OEM SOFTWARE LICENSE AND
DEVELOPMENT AGREEMENT
Dated September 1, 1994
between
Xxxxxxxxxx Enterprises, Inc.
and
U.S. Robotics, Inc.
This OEM Software License and Development Agreement (this "Agreement") is
made effective September 1, 1994, by and between U.S. Robotics, Inc., a
Delaware corporation with a place of business at 0000 Xxxxx XxXxxxxxx Xxxx.,
Xxxxxx, Xxxxxxxx 00000 ("USR"), as licensee, and Livingston Enterprises,
Inc., a California corporation with a place of business at 0000 Xxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxx, Xxxxxxxxxx 00000 ("Xxxxxxxxxx" or "Licensor"), as
licensor.
In consideration of the premises and of the mutual covenants and promises set
forth herein, USR and Licensor hereby agree as follows:
SECTION 1. PURPOSE OF AGREEMENT.
Licensor has developed certain computer software identified in Exhibit 2.7
attached hereto which USR desires to license for inclusion in and
sublicensing with certain USR products and systems. Licensor desires to
grant to USR, its Subsidiaries and Permitted Assigns, certain rights with
respect to such software. In order to include such software in its
products, USR will require certain software development services and the
technical support and assistance of Licensor's software engineering and
development personnel and Licensor is willing to provide such development
services, support and assistance for a fee.
SECTION 2. DEFINED TERMS.
When used in this Agreement and any Exhibits or Schedules attached hereto,
the capitalized terms listed below shall have the respective meanings
indicated:
2.1 "CODE" means computer programming code. If not otherwise specified,
"Code" means only Object Code and NOT Source Code, which are defined
as follows:
2.1.1 "OBJECT CODE" means the machine-readable form of the Code.
2.1.2 "SOURCE CODE" means the human-readable form of the Code and
related program and system documentation, including all
comments and any procedural code.
2.2 "DERIVATIVE WORK" means a work which is based upon one or more
preexisting works, such as a revision, enhancement, modification,
translation, abridgment, condensation, expansion, or any other form
in which such preexisting works may be transformed or adapted, and
which if prepared without authorization of the owner of the copyright
in such preexisting work, would constitute a copyright infringement.
"Derivative Work" also includes any compilation that incorporates such
a preexisting work.
2.3 "DEVELOPMENT PROJECT" means the development, testing and
implementation of all Maintenance Modifications, Enhancements and
Upgrades to the Licensed Software described in Exhibit 4.1 attached
which are necessary or reasonably required in order to allow the
Licensed Software to run on the USR Hardware Platforms and perform in
accordance with the Specifications for such Licensed Software.
2.4 "LICENSOR DEVELOPMENT SERVICES" means the software engineering and
development and technical support services described in the Statement
of Work for the Development Project attached as Exhibit 4.1 which
Licensor shall perform in accordance with Section 4 of this Agreement.
2.5 "DOCUMENTATION" means user manuals and other written materials that
relate to the Licensed Software.
2.6 "ENHANCEMENTS" means all changes or additions to the Code and related
Documentation comprising the Licensed Software, other than Maintenance
Modifications and Upgrades, including, but not limited to, all new
releases, that improve functions, add new functions, or improve
performance by changes in system design or coding and all changes
and/or additions made to support new releases of the operating systems
with which the Code is designed to operate, support new input/output
(I/O) devices, or provide other incidental updates.
2.7 "LICENSED SOFTWARE" means the Object Code, Documentation and other
materials relating to the programs specified and/or described in
Exhibit 2.7 and any further Schedules or Exhibits attached hereto,
together with the Object Code, Documentation and other materials
relating to all Maintenance Modifications and Enhancements thereto,
and together with the Object Code, Documentation and other materials
relating to any Upgrades that are hereafter made subject to this
Agreement.
2.8 "PERMITTED ASSIGNS" means any person to whom USR assigns its rights or
interests under this Agreement with the written approval of
Xxxxxxxxxx, as set forth in Section 11.11 hereof.
2.9 "MAINTENANCE MODIFICATION" means any modification or revision, other
than Enhancements and Upgrades, to Code or Documentation that correct
programming
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errors or make other incidental changes or corrections. "Maintenance
Modifications" include, but are not limited to any Bug fixes.
2.10 "SPECIFICATIONS" means the specifications for the functional and
operational parameters and characteristics of the Licensed Software
set forth or referenced in Exhibit 2.7 attached hereto.
2.11 "SUBSIDIARY" means a corporation, company or other entity (1) more
than fifty percent (50%) of whose outstanding shares or securities
having the right to vote for the election of directors of other
managing authority are, or (2) which does not have outstanding shares
or securities, as may be the case in a partnership, joint venture or
unincorporated association, but more than fifty percent (50%) of the
ownership interest of which, representing the right to make the
decisions for such corporation company or other entity, is now or
hereafter owned or controlled, directly or indirectly, by a party
hereto, but such corporation, company or other entity shall be deemed
to be a Subsidiary only so long as such ownership or control exists.
2.12 "THIRD PARTY SOFTWARE" means any third party Code and Documentation
identified in Exhibits 2.7 and/or 4.1 attached hereto, including any
Maintenance Modifications, Enhancements and Upgrades thereto, which
Xxxxxxxxxx obtains and provides or sublicenses to USR pursuant to
Sections 4.4 and 6.3 of this Agreement.
2.13 "UPGRADES" means changes or additions to Code and related
Documentation that (1) provide substantial additional value and
utility, (2) as a practical matter could be priced and offered
separately as optional additions to the Code and Documentation, and
(3) are not made available to any other customers or licensees without
a separate or additional charge.
2.14 "USR HARDWARE PLATFORMS" means the specific hardware products of USR
and its Subsidiaries described in Section 3.1.1 of this Agreement.
2.15 "OEM SUPPLY AGREEMENT" means the OEM Supply Agreement entered into by
and between Xxxxxxxxxx and USR, dated as of September 1, 1994 pursuant
to which USR has agreed to sell certain modem products to Xxxxxxxxxx.
2.16 "BUG" means a defect in the Licensed Software which causes the
software to perform in a manner which substantially differs from the
specifications of the Licensed Software and which can be replicated
with reasonable effort on the then applicable model of the Xxxxxxxxxx
product line corresponding to Xxxxxxxxxx'x current PortMaster product
line or on such other equipment as the Parties reasonably agree is
appropriate under the circumstances. Without limiting the generality
of any defect in Code which affects more than 5% of the units of
Products containing such Code or which causes any Product to be
inoperable more than 5% of the time shall be deemed a "Bug" unless the
parties otherwise agree.
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2.17 "CLIENT CODE" means a program which executes on a remote CPU to
connect to the USR hardware platforms over a network.
SECTION 3. LICENSE GRANT FOR LICENSED SOFTWARE.
3.1 SCOPE. Subject to the terms and conditions set forth in this
Agreement, Licensor hereby grants to USR and its Permitted Assigns a
worldwide, nonexclusive. non-transferable, perpetual right and license
to use, copy, reproduce, display, execute, modify, distribute, lease
and prepare Derivative Works based on all License Software that is
now, or hereafter becomes, the subject of this Agreement, subject
further to the following restrictions:
3.1.1 USR shall only distribute or lease copies of the Licensed
Software in executable form and in conjunction with the
manufacture and/or sale or lease of, and only for use in,
those USR Hardware Platforms described in Exhibit 3.1.1
attached hereto, regardless of the name or names under which
such products are marketed and sold; provided that USR and
its Subsidiaries may not supply such products to any
unaffiliated third party on an OEM or private label basis
without the prior written consent of Xxxxxxxxxx.
3.1.2 No Code in whole or in part shall be used or incorporated in
any USR Hardware Platform except those which are described
in Exhibit 3.1.1 and any amendments thereto which the
parties may hereafter agree to.
3.1.3 Except as otherwise agreed in writing by Xxxxxxxxxx, USR
shall include appropriate copyright and other proprietary
notices (in the form provided by Xxxxxxxxxx) in all copies
of the Licensed Software distributed to other parties.
3.1.4 All contracts and purchase orders, if any, for USR Hardware
Platform Products supplied to the U.S. Government under a
prime contract or to a contractor operating under a U.S.
Government contract shall include the following paragraph or
substantially equivalent language.
"Use, duplication, or disclosure by the Government is
subject to restrictions as set forth in subparagraph
(c)(1)(ii) of the Rights in Technical Data and Computer
Software clause at 252.227-7013."
3.1.5 In addition, subject to the same restrictions, USR may copy
and distribute Client Code related to the Licensed Software
as provided by Licensor and as modified to operate in
conjunction with the USR Hardware Platforms incorporating
the Licensed Software.
3.2 RIGHT TO GRANT SUBLICENSES. The right and license granted above shall
include the right of USR to sublicense and authorize other parties
(including its Subsidiaries,
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subcontractors, dealers, distributors, and agents collectively,
"Sublicensees") to do any, some, or all of the foregoing, with respect
to the Licensed Software, provided that such other parties agree to be
bound by the terms of this Agreement. Specifically, sublicensing
pursuant to the foregoing shall only be authorized pursuant to the
following terms:
3.2.1 Such sublicenses shall only be granted pursuant to a written
sublicense agreement. Such sublicense agreements may be in
any form, provided that they contain substantially the same
provisions relating to the Licensed Software as are
contained in this Agreement with respect to intellectual
property rights, warranties, limitations of liability,
indemnities and confidential information. Xxxxxxxxxx shall
have the right to approve the relevant provisions of the
sublicense agreement utilized in connection with the
foregoing issues. Without limiting the generality of the
foregoing, Sublicensees shall be prohibited from further
sublicensing, assigning or transferring the Licensed
Software without the prior written consent of Xxxxxxxxxx.
3.2.2 USR shall not sublicense and Sublicensees shall have no
rights to the Licensed Source Code. Further, sublicensees
shall be prohibited from reverse engineering, disassembling
or decompiling the Licensed Software.
3.2.3 USR agrees to notify Xxxxxxxxxx in writing of any sublicense
granted pursuant hereto. Such notice shall include the
Sublicensee's name, address and contact person, and shall
give a brief summary of the nature of the transaction.
3.2.4 With respect to any activities of Sublicensees, royalties
shall be payable in accordance with the terms as set forth
in Section 6 and Exhibit 6.2 of this Agreement. Reporting
and auditing of such royalties shall also be effected in
accordance with Section 6 and Exhibit 6.2 herein.
3.3 PATENTS AND PATENT APPLICATIONS. Licensor further grants to USR its
Subsidiaries and its and their respective customers, mediate and
immediate, a worldwide, nonexclusive, nontransferable, and
royalty-free license under all patents or patent applications if any,
covering the Licensed Software owned or licensable by Licensor during
the term of this Agreement to make, have made, use, have used, lease,
and/or otherwise transfer such Licensed Software, including Derivative
Works thereof, as set forth in Section 3.1 above.
3.4 COPIES FOR INTERNAL USE. The foregoing grant of license includes the
right to make and use reasonable numbers of copies of the Licensed
Software exclusively for archival, test, maintenance, warranty service
and product demonstration purposes without any obligation to pay
royalties with respect thereto.
