data.
10
8.2 DISCLAIMER OF OTHER WARRANTIES. ANI MAKES NO OTHER WARRANTIES IN
CONNECTION WITH THIS AGREEMENT INCLUDING, WITHOUT LIMITATION, ANY
EXPRESS OR IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE AS TO THE POWERSTREAM IP, THE MWB IP, OR ANY
PRODUCT. ANI MAKES NO WARRANTY OR REPRESENTATION AS TO THE VALIDITY OR
SCOPE OF ANY PATENT, THAT ANY PRODUCT WILL BE FREE FROM INFRINGEMENT OF
PATENT OR OTHER INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES, OR THAT
NO THIRD PARTIES ARE INFRINGING ANY OF THE IP COVERED BY THIS
AGREEMENT.
9. INDEMNIFICATION
9.1 INDEMNIFICATION BY ANI FOR INFRINGEMENT CLAIMS. ANI shall (i) defend
and/or, at its option, settle any initiated or threatened litigation,
suit, arbitration or other proceeding by a third party (each, a
"Proceeding") against NVC, and any licensee, sublicensee, assignee, or
transferee of NVC (the "Indemnitees"), based on a claim that the
PowerStream Technology or any Products, because of the PowerStream
Technology or MWB IP embodied therein, infringe any IP rights of a
third party, and (ii) pay any direct damages finally awarded in such
Proceeding, including any amount agreed to by ANI in a settlement;
provided that (a) ANI is allowed sole control of the defense and
settlement negotiations (although each Indemnitee may, at its option,
be advised by separate counsel at its own expense), (b) each Indemnitee
notifies ANI promptly in writing of such Proceeding (provided that the
delay in furnishing notice or failure to give notice shall only relieve
ANI of its indemnification obligations hereunder if and to the extent
that such delay or failure materially prejudices ANI) and gives ANI all
information known to NVC or in its possession or control relating
thereto and reasonably necessary for such defense or settlement, and
(c) each Indemnitee cooperates in all respects reasonably requested by
ANI in the settlement and/or defense, at ANI's cost and expense. If
Products are, or in the opinion of ANI may become, the subject of any
such Proceeding, ANI may, and in the event of an adjudication that any
Products infringe third party IP rights or an injunction is issued
against NVC's or any Indemnitee's use of the PowerStream Technology or
Products because of the PowerStream IP or MWB IP embodied therein, ANI
shall, at its expense, do one of the following things: (1) procure for
NVC and its Licensees the right to use such Products as authorized in
this Agreement; (2) replace the Deliverables containing the infringing
PowerStream Technology or MWB Technology with Deliverables containing
non-infringing technology of equivalent functionality; or (3) if none
of the foregoing remedies are commercially feasible, upon the
destruction by NVC and its Licensees of such Products, which NVC and
its Licensees shall do promptly upon written request by ANI, refund to
NVC a reasonable amount (not to exceed the license fee, the development
fee and the royalties paid by NVC pursuant to this Agreement), and
suspend the license granted by this Agreement to the extent and as long
as the exercise of rights under such license would infringe such third
party IP rights. ANI shall have no obligations under this Section 9.1
to the extent that such infringement results from (A) modifications to
the Deliverables by someone other than ANI or someone authorized by
ANI, if such infringement would have been avoided by the absence of
such modifications, or (B) the combination, operation or use of the
PowerStream Technology or the MWB Technology with equipment, devices or
software not supplied by ANI if such claim would not have arisen but
for such combination, operation or use. THE FOREGOING STATES NVC'S SOLE
AND EXCLUSIVE REMEDY AND ANI'S ENTIRE OBLIGATION WITH RESPECT TO CLAIMS
OF INFRINGEMENT OF ANY KIND.
