Exhibit 6.2
LICENSE AGREEMENT
This Agreement ("Agreement") is made as of this 7th day of March,
1996, by and between FutureTel, Inc., a Florida corporation, with offices
at 0000 Xxxx Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000 ("FutureTel"), and
InnovaCOM, a Florida corporation, with offices at 000 Xx Xxxxxx Xxxx,
Xxxxxxxxx, Xxxxxxxxxx 00000 ("InnovaCOM").
RECITALS
WHEREAS, FutureTel has developed certain proprietary technology
referred to by the parties as Gecko ("GECKO") as defined in Schedule A
hereto;
WHEREAS, FutureTel desires to grant to InnovaCOM, and InnovaCOM
desires to accept, a license to use and to grant sublicenses to use GECKO
to develop silicon-based products, subject to the terms and conditions
hereinafter set forth;
WHEREAS, the parties to this Agreement intend that royalties shall be
paid by InnovaCOM to FutureTel in exchange for the licenses granted by this
Agreement.
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, the parties hereto agree as follows:
I. DEFINITIONS.
A. The term "Clean Room Product" shall mean a silicon product
or other product related to, or competitive with, any of the Licensed
Materials, which is developed by InnovaCOM without the use, aid or benefit
of any of the Licensed Materials.
B. The term "C-Model Code" shall mean that segment of the
source code to GECKO referred to by the parties as the C-Model source code
and further described in Schedule A hereto.
C. The term "Derivative Work" shall mean technology, materials,
documentation and other works, including without limitation, software that
is derived from the Licensed Materials or which incorporates in whole or in
part, or which constitutes a modification of the Licensed Materials.
D. The term "Documentation" shall mean all documentation
created by FutureTel, whether in human readable or machine readable form,
which describes the function and use of GECKO and is delivered to InnovaCOM
under this Agreement, and which may include FutureTel's manuals, program
listings, data models, flow charts, logic diagrams, input and output forms,
functional specifications, and instructions and any full or partial copies
of any of the foregoing.
E. The term "End User" shall mean any customer who purchases a
product for internal use only and who will not further sublicense or
distribute the product, but who shall have the right to develop,
manufacture and sell GECKO Systems.
F. The term "GECKO" shall include each and every
component of the technology referred to as GECKO, including without
limitation the C-Model Code, the Specifications, the Verilog Source Code,
the Simulation Environment, the Microcode, the Synthesis and Simulation
with IBM Library, the Netlist, the IBM Mask and the IBM Silicon, as further
defined in Schedule A.
G. The term "GECKO Derivative Work" shall mean all Derivative
Works based on GECKO developed by InnovaCOM, its employees, agents, or
consultants, whether in object or source code form, including without
limitation works used in manufacturing, or silicon products to be
distributed to sublicensees and End Users.
H. The term "GECKO Products" shall mean silicon products
(including the microcode, in object code form only, and documentation
necessary to use such silicon products in Systems) which may be developed
or manufactured by InnovaCOM or its sublicensees using GECKO, any GECKO
Derivative Work, or any portion of any of the foregoing.
I. The term "GECKO Systems" shall mean Systems in which GECKO
Products are embedded or with which GECKO Products are bundled, but which
are otherwise developed independently of, and do not incorporate or
include, the Licensed Materials.
J. The term "GECKO Team" shall mean the individuals employed by
FutureTel for the development and manufacture of GECKO and specifically
identified in Schedule D hereto.
K. The term "Cross Revenues" shall mean the total revenues
received by InnovaCOM in connection with any transaction or sublicense
involving any of the Licensed Materials.
L. The term "IBM Mask" shall mean the proprietary technology
further described in Schedule A hereto.
M. The term "IBM Silicon" shall mean the proprietary technology
further described in Schedule A hereto.
N. The term "Licensed Materials" shall mean GECKO,
the GECKO Products and the Documentation
O. The term "Netlist" shall mean the proprietary technology
further described in Schedule A hereto.
P. The term "Proprietary Information" shall mean the Licensed
Materials and all concepts, data, documentation, information, software
(expressly including source code) and other materials, made available by
FutureTel to, or developed by, InnovaCOM, its agents, employees, or
consultants, in connection with this Agreement. Notwithstanding the
foregoing, "Proprietary Information" shall not include any information
which is: (i) publicly available or which is in or enters into the public
domain through no action by or fault of the receiving party; (ii)
rightfully obtained by the receiving party without any obligation of
confidentiality from a third party who is rightfully in possession thereof
and in a manner permitted by the terms of this Agreement; or (iii)
disclosed pursuant to a governmental, judicial, administrative or
regulatory obligation, order or
decree.