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SECTION 3A. LICENSE GRANT FOR SOURCE CODE.
3A.1 Subject to the terms and conditions contained in this Agreement,
Licensor hereby grants to USR and its Permitted Assigns a
nonperpetual, nonexclusive, nontransferable right and license
(revocable as set forth in Section 3A.1.4) to use, copy, reproduce and
create Derivative Works of the Source Code (the "Licensed Source
Code") which is required to generate the Object Code contained in the
Licensed Software (as defined herein and specified in Exhibit 2.7
hereto), subject further to the following limitations and
restrictions:
3A.1.1 USR shall use the Licensed Source Code only for the
following purposes and subject to the following
limitations, (i) the modification and creation of
Derivative Works based upon the Licensed Software in
connection with porting of the Licensed Software to the
USR Hardware Platforms described in Exhibit 3.1.1 and
as appropriate for any USR Hardware Platforms added
thereto by amendment, (ii) developing and/or porting
Maintenance Modifications, Enhancements and Upgrades of
the Licensed Software to the USR Hardware Platforms
described in Exhibit 3.1.1 or subsequently added
thereto by amendment, and (iii) developing customized
modifications of the Licensed Software and otherwise
supporting and servicing the needs of purchasers and
end users of the USR Hardware Platforms described in
Exhibit 3.1.1 or subsequently added thereto by
amendment.
3A.1.2 USR acknowledges and agrees that it is acquiring only
the right to use the Licensed Source Code as strictly
authorized hereunder. All ownership, copyrights,
patent rights (if any) and other intellectual property
rights in and to the Licensed Source Code shall remain
vested in Licensor. USR shall not transfer, assign or
sublicense the Licensed Source Code. USR further
acknowledges the confidential and proprietary nature of
the Licensed Source Code and agrees to exert and
implement all commercially reasonable efforts and
measures to maintain and preserve the confidentiality
and to prevent the unauthorized use thereof, which
efforts and measures shall include, but not be limited
to, the following:
(a) all such efforts and measures as USR
exerts and implements for the protection of
its own trade secrets of a similar nature
(which shall in no event comprise less than
reasonable care and diligence);
(b) restriction of access to the Licensed
Source Code to those employees of USR who
have a bona fide need for such access in
connection with the activities contemplated
herein and
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who have executed written instruments
acknowledging and agreeing to honor their
duties and obligations to maintain the
confidentiality and abstain from unauthorized
use of such confidential and proprietary
information. In addition, USR shall maintain
a list of all such employees who at any time
have accessed the Licensed Source Code while
it is in the possession of control of USR and
such list shall include, for each such
employee, his or her name, title and a brief
summary specifying the portions of the
Licensed Source Code which he or she has
accessed and setting forth the reason that
such employee needed such access.
(c) maintenance of all copies of the
Licensed Source Code in a physically secure
place and on computers the use of and access
to which are restricted to authorized
personnel. USR shall further notify Licensor
of the location of all copies of the Licensed
Source Code.
(d) prompt destruction or return to Licensor
of all copies of the Licensed Source Code
upon termination of this Agreement or upon
Licensor's request in the event of
termination of the right and license granted
herein for the Licensed Source Code in
accordance with Section 3A.1.4 below. Except
in the case of a material breach by USR of
the provisions of this Section 3A.1.2., USR
may retain a copy of any portions of the
Licensed Source Code which are reasonably
required to fix "Bugs" which have been
reported by USR to Xxxxxxxxxx prior to such
request. All Licensed Source Code shall be
returned to Xxxxxxxxxx or destroyed upon
repair of the reported "Bugs" or upon the
expiration of three months following the date
of such request, whichever is earlier.
(e) In all cases in which USR destroys
Licensed Source Code as set forth herein USR
shall provide to Licensor a written
certification signed by an officer of USR
which states that such destruction has been
accomplished in accordance with the terms of
this Agreement.
3A.1.3 Subject to reasonable undertakings by Xxxxxxxxxx with
respect to maintaining the confidentiality and
restraining from unauthorized use of USR's confidential
and proprietary information, Xxxxxxxxxx shall be
afforded, upon request, reasonable opportunities to
observe and evaluate the adequacy of the efforts and
measures exerted and implemented by USR
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with respect to its obligations to maintain the
confidentiality and prevent unauthorized use of the
Licensed Source Code.
3A.1.4 Xxxxxxxxxx shall have the option to terminate the right
and license to the Licensed Source Code granted herein
at any time on or after August 31, 1996, as follows:
(a) Such option shall be exercised by written
notice given to USR not less than one year prior
to the date on which the termination is to become
effective.
(b) Xxxxxxxxxx may request the return or
destruction of the Licensed Source Code at any
time on or after the effective date of such
termination.
(c) Nothing in this Section 3A.1.4 and no notice
or request given pursuant hereto shall prevent
Xxxxxxxxxx from requesting an earlier return or
destruction of the Licensed Source Code upon
termination of this Agreement pursuant to and in
accordance with any other provisions of this
Agreement.
(d) Notwithstanding the foregoing, during the
term of this Agreement and after the return or
destruction of the Licensed Software by USR,
Xxxxxxxxxx agrees that in the event it fails to
fulfill its support obligations as set forth in
Section 5 hereof, Xxxxxxxxxx will xxxxx USR
personnel reasonable access to and use of the
Licensed Source Code at Xxxxxxxxxx'x facilities or
at the facilities of a mutually agreeable third
party so as to permit USR to perform such
maintenance and support functions in a reasonably
efficient and effective manner.
3A.1.5 Upon termination of USR's rights to use the Licensed
Source Code pursuant to 3A. 1.4 above, USR may request
that the Licensed Source Code be placed and maintained
in Escrow with a recognized software Escrowee at USR's
expense to be held for release to USR upon mutually
agreed terms and conditions in the event that
Xxxxxxxxxx fails or refuses to fulfill its obligations
to grant access pursuant to Section 3 A.1.4(d).
SECTION 4. DEVELOPMENT PROJECT.
4.1 SCOPE. The Development Project shall be carried out by USR with the
full support of Licensor, including but not limited to the provision
by Licensor of the Licensor Development Services described in the
Statement of Work set forth on Exhibit 4.1 attached hereto.
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4.2 PROJECT SCHEDULE. Licensor agrees to cooperate with USR and make
qualified personnel available at the times and places reasonably
requested by USR for consultation with and to provide direct
assistance to USR to the extent reasonably necessary to enable the
Development Project to be completed in accordance with the schedule
established.
4.3 QUALITY OF WORK. All of the Licensor Development Services shall be
performed in a good and professional manner and the work product
produced by Licensor's personnel shall meet or exceed all applicable
industry standards for similar work as well as meeting the
Specifications.
4.4 THIRD PARTY SOFTWARE DEVELOPMENT. As set forth in Exhibits 2.7 and
4.1 attached, Xxxxxxxxxx may obtain licenses for certain Third Party
Software subject to a paid up license under which Xxxxxxxxxx is
entitled, upon payment of an additional license fee to sublicense such
Third Parry Software to USR as a part of the Licensed Software. Upon
receipt from Licensor of satisfactory documentation evidencing such
Third Party Software licenses and USR's potential rights as a
sublicensee thereunder, USR shall promptly notify Xxxxxxxxxx with
respect to whether USR is willing to accept a sublicense of such Third
Party Software. If USR does accept a sublicense of such Third Party
Software, USR shall promptly reimburse or pay the incremental license
fees which Xxxxxxxxxx shall have paid or become obligated to pay to
the third party licensor with respect to such sublicense for USR as
provided in Section 6.3 hereof. If USR accepts the sublicense of the
Third Party Software, USR must agree to accept all of the terms,
conditions and restrictions of the Licensee agreement between
Xxxxxxxxxx and the third party as are applicable to sublicensees
thereunder.
4.5 JOINT EFFORTS; CROSS-LICENSING. The parties agree that, except as
otherwise specifically provided herein, the copyright and other
intellectual property rights in any Code, Documentation or other work,
trade secret or invention which is created, conceived or invented by
either of them but which results directly from their joint development
efforts and cooperation pursuant to this Agreement, shall belong to
the party who creates such Code, Documentation or other work, trade
secret or inventions.
Further, except as they may otherwise agree in writing hereafter, the
parties agree that in the event they should be deemed joint authors,
joint creators or co-inventors of any such work, trade secret or
invention, all intellectual property rights in such newly authored,
created or invented work, trade secret or invention (excluding any
portion thereof consisting of preexisting Source Code or Derivative
Works thereof) shall be transferred and assigned, subject to the
license back described below, to the party making the greatest
contribution of time and effort, to creation and development work
resulting in such work, trade secret or invention. Licensor shall own
all portions of any joint work consisting of pre-existing Source Code
or Derivative Works thereof.
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Each such jointly created work, trade secret or invention shall be
disclosed promptly by the creator or inventor thereof to the other
party hereunder and such other party shall be granted a perpetual,
royalty-free license to copy, make, use, sublicense and sell such
work, trade secret or invention, subject only to such restrictions or
are reasonably necessary to protect and preserve the owner's
intellectual property rights therein. However, except as may be
otherwise specifically agreed in writing, nothing in this Section 4.5
shall be construed as a transfer or unrestricted license by either
party to the other of any of such party's Source Code which may be
used by the other party in such joint effort.
SECTION 5. SUPPORT AND MAINTENANCE: ENHANCEMENTS AND UPGRADES.
5.1 INITIAL MAINTENANCE PERIOD. During the period commencing on the date
hereof and ending upon the expiration of one (1) year following first
shipment of a production version of the Licensed Software in a USR
Product, Licensor, at no additional charge to USR shall provide USR
with (i)"Bug" fixes for all defects in the Licensed Software which are
reported by USR or discovered independently by Licensor and (ii) all
Maintenance Modifications to the Licensed Software which are otherwise
created by or for Licensor, whether or not such Maintenance
Modifications, are released to Licensor's other customers during such
period. Licensor shall provide USR with copies of the Source Code for
all such Bug fixes, and Maintenance Modifications, subject to the
provisions of Section 3A hereof, on a timely basis, which shall in no
event be later than the earlier of (i) the expiration of three months
following implementation of the Bug fix, (ii) the release of
Maintenance Modifications that incorporate it or (iii) its
incorporation into a new standard release of the Licensed Software.
5.2 ONGOING MAINTENANCE AND SUPPORT. Following the initial maintenance
period described in Section 5.1 above and so long thereafter as USR
continues to pay royalties to Licensor pursuant hereto, Licensor shall
make available to USR ongoing maintenance and support consisting of
Maintenance Modifications ("Support Services") pursuant to an annual
Software Support Agreement in the form attached as Exhibit 5.2. In
the event of any conflict or inconsistency between this Agreement and
such Software Support Agreement, the provisions of this agreement
shall control. USR may elect to purchase Support Services or choose
not to on an annual basis, in its sole discretion such support
services shall be provided for the compensation set forth in Section
6.5.