11
9.2 INDEMNIFICATION BY NVC FOR INFRINGEMENT CLAIMS. NVC shall (i) defend,
and/or at its option settle, any Proceeding by a third party against
ANI based on a claim that Products as sold by NVC infringe any IP
rights of a third party, to the extent that such claim or suit arises
out of an unauthorized modification of the Deliverables by NVC or its
Licensees, or the combination, operation or use of the PowerStream
Technology or the MWB Technology with equipment, devices or software
not supplied by ANI, if such claim would not have arisen but for such
combination, operation or use, unless ANI authorized or agreed to such
modification, combination, operation or use; and (ii) pay any direct
damages finally awarded in such Proceeding, including any amount agreed
to by NVC in a settlement, provided that (a) NVC is allowed sole
control of the defense and settlement negotiations (although ANI may,
at its option, be advised by separate counsel at its own expense); (b)
ANI notifies NVC promptly in writing of such Proceeding (provided that
the delay in furnishing notice or failure to give notice shall only
relieve NVC of its indemnification obligations hereunder if and to the
extent that such delay or failure materially prejudices NVC) and gives
NVC all information reasonably known to ANI or in its possession or
control relating thereto and reasonably necessary for such defense or
settlement, and (c) ANI cooperates in all respects reasonably requested
by NVC in the settlement and/or defense, at NVC's cost and expense. THE
FOREGOING STATES ANI'S SOLE AND EXCLUSIVE REMEDY AND NVC'S ENTIRE
OBLIGATION WITH RESPECT TO CLAIMS OF INFRINGEMENT OF ANY KIND.
9.3 INDEMNIFICATION FOR OTHER CLAIMS.
(a) IN GENERAL. Subject to the limitations set forth in Section 9.3(b),
ANI will indemnify and hold harmless NVC, and NVC will indemnify and hold
harmless ANI, from and against any and all losses, costs, damages, liabilities
and expenses (including, without limitation, reasonable legal fees if the
Indemnifying Person, as hereinafter defined does not elect to defend, as
hereinafter provided), net of any recoveries under insurance policies or tax
savings benefiting the person entitled to indemnification hereunder (an
"Indemnified Person"), arising out of any Proceeding by a third party based upon
a misrepresentation or breach of or default in connection with any of the
representations, warranties and covenants given or made by the other Party (the
"Indemnifying Person") in this Agreement (hereafter in this Section 9.3 referred
to as "Damages").The Parties agree that the provisions of this Section 9.3 will
not apply to indemnification claims for infringement covered by Sections 9.1 or
9.2, nor to breach of contract claims of one Party against the other.
(b) INDEMNIFICATION LIMITATIONS. The indemnification provided for in
Section 9.3(a) will not apply unless and until the aggregate Damages for which
an Indemnified Person seeks indemnification under Section 9.3(a) exceeds
$50,000, in which event the indemnification provided for in Section 9.3(a) will
include all Damages in excess of such sum.
(c) INDEMNIFICATION PROCEDURE. Promptly after the receipt by any
Indemnified Person of notice or discovery of any claim or Proceeding giving rise
to indemnification rights under this Section 9.3, such Indemnified Person will
give the Indemnifying Person written notice of such claim or Proceeding (for
purposes of this Section 9.3, a "Claim"). Within ten days of delivery of such
written notice, the Indemnifying Person may, at its expense, elect to take all
necessary steps properly to contest any Claim or to defend such Claim to
conclusion or settlement. If the Indemnifying Person makes the foregoing
election, then the Indemnifying Person will take all necessary steps to contest
any such Claim or to defend such Claim to conclusion or settlement, and will
notify the Indemnified Person of the progress of any such Claim, will permit the
Indemnified Person, at such person's expense, to participate in such defense
(PROVIDED, HOWEVER, that if a conflict of interest exists which would make it
inappropriate, in the reasonable opinion of such Indemnified Person, for the
same counsel to represent both the Indemnified Person and the Indemnifying
Person in the resolution of such Claim, then the Indemnified Person may retain
separate counsel at its expense), and will provide the Indemnified Person with
reasonable access to all relevant information and documents relating to the
Claim and the Indemnifying Person's prosecution or defense thereof. If the
Indemnifying Person does not make such election, then the Indemnified Person
12
shall be free to handle the defense of any such Claim, will take all necessary
steps to contest any such Claim or to defend such Claim to conclusion or
settlement, will notify the Indemnifying Person of the progress of any such
Claim, and will permit the Indemnifying Person, at the expense of the
Indemnifying Person, to participate in such defense and will provide the
Indemnifying Person with reasonable access to all relevant information and
documents relating to the Claim and such Indemnified Person's defense thereof.
In either case, the party not in control of a Claim will fully cooperate with,
and will cause its counsel, if any, to fully cooperate with, the other party in
the conduct of the defense of such Claim. Neither party will compromise or
settle any such Claim without the written consent of either such Indemnified
Person (if the Indemnifying Person defends the Claim) or the Indemnifying Person
(if such Indemnified Person defends the Claim), such consent not to be
unreasonably withheld.