Q. The term "Specifications" shall mean the proprietary
information and documentation further described in Schedule A hereto.
R. The term "Synthesis and Simulation with IBM Library" shall
mean the proprietary technology further described in Schedule A hereto.
S. The term "System" shall mean any computer, printed circuit
board, configuration of printed circuit board, peripheral equipment or
other item which is used to encode video into an MPEG stream.
T. The term "Verilog Code" shall mean that segment of the
source code to GECKO referred to by the parties as the Verilog source code
and further described in Schedule A hereto.
II. LICENSES
A. Non-Exclusive GECKO License. FutureTel hereby grants to
InnovaCOM the following non-exclusive rights to use and sublicense GECKO:
1. License to Use GECKO. Subject to the terms and
conditions of this Agreement, FutureTel hereby grants to InnovaCOM, and
InnovaCOM hereby accepts, a non-exclusive, nontransferable, worldwide
license to use, duplicate, distribute, modify and enhance GECKO and the
Documentation, solely for the development, manufacture and distribution of
GECKO Products and GECKO Derivative Works. InnovaCOM shall have no right
to use the Licensed Materials to develop any System, including GECKO
Systems, but shall have the right to embed GECKO Products in or bundle
GECKO Products with, GECKO Systems.
2. Right to Sublicense GECKO. Subject to the terms and
conditions of this Agreement, the foregoing license granted by FutureTel to
InnovaCOM hereunder shall include the right to grant sublicenses to use
GECKO, solely for the enhancement of GECKO and the development, manufacture
and distribution of GECKO Products and GECKO Derivative Works.
3. Right to Use GECKO Source Code. Subject to the terms
and conditions of this Agreement, the foregoing right to use and sublicense
GECKO granted by FutureTel to InnovaCOM hereunder shall include the limited
right to use the C-Model Code and the Verilog Code, solely for purposes of
modification and enhancement of GECKO, GECKO Derivative Works, and GECKO
Products.
B. EXCLUSIVE GECKO LICENSE. FutureTel grants to InnovaCOM the
following exclusive rights:
1. SINGLE CHIP MPEG 2 REAL TIME ENCODER. Subject to the
terms and conditions of this Agreement and for the period of one year from
the date of this Agreement (the "Exclusivity Period"), FutureTel hereby
grants to InnovaCOM, and InnovaCOM hereby accepts, the exclusive right to
distribute and sell single chip MPEG 2 real time encoders developed by
InnovaCOM and/or its sublicensees using GECKO or GECKO Derivative Works
(the "InnovaCOM MPEG Chip") to End Users. During the Exclusivity Period,
FutureTel shall not have, nor grant to any third party, the right to
distribute and sell single chip MPEG 2 real time encoders developed by
FutureTel and/or its sublicensees using GECKO or Derivative Works (the
"FutureTel MPEG Chip") to End Users during the Exclusivity Period, but
shall have, and may grant to any third party other than the Exclusive
Sublicensees as defined below, the right to license, develop, duplicate,
use, modify and enhance the FutureTel MPEG Chip for all other purposes,
including but not limited to, demonstration and engineering sample
purposes. Upon the expiration of the Exclusivity Period, the exclusive
right granted herein shall terminate and FutureTel shall have, and may
grant to any third party, the right to freely use, license, manufacture,
produce, market, distribute and sell the FutureTel MPEG Chip and InnovaCOM
shall have, and may grant to any third party, the right to freely
use, license, manufacture, produce, market, distribute and sell InnovaCOM
MPEG Chip.
2. EXCLUSIVE LICENSE TO USE GECKO ELEMENTS. Subject to the
terms and conditions of this Agreement and for the Exclusivity Period,
FutureTel hereby grants to InnovaCOM, and InnovaCOM hereby accepts, an
exclusive, non-transferable, worldwide license to use, duplicate,
distribute, modify and enhance the following elements of GECKO, solely for
the development, manufacture, and sublicensing of GECKO Products: (1) the
Netlist; (2) the IBM Mask; and (3) the IBM Silicon (collectively, the
"GECKO Exclusive Elements"). During the Exclusivity Period, FutureTel
shall not have, nor grant to any third party, the right to use, duplicate,
license, distribute, modify or enhance the GECKO Exclusive Elements, but
shall have the right to distribute GECKO Products using separately
developed proprietary elements in lieu of the GECKO Exclusive Elements.