5.3 ENHANCEMENTS AND UPGRADES. During the initial maintenance period
described above, Xxxxxxxxxx shall provide, at no additional charge
beyond the royalties and other compensation payable hereunder, all
Enhancements and Upgrades to the Licensed Software. During all
subsequent periods in which USR subscribes for Support Services,
Licensor shall have an option to also offer any Enhancements and
Upgrades to the Licensed Software to USR upon terms and conditions not
less favorable than
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those offered to any other of Licensor's Customers determined in
accordance with Section 6.4 of this Agreement. USR shall be
responsible for distributing such Enhancements and Upgrades to its
customers who have purchased USR Hardware Platforms containing the
Licensed Software.
5.4 CHANGES TO LICENSED SOFTWARE. All Maintenance Modifications,
Enhancements and Upgrades provided to USR pursuant to this Section 5
and Exhibit 5.2 shall be and become Licensed Software subject to this
Agreement. Licensor shall deliver complete Code and Documentation,
including Source Code subject to the provisions of Section 3A, for all
such Maintenance Modifications, Enhancements and Upgrades to USR
promptly and in no event later than the first general release thereof
to Licensor's other customers.
5.5 COOPERATION BY USR. USR will cooperate with Licensor in the
maintenance and support of the Licensed Software during the term
hereof by:
5.5.1 promptly reporting any "Bugs" or other defects in the
Licensed Software which are discovered by USR;
5.5.2 working, with the cooperation of Licensor. to develop
Enhancements and Upgrades to the Licensed Software which USR
deems to be desirable. The Rights in such Enhancements and
Upgrades shall be determined as provided in Section 4.5.
5.6 CUSTOMER SUPPORT PROCEDURES.
5.6.1 USR will provide technical support to its customers and end
users of the USR Hardware Platform products incorporating
the Licensed Software, and will provide such technical
training to its resellers as USR in its discretion
determines to be necessary or appropriate.
5.6.2 Xxxxxxxxxx agrees to regularly supply bug notes or other
documentation defining the relevant hardware and software
information, symptoms, solutions, or work-arounds for major
Licensed Software problems.
5.6.3 Xxxxxxxxxx agrees to supply technical documentation that is
useful or necessary to perform customer support and
troubleshooting or to analyze the technical benefits and
risks of introducing a new software or hardware release of
the Licensed Software into USR's customer base.
5.6.4 USR and Xxxxxxxxxx agree to the following escalation policy
to manage problems that impact the performance of the
Licensed Software at end-user sites:
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(a) If USR is unable to resolve a problem experienced by a
customer that is seriously impacting the performance of the
Licensed Software in the USR Hardware Platform products in a
customer's network, then USR technical services personnel
will call upon the designated engineering resources at USR
for assistance. Within 5 business days, USR's Technical
Services and Engineering personnel will determine if contact
with Xxxxxxxxxx is required.
(b) Within 5 business days of written or electronic mail
notification to Xxxxxxxxxx'x designated technical support
organization USR and Xxxxxxxxxx will jointly agree to
classify the problem in one of three categories: (a) user
problem; (b) USR problem; or (c) Licensed Software problem.
A "user problem" is one that is a consequence of user error,
and is not a function of an inherent problem with the
product or documentation. A 'Licensed Software problem' is
one that is a function of an inherent problem with the
product, and is likely the consequence of a "Bug" or other
apparent defect in the Licensed Software or Documentation as
developed and implemented by Xxxxxxxxxx. A "USR problem" is
any other problem.
(c) If the Parties cannot determine and agree on the correct
category for the problem by the end of 5 business days at
the level of their respective customer service and support
organizations, it will be immediately escalated to the
responsible product managers of the products at USR and
Xxxxxxxxxx. Within 5 business days of that escalation. the
product managers will jointly establish an action plan and
timetable designed both to identify the category of the
problem, and, if USR so requests, to solve the problem for
the customer and the Parties will jointly execute that plan.
(d) A category (a) 'user problem' and category (b) 'USR problem'
should generally be managed by USR without additional
support from Xxxxxxxxxx.
A category (c) 'Licensed Software problem' is a problem that
by definition may require support from and-involvement of
Xxxxxxxxxx. USR may elect to implement its own solution or
to request Xxxxxxxxxx'x assistance. In the event that a
category (c) 'Licensed Software problem' is being worked on
by the Parties' respective service and support
organizations, no charges by Xxxxxxxxxx to USR for support
will be justified or warranted during the Initial
Maintenance Period described in Section 5.1 and thereafter
during all periods for which the applicable support and
maintenance fees, as per Section 6.5, have been paid, and
Xxxxxxxxxx will cooperate fully in the development of a
solution to the problem. All Category (c) problems must be
brought to the attention of the responsible product managers
of the products at USR and Xxxxxxxxxx.
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(e) Within 5 business days of the decision that any given
problem is a category (c) 'Licensed Software problem, and
USR's determination to involve Xxxxxxxxxx, Xxxxxxxxxx and
USR will jointly develop and implement an action plan aimed
at eliminating the problem the customer is experiencing.
Category (c) 'Licensed Software problem' will be further
classified into two categories, 1) Critical Problems and 2)
Non-Critical Problems. Critical Problems are problems
classified by Xxxxxxxxxx and USR as critical to the
fundamental operation of the USR product. Xxxxxxxxxx will
generate a fix for each such critical problem and send it to
USR on the appropriate media as soon as possible.
Xxxxxxxxxx will contact USR within five(5) working days as
to the status of resolution of the problem. Non-Critical
Problems are problems which are not critical to the
fundamental operation of the affected USR product. At USR's
request, Xxxxxxxxxx will attempt to generate fixes for
problems classified by Xxxxxxxxxx and USR as non-critical to
the fundamental operation of the affected USR Hardware
Platform products in the next release of the Licensed
Software. When possible Xxxxxxxxxx will describe temporary
work-arounds to USR.
(f) Xxxxxxxxxx acknowledges and agrees that Category (c)
'Licensed Software problems' which are critical problems or
are otherwise of material significance which remain
unresolved for an extended duration threaten the success of
the USR products in the market place, and may require that
USR gain access to the source code, if the Source Code is
not then otherwise in USR's possession pursuant to this
Agreement. USR has the right to identify unresolved category
(c) 'problems' of material significance that must be
resolved within the next three months by Xxxxxxxxxx, after
which USR will be granted access to the Source Code as
specified in Section 3A.1.4(d) to implement a fix for its
customer base. At no time will Xxxxxxxxxx'x rights in such
Source Code and documentation be transferred to USR. USR
will have the right to distribute, royalty free, the fixes
so created in binary form to its customers.
5.7 GOVERNMENT CONTRACTS. USR agrees to include the following paragraph
in all contracts and purchase orders for the Licensed Products
supplied to the U.S. Government under a prime contract or to a
contractor operating under a US. Government contract:
"Use, duplication, or disclosure by the Government is subject to
restrictions as set forth in subparagraph (c)(1)(ii) of the Rights in
Technical Data and Computer Software clause at 252.227-7013."
SECTION 6. FEES AND ROYALTIES; PAYMENT.
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6.1 NON-RECURRING ENGINEERING FEES. In consideration of the Development
Services to be performed by Licensor, USR agrees to pay Licensor
non-recurring engineering fees totaling [CONFIDENTIAL TREATMENT
REQUESTED], as follows:
6.1.1 [CONFIDENTIAL TREATMENT REQUESTED] will be paid upon
execution and delivery of this Agreement;
6.1.2 [CONFIDENTIAL TREATMENT REQUESTED] be paid upon satisfactory
completion of Phase I of the Development Project and
6.1.3 [CONFIDENTIAL TREATMENT REQUESTED] be paid upon satisfactory
completion of Phase II of the Development Project.
6.2 ROYALTIES. In consideration of the rights and licenses granted to USR
pursuant to Section 3 hereof, USR agrees to pay royalties to Licensor,
with respect to the Licensed Software, which royalties shall be
computed as set forth in Exhibit 6.2 attached hereto (the
"Royalties"). The Royalties shall be paid in accordance with the
following procedure:
6.2.1 Royalties shall be computed and paid an a quarterly basis
within 60 days following the end of each of USR's fiscal
quarters during the term hereof.
6.2.2 Each Royalty payment shall be accompanied by USR's sales and
sublicense report which shall set forth in reasonable detail
the product sales and sublicenses of the Licensed Software
for such quarterly period upon which the Royalties are
based and the calculations used by USR to determine the
amount of the Royalty payment then due.
6.2.3 Licensor shall have the right, exercisable not more
frequently than once in any 12-month period, upon reasonable
notice and regular business hours, to inspect and review,
directly or through its certified public accountants, USR's
books and records which are related to sales of products and
grants of sublicenses relevant to the computation of the
Royalties for the sole purpose of verifying or testing the
accuracy of USR's reports and Royalty payments. The costs
and expenses of such inspection shall be borne by Licensor
except that Licensor shall not be required to reimburse USR
for any time spent by USR staff or any USR overhead.
6.3 THIRD PARTY SOFTWARE FEES. Licensor shall be entitled to
reimbursement for the out-of-pocket costs reasonably incurred by
Licensor in connection with any sublicense to USR of Third Party
Software included in the Licensed Software with USR's consent. USR,
at its option may decline to pay such sublicense fee, in which case,
unless USR obtains the necessary license directly, the Enhancements to
the Licensed Software provided by the Third Party Software will be
omitted from the Licensed Software. In
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addition, if USR elects to accept a sublicense of any Third Party
Software from Xxxxxxxxxx, USR will also be obligated to reimburse or
pay any incremental annual maintenance fees incurred by Xxxxxxxxxx in
accordance with the license documents disclosed to USR with respect to
the sublicense of the Third Party Software to USR.
6.4 MOST FAVORED LICENSEE. If at any time during the term of this
Agreement, Licensor enters into a similar agreement with any other
licensee with respect to the Licensed Software or other Software with
essentially identical functionality, on terms, conditions or rates
more favorable than those accorded to USR hereunder for amounts of
royalty and fee revenues which are not demonstrably substantially
greater than those paid or payable to Licensor pursuant hereto,
Licensor shall, within thirty (30) days of its acceptance of the new
agreement with the other licensee, notify USR of such transaction.
Within thirty (30) days of receipt of Licensor's notice, USR may give
written notice to Licensor that this Agreement is to be amended to
provide USR with the same terms, conditions and/or royalty rates
provided to the other Licensee. Such amendment shall be made
retroactive to the effective date of the other licensee's agreement.
6.5 SUPPORT AND MAINTENANCE FEES. For Support Services provided by
Licensor pursuant to Section 5.2 above (after the first year), USR
shall pay an annual maintenance fee which does not exceed
[CONFIDENTIAL TREATMENT REQUESTED] per year in the first year
following the initial maintenance period. In subsequent years the
maximum annual maintenance fee will not exceed [CONFIDENTIAL TREATMENT
REQUESTED]% ([CONFIDENTIAL TREATMENT REQUESTED]) of the previous
year's fee.
SECTION 7. LICENSOR'S WARRANTIES; INDEMNIFICATION.
7.1 MEDIA WARRANTY. For a period of ninety (90) days from the date of
delivery of any item of the Licensed Software, to USR, Licensor
warrants that the media in which such item of the Licensed Software is
embodied and the media on which any later version or release is
delivered will be free from defects in material and workmanship.
