EXHIBIT 10.9
THIRD AMENDMENT TO
THE DEVELOPMENT AND LICENSE AGREEMENT
DATED OCTOBER 4, 1993
BETWEEN CORSAIR COMMUNICATIONS, INC. (ESL
INCORPORATED)
AND AIRTOUCH COMMUNICATIONS (PACTEL CORPORATION)
This Third Amendment is made this 18th day of August, 1995, by and between
Corsair Communications, Inc., formerly PhonePrint, Inc. and assignee of ESL
Incorporated ("Corsair"), and AirTouch Communications, Inc., formerly AirTouch
Communications and formerly PacTel Corporation ("AirTouch").
WHEREAS, the parties entered into a Development and License
Agreement, dated October 4, 1993 (the "Agreement'); and
WHEREAS, the parties amended such Agreement in a First Amendment, dated
October 23, 1993; and
WHEREAS, the parties amended such Agreement in a Second Amendment, dated
December 7, 1994; and
WHEREAS, the parties now wish to further amend the Agreement;
NOW, THEREFORE, the parties agree as follows:
1. Section 1.1.1 of the Agreement is hereby deleted and the
following is substituted therefor:
"1.1.1 Agreement. The term the "Agreement" means this Development and
---------
License Agreement between Corsair and AirTouch, including the following Exhibits
attached hereto, and any amendments thereto:
Exhibit A: The *** .
Exhibit B: Nondisclosure Agreement, dated April 22, 1993.
Exhibit C: Nondisclosure Agreement, dated June 1, 1995.
2. Section 1.1.2 of the Agreement shall be amended to read as
follows:
"1.1.2 Develop or Development. The term "develop" or "development," as
----------------------
used herein, means engineering, design, layout and hardware generation,
prototyping,
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
characterization, qualification, fabrication, testing, and preparation of data
sheets and application notes."
3. Section 1.1.3 of the Agreement shall be amended to read as
follows:
"1.1.3 Licensed Products. The term "Licensed Products" means the ***
-----------------
*** to be developed hereunder, and any component parts thereof,
made under the *** described ***
therein."
4. Section 1.1.5 of the Agreement is hereby deleted.
5. Section i.1.6 of the Agreement is hereby deleted.
6. Section 1.1.7 of the Agreement is hereby deleted.
7. Section 1.2 of the Agreement is hereby deleted.
8. The first sentence of Section 2.1 of the Agreement is hereby
deleted.
9. Section 2.2 of the Agreement shall be amended to read as follows:
"2.2 Development by Corsair. Corsair will develop ***
----------------------
for wireless subscriber systems."
10. Section 2.3 of the Agreement shall be amended to read as follows:
"2.3 Commercialization by Corsair. Corsair will commercialize the Licensed
----------------------------
Products, i.e., Corsair will *** so that the Licensed
Products will be in manufacturable form for worldwide marketing, sales,
distribution and support by Corsair to end user customers."
11. Section 4.1 of the Agreement is hereby deleted and the following
is substituted therefor:
"4.1 License to Corsair. Subject to the terms and conditions of this
------------------
Agreement, AirTouch hereby grants to Corsair a perpetual, worldwide,
*** *** right and license under AirTouch's *** Patents:
(a) to make, have made, copy and/or use the Licensed Products;
(b) to sell the Licensed Products; and
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
(c) to provide support for the Licensed Products.
The license to use shall be extended to end user customers.
This license shall survive and shall be deemed to be fully paid-up upon any
expiration or termination of this Agreement, *** ***
of prior to such expiration or termination in accordance with Section 4.3
below."
12. Section 4.2 of the Agreement is hereby deleted and the following
is substituted therefor:
"4.2 License to AirTouch. Subject to the terms and conditions of this
-------------------
Agreement, Corsair hereby grants to AirTouch a *** , nonexclusive,
non-transferable, *** for AirTouch's internal business purposes
in the United States."