Upon the expiration of the Exclusivity Period, the exclusive license
granted herein shall terminate and FutureTel shall have the right to freely
use, duplicate, license, distribute, modify or enhance all elements of
GECKO.
3. EXCLUSIVE GECKO SUBLICENSES. Subject to the terms and
conditions of this Agreement, and during the Exclusivity Period, InnovaCOM
shall have the exclusive right to grant sublicenses to the three customers
identified in Schedule B hereto (the "Exclusive Sublicensees") to use
GECKO, solely for the enhancement of GECKO and the development, manufacture
and sublicense of GECKO Products. Prior to the execution of this
Agreement, InnovaCOM shall select and identify in Schedule B hereto the
Exclusive Sublicensees. During the Exclusivity
Period, FutureTel shall not have the right to sublicense GECKO to the
Exclusive Sublicensees, but shall have the right to sublicense GECKO
without the GECKO Exclusive Elements to any other third parties. Upon the
expiration of the Exclusivity Period, FutureTel shall have the right to
sublicense GECKO to the Exclusive Sublicensees and all other sublicensees.
C. DELIVERY AND DUPLICATION.
1. DELIVERY OF MASTER COPIES. FutureTel shall provide to
InnovaCOM a master copy of the Licensed Materials, in appropriate magnetic
media as agreed upon by the parties, to enable InnovaCOM to duplicate any
desired components of the Licensed Materials in accordance with the terms
of this Agreement.
2. SECURITY MEASURES. In duplicating the Licensed
Materials, InnovaCOM shall comply with all of FutureTel's instructions
regarding authorization codes, encryption and other security procedures and
devices designed to protect FutureTel's and InnovaCOM's respective
interests in the Licensed Materials. InnovaCOM shall keep any master
copies of the Licensed Materials delivered by FutureTel in secure storage
when not in use.
D. RIGHT TO DUPLICATE.
1. LIMITED RIGHT TO COPY GECKO. InnovaCOM shall have the
right to duplicate the Licensed Materials solely for the purposes of
entering into permitted sublicenses hereunder, and as further set forth in
this Agreement.
2. RECORDS. InnovaCOM shall maintain a log of the number
and location of all originals and authorized copies of any Licensed
Materials, which shall be made available to FutureTel upon request.
E. CLEAN ROOM PRODUCT. Any product developed and manufactured
by InnovaCOM that uses or incorporates any of the Licensed Materials, or
portions thereof, shall be subject to the terms and conditions of this
Agreement. InnovaCOM shall have the right to develop Clean Room Products
provided that, prior to the commencement of development of any Clean Room
Products, InnovaCOM shall propose the "clean room" procedures to FutureTel,
which procedures must be approved in writing by FutureTel prior to such
commencement. InnovaCOM shall: (1) adhere to such procedures; (2) maintain
contemporaneous records of such procedures as FutureTel may require; and
(3) permit an independent agent selected by FutureTel (the "Agent") to
inspect InnovaCOM's facilities and records from time to time to confirm
that InnovaCOM is adhering to such procedures. FutureTel shall not employ
Agent in the development of any FutureTel products. FutureTel shall cause
Agent to keep confidential all information obtained from InnovaCOM during
such inspection(s), except to the extent such information is needed by
Agent and/or FutureTel to confirm and document InnovaCOM's adherence to the
clean room procedures and/or any variation from or violation of such
procedures by InnovaCOM.
F. PROPRIETARY NOTICES. InnovaCOM shall reproduce and include
FutureTel's patent, copyright and trade secret notices on any copies (which
copies must be permitted) of Licensed Materials made in whole or in part in
any form (including partial copies, modifications, or resulting object
binary codes), in the same form and location as any legend appearing on the
work from which the copies are made, and shall affix such other proprietary
legends to the Licensed Materials as FutureTel may designate. The
inclusion of a copyright notice on any of the applicable copies of Licensed
Materials shall not cause or be construed to cause it to be a published
work. Upon FutureTel's request, but no more than once per semi-annual
period, InnovaCOM shall provide FutureTel with samples of packaging,
advertising and other materials on which such proprietary notices are used.
All uses of the proprietary notices shall inure to FutureTel's benefit and
nothing in this Agreement gives InnovaCOM any rights in the Licensed
Materials except as expressly granted hereunder.