7.2 NO SOFTWARE PERFORMANCE WARRANTY. Licensor represents and warrants
only that the Code (including Source Code) delivered by it to USR
pursuant hereto constitutes a complete copy of the Licensed Software
and the Licensed Source Code which Licensor has agreed to deliver
pursuant hereto. With respect to the operating and performance
characteristics of such Code, Licensor delivers and USR accepts it "AS
IS," without warranty.
7.3 RIGHTS WARRANTY. Licensor warrants that it has the authority to enter
into and perform its obligations under this Agreement and to grant the
licenses provided herein. Licensor further warrants that, except for
the Third Party Software, the Licensed Software is the property of
Licensor, and with respect to the Third Party Software, the
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Licensor has full rights under valid licenses covering the Third Party
Software licensed to USR under this Agreement and the use and dealings
therewith by USR and its successors, assigns and customers, immediate
and intermediate.
7.4 INDEMNIFICATION. Licensor agrees to defend, indemnify and hold USR
harmless against any claims that the Licensed Software infringes upon
or violates any patent, copyright, trade secret, trade name,
trademark, maskwork right or any other proprietary right of any third
party (Intellectual Property Right"). If any claim that the Licensed
Software infringes upon or violates any Intellectual Property Right is
made against USR or its customers, USR shall promptly notify Licensor,
and Licensor shall defend, indemnify and hold USR harmless against any
and all liability, losses, damages, expenses (including attorney's
fees) and demands of any kind arising out of any such claim, whether
or not notorious or successful, provided that USR (i) gives Licensor
reasonably prompt notice of such claim, (ii) fully cooperates with
Licensor, at Licensor's expense, in the defense of such claim, and
(iii) gives Licensor the right to control the defense and settlement
of any such claim, except that Licensor shall not enter into any
settlement that affects USR's rights or interests without USR's prior
written approval. USR shall have no authority to settle any claim on
behalf of Licensor.
If by reason of any such claim, USR or its customers shall be
prevented or are likely to be prevented from selling or using any USR
Products, or if, in Licensor's opinion, such claim is likely to occur,
Licensor will use its best efforts, at its expense, to (i) obtain all
rights required to permit the sale or use of such products by USR and
its customers; or (ii) modify or replace the Licensed Software to make
it non-infringing (and extend this indemnity thereto), provided that
any such replacement or modified Licensed Software are satisfactory to
USR. If Licensor is unable to achieve either of the options set forth
above within a reasonable period of time after the issuance of an
injunction, but in no event longer than one hundred eighty (180) days,
Licensor shall promptly refund to USR an amount equal to all
Royalties, if any, theretofore paid by USR to Licensor with respect to
such products, plus the fees paid by USR pursuant to Section 6.1
hereof, provided, however, that this refund obligation shall not apply
in the case of an injunction affecting only Third Party Software.
7.5 DISCLAIMER. THE LIMITED WARRANTIES AND INDEMNIFICATION CONTAINED IN
THIS SECTION 7 ARE GIVEN AND MADE IN LIEU OF ALL OTHER WARRANTIES,
EXPRESS, IMPLIED OR STATUTORY, INCLUDING BUT NOT LIMITED TO ANY
IMPLIED WARRANTIES OF MERCHANTABILITY. FITNESS FOR A PARTICULAR
PURPOSE OR NONINFRINGMENT.
SECTION 8. TERM AND TERMINATION.
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8.1 TERM OF AGREEMENT. This Agreement shall become effective on the first
day that it has been executed by an authorized representative of USR,
and by an authorized representative of Xxxxxxxxxx. Unless sooner
terminated hereunder, this Agreement shall remain in force through
expiration of all copyrights and other intellectual property rights in
all Licensed Software.
8.2 TERMINATION. USR may, at its option, terminate this Agreement at any
time for any reason. Such termination shall become effective thirty
(30) days after USR gives written notice of termination executed by an
authorized representative of USR. Either party may terminate this
Agreement in the event of a material breach by the other party which
continues uncured ninety (90) days after the breaching party has
received a written notice from the terminating party which describes
the breach in reasonable detail. If this Agreement is in effect for a
period exceeding one (1) year and USR terminates this Agreement
pursuant to the first sentence of this Section 8.2 with the intent of
replacing Licensor's Code in the USR Hardware Platforms described in
Exhibit 3.1.1 (to the extent, if any, that such Code has theretofore
been integrated or incorporated into any of such USR Hardware
Platforms) and any subsequent amendments thereto, without 180 days
written notice, then royalty fees shall be paid with respect to the
sales of Products which contain functionality that is substantially
equivalent to that provided by the Licensed Software, with or without
Xxxxxxxxxx'x Code, for a period of 180 days from the date of notice of
termination. Notwithstanding the forgoing sentence, USR shall have no
obligation to make any such payment in the event that Xxxxxxxxxx
commits a material breach of its obligations under this Agreement or
permits such a breach to remain uncured during such 180 day period or
any portion thereof and nothing herein shall prohibit or restrict USR
from independently developing or licensing any technology which is
similar in function to the Licensed Software.
8.3 TERMINATION BY XXXXXXXXXX. In addition to its right to terminate as
provided in Section 8.2 above. Xxxxxxxxxx may. at its option.
terminate this Agreement for any of the following reasons:
8.3.1 USR breaches any obligation to pay any determinable amount
of money owed pursuant hereto which it fails to cure within
five (5) business days following receipt of written notice
thereof describing such breach and the amount or amounts
owed in reasonable detail.
8.3.2 USR commits a material breach of its obligations under
Section 3A hereof which remains uncured fifteen (15)
business days following receipt of written notice thereof
describing such breach in reasonable detail.
8.3.3 USR voluntarily effects termination of the OEM Supply
Agreement for any reason other than breach by Xxxxxxxxxx or
mutual agreement of the parties thereto.
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Such termination shall become effective thirty (30) days after
Xxxxxxxxxx gives written notice of termination executed by an
authorized representative of Xxxxxxxxxx.
8.4 SURVIVAL AFTER TERMINATION. The termination of this Agreement shall
not affect any liability of USR accrued pursuant hereto or any paid-up
right or license granted to USR hereunder. In the event of termination
of this Agreement, in whole or in part, any right, license or
sublicense exercised or granted prior to such termination (including
those for internal use by USR, USR's Subsidiaries, and other third
parties such as dealers, distributors, agents, and customers), and any
corresponding payment obligations of USR hereunder, shall survive and
continue. Without limiting the generality of the foregoing, (1) USR
may sublicense, sell, lease and distribute any inventory of products
based on or containing Licensed Software, including work in progress,
on hand at the time of such termination, (2) USR may continue to
exercise the rights and licenses granted hereunder for a period of up
to six (6) months after termination to fill any orders received by
USR, its Subsidiaries, distributors, agents or dealers received and
accepted from their customers prior to the effective date of
termination, and (3) USR may continue to exercise the rights and
licenses granted hereunder as necessary to provide maintenance and
support for customers. Neither, USR, its Subsidiaries, dealers,
distributors, agents nor customers shall have any obligation to return
to Licensor any copies of Licensed Software or Derivative Works
thereof made or obtained prior to such termination, except that, upon
demand by Licensor following termination of this Agreement. USR shall
return to Licensor or destroy all copies of the Licensed Source Code
and design Documentation for the Licensed Software as provided in
Section 3A.
In addition, the provisions of Sections 2, 3, 4.5, 7, 8, 10 and 11
shall survive and continue with respect to all Licensed Software that
is the subject of this Agreement at the time of termination.
8.5 RESERVATION OF PUBLIC DOMAIN RIGHTS. The existence, termination or
expiration of this Agreement shall not be construed as eliminating or
limiting any rights that USR, its Subsidiaries, dealers, distributors,
agents and customers would have had if USR had never entered into this
Agreement, including but not limited to rights to copy works that are
in the public domain.
8.6 INDEPENDENT DEVELOPMENT PROCEDURES. During the time that USR is in
possession of the Licensed Source Code delivered to it pursuant to
Section 3A and for a period of nine (9) months thereafter, if USR
undertakes or commences any independent development (as contemplated
in Sections 8.2 and 11.1 herein) of any Code with functionality that
is comparable to that of the Licensed Software, then USR shall comply
with the following "clean room" procedures:
8.6.1 No personnel who have accessed any portion of the Licensed
Source Code delivered to USR pursuant to Section 3A hereof,
which is related to the
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functionality that is the subject of such independent
development (which shall include all persons whose names
have been recorded in the list described in Section
3A.1.2(b) and who are designated therein as having had such
access), shall perform any such independent development
work. Further, no personnel who have accessed the Licensed
Source Code shall disclose any information contained in the
Licensed Source Code to, or otherwise consult with or
advise, any persons performing such development work with
respect to the development of Code having any functionality
that is comparable to that of the Licensed Software.
8.6.2 No personnel connected with such independent development
shall reverse engineer, disassemble or decompile any of the
Licensed Software.
8.6.3 Such independently developed Code shall not include or
incorporate any Xxxxxxxxxx trade secreted, proprietary,
copyrighted or patented materials, in any form.
8.6.4 In order to ensure USR's compliance with the foregoing
measures, Xxxxxxxxxx shall be entitled to inspect USR's
facilities and review its procedures, records and
development efforts, provided that Xxxxxxxxxx and its
representatives may use the information obtained thereby
only for the foregoing purposes and shall maintain all such
information in confidence in accordance with Section 11.9
hereof and, provided further, that nothing herein shall
entitle Xxxxxxxxxx to have access to any Source Code
licensed by USR from any third party. The scope and timing
of any such inspection or review shall be agreed to by the
Parties, in good faith.
8.6.5 Notwithstanding the foregoing, the Parties hereby agree that
if USR licenses or otherwise acquires Code that has
functionality comparable to that of the Licensed Software
and that was developed independently by any third party or
by USR personnel in accordance with the foregoing provisions
and ports such independently developed Code into any USR
product without enhancing or altering the functionality of
such Code in any material respect, such porting activity, in
and of itself shall not be deemed an independent development
effort subject to subsection 8.6.1 hereof.
SECTION 9. NO UNDERTAKING TO MARKET.
USR shall have full freedom and flexibility in its decisions concerning the
development or marketing of products consisting of the USR Hardware
Platforms that incorporate or are based on Licensed Software, including the
decision of whether to market or discontinue marketing any particular
product whether to offer products separately and/or in combination with
other code and Documentation and in its decisions regarding terms,
conditions and pricing. Nothing in this Agreement, shall be construed as
an obligation, guarantee or
-19-
commitment by USR that any product that incorporates or is based on the
Licensed Software shall be announced and marketed by USR, or that any
marketing effort will be productive of any particular level of sales or
of royalties or other additional payments to Licensor.
It is understood that USR may license or transfer copies of products that
incorporate or are based on Licensed Software at volume discounts,
promotional or special charges, dealer discounts, special bids or other
pricing arrangements and may increase or decrease any prices, charges or
fees relating to any products, without notice to or approval of Licensor.
SECTION 10. LIMITATION OF LIABILITIES.