(d) NOTICE OF CLAIM. Any written notice of a Claim required under this
Section 9.3 will be in writing and will contain the following information to the
extent reasonably available to the Indemnified Person:
(i) the Indemnified Person's good faith estimate of the
reasonably foreseeable maximum amount of the alleged Damages
(which amount may be the amount of damages claimed by a
third-party plaintiff in an action brought against such
Indemnified Person); and
(ii) a brief description in reasonable detail of the facts,
circumstances or events giving rise to the alleged Damages
based on such Indemnified Person's good faith belief thereof
and the basis under this Agreement for such Claim, including,
without limitation, the identity and address of any
third-party claimant (to the extent reasonably available to
such Indemnified Person) and copies of any formal demand or
complaint.
10. CONFIDENTIALITY
10.1 CONFIDENTIAL INFORMATION. Each Party acknowledges that the other has
provided, and will continue to provide during the term of this
Agreement, access to certain confidential information, including but
not limited to specifications, designs, plans, drawings, schematics,
data prototypes and other technical and business information
(hereinafter collectively referred to as "Confidential Information"),
which is of substantial value, and that the other's business will be
impaired if such Confidential Information is improperly disclosed or
used. The terms of this Agreement shall be Confidential Information of
each Party and shall be subject, on behalf of each of them, to the
restrictions on disclosure described in this Article 10.
10.2 DESIGNATION. No information of either Party disclosed hereunder shall
be considered Confidential Information unless it is so designated in a
reasonably clear manner. This provision shall be satisfied: (i) as to
documentary disclosure, by marking "ANI Confidential", "ANI
Proprietary" or the like, or "NVC Confidential", "NVC Proprietary" or
the like on documents or other media containing Confidential
Information; (ii) as to oral disclosures, by notifying the other Party
in writing within thirty (30) days of each such oral disclosure that it
contained Confidential Information and identifying specifically the
information asserted to be confidential.
10.3 RESTRICTIONS. Neither party shall disclose Confidential Information of
the other party to any third party for any purpose. Each party shall
use, and require its employees and contractors to use, the Confidential
Information of the other solely and exclusively in connection with the
purpose stated in Section 1 of this Agreement and shall permit access
to the Confidential Information only to those of the receiving party's
employees or contractors who need to know the same in the performance
of their duties in connection with this Agreement and who are legally
obligated to comply with this Agreement by written agreement or
otherwise.
13
10.4 EXCEPTIONS. The foregoing restrictions shall not be applicable with
respect to information that: (a) was previously known to the receiving
party free of any confidentiality obligation, as can be demonstrated by
the contemporaneous records of that party, (b) was independently
developed by the receiving party without use of the Confidential
Information received hereunder, (c) is or becomes publicly available
other than by unauthorized disclosure hereunder, (d) is disclosed to
third parties by the disclosing party without restriction, or (e) is
received by the receiving party from a third party without restriction
and without violation of any confidentiality obligation.
10.5 PERMITTED DISCLOSURES. Disclosure of Confidential Information shall not
be a breach of this Agreement: (a) if such disclosure is compelled by
the order of a court or governmental or regulatory agency, provided
that the party making the disclosure shall have promptly advised the
other party and made a reasonable effort to obtain a protective order
requiring that the Confidential Information so disclosed be placed
under seal or similar procedure to maintain the confidentiality of such
Confidential Information and used only for the purpose for which the
order was issued, (b) to the extent necessary to governmental officials
in obtaining governmental approvals, if any, required in connection
with the manufacture, use or sale of any Product, (c) to the extent
that publication or disclosure of technical information is necessary to
continue, renew or obtain additional Patents, or (d) with respect to
this Agreement, to the extent reasonably deemed necessary by NVC as a
result of its disclosure obligations under the federal securities laws.
11. MAINTENANCE; SUPPORT AND UPDATES
11.1 During the Maintenance Period, ANI shall provide maintenance, support,
Improvements and Updates, and correct or repair any Error or replace
any Deliverable containing an Error, at its expense and free-of-charge
to NVC (the "Maintenance Services"). ANI's obligations to correct or
repair Errors reported during the Maintenance Period shall continue
after the Maintenance Period. ANI shall provide any Maintenance
Services requested by NVC promptly following such request. All
Maintenance Services shall be performed by persons with the required
technical expertise regarding the applicable Deliverable, PowerStream
Technology and MWB Technology.