G. ENHANCEMENT AND SUPPORT OBLIGATIONS. FutureTel is under no
obligation, pursuant to the terms of this Agreement or otherwise, to
provide to InnovaCOM or any sublicensees or End Users any enhancements,
modifications, corrections, updates, or upgrades of the Licensed Materials,
or any support, training, or
consulting services to InnovaCOM or any sublicensees or End Users regarding
the Licensed Materials.
H. OTHER LICENSES. Except as set forth in Section
II(B) above, this Agreement does not limit or restrain the right of
FutureTel to execute agreements for the licensing of the Licensed Materials
or any components thereof with other licensees.
I. NO TRANSFER OF RIGHTS. Use of the terms "sell," "sale,"
"sold," "purchase," "purchaser" and the like are used throughout this
Agreement for convenience only, and do not transfer any right, title or
interest in or to any Licensed Materials to InnovaCOM, any sublicensee or
any End User.
J. FORM OF SUBLICENSE. All sublicenses, including shrinkwrap
license agreements and/or end user license agreements, made or entered into
by InnovaCOM and its sublicensees pursuant to this Agreement shall contain
provisions consistent with the provisions of this Agreement and shall
include this Agreement as an exhibit thereto. In the event that any of the
terms of the sublicenses are inconsistent with the terms hereof, the terms
of the sublicenses shall be superseded by the terms of this Agreement,
unless such inconsistent terms of the sublicenses are agreed to in writing
by FutureTel prior to the execution of the sublicenses. InnovaCOM shall
ensure that its sublicensees shall comply with each of the restrictions and
obligations for InnovaCOM set forth in this Agreement.
K. NO ASSIGNMENT. FutureTel's performance under this Agreement
is offered personally and exclusively to InnovaCOM. Neither this Agreement
nor any part hereof may be assigned by InnovaCOM to any party which
FutureTel deems, in its reasonable discretion, to be a competitor of
FutureTel, without FutureTel's prior written consent, and any such
attempted assignment without such consent shall be null and void.
FutureTel reserves the right to assign this Agreement and/or all or any
part of the rights and obligations hereunder to any third party. Subject
to the restrictions herein with regard to assignment, this Agreement shall
bind and inure to the benefit of the respective successors and assigns of
the parties hereto.
L. LIMITATIONS ON RIGHTS TO USE. Except as expressly permitted
by this Agreement, InnovaCOM shall not: (1) transfer, assign, alter,
amend, modify, disclose, duplicate, distribute, license or otherwise use or
change the Licensed Materials or any information contained therein or any
other materials related thereto, including without limitation the
Documentation; (2) use the Licensed Materials to develop, manufacture or
sell any products other than GECKO Products and GECKO Systems, including
without limitation, Systems other than GECKO Systems and manufacture or
sell any software; or (3) cause or permit others to do any of the
foregoing.
M. PATENTS. If for any reason FutureTel decides, with respect
to any country, not to initiate or to continue prosecution of a patent
application on an invention included in GECKO, to pay a maintenance fee on
such a patent application or issued patent (collectively, "GECKO Patents"),
to defend any GECKO Patent in a reexamination or opposition proceeding, or
to enforce any GECKO Patent against an apparent infringer (which actions
shall be collectively referred to as "Patent Action"), then FutureTel shall
notify InnovaCOM of such decision not less than sixty (60) days before the
right to perform such Patent Action expires, unless FutureTel is given
fewer than sixty (60) days notice of the expiration of the right to perform
such Patent Action, in which event FutureTel shall notify InnovaCOM of such
decision as promptly as possible. Upon InnovaCOM's receipt of such notice,
InnovaCOM shall have the right to make payments to FutureTel required to
take any Patent Action. Any payment by InnovaCOM required to take such
Patent Action shall be made in advance, according to reasonable estimates
provided by FutureTel's patent counsel. If such payment is insufficient
and, upon notice of such insufficiency from FutureTel, if InnovaCOM does
not provide a sufficient amount in the time frame reasonably designated by
FutureTel (based on estimates of FutureTel's counsel), InnovaCOM shall be
deemed to have elected not to support such Patent Action. FutureTel shall
exercise its right to select patent counsel with reasonable discretion.
InnovaCOM shall exercise its right to make payments required to undertake
the Patent Action in a manner so as not to disrupt, harass, or cause
damage, loss or delay to FutureTel and/or its officers, directors,
employees or agents. In the event InnovaCOM elects to make payment to
FutureTel required to undertake Patent Action that FutureTel reasonably
xxxxx xxx cause it to incur material damage, loss, costs, delay or
disruption, FutureTel shall have the right to refuse to undertake such
Patent Action. FutureTel shall return to InnovaCOM all payments made by
InnovaCOM in excess of the amounts required to undertake the Patent Action.