10.1 EXCLUSION OF CERTAIN DAMAGES.
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY
CONSEQUENTIAL. INDIRECT, SPECIAL OR INCIDENTAL DAMAGES RESULTING FROM
BREACH OF THE AGREEMENT, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH POTENTIAL LOSS OR DAMAGE.
10.2 LIMITED LIABILITY. In no event shall USR be liable for amounts in
excess of the amounts payable in accordance with the terms of this
Agreement and the applicable Schedules and Exhibits hereto.
SECTION 11. GENERAL.
11.1 FREEDOM OF ACTION. This Agreement shall not be construed to limit
either party's right to obtain services or software programs from
other sources, or to prohibit or restrict either party from
independently developing (in accordance with the provisions of Section
8.6 hereof, or acquiring competitive materials. Nothing in this
Agreement restricts either Party from making, having made, using,
leasing, licensing, selling or otherwise disposing of any products or
services whatsoever, nor is either Party's right to deal with any
other vendors, suppliers, contractors or customers limited thereby.
11.2 ENTIRE AGREEMENT. The provisions of this Agreement and the applicable
Schedules and Exhibits hereto. in effect from time to time, constitute
the entire agreement between the parties and supersede all prior
agreements. oral or written. and all other communications relating to
the subject matter hereof and thereof.
11.3 GOVERNING LAW: VENUE. This Agreement shall be construed and enforced
in accordance with the laws of the State of California applicable to
agreements between residents of California wholly executed and wholly
performed in such state. Any action or proceeding brought by either
party against the other arising out of or related to this Agreement
shall be brought only in a state or federal court of competent
-20-
jurisdiction located in the State of California or the State of
Illinois, and the parties hereby consent to the in personam
Jurisdiction of said courts.
11.4 SEVERABILITY. This Agreement is intended to constitute an independent
and distinct agreement of the parties. If any provision of this
Agreement or Schedules and Exhibits hereto is held by a court of
competent jurisdiction to be unenforceable or contrary to law, the
remaining provisions of this Agreement and the Schedules and Exhibits
hereto will remain in full force and effect.
11.5 NOTICE; AND PAYMENTS. Any notice required or permitted to be made or
given by either party hereto pursuant to this Agreement will be
sufficiently made or given on the date of issuance if sent by such
party to the other party by mail. telecopy, commercial courier,
personal delivery, or a similar reliable delivery method, addressed as
set forth below or to such other address as a party shall designate by
written notice given to the other party.
In the case of USR:
U.S. Robotics, Inc.
0000 Xxxxx XxXxxxxxx Xxxx.
Xxxxxx, XX 00000
Attn: Xxxxx Xxxxxx
With a copy to:
U.S. Robotics, Inc.
0000 Xxxxx XxXxxxxxx Xxxx.
Xxxxxx, XX 00000
Attn: Legal Department
In the case of Licensor:
Xxxxxxxxxx Enterprises, Inc.
0000 Xxxx Xxxxxx Xxxxxxx, # 000
Xxxxxxxxxx, XX 00000
Attn: Xx. Xxxxx Xxxxxxx
With a copy to:
Xxxxxxxxxx Enterprises. Inc.
0000 Xxxx Xxxxxx Xxxxxxx, 0000
Xxxxxxxxxx, XX 00000
Attn: Vice President of Operations
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11.6 AMENDMENT; WAIVER. No amendment or modification of this Agreement
shall be effective unless it is set forth in a writing which refers to
the particular provisions so amended or modified and is executed by
officers of both parties. No waiver or any provision of this Agreement
shall be effective unless it is set forth in a writing which refers to
the provision so waived and the instrument containing such provision
and is executed by an officer of the party waiving its rights. No
failure or delay by either party in exercising any right, power or
remedy will operate as a waiver of any such right, power or remedy.
11.7 TRADEMARKS AND ADVERTISING. Nothing in the Agreement confers upon
Licensor any right to use USR's trademarks, trade names or service
marks in connection with any non-USR product, service, promotion,
publication, or to adopt any trademark which is confusing similar to
any Customer trademark or which includes a prominent portion of any
USR trademark so as to indicate Licensor's product equivalence or
affinity to, or applicability or compatibility with any USR product.
Licensor may represent that its products operate in conjunction with
or on certain USR products, if such is the case and if Licensees
reference to USR is not misleading. USR may, at its option, identify
the Licensed Software as having been developed by the Licensor. USR
shall take reasonable steps to modify any such reference to Licensor
if Licensor objects in writing to the manner of such use.
11.8 NOTICE OF BREACH. Except in the event of a material breach of a
provision contained in Section 3A hereof, USR shall not be deemed to
be in breach of any of its obligations hereunder unless and until
Licensor shall have given USR written notice by certified or
registered mail, return receipt requested, specifying the nature of
such breach and USR shall have failed to cure such breach within
ninety (90) days after USR'S receipt of such written notice.
11.9 CONFIDENTIALITY. In order to protect their respective trade secrets
and other proprietary or confidential information which the parties
have therefore disclosed or may hereafter disclose to one another in
connection with the negotiation and preparation of this Agreement or
with the performance by the parties of their respective duties and
obligations hereunder, the parties have entered into a separate
Non-Disclosure Agreement dated and effective 11 November, 1993, a true
and complete copy of which is attached hereto and incorporated herein
by this reference. The parties hereby agree that such Non-Disclosure
Agreement shall hereafter cover all confidential information created
or disclosed by either party pursuant hereto and that, in the event of
any conflict or inconsistency between this Agreement and such
Non-Disclosure Agreement, the provisions of this Agreement shall
control.
11.10 PUBLIC ANNOUNCEMENTS. USR and Licensor further agree that their
discussions relating to this Agreement and the existence and terms
hereof shall be treated as confidential and neither party shall issue
any press release or make any public announcement with respect thereto
without the prior review and approval of the other party.
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11.11 ASSIGNMENT. This agreement will bind and inure to the benefit of the
respective Party's successors and assigns; provided that USR may not
assign (or delegate) this Agreement, in whole or in part, without
Xxxxxxxxxx'x prior written consent. Any attempted assignment (or
delegation) without such consent shall be void.
11.12 INJUNCTIVE RELIEF. If USR breaches any of the provisions contained in
Sections 3, 3A, 8.6, 11.7, 11.9 or 11.10 (or if Xxxxxxxxxx reasonably
anticipates such a breach), then Xxxxxxxxxx shall be entitled, in
addition to any other remedy available to it, to injunctive relief
enjoining such breach. USR acknowledges that other remedies would be
inadequate in the event of such a breach. If Xxxxxxxxxx breaches any
of the provisions contained in Sections 3, 3A, 4, 5, 7, 8.6, 11.7,
11.9 or 11.10 (or if USR reasonably anticipates such a breach), then
USR shall be entitled, in addition to any other remedy available to
it, to injunctive relief enjoining such breach. Xxxxxxxxxx
acknowledges that other remedies would be inadequate in the event of
such a breach.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized officers, representatives or principals.
U.S. ROBOTICS, INC. XXXXXXXXXX ENTERPRISES, INC.
("USR") ("Licensor")
By: /s/ Xxxxxx X. Xxxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
-------------------------------- ----------------------------------
Name: Xxxxxx X. Xxxxxxxx Name: Xxxxxx X. Xxxxxxx
-------------------------------- --------------------------------
Title: Vice President Title: Vice President Operations
-------------------------------- -------------------------------
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EXHIBIT 2.7
TO
OEM SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
DATED SEPTEMBER 1, 1994
BETWEEN
XXXXXXXXXX ENTERPRISES, INC.
AND
U.S. ROBOTICS, INC.
LICENSED SOFTWARE, LICENSED SOURCE CODE AND SYSTEM SPECIFICATIONS
The programs listed below as Licensed Software which may be ported to execute
in machine-readable (binary) form in the USR Hardware Platforms, specified
UNIX or DOS based hosts, or remote user client machines, comprise the
"Licensed Software" and are included under this Agreement. The Licensed
Software is described below and in the related manuals at time of execution
of this Agreement which are attached hereto and made a part hereof. As
required by the Agreement, Licensor shall also make the related Source Code
which is listed or described below as Licensed Source Code or Additional
Source Code available to USR. As used herein. all references to "UNIX" mean
only the following specified releases:
(i) Sun Platform: OS4.1.3. Solaris and subsequent revisions
(ii) Hewlett Packard 9000 Platform: HPUX 9.3 and subsequent
revisions
(iii) IBM-RS 6000 Platform: AIX Rel.3.2 and subsequent
revisions.
LICENSED SOFTWARE (OBJECT CODE)
1. The executable Object Code generated by Licensor's Source Code for Release
[CONFIDENTIAL TREATMENT REQUESTED] of the Portmaster Model PM-2E dated June
1, 1994.
2. The executable Object Code generated by Licensor's Source Code for the
Frame Relay Protocol from Release [CONFIDENTIAL TREATMENT REQUESTED] of the
IRX Router product. This specifically excludes hardware device drivers
which send and receive HDLC data frames.
3. The executable Object Code distributed by Licensor as a DOS device driver
known as XXXXXX.XXX version 1.9 and a Microsoft Windows virtual device
driver known as PPVXD.386 version 1.0. These device drivers provide an
Ethernet system interface to the client IBM compatible PC (386 only) and
send and receive PPP compliant network frames for the TCP/IP and IPX
protocols.
2.7.1
4. The executable Object Code distributed by Licensor as a DOS executable
known as NWTELNET.EXE version 1.4. This utility program provides
administrative telnet access to a host using the SPX/IPX protocol.
5. The executable Object Code distributed by Licensor as both a DOS executable
and a UNIX executable known as PMDIAL version 1.3. This utility initiates
a dial-our SLIP or PPP session on a host which supports the functionality
of the Portmaster Model PM-2E running Release [CONFIDENTIAL TREATMENT
REQUESTED]
6. The executable Object Code distributed by Licensor as a UNIX executable
known as PM-OPEN version [CONFIDENTIAL TREATMENT REQUESTED] referred to in
product documentation as PMCONSOL for X windows). This management
application utilizes the X Window systems. This executable application is
specifically licensed to Licensee until September 1, 1995.
7. The executable Object Code distributed by Licensor as both a DOS executable
and a UNIX executable known as PMRESET version 1.3. This utility resets a
serial port on a host which supports the functionality of the Portmaster
Model PM-2E running Release [CONFIDENTIAL TREATMENT REQUESTED]
8. The Object Code library known as PMLIB for Release [CONFIDENTIAL TREATMENT
REQUESTED] of the Portmaster Model PM-2E.
9. The executable Object Code known as the boot prom code (other than BIOS
specific Code which is licensed from third parties) for the Portmaster
Model PM-2E.
LICENSED SOURCE CODE
1. The Source Code used to generate Licensor's Release [CONFIDENTIAL TREATMENT
REQUESTED] of the Portmaster PM-2E dated June 1, 1994.
2. The Source Code used to generate Licensor's Frame Relay Protocol from
Release [CONFIDENTIAL TREATMENT REQUESTED] of the IRX Router product. This
specifically excludes hardware device drivers which send and receive HDLC
data frames.
3. The Source Code for the library known as PMLIB for Release [CONFIDENTIAL
TREATMENT REQUESTED] of the Portmaster Model PM-2E.