11.2 For twelve months following the termination of the Maintenance Period,
ANI shall provide up to three person-days per month of support to NVC
in its use and implementation of the PowerStream Technology and MWB
Technology, unless such support qualifies as Maintenance Services, at a
rate of $1,250/person/day, plus reasonable expenses for ANI employees
traveling to NVC if such trips are required to provide such support. If
NVC's requests for support exceed in the aggregate three days per
month, NVC will forecast and commit to purchase a specified level of
support so that ANI can plan and, if necessary, procure, sufficient
support resources.
12. LIMITATION OF LIABILITY
12.1 EXCEPT WITH RESPECT TO A BREACH OF THE TERMS OF SECTION 8, OR AS
PROVIDED IN SECTION 7, IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY
SPECIAL, INDIRECT, EXEMPLARY, INCIDENTAL OR CONSEQUENTIAL DAMAGES
(INCLUDING BUT NOT LIMITED TO ANY DAMAGES RESULTING FROM LOSS OF USE,
LOSS OF DATA, LOSS OF PROFITS OR LOSS OF BUSINESS) ARISING OUT OF OR IN
CONNECTION WITH THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN ADVISED,
KNOWS OR SHOULD KNOW OF THE POSSIBILITY OF SUCH DAMAGES.
14
12.2 THE LIMITATIONS STATED IN SECTION 12.1 ABOVE SHALL APPLY WHETHER THE
ASSERTED LIABILITY OR DAMAGES IS BASED ON CONTRACT (INCLUDING BUT NOT
LIMITED TO BREACH OF WARRANTY), TORT (INCLUDING BUT NOT LIMITED TO
NEGLIGENCE) OR ANY OTHER LEGAL OR EQUITABLE GROUNDS. EACH OF THE
LIMITATIONS OF LIABILITY IS INTENDED TO BE ENFORCEABLE REGARDLESS OF
WHETHER ANY OTHER EXCLUSIVE OR NONEXCLUSIVE REMEDY UNDER THIS AGREEMENT
FAILS OF ITS ESSENTIAL PURPOSE.
13. TERM AND TERMINATION
13.1 TERM. This term of this Agreement begins on the Effective Date and
shall continue until the expiration of the last expiring PowerStream
Patent or MWB Patent.
13.2 TERMINATION OF DEVELOPMENT OBLIGATIONS. Notwithstanding Section 13.1,
the provisions of Section 4.1, Section 5.2 and Article 11 may be
terminated by a Party in any of the following events:
a. Either Party may terminate if the other Party breaches a
material obligation under this Agreement and such breach
continues uncured for a period of thirty (30) days after
written notice thereof or, if such breach is curable but
cannot be cured within said thirty (30) days after written
notice thereof, when the defaulting party has not within said
thirty (30) days initiated reasonable action to attempt to
cure it. Notwithstanding the foregoing, in the event that one
party breaches a material obligation under this Agreement, and
such breach continues uncured for a period of ninety (90) days
after written notice thereof, the non-defaulting party may
immediately terminate this Agreement on the ninety-first day
after notice of such breach.
b. Either Party may terminate upon not less than twenty (20)
days' written notice to the other Party if (i) a petition in
bankruptcy is filed by or against the other Party, or a
receiver or trustee of the property of the other Party is
appointed, and such petition or appointment shall remain
undismissed for a period of sixty (60) days, (ii) the other
Party files a petition for reorganization under any
bankruptcy, insolvency, reorganization, or other similar law,
or makes an assignment for the benefit of creditors, (iii) the
other Party is adjudged bankrupt or insolvent by any court of
competent jurisdiction, or (iv) the other Party initiates any
liquidation or termination of business or ceases doing
business in the normal course.
c. NVC may terminate by written notice to ANI as provided in
Section 4.1 on or after ANI's failure to timely correct the
Errors in a third Error Report.