N. ONGOING SUPPORT AND RIGHTS IN PATENTS. If, at any time,
InnovaCOM elects to discontinue funding any Patent Action, then InnovaCOM
shall notify FutureTel, and FutureTel shall, in its discretion, either
discontinue such Patent Action, or continue such Patent Action at no
expense to InnovaCOM. Nothing in this Section shall affect FutureTel's
rights in the GECKO Patents or Licensed Materials generally, and
InnovaCOM's rights therein shall be limited to the rights licensed under
this Agreement. InnovaCOM's rights granted hereunder to fund any Patent
Action shall riot obligate InnovaCOM to undertake any such funding.
Rather, InnovaCOM shall be free to independently decide whether or not to
fund any Patent Action.
III. PAYMENT.
A. ROYALTY ON GECKO SUBLICENSES.
1. COVERED TRANSACTIONS. With the exception of any
transactions by and between InnovaCOM and OKI (the "OKI Transactions,"
further described in Schedule C hereto), any transaction directly involving
the Licensed Materials initiated
by InnovaCOM during the four-year period from the date of this Agreement
until the fourth anniversary of this Agreement (the "Initial 4-Year
Period") shall be subject to a royalty as set forth in this Section. For
purposes of this Section, a transaction shall be deemed initiated during
the Initial 4-Year Period if InnovaCOM makes an offer to a third party
(other than
an End User) or vice versa regarding the Licensed Materials during such
period, and an agreement reflecting such transaction is ultimately
consummated, regardless of whether such consummation occurs during the
Initial 4-Year Period. Any such transaction shall be referred to herein as
a "Covered Transaction." The parties agree that Covered Transactions shall
exclude, by way of example and without limitation, sublicenses of GECKO
Products by InnovaCOM directly to End Users and the purchase or sale to a
sublicensee of equipment used for the development of the Licensed
Materials. In the event such equipment includes, contains or is bundled
with the Licensed Materials, the purchase or sale of such equipment shall
be deemed a Covered Transaction.
a. DISPUTE RESOLUTION. In the event that the parties
cannot agree as to whether a particular transaction constitutes a Covered
Transaction, the transaction shall go forward and the parties shall attempt
to resolve any such disagreement promptly by good faith negotiation between
executives of each party who have authority to settle the dispute, and
their counsel. If the disagreement cannot be resolved by negotiation or if
either party does not respond to the other party's request for negotiation
within thirty (30) days of such request, the disagreement shall be settled
by arbitration pursuant to Article X hereunder.
2. APPLICABLE ROYALTIES. InnovaCOM shall pay to FutureTel
a royalty in the percentage specified below for the applicable year on the
Gross Revenues received by InnovaCOM in connection with the applicable
Covered Transaction during that year, until the expiration of Year 7 as
defined below. Specifically, for all Covered Transactions, InnovaCOM shall
pay to FutureTel 20% of the Gross Revenues received by InnovaCOM in
connection with such transaction during the one-year period following the
date of this Agreement ("Year 1"); 15% of the Gross Revenues received by
InnovaCOM in connection with such transaction during the one-year period
following Year 1 ("Year 2"); 8% of the Gross Revenues received by InnovaCOM
in connection with such transaction during the one-year period following
Year 2 ("Year 3"); 5% of the Gross Revenues received by InnovaCOM in
connection with such transaction during the one-year period following Year
3 ("Year 4"); 3% of the Gross Revenues received by InnovaCOM in connection
with such transaction during the one-year period following Year 4 ("Year
5"); 1% of the Gross Revenues received by InnovaCOM in connection with such
transaction during the one-year period following Year 5 ("Year 6"); and 1%
of the Gross Revenues received by InnovaCOM in connection with such
transaction during the one-year period following Year 6 ("Year 7"), as
follows:
Year 1 Year 2 Year 3 Year 4 Year 5 Year 6 Year 7
20% 15% 8% 5% 3% 1% 1%
B. ROYALTY ON GECKO SALES DIRECTLY TO END USERS.
1. COVERED TRANSACTIONS. Any transaction involving the
sales of GECKO Products by InnovaCOM directly to End Users for which an
initial order of silicon is placed by InnovaCOM during the Initial 4-Year
Period shall be subject to a royalty as set forth in this Section.