4. The Source Code for the boot prom (other than BIOS specific Code which is
licensed from third parties) described above.
ADDITIONAL LICENSED SOFTWARE (OBJECT CODE) AND LICENSED SOURCE CODE PLANNED FOR
FUTURE DEVELOPMENT.
2.7.2
1. Upgrade functionality which provides dial-in and dial-out capability for
Appletalk over PPP. for the Source Code licensing of this functionality,
USR must either pay the Source Code licensing fee to the third party as
described in the contract between Xxxxxxxxxx and the third party or
otherwise obtain the required license from the third party.
2. Upgrade functionality for providing dial-out modem pooling for Macintosh
computers on an Appletalk ethernet network. For the Source Code licensing
of this functionality, USR must either pay the Source Code licensing fee to
the third party as described in the contract between Xxxxxxxxxx and the
third party or otherwise obtain the required license from the third party.
3. Upgrades, Enhancements, and Maintenance Modifications made available in
Licensor's general software distribution for the Portmaster Model PM-2E
during the first year of this Agreement.
4. Upgrade functionality, if any, that is developed in Phase 3 of the
Development Project with respect to (1) Modem dial-out (sharing) with
Novell Networks, (2) Additional Routing Protocols, (3) Event/Security
Logging and (4) SNMP Configuration Management as described in the Statement
of Work attached as Exhibit 4.1.
ADDITIONAL SOURCE CODE
From time to time Licensor may provide additional Source Code (including but
not limited to the Source Code for PPODI) to Licensee for the purpose of
debugging application problems. Unless specified in writing by Licensor, no
rights to this Source Code will be granted to Licensee. This Source Code
must be returned to Licensor within 90 days of receipt by Licensee.
SYSTEM SPECIFICATIONS FOR PHASE 1
Includes the current functionality of the Licensed Software as described the
manuals which are attached hereto and made a part hereof.
ADDITIONAL SYSTEM SPECIFICATIONS FOR PHASE 2
Additional functionality to be added in Phase 2 described in Exhibit 4.1 are
also included under this licensing agreement. The functionality to be added
for Phase 2 includes:
- Appletalk over PPP
- Appletalk dial out/modem pooling
PHASE 3 (FUTURES) SYSTEM SPECIFICATIONS
Additional functionality which may be added pursuant to Phase 3 described in
Exhibit 4.1.
- Dial-out modem sharing for Novell networks, supporting the Novell NASI
interface and Int14 method
2.7.3
- Additional Routing protocols
- OSPF
- BGP
- EGP
- Improved system and security event logging to Novell, Apple and UNIX
servers
- Windows Virtual Driver (VxD replacement for PPPODI)
- SNMP Configuration management
2.7.4
EXHIBIT 3.1.1
SYSTEM INTEGRATION AND TESTING
TO
OEM SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
DATED SEPTEMBER 1, 1994
BETWEEN
XXXXXXXXXX ENTERPRISES, INC.
AND
U.S. ROBOTICS, INC.
USR HARDWARE PLATFORMS
The Xxxxxxxxxx Software is licensed to be incorporated and execute in the
following hardware platforms:
1. Current and future Total Control WAN HUB (a rack mountable chassis with 17
application slots, a mid-plane, a dual T1 direct connect interface, which
may include 1 network management card, a gateway application card and up to
16 quad modem cards, x.25 PAD, etc.) gateway application cards installed in
Total Control WAN/HUB products wherein such gateway application cards
service only direct telco interfaces such as channelized T1/E1, Analog
PSTN, primary rate ISDN and Switched 56 Connections.
2. 1 or 2 port units which may be developed consisting of standalone devices
with a fixed configuration of 1 ethernet or token ring interface and either
8 or 16 direct telco interfaces for analog PSTN, basic rate ISDN or
Switched 56 service, but not primary rate ISDN.
3. 8 or 16 port units which may be developed consisting of standalone devices
with a fixed configuration of 1 ethernet or token ring interface and either
8 or 16 direct telco interfaces for analog PSTN, basic rate ISDN or
Switched 56 service, but not primary rate ISDN.
4. A standalone unit which may be developed consisting of a fixed
configuration of 1 ethernet or token ring interface and one direct telco
interface for primary rate ISDN service which supports 24 or 30 64-KBPS
channels.
3.1.1
EXHIBIT 4.1
TO
OEM SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
DATED SEPTEMBER 1, 1994
BETWEEN
XXXXXXXXXX ENTERPRISES, INC.
AND
U.S. ROBOTICS, INC.
STATEMENT OF WORK
Xxxxxxxxxx and USR will primarily be responsible for completing certain work
during the phases of the project under this Agreement. In all cases, timely
support will be required from either company to the party who is primarily
responsible for a functional area of the project.
PHASE 1
OPERATING SOFTWARE
The Xxxxxxxxxx Operating Software includes the operating system, protocol
stacks, call control/management code, and network interface drivers.
Xxxxxxxxxx will prepare the code to be compiled by a 32-bit compiler and
run in an Intel x86 protected mode environment. USR will port this code to
run in the Total Control Gateway card and Shared Access platforms under the
VRTX operating system.
GATEWAY CARD PACKET BUS
USR will design the Packet Bus API and will port the Xxxxxxxxxx code to
this interface. Xxxxxxxxxx will directly assist in this effort.
TOKEN RING NETWORK INTERFACE
Each company will independently develop its token ring network interface
cards and port the token ring drivers to their respective platforms. USR
will grant to Xxxxxxxxxx an non-exclusive, paid-up license to use the
source code for USR's proprietary token ring driver software. Xxxxxxxxxx
shall not distribute, sub-license, transfer, sell or lease copies of the
source code to any third party. Xxxxxxxxxx and its successors have the
right to incorporate compiled versions, object code, in any of its products
and may distribute, sub-license, transfer, sell or lease copies of the
executable code which are bundled with the Xxxxxxxxxx software.
4.1.1
BOOT PROM/LOADER CODE
A BIOS extension will be required in the USR Total Control Gateway card and
Shared Access platforms to provide the functionality of TFTP boot, and
software download into FLASH memory. Xxxxxxxxxx will provide the
Portmaster boot prom source code (excluding any BIOS specific code that is
licensed by Xxxxxxxxxx from third parties) to be used as a reference to aid
USR in this development.
DOS/WINDOWS REMOTE CLIENT USER INTERFACE
USR will develop its own user interface software for DOS and Windows for
configuration and dialing, to be used with Xxxxxxxxxx'x PPPODI. Source
code modifications may need to be made to PPPODI to support this user
interface as heretofore discussed by the Parties.
NETWORK MANAGEMENT
Xxxxxxxxxx will replace all reference to "Xxxxxxxxxx" and "Portmaster" in
the UNIX versions of pmconsol. and replace them with names to be provided
in writing by USR. USR will distribute and support the UNIX version of
pmconsol.
USR will develop a Windows version of pmconsol which uses the pmlib library
and such version shall become part of the Licensed Software. USR will have
to modify pmlib to, at minimum, add support for the Novell LAN Workplace
protocol stacks and the WINSOCK interface.
INSTALLATION AND UTILITY PROGRAMS
USR will develop their own installation and utility programs, and use the
Xxxxxxxxxx version of these programs as reference.
SYSTEM INTEGRATION AND TESTING
Both companies will participate in the system integration and testing of
the new products. Xxxxxxxxxx will provide to USR any test applications or
test jigs that can aid in functional, stress, or production testing.
PHASE 2
APPLETALK OVER PPP
Xxxxxxxxxx will develop an Appletalk connectivity solution, which will at
least include routing protocols, zone information protocols, and service
information protocols. Additionally, dial-out shared modem (modem pool)
support will be developed. This functionality will be integrated into the
base Xxxxxxxxxx software by Xxxxxxxxxx and ported to the USR platforms by
USR. Xxxxxxxxxx may use Third Party software to accomplish this
functionality.
PHASE 3 FUTURES
The following functionality is anticipated in future Xxxxxxxxxx software
releases. If developed, this functionality will be included with this Software
Licensing Agreement. This functionality may be developed by either party or be
developed jointly.
4.1.2
MODEM DIAL-OUT (SHARING) WITH NOVELL NETWORKS
This is an important feature which will provide DOS INT14 and NovellNASI
support for dial out modem sharing/pooling.
WINDOWS VIRTUAL DRIVER
Xxxxxxxxxx will develop and make available to UR a VxD Windows virtual
driver replacement for PPPODI.
ADDITIONAL ROUTING PROTOCOLS
Xxxxxxxxxx may add support for OSPF and BGP routing protocols.
EVENT/SECURITY LOGGING
Phase 1 functionality is limited to logging security events to a UNIX
syslog daemon. Phase 1 event and security logging functionality may be
adapted to work equally well in UNIX, DOS (Novell) and Apple environment,
and additional event and security logging functionality may be added as
jointly agreed.
SNMP CONFIGURATION MANAGEMENT
The current supports MIBII. Xxxxxxxxxx may extend SNMP management to fully
support configuration of the system with SNMP. USR will assist Xxxxxxxxxx
in developing an Enterprise MIB.
4.1.3
EXHIBIT 5.2
TO
OEM SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
DATED SEPTEMBER 1, 1994
BETWEEN
XXXXXXXXXX ENTERPRISES, INC.
AND
U.S. ROBOTICS, INC.
SOFTWARE MAINTENANCE AND SUPPORT AGREEMENT
[XXXXXXXXXX SOFTWARE SUPPORT AGREEMENT ATTACHED]
5.1
EXHIBIT 6.2
TO
OEM SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
DATED SEPTEMBER 1, 1994
BETWEEN
XXXXXXXXXX ENTERPRISES, INC.
AND
U.S. ROBOTICS, INC.
--------------
ROYALTY RATES AND COMPUTATION
1. The Royalty payable with respect to Licensed Software embodied in or
bundled with gateway cards for WAN Hub products shall be computed at the
rate of:
(1) [CONFIDENTIAL TREATMENT REQUESTED] of the actual net
revenues received by USR from the sale of each gateway card;
incorporating the Licensed Software or
(2) [CONFIDENTIAL TREATMENT REQUESTED] for each dial-in modem
and/or RS232 port supported by such gateway card;
whichever is greater.
Notwithstanding the foregoing, the aggregate royalties paid by USR pursuant
to this Agreement during any 12 month period with respect to gateway cards
incorporating the Licensed Software and Upgrades thereto sold during such
period divided by the aggregate number of dial-in modems and/or RS 232
ports supported thereby shall equal an average of not less than
[CONFIDENTIAL TREATMENT REQUESTED] per modem/port. This computation shall
be performed not less frequently than once each six (6) months and, in the
event of a shortfall, USR shall have the option of paying sufficient
incremental royalties to meet this requirement or giving Xxxxxxxxxx the
option to terminate this Agreement upon 180 days written notice. The
Parties agree to discuss the foregoing minimum average royalties per port
during the 12th month following the first customer shipment of the gateway
cards and to consider in good faith whether such provision should be
amended in light of then prevailing market conditions.