13.3 EFFECTS OF TERMINATION. Upon any termination of this Agreement pursuant
to Section 13.2, ANI shall deliver to NVC all Deliverables and work in
process for which payment has been made, NVC will pay ANI any sums then
due pursuant to this Agreement, and each Party will return to the other
Party or, where the return of such material is commercially
impractical, destroy all of the other's Confidential Information. All
other provisions of this Agreement shall remain in full force and
effect, except for ANI's requirements relating to the development and
delivery of future MWB Deliverables, ANI's maintenance and support
obligations, and NVC's obligations to pay ANI development fees for work
that has not been delivered and royalties pursuant to Section 5.2.
Neither termination nor expiration of this Agreement shall relieve any
Party from the duty to discharge all of such Party's obligations
accrued or due prior to the date thereof, nor shall the exercise of the
right to terminate by either Party constitute a waiver of any other
remedies the terminating Party may have in law or equity.
15
13.4 SURVIVAL. The Parties specifically agree that the license granted under
Article 3 and the co-ownership provisions under Sections 4.2, 4.3 and
4.4 hereof will survive any termination pursuant to Section 13.2, any
petition in bankruptcy, appointment of a receiver or trustee,
reorganization, insolvency, liquidation or ceasing to do business of
ANI or any successor, assignee or transferee of ANI. NVC does not
waive, and nothing in this Agreement or the performance of this
Agreement shall be construed or interpreted to constitute a waiver of,
NVC's rights under 11 U.S.C. ss.365(n) or any equivalent or similar
provisions under any other law, statute, regulation or order.
14. NOTICES.
All notices or other communications required to be given hereunder
shall be deemed sufficient if in writing and (a) personally delivered,
(b) transmitted by pre-paid express courier, (c) transmitted by
facsimile (and confirmed by certified mail return receipt requested) or
(d) provided by e-mail, with a confirmation of receipt, to the
respective address of the parties set forth below:
To ANI: Adaptive Networks, Inc.
00 Xxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: Xxxxxxx Xxxxx
Phone: (000) 000-0000, ext. 24
Facsimile: (000) 000-0000
Email: xxxxxx@xxxxxxxxxxxxxxxx.xxx
To NVC: New Visual Corporation
0000 Xxxxxx Xxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
Attn: C. Xxxx Xxxxxx III
Phone: (000) 000-0000
Facsimile: (000) 000-0000
EmaiL: XXX@XXXXXXXXX.xxx
or at such other address as either party shall have designed by written
notice to the other.
15. MISCELLANEOUS
15.1 MODIFICATIONS. No modifications or amendments to this Agreement shall
be valid unless in writing and signed by and on behalf of both Parties.
15.2 ASSIGNMENT. This Agreement shall be binding upon ANI's or NVC's
successors or permitted assigns. Either Party (the "Seller") may assign
its rights hereunder to the purchaser or surviving entity (the
"Purchaser") in any stock, assets, merger or other transaction in which
all or substantially all of the business of such Party, or that part of
the business to which the subject matter of this Agreement relates, is
transferred, regardless of the form such transaction may take;
[provided that the Purchaser assumes all of the obligations of the
Seller hereunder and the Seller hereunder remains jointly and severally
liable for such obligations. If the Purchaser, or any other party
controlling, controlled by, or under common control with the Purchaser,
is a Competitor of the other Party to this Agreement, then the
assignment permitted by the preceding sentence shall only be permitted
if such other Party gives its written consent, which shall not be
unreasonably withheld. Except as expressly authorized in this Section,
this Agreement may not be assigned, sold, mortgaged, pledged or
otherwise disposed of by either Party in whole or part without the
prior written consent of the other Party, and any attempt to do so
shall be void and without effect.
16
15.3 INJUNCTIVE RELIEF. The covenants and agreements of the Parties in
Sections 3.1, 3.2, 4.3 and Article 10 hereof are of a special
character, and the Parties acknowledge that money damages alone may not
compensate for any breach of such covenants and agreements. Therefore,
the Parties expressly agree that in the event of the breach or
threatened breach of any such covenants or agreements, in addition to
any other rights or remedies, the parties shall be entitled to
injunctive relief (without any requirement to post bond in connection
therewith) compelling specific performance of, and other compliance
with, the terms of such sections.
15.4 INTEGRATION. This Agreement and any attachments hereto constitute the
entire agreement between the Parties hereto with respect to the subject
matter hereof. There are no agreements, understandings, covenants,
conditions or undertakings, oral or written, express or implied,
concerning such subject matter that are not merged herein or superseded
hereby.