Specifically, a silicon order shall be subject to royalty payments if: (a)
it is placed during the Initial 4-Year Period for any GECKO Product or
GECKO Derivative Work; or (b) it is placed prior to the expiration of Year
7 for any additional copies of any GECKO Product or GECKO Derivative Work
for which an initial order of silicon was placed during the Initial 4-Year
Period. InnovaCOM shall place orders for silicon in good faith, and shall
not postpone any order until after the Initial 4-Year Period expires or
modify the GECKO Product or GECKO Derivative Work solely for purposes of
avoiding royalties hereunder. Any such order shall be referred to herein
as a "Covered Order."
a. DISPUTE RESOLUTION. In the event that the parties
cannot agree as to whether a particular transaction constitutes a Covered
Order, the transaction shall go forward and the parties shall attempt to
resolve any such disagreement promptly by good faith negotiation between
executives of each party who have authority to settle the dispute, and
their counsel. If the disagreement cannot be resolved by negotiation or if
either party does not respond to the other party's request for negotiation
within thirty (30) days of such request, the disagreement shall be settled
by arbitration pursuant to Article X hereunder.
2. APPLICABLE ROYALTIES. InnovaCOM shall pay to FutureTel
a royalty in the percentage specified below for the applicable year on the
total amount paid by InnovaCOM to any Foundry or other silicon source for
any silicon (excluding taxes, shipping, delivery, and/or handling charges)
(the "Foundry
Price") in connection with a Covered Order. Specifically, for all Covered
Orders, InnovaCOM shall: pay to FutureTel 20% of the Foundry Price for any
Covered Orders during Year 1; 15% of the Foundry Price for any Covered
Orders during Year 2; 8% of the Foundry Price for any Covered Orders during
Year 3; 5% of the Foundry Price for any Covered Orders during Year 4: 3% of
the Foundry Price for any Covered Orders during Year 5; 1% of the Foundry
Price for any Covered Orders during Year 6; and 1% of the Foundry Price for
any Covered Orders during Year 7, as follows:
Year 1 Year 2 Year 3 Year 4 Year 5 Year 6 Year 7
20% 15% 8% 5% 3% 1% 1%
In the event that the Foundry Price for any silicon cannot be determined,
InnovaCOM shall pay the foregoing royalty percentages on the Gross Revenues
which will be due to InnovaCOM from sublicenses of GECKO Products made
using such silicon; provided however, that such Gross Revenues shall be
deemed to accrue on the date InnovaCOM orders the silicon, and shall be
based on InnovaCOM's list price for the applicable GECKO Products in effect
as of the order date.
3. NO CUMULATIVE ROYALTIES. In the event that any
transaction has any characteristics which could be covered by both this
Section III(B) and Section III(A) above, InnovaCOM shall pay royalty
amounts pursuant to Section III(A) only. Sublicenses of GECKO Products by
any sublicensee of InnovaCOM shall be subject to the royalty provisions set
forth in Section III(A) above.
C. ROYALTY CAP. The maximum amount of royalties to be paid by
InnovaCOM to FutureTel pursuant to the terms of this Agreement shall not
exceed Three Million Dollars ($3,000,000) (the "Royalty Cap"). Once
InnovaCOM has paid to FutureTel, pursuant to the terms of this Agreement,
royalties in an amount equal to the amount of the Royalty Cap, InnovaCOM
shall have no further royalty obligations under this Agreement.
D. PAYMENT OF FEES AND INTEREST. All royalties due under this
Article III shall be payable quarterly for the calendar quarters ending on
the last day of March, June, September and December during the term of this
Agreement and thereafter, until all amounts due hereunder have been paid.
InnovaCOM shall calculate and pay, and/or cause its sublicensees to
calculate and pay to FutureTel all royalties that have accrued during the
applicable calendar quarter no later than thirty (30) days after the end of
that calendar quarter. Each such payment shall be accompanied by a written
statement showing: (a) the basis for InnovaCOM's and/or its sublicensees'
calculation of royalties payable to FutureTel, including without limitation
the revenues generated under any transaction involving any of the
Licensed Materials; (b) the number of units of GECKO Products, Drivers
distributed, if applicable; (c) the identity of all recipients of any of
the Licensed Materials; (d) a summary of all relevant Foundry Prices; and
(e) such other information as FutureTel may deem necessary or appropriate
to determine the amounts due hereunder. Payments received by FutureTel
more than
thirty (30) days after the end of the calendar quarter in which such
royalties have accrued shall be charged two percent (2%) interest per month
or the maximum applicable legal rate of interest chargeable, if less, until
such royalties are paid in full.