2. The Royalty payable with respect to Licensed Software embodied in or
bundled with each stand-alone of 1 or 2 port LAN access server product,
shall be computed at the rate of
6.1
[CONFIDENTIAL TREATMENT REQUESTED] of actual net revenue received by USR
from sales of such products.
The Royalty payable with respect to Licensed Software embodied in or
bundled with each stand-alone or rackmountable 8 or 16 port LAN access
server product, or any standalone product supporting primary rate ISDN
telco interfaces shall be computed at the rate of [CONFIDENTIAL TREATMENT
REQUESTED] of actual net revenue received by USR from sales of such
products.
3. If USR provides Client Code or Upgrades to the Licensed Software to any of
its customers or end users of the USR Hardware Platform products and
imposes a separate fee or charge therefor, USR shall pay to Licensor an
additional Royalty equal to [CONFIDENTIAL TREATMENT REQUESTED] of the
actual net revenue derived by USR from such separate fees or charges.
4. For purposes of this Exhibit 6.2 and the Agreement to which it is attached,
"net revenue" means the payments actually received by USR with respect to
sales of the products in question, less any rebates, refunds, returns,
sales taxes, use taxes or other transaction taxes, shipping and other
handling charges actually incurred by USR which are paid or owed to
unrelated third parties and are separately invoiced to USR's customers.
6.2
LOGO
SOFTWARE SUPPORT AGREEMENT AGREEMENT NO. _______________
______________________________________________________________________________
CUSTOMER LOCATION (SITE) CUSTOMER BILLING ADDRESS
____________________________________ _______________________________________
Name Name
____________________________________ _______________________________________
Address Address
____________________________________ _______________________________________
City State Zip City State Zip
____________________________________ _______________________________________
Primary Contact Telephone Customer PO No.
____________________________________
Alternate Contact Telephone
This Agreement includes the Terms and Conditions and schedules attached
(collectively, the "Agreement") and is entered into by and between Xxxxxxxxxx
Enterprise and the Customer set forth above.
1.0 Product Schedule
Warranty
Product # Description Expiration Annual Charge
______________________________________________________________________________
1.
______________________________________________________________________________
2.
______________________________________________________________________________
3.
______________________________________________________________________________
Comments Total Annual Charge $ _____________
Customer acknowledges that Customer has read, understands, and agrees to be
bound by the Terms and Conditions set forth in this Agreement.
__________________________________ Xxxxxxxxxx Enterprises
By:_______________________________ By:___________________________________
(Signature) (Signature)
__________________________________ ______________________________________
Name (Please print or type) Name (Please print or type)
__________________________________ ______________________________________
Title Date Title Date
Page 1 of 3
SOFTWARE SUPPORT AGREEMENT
_____________________________________________________________________________
2.0 DEFINITIONS
2.1 "Products" mean all of the software items listed on the Product Schedule
on the front side of this agreement and on any Supplemental Product Schedule.
2.2 "Software" means the software supplied by Xxxxxxxxxx Enterprises.
2.3 "Site" means the location specified on the front side of the Agreement.
3.0 TERM OF AGREEMENT
3.1 This Agreement shall be effective on the Commencement Date specified on
the front side provided it has been signed by an authorized Customer
representative and accepted by Xxxxxxxxxx Enterprises.
3.2 The initial term of this Agreement is twelve months from the
Commencement Date. the Agreement will be automatically renewed for
additional annual periods at Xxxxxxxxxx Enterprises' then prevailing support
charges. This Agreement may be terminated by either party at any time after
the initial term by delivery of 60 days written notice. If either party
fails to perform its obligations under this Agreement and such failure
continues for a period of twenty (20) days after written notice thereof, the
other party shall have the right to terminate this Agreement.
3.3 Coverage for products added to this Agreement after the Commencement Date
shall commence at the expiration of the Products' warranty period and shall
terminate at the termination of this Agreement. Coverage for added products
will be billed at Xxxxxxxxxx Enterprises support rates prevailing at the time
the Products are added, at the same invoice frequency as other xxxxxxxx under
this Agreement.
4.0 ELIGIBILITY FOR SUPPORT
4.1 This Agreement shall apply to all Software Products supplied by Xxxxxxxxxx
Enterprises located at the Site, including Products added after the Agreement's
Commencement Date. When Customer purchases or licenses additional products from
Xxxxxxxxxx Enterprises for shipment to the Site, Customer agrees to add these
products to this Agreement at Xxxxxxxxxx Enterprises then prevailing support
charges.
4.2 Products must be at Xxxxxxxxxx Enterprises specified revision level to be
eligible for coverage. Products covered under warranty automatically meet this
requirement.
5.0 SERVICE PROVIDED
5.1 All services provided herein are performed within Xxxxxxxxxx Enterprises'
normal working hours of 8 a.m. to 5 p.m. Pacific Xxx, Monday through Friday,
excluding Xxxxxxxxxx Enterprises holidays.
5.2 Xxxxxxxxxx Enterprises will distribute new releases of Software on a
periodic basis as stated in this Agreement. Releases will be distributed on
the same type of tape media on which the original product was delivered. One
(1) copy of Software will be sent for the Site covered by this Agreement.
Customer agrees to install the new releases.
5.3 Xxxxxxxxxx Enterprises will provide telephone consulting on the routine
use and operation of the software. Telephone consulting is limited to
questions not explicitly covered in documentation provided by Xxxxxxxxxx
Enterprises. Telephone consulting will include software problem reporting
service, which will be handled as follows:
Critical Problems - For problems classified by Xxxxxxxxxx Enterprises as
critical to the fundamental operation of the Product, Xxxxxxxxxx Enterprises
will generate a fix and send it to the Customer on the appropriate tape media
as soon as possible. Xxxxxxxxxx Enterprises will contact the Customer with a
status report within one (1) working day after the initial problem report
call.
Non-critical Problems - Xxxxxxxxxx Enterprises will attempt to install fixes
for problems classified by Xxxxxxxxxx Enterprises as non-critical to the
fundamental operation of the Product in the next release of the Software.
When feasible, Xxxxxxxxxx Enterprises will describe temporary work-arounds to
the Customer.
6.0 EXCLUSIONS
6.1 Xxxxxxxxxx Enterprises obligation to provide support service under this
Agreement is contingent upon proper use of the Product. Xxxxxxxxxx
Enterprises shall be under no obligation to provide services under this
Agreement should such service be required in Xxxxxxxxxx Enterprises' opinion,
because of failure of the Product caused by improper use,
Page 2 of 3
accident or because Software is not maintained at Xxxxxxxxxx Enterprises
specified release level.
6.2 On-site support by Xxxxxxxxxx Enterprises personnel at the Site is not
provided under this Agreement.
6.3 Operating supplies or accessories such as magnetic tape are not covered by
this Agreement.
7.0 CUSTOMER RESPONSIBILITIES
7.1 Customer shall notify Xxxxxxxxxx Enterprises immediately of Software
malfunction and provide Xxxxxxxxxx Enterprises with complete information
concerning the malfunction.
7.2 Customer shall designate a Primary and Alternate system Administrator for
the Site. Authorized use of telephone consulting services described herein is
limited to these designated System Administrators.
8.0 CHARGES
8.1 Support charges for this Agreement will be invoiced annually in advance.
Invoices shall be due and payable upon receipt.
8.2 Xxxxxxxxxx Enterprises may at its sole option immediately terminate or
temporarily suspend all of its responsibilities stated in this Agreement. In
the event Customer is delinquent in the payment of any invoice from Xxxxxxxxxx
Enterprises for a period in excess of thirty (30) days.
8.3 Customer will be invoiced for any Products added to this Agreement at the
expiration of the Product's warranty. Charges for a partial period of coverage
shall be prorated on the basis of a 30-day month.
8.4 Xxxxxxxxxx Enterprises may change support charges at any time after the
expiration of the minimum initial term upon providing sixty (60) days prior
written notice.
8.5 Charges for services not covered under this Agreement shall be invoiced at
Xxxxxxxxxx Enterprises' time and materials rates in effect at the time service
is performed.
8.6 Charges are exclusive of all sales, use, and like taxes. Customer shall
pay or reimburse Xxxxxxxxxx Enterprises for all such taxes.
9.0 DISCLAIMER OF WARRANTY
9.1 XXXXXXXXXX ENTERPRISES DISCLAIMS ALL WARRANTIES EXPRESS OR IMPLIED
INCLUDING ALL IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
10.0 XXXXXXXXXX ENTERPRISES LIABILITY TO THE CUSTOMER FOR DAMAGES FROM ANY
CAUSE WHATSOEVER AND REGARDLESS OF THE FORM OF ACTION WHETHER IN CONTRACT OR
TORT INCLUDING NEGLIGENCE, SHALL BE LIMITED TO THE PURCHASE PRICE OF THE
SPECIFIC PRODUCT BEING SERVICED WHICH CAUSED THE DAMAGE. XXXXXXXXXX
ENTERPRISES SHALL NOT BE LIABLE FOR DAMAGES RESULTING FROM LOSS OF DATA,
PROFITS, USE OF PRODUCTS, OR FOR ANY INCIDENTAL, INDIRECT, OR CONSEQUENTIAL
DAMAGES IN CONNECTION WITH THIS AGREEMENT OR SERVICES OR MATERIALS PROVIDED.
11.0 GENERAL
11.1 This Agreement is the complete agreement between the parties with respect
to the subject matter therein, and supersedes all other understandings whether
written or oral, and may only be modified in writing signed by both parties.
11.2 The waiver of any breach or default under this Agreement shall not
constitute the waiver of any subsequent breach or default.
11.3 This Agreement shall be governed by the laws of California.
Page 3 of 3
AMENDMENT NO. 1
TO OEM SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
DATED SEPTEMBER 1, 1994
BETWEEN
XXXXXXXXXX ENTERPRISES, INC.
AND
U.S. ROBOTICS ACCESS CORP.
(F/K/A U.S. ROBOTICS, INC.)
This Amendment (this "Amendment") is made effective December 17, 1996, by and
between U.S. Robotics Access Corp. ("USR") (formerly U.S. Robotics, Inc.) a
Delaware corporation with executive offices at 0000 X. XxXxxxxxx Xxxx.,
Xxxxxx, XX 00000, as licensee, and Xxxxxxxxxx Enterprises, Inc.
("Livingston" or "Licensor"), a California corporation with its executive
offices at 0000 Xxxxxx Xxxx, Xxxxxxxxxx, XX 00000. USR and Xxxxxxxxxx are
sometimes referred to herein individually as a "Party" and collectively
"Parties."
WHEREAS, the Parties heretofore entered into a certain OEM Software License
and Development Agreement dated September 1, 1994 (the "License Agreement");
and
WHEREAS, the Parties have had certain disputes and engaged in litigation with
respect to the interpretation of the License Agreement; and
WHEREAS, the Parties now wish to settle and compromise such disputes and
litigation and, in connection therewith, desire to amend the License
Agreement as set forth herein.
NOW, THEREFORE, in consideration of the premises, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
the Parties hereby agree as follows:
1. Except as otherwise expressly provided herein or as the context
otherwise clearly requires, all references to capitalized terms set forth in
this Amendment shall have the same meanings as provided in the License
Agreement.