15.5 SEVERABILITY. If any provision of this Agreement, or the application of
such provision to any person or circumstance, shall be held invalid,
the remainder of this Agreement shall not be affected thereby and shall
continue in full force and effect.
15.6 FORCE MAJEURE. Neither Party to this Agreement shall be liable for its
failure to perform any of its obligations hereunder during any period
in which such performance is delayed by fire, flood, war, embargo, riot
or the intervention of any government authority, provided that the
party suffering the delay notifies the other party of the delay, acts
diligently to remedy the cause of such delay, and promptly resumes its
performance upon the cessation of the cause for the delay.
Notwithstanding the foregoing, a party's performance shall not be
excused for delays caused by any subcontractor or agent of that party,
except to the extent that such subcontractor's or agent's performance
of its obligations to that party would be excused if this Section 15.6
were to apply to such obligation.
15.7 RELATIONSHIP OF PARTIES. The Parties are independent contractors and
are not, and shall not represent themselves as, principal and agent,
partners or joint venturers. Neither party shall attempt to act, or
represent itself as having the power, to bind the other or create any
obligation on behalf of the other.
15.8 NON-SOLICITATION. Unless otherwise agreed to by the Parties in writing,
for the term of this Agreement and one year thereafter, neither Party
shall recruit or solicit, offer employment to, or hire or employ any
person who (i) is an employee or independent contractor of the other
Party, or (ii) was an employee or independent contractor of the other
Party within one year prior to any recruitment, solicitation, or
employment of such person.
15.9 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the Commonwealth of Massachusetts without
reference to its choice of law principles.
15.10 DISPUTE RESOLUTION. All disputes arising under this Agreement between
the Parties shall be resolved as follows: First, the senior management
of each Party shall meet to attempt to resolve such disputes. If the
disputes cannot be resolved by senior management, either party may make
a written demand for formal dispute resolution. Within 30 days after
such demand, the parties agree to meet for one day with an impartial
mediator (mutually agreed upon by the parties or, if the parties cannot
agree, selected by two mediators, one proposed by each party) and
consider dispute resolution alternatives other than litigation. If a
resolution or an alternative method of dispute resolution is not agreed
upon within 15 days after the mediation, either party may begin
litigation proceedings.
17
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
Effective Date.
NEW VISUAL CORPORATION ADAPTIVE NETWORKS, INC.
By: /S/ C. XXXX XXXXXX III By: /S/ XXXXXXX XXXXX
Name: C. Xxxx Xxxxxx III Name: Xxxxxxx Xxxxx
Title: VP Bus. Dev., Corp. Sec. Title: President
18
EXHIBIT A
AMENDMENTS AND/OR SUPPLEMENTS
-----------------------------
TO
--
MWB DELIVERABLES SPECIFICATIONS AND DEVELOPMENT SCHEDULE
--------------------------------------------------------
[TO BE SUPPLIED FROM TIME TO TIME BY MUTUAL AGREEMENT PURSUANT TO SECTION 4.1.]
EXHIBIT B
POWERSTREAM DELIVERABLES
------------------------
A. POWERSTREAM PATENTS
-------------------
B. COPYRIGHTED DELIVERABLES
------------------------
1. SOURCE CODE
[As described in the documents entitled "Project Plan for
Design and Verification of a Multiple Wide Band (MWB)
Communications System Prototype, Nov 19, 2001 Revision 0.3"
and "High-Data-Rate Long-Distance Communications for Noisy and
Attenuated Media such as VDSL, Rev 1.00, September 10, 2001",
as the same may be completed, amended and/or supplemented by
the mutual agreement of the Parties]
2. DOCUMENTATION
[As described in the documents entitled "Project Plan for
Design and Verification of a Multiple Wide Band (MWB)
Communications System Prototype, Nov 19, 2001 Revision 0.3"
and "High-Data-Rate Long-Distance Communications for Noisy and
Attenuated Media such as VDSL, Rev 1.00, September 10, 2001",
as the same may be completed, amended and/or supplemented by
the mutual agreement of the Parties]
C. OTHER DELIVERABLES
------------------
[As described in the documents entitled "Project Plan for
Design and Verification of a Multiple Wide Band (MWB)
Communications System Prototype, Nov 19, 2001 Revision 0.3"
and "High-Data-Rate Long-Distance Communications for Noisy and
Attenuated Media such as VDSL, Rev 1.00, September 10, 2001",
as the same may be completed, amended and/or supplemented by
the mutual agreement of the Parties]
EXHIBIT C
POWERSTREAM PATENTS
-------------------
1. POWER LINE COMMUNICATION SYSTEM
------------------------------------------- ------------------------------------
COUNTRY PATENT #
------------------------------------------- ------------------------------------
United States 4,815,106
------------------------------------------- ------------------------------------