E. NO ROYALTY ON SALES TO FUTURETEL. InnovaCOM shall not pay
royalties hereunder to FutureTel on sales of the GECKO Products to
FutureTel. On sales of the GECKO Products to FutureTel, InnovaCOM shall
grant (and shall cause its sublicensees to grant) to FutureTel pricing of
the GECKO Products which is as favorable as, or more favorable than, the
pricing InnovaCOM (or its sublicensees, as the case may be) offers to any
third party for comparable GECKO Products, including all applicable
discounts, reductions and credits.
F. TAXES. InnovaCOM agrees to pay and to indemnify FutureTel
for, and to hold FutureTel harmless from and against, any and all income,
franchise, sales, use, property, ad valorem, value added, licensing, stamp,
employment, withholding or other taxes, levies, imposts, duties, charges,
withholdings of any nature, together with any penalties, fines or interest
thereon, arising out of the transactions contemplated by this Agreement and
imposed against FutureTel, InnovaCOM, and/or its sublicensee, or imposed
with respect to any of the Licensed Materials, by any federal, state, local
or foreign government or other taxing authority (excluding only U.S.
federal and U.S. state taxes on, or measured by, the net income of
FutureTel, which net income arose in whole or in part from stated royalty
payments made pursuant to Article III of this Agreement or from the sale of
Equipment pursuant to Article IV of this Agreement). Any obligations of
InnovaCOM arising under this provision shall not alter the amount of the
obligation of InnovaCOM or its sublicensee under any other provision of
this Agreement.
G. RECORDS. InnovaCOM shall maintain, at its address provided
for purposes of notice, throughout the term of this Agreement and for a
period of three (3) years following the termination of this Agreement, or
until any dispute relating to this Agreement is finally resolved, whichever
is later, complete and accurate records and accounts with respect to any
transaction involving Licensed Materials (including foundry orders for
silicon) which may be consummated by InnovaCOM, including the details
regarding revenues generated by InnovaCOM and the basis therefor, the
prices and quantities of Licensed Materials distributed by InnovaCOM and/or
its sublicensees, the amounts
payable to FutureTel by InnovaCOM and its sublicensees pursuant to the
terms of this Agreement and a copy of all invoices showing relevant Foundry
Prices, if applicable, in the event that FutureTel elects to conduct an
audit pursuant to subsection H below.
H. AUDIT. Upon reasonable notice and during normal business
hours, FutureTel shall have the right to have certified public accountants
or like agents examine such records and accounts for the purpose of
verifying the accuracy of the payments made by InnovaCOM and/or its
sublicensees to FutureTel under this Article. Any such audits shall be at
the expense of FutureTel, except that if the audit discloses underpayment
by InnovaCOM and/or its sublicensees of more than seven and one-half
percent (7.5%) of the total amount due to FutureTel during any calendar
quarter, InnovaCOM shall pay and/or cause its sublicensees to pay all costs
of the audit and shall promptly make payment and/or cause its sublicensees
to promptly make payment to FutureTel of any such underpayment. FutureTel
may not conduct such audits more than once per month.
I. PAYMENT OBLIGATIONS OF SUBLICENSEES. Any sublicense granted
by InnovaCOM relating to any of the Licensed Materials shall be covered by
an agreement, executed by the sublicensee, including a provision stating
that, in the event of a liquidation, bankruptcy, reorganization or
modification of InnovaCOM to the extent that InnovaCOM can no longer
receive payments, the sublicensees of InnovaCOM shall be obligated to make
payment of all royalties due to InnovaCOM, to InnovaCOM's successor,
trustee in bankruptcy or, to the extent permitted by law, the shareholders
of InnovaCOM and with respect to the royalties due to FutureTel, directly
to FutureTel. Such provision shall have no effect on the obligation of any
transferee, trustee in bankruptcy or other successor of InnovaCOM with
respect to InnovaCOM's obligations hereunder, including its obligation to
indemnify FutureTel hereunder, and InnovaCOM shall have no right to assign
or otherwise transfer this Agreement without FutureTel's consent, as set
forth in Section II(L) above.
J. SURVIVAL OF TERMINATION. The provisions of this Article
shall survive the termination of this Agreement until all amounts due to
FutureTel hereunder have been paid.