2. This Amendment shall become effective upon its execution and delivery by
both Parties, which may be effected with counterparts. Upon and after the
effectiveness of this Amendment, all references in the License Agreement as
amended hereby to "this Agreement" shall mean and included the License
Agreement as so amended.
3. Section 2.9 ("Maintenance Modification") of the License Agreement is
hereby amended by the deletion of the words "changes or" appearing after the
words "or make other" in the third line thereof.
4. Section 3.1 of the License Agreement is hereby amended by the deletion
of the word "perpetual" appearing after the word "non-transferable" in the
third line thereof.
5. Section 3 of the License Agreement is hereby modified by the insertion
at the end thereof of a new Section 3.5 as follows:
3.5 ACKNOWLEDGMENT OF COMOS. Commencing on and after
January 1, 1997, USR shall exert commercially reasonable
efforts to acknowledge in its marketing, advertising and
product promotional materials, where appropriate, for USR
products which incorporate some portion of the Licensed
Software, the fact that the USR Code developed for such
products is based upon Xxxxxxxxxx'x ComOS Code under
license. The Parties acknowledge that advanced commitments
are required for the production and distribution of many
marketing, advertising and product promotion materials and
that USR will not be expected to revise all such materials
immediately, but that USR will exert commercially reasonable
efforts to complete such revisions within 120 days of
January 1, 1997.
6. Section 3A.1.2(d) is hereby amended to delete the second and third
sentences.
7. Section 3A.1.4 of the License Agreement is hereby amended in its entirety
to read as follows:
3A.1.4. The right and license to the Licensed Source code
granted in this Section 3A shall terminate at the close of
business on December 31, 1997, except as otherwise expressly
provided in Section 3A.1.5 below or as otherwise authorized
in writing by Xxxxxxxxxx. Such termination shall become
effective on such date without any further act or notice on
the part of Xxxxxxxxxx.
8. Section 3A.1.5 of the License Agreement shall be amended in its entirety
to read as follows:
3A.1.5 Upon termination (December 31, 1997) of the right and
license to the Licensed Source Code granted pursuant to
Section 3A, USR shall promptly (no later than three business
days) return and deliver to a mutually agreed upon escrow
agent (i) a true and complete copy of the most current version
of Licensed Source Code including any code files containing
any Derivative Works created by USR; and, (ii) a true and
complete copy of the most current version of the Licensed
source Code. The escrow agent will hold such copies of the
Licensed source Code intrust for the benefit of USR until
December 31, 1998, for the sole purpose of USR access for
the customer support and maintenance purposes that are
described below and for archival purposes. Such escrow
account will be maintained at the sole cost of USR and will
be in accordance with the terms and conditions and
substantially in the form as set forth in Exhibit 3A.1.5.
All other copies of the Licensed Source Code described above
shall be removed from backup and destroyed by USR in
accordance with Sections 3A1.2(d) and (e) of the Agreement.
2
USR shall have the right, until December 31, 1998 to receive
from the escrow agent the Licensed Source Code (or any
appropriate portions) under the following conditions and
circumstances:
A. Use of the Licensed Source Code by USR shall be
strictly limited to the maintenance and support of
its customer base which has sublicensed the
Licensed Software under the terms of the
Agreement. Specifically, such maintenance and
support shall be limited to: (i) Bug fixes,
(ii) Maintenance Modifications, (as such
definition has been revised herein) and
(iii) identification and correction of "latent
defects" in the Licensed Source Code which cause
"significant" problems for USR customers. It is
expressly agreed by USR that under no
circumstances shall the Licensed Source Code be
used for the development of Enhancements or, to
accomplish any feature advances in the Licensed
Source Code and/or Licensed Software. The
reference model for such a determination shall be
Xxxxxxxxxx'x ComOS, as archived in the escrow
account referred to above.
B. To effect a release of the Licensed Source Code by
the escrow agent, USR shall submit to the
designated Xxxxxxxxxx contact (specified in E.
below), a written Notice requesting the Licensed
Source Code which shall contain the following
information:
(i) a description of, and relevant information relating to,
the nature of the Bug, Maintenance Modification, or
"latent defect" in the Licensed Source Code;
(ii) whether the above has been duplicated;
(iii) why USR believes that it needs the Licensed Source
Code to fix the Bug, perform the Maintenance
Modification or fix the latent defect;
(iv) an estimate of the time necessary to perform the
authorized work.
C. Acceptance of a USR request based on the Notice
described above shall not be unreasonably
withheld by Xxxxxxxxxx. Xxxxxxxxxx will use its
"best efforts" to notify the escrow agent to
release the Licensed Source Code to USR as soon as
is practically possible, but no later than five
(5) business days following receipt of USR's
Notice. When USR has completed its authorized use
of the Licensed Source Code, it will delete all
copies that it has obtained and certify to
Xxxxxxxxxx that it has done so.
D. If Xxxxxxxxxx rejects the USR request, based upon
good faith concern that the request appears to be
outside the authorized scope of use, it will
notify USR of such rejection within five (5)
business days following receipt of USR's Notice.
The parties will then attempt to negotiate in good
faith, to resolve any
3
misunderstandings and resolve the issue. If necessary,
the negotiations will be escalated to designated officers
(specified below) of the respective parties. If, within
a period of fifteen (15) business days, the parties have
not resolved their dispute, the matter will be submitted
to a third party arbitrator, to be designated in advance
by the parties. Such arbitrator will be familiar with
software issues and computer law, the costs of the
arbitrator to be split between the parties. The parties
agree to use all reasonable efforts to resolve the matter
within thirty (30) days of the engagement of the
arbitrator. The parties agree to abide by the decision
of the arbitrator on whether the Licensed Source Code
shall be released to USR by the escrow agent.
E. The primary Xxxxxxxxxx contact for Notices shall
be Xxxx Xxxxxx, the secondary Xxxxxxxxxx contact
shall be Xxxxx Xxxxxx, with copies to Xxxxxxx
Xxxxxxx. The primary USR contact authorized to
submit notices shall be Xxx Xxxxxx, with copies to
Xxxxxxx Xxxxxxx. The designated Xxxxxxxxxx
officer for escalation shall be Xxxxxx Xxxxxxx.
The designated USR contact for escalation shall be
Xxxx Xxxxxx. The parties agree to immediately
notify one another upon the changes of any of the
above contacts.
F. Upon termination of the Agreement on December 31, 1998,
USR will immediately remove and destroy all copies of
Licensed source Code in its possession, and the
Escrow Agreement will terminate. The escrow agent
will then destroy all copies of the Licensed Source
Code in its possession.
9. Section 5.2 of the License Agreement shall be amended in its entirety to
read as follows:
5.2 ONGOING MAINTENANCE AND SUPPORT. From and after
September 30, 1996, Xxxxxxxxxx shall have no ongoing
maintenance or support obligations to USR in connection with
the Licensed Software, except that Xxxxxxxxxx shall provide
to USR, upon request, copies of any and all support and user
documentation, bug fix notes, troubleshooting tips, etc.
which Xxxxxxxxxx routinely provides to its customers using
any version of Xxxxxxxxxx'x ComOS.
10. Section 8.1 of the License Agreement is hereby amended in its entirety to
read as follows:
8.1 TERM OF AGREEMENT. This Agreement shall become
effective on the first day that is has been executed by an
authorized representative of USR and by an authorized
representative of Xxxxxxxxxx. Unless sooner terminated as
provided hereunder, this Agreement shall expire on
December 31, 1998.
11. Section 8.4 of the License Agreement is hereby amended in its entirety to
read as follows:
4
8.4 SURVIVAL AFTER TERMINATION/EXPIRATION. The termination
or expiration of this Agreement shall not affect any
liability of USR accrued pursuant hereto or any paid-up
right or license granted to USR hereunder. In the event of
termination or expiration of this Agreement, in whole or in
part, any right, license or sublicense exercised or granted
prior to such termination or expiration (including those for
internal use by USR, USR's Subsidiaries, and other third
parties such as dealers, distributors, agents, customers,
and endusers), and any corresponding payment obligations of
USR hereunder, shall survive and continue and the rights of
USR to further market, distribute and sublicense the
Licensed Source Code shall terminate. Without limiting the
generality of the foregoing, (1) USR may for a period of two
(2) months, sublicense, sell, lease and distribute any
inventory of products based on or containing Licensed
Software, on hand at the time of such termination or
expiration, (2) USR may for a term of two (2) months,
continue to exercise the rights and licenses granted
hereunder to fill any orders received by USR, its
Subsidiaries, distributors, agents or dealers received and
accepted from their customers prior to the effective date of
termination or expiration, and (3) USR may indefinitely
continue to exercise the rights and licenses granted
hereunder as necessary to provide maintenance and support
for customers. Neither, USR, its Subsidiaries, dealers,
distributors, agents nor customers shall have any obligation
to return to Licensor any copies of Licensed Software or
Derivative Works thereof made or obtained prior to such
termination.
In addition, the provisions of Sections 2, 4.5, 7, 8, 10,
and 11 shall survive and continue with respect to all
Licensed Software that is the subject of this Agreement at
the time of termination.
12. Section 8.2 of the License Agreement shall be amended by the deletion of
all of the text thereof appearing after the words "in reasonable detail" at
the end of the third sentence thereof.
13. Section 11.5 of the License Agreement shall be amended by the substitution
of the name "Xxxx Xxxxxx" for "Xxxxx Xxxxxx" as the principle contact person for
notices sent to USR, and by the substitution of the following for the address
for Xxxxxxxxxx Enterprises, Inc. to which notices and copies of notices
addressed to Xxxxxxxxxx shall be sent: 0000 Xxxxxx Xxxx, Xxxxxxxxxx, XX 00000.
14. The License Agreement shall be further amended by the deletion of the
following sections, subsections and exhibits: 2.3 ("Development Project");
2.4 ("Licensor Development Services"); 2.12 ("Third Party Software"); 2.15.
("OEM Supply Agreement"); 4.1 (Scope); 4.2 (Schedule); 4.3 (Quality of Work);
4.4 (Third Party Software Development); 5.1 (Initial Maintenance Period); 5.3
(Enhancements and Upgrades); 5.4 (Changes to Licensed Software); 5.5
(Cooperation by USR); 5.6 (Customer Support Procedures); 6.1 (Non-Recurring
Engineering Fees); 6.3 (Third Party Software Fees); 6.5 (Support and
Maintenance Fees); 8.3.3; Exhibit 4.1 and Exhibit 5.2.
15. Except as expressly otherwise provided in this Amendment, the terms,
conditions and provisions of the License Agreement shall continue in full
force and effect.
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IN WITNESS WHEREOF, the Parties have caused this Amendment to be executed
by their duly authorized officers, effective as of the date first set forth
above.
U.S. ROBOTICS ACCESS CORP. XXXXXXXXXX ENTERPRISES, INC.
("USR") ("XXXXXXXXXX")
By: /s/ Xxxxxx X. Xxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
------------------------------------- --------------------------------
Name: Xxxxxx X. Xxxxxxxx Name: Xxxxxxx X. Xxxxxxx
----------------------------------- ------------------------------
Title: Vice President and General Counsel Title: General Counsel
----------------------------------- -----------------------------
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