Canada 1,280,483
------------------------------------------- ------------------------------------
France 87903064.1
------------------------------------------- ------------------------------------
Italy 87903064.1
------------------------------------------- ------------------------------------
Japan 2,922,860
------------------------------------------- ------------------------------------
2. METHOD AND APPARATUS FOR DATA ENCODING AND COMMUNICATION OVER NOISY
MEDIA
------------------------------------------- ------------------------------------
COUNTRY PATENT #
------------------------------------------- ------------------------------------
United States 5,727,004
------------------------------------------- ------------------------------------
Australia 707999
------------------------------------------- ------------------------------------
Canada 2215,380
------------------------------------------- ------------------------------------
China 96193900.1
------------------------------------------- ------------------------------------
European Patent Application 96908777.4-2212
------------------------------------------- ------------------------------------
Japan 08-527795
------------------------------------------- ------------------------------------
3. METHOD AND APPARATUS FOR DATA ENCODING AND COMMUNICATION OVER NOISY
MEDIA
------------------------------------------- ------------------------------------
COUNTRY PATENT #
------------------------------------------- ------------------------------------
United States 5,872,791
------------------------------------------- ------------------------------------
4. METHOD AND APPARATUS FOR DATA ENCODING AND COMMUNICATION OVER NOISY
MEDIA
------------------------------------------- ------------------------------------
COUNTRY PATENT #
------------------------------------------- ------------------------------------
United States 5,944,842
------------------------------------------- ------------------------------------
5. RECONFIGURABLE ON-DEMAND TELEPHONE AND DATA LINE SYSTEM
------------------------------------------- ------------------------------------
COUNTRY PATENT #
------------------------------------------- ------------------------------------
United States 5,774,526
------------------------------------------- ------------------------------------
Australia 706,579
------------------------------------------- ------------------------------------
Canada 2,227,267
------------------------------------------- ------------------------------------
China
------------------------------------------- ------------------------------------
European Patent Application 9692799.6
------------------------------------------- ------------------------------------
Israel 122,965
------------------------------------------- ------------------------------------
Japan 97-506974
------------------------------------------- ------------------------------------
South Korea 98-700343
------------------------------------------- ------------------------------------
Taiwan 124,951
------------------------------------------- ------------------------------------
6. WIDEBAND COMMUNICATION SYSTEM USING DELAY LINE CLOCK MULTIPLIER
------------------------------------------- ------------------------------------
COUNTRY PATENT #
------------------------------------------- ------------------------------------
United States Patent Application No. 09/837,760
------------------------------------------- ------------------------------------
7. TOKEN PASSING ARRANGEMENT FOR POWER LINE COMMUNICATION SYSTEM
-------------------------------------------- -----------------------------------
COUNTRY PATENT #
-------------------------------------------- -----------------------------------
United States/WIPO PCT/US01/12553
-------------------------------------------- -----------------------------------
8. DIGITAL EQUALIZATION PROCESS AND MECHANISM
-------------------------------------------- -----------------------------------
COUNTRY PATENT #
-------------------------------------------- -----------------------------------
United States Provisional Application No.
60/311,081
-------------------------------------------- -----------------------------------
9. ERROR CORRECTION PROCESS AND MECHANISM
-------------------------------------------- -----------------------------------
COUNTRY PATENT #
-------------------------------------------- -----------------------------------
United States Provisional Application No.
60/310,824
-------------------------------------------- -----------------------------------
EXHIBIT D
MWB PATENTS
-----------
1. VARYING LOAD AND MODULATION APPLIED TO EACH OF MULTIPLE FREQUENCY
SUBCHANNELS BASED ON ANTICIPATED ATTENUATION EXPERIENCED BY THOSE
SUBCHANNELS
-------------------------------------------- -----------------------------------
COUNTRY PATENT #
-------------------------------------------- -----------------------------------
United States Provisional Application No.
60/315,950
-------------------------------------------- -----------------------------------