13. Section 4.3 of the Agreement is hereby deleted and the following
is substituted therefor:
"4.3 Royalties. In consideration of the rights, licenses and benefits
---------
conferred *** hereunder, during the term of this Agreement, will pay
to *** a *** in the *** of *** of the *** of all *** or otherwise
disposed of or put into use by ***; provided, however, that the *** shall
*** than *** *** thereafter, nor shall the *** than ***
in the *** of this ***
*** in any *** . *** will have no obligation to ***
*** on *** , its *** or *** . In no event will more than ***
to *** for any *** . Notwithstanding the foregoing, *** *** on any
*** , but *** , by a ***. *** *** shall be *** no later than
*** during the term hereof."
14. The last sentence of Section 5.3 of the Agreement is hereby
deleted and the following is substituted therefor:
"Corsair will retain any and all rights to file any patent applications
thereon ***
***
*** thereunder for the term of this Agreement."
15. Section 7.1 of the Agreement shall be amended to delete the
words:
", ***
(collectively "PacTel *** ")"
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
16. Section 7.2 of the Agreement shall be amended to delete the
words:
", and/or *** (collectively "ESL Licensed Materials")"
17. Section 7.3 of the Agreement shall be amended to replace the word
"Materials", wherever it should appear, with the word " *** ".
18. Section 7.4 of the Agreement shall be amended to replace the word
"Materials", wherever it should appear, with the word " *** ".
19. The last three paragraphs of Section 12.1 of the Agreement
pertaining to the addresses of the parties are hereby deleted and the following
is substituted therefor:
"If to AirTouch: AirTouch Communications, Inc.
0000 Xxxxxxxx Xxxxx, XX 0-0
Xxxxxx Xxxxx, XX 00000
Attn: *** , Director
Technology Transfer
With a copy to: AirTouch Communications, Inc.
0 Xxxxxxxxxx Xxxxxx
Xxx Xxxxxxxxx, XX 00000
Attn: Intellectual Property Counsel
If to Corsair: Corsair Communications
0000 Xxxxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Attn: ***
***
With a copy to: Xxxxxxx Phleger & Xxxxxx
000 Xxxx X Xxxxxx, Xxxxx 0000
Xxx Xxxxx, XX 00000
Attention: ***
20. Exhibit A of the Agreement is hereby deleted and the following is
substituted therefor:
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
"EXHIBIT A
AirTouch *** :
***
***
***
Corsair ***
***
***
21. Exhibit B of the Agreement is hereby deleted and the following is
substituted therefor:
"EXHIBIT B
Nondisclosure Agreement, dated April 22, 1993"
22. Exhibit C of the Agreement is hereby deleted and the following is
substituted therefor:
"EXHIBIT C
Nondisclosure Agreement, dated June 1, 1995"
23. Section 2 of the First Amendment to the Agreement is hereby
amended to add the following paragraph before Subsection (a):
"Each party may find it necessary to disclose to the other party
certain confidential and proprietary information and intellectual
property relating to its operations which will be used by the
other party only for its work on the Licensed Products. Such
confidential and proprietary information is known to the parties
as: *** and *** ."
24. Section 4 of the Second Amendment to the Agreement is
hereby deleted and the following is substituted therefor:
"4. Should AirTouch elect at any time to *** Licensed Products ***
*** for its own use, Corsair *** to the *** of the ***
*** such Licensed Products to *** of such ***
*** ."
*** Portions of this page have been omitted pursuant to a request for
Confidential Treament and filed separately with the commission
25. In conjunction with the operation of Licensed Products purchased
by AirTouch under the terms of this Agreement and any subsequent agreement,
AirTouch shall have a license to use application software installed in said
Licensed Products to the extent required for the authorized use of the Licensed
Products.
26. Except as amended herein, the Agreement dated October 4, 1993 and
amended by the First Amendment on October 23, 1993 and amended again by the
Second Amendment on December 7, 1994 shall remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have executed this Third Amendment
as of the date first written above.
Corsair Communications, Inc. AirTouch Communications, Inc.
By:/s/ Xxxx X. Xxxxx By:/s/ Xxxxxxx Xxxxxxx
---------------------------- ------------------------------
Name:Xxxx X. Xxxxx Name:Xxxxxxx Xxxxxxx
-------------------------- ----------------------------
Title:Vice President Title:Director, Technology Transfer
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