IV. PERSONNEL
A. RIGHT TO EMPLOY FUTURETEL PERSONNEL. Notwithstanding any
employment contracts which members of the GECKO Team may have entered into
with FutureTel, InnovaCOM may contact those persons identified in Schedule
D hereto solely for the purpose of employment with InnovaCOM; provided,
however, that neither InnovaCOM nor such members shall have any right to
use any trade secrets or other proprietary information of FutureTel
which is unrelated to GECKO and to which such members may have had access.
For a period of three (3) years from the date of this Agreement, InnovaCOM
agrees that it will not, either directly or indirectly, induce or solicit
any FutureTel employees other than those identified in Schedule D hereto to
terminate their employment with FutureTel.
V. PROPRIETARY RIGHTS
A. PROPRIETARY INFORMATION OF FUTURETEL.
1. OWNERSHIP BY FUTURETEL. InnovaCOM agrees that the
rights granted by FutureTel pursuant to this Agreement constitute a license
only, and that ownership of and title to the Licensed Materials, including
without limitation all patent, trademark, service xxxx, copyright, trade
secret rights and other proprietary rights, in and to the Licensed
Materials is and shall remain in FutureTel, and that by virtue of this
Agreement, InnovaCOM acquires only the right to use the Licensed Materials
under the terms and conditions of this Agreement for so long as it is in
effect and does not acquire any rights of ownership of or title in the
Licensed Materials or any other Proprietary Information.
2. NONDISCLOSURE. InnovaCOM shall not disclose to any
third party, nor permit any third party or organization to use or copy any
of the FutureTel Proprietary Information, except employees or consultants
of InnovaCOM whose access is necessary to enable InnovaCOM to exercise its
rights or perform its obligations under this Agreement. InnovaCOM
expressly agrees that prior to providing any employee or consultant with
access any Proprietary Information, it will obtain from such employee or
consultant written acknowledgment that he or she understands fully his or
her obligations as contemplated by this Agreement and agrees in writing to
be bound by its terms.
3. MEASURES TO BE TAKEN. InnovaCOM acknowledges that any
publication or disclosure to third parties of Proprietary Information of
FutureTel may cause immediate and irreparable harm to FutureTel, and
therefore agrees to take all reasonable steps and the same protective
precautions to protect FutureTel's Proprietary Information from disclosure
to third parties as it would to protect its own proprietary and
confidential information. InnovaCOM agrees to keep confidential and
protect from unauthorized disclosure by its employees, agents, consultants
or any person with access to the Proprietary Information, the contents of
such Proprietary Information. InnovaCOM shall not use, or allow any
employee, agent, consultant, or other person or entity to use, the
Proprietary Information (except as expressly provided in this Agreement).
In the event that InnovaCOM becomes aware of any unauthorized use or
dissemination of FutureTel's Proprietary Information, InnovaCOM
shall immediately notify FutureTel of such unauthorized use or
dissemination and shall cooperate with any action FutureTel may take with
respect to the unauthorized use, dissemination or publication of the
Proprietary Information.
B. DERIVATIVE WORKS BASED ON GECKO.
1. OWNED BY INNOVACOM. Any modifications to GECKO made by
InnovaCOM pursuant to Section II(A)(3) above shall be considered GECKO
Derivative Works. FutureTel expressly agrees that all GECKO Derivative
Works shall become the property of InnovaCOM and that FutureTel shall not
have, either expressly or impliedly, any rights, title, interest, or
licenses to the GECKO Derivative Works. Notwithstanding the foregoing,
nothing in this Section shall effect InnovaCOM's obligation to pay
royalties due in connection with any GECKO Products (whether based on GECKO
or any GECKO Derivative Works).
C. IBM FOUNDRY ARRANGEMENTS. FutureTel has discussed certain
foundry arrangements with International Business Machines, Inc. ("IBM")
regarding production of ASIC products (the "IBM Foundry Arrangements").
The parties warrant that no agreement finalizing the IBM Foundry
Arrangements has been executed by either party or any shareholder thereof.
All obligations for orders placed by FutureTel with IBM for ASIC products
shall be assumed by InnovaCOM. If InnovaCOM assumes any prospective rights
and obligations of FutureTel under the IBM Foundry Arrangements, or if
InnovaCOM itself enters into any arrangement with IBM or Nexus
Manufacturers' Representative, Inc. regarding, related to or connected in
any way with the subject matter of the IBM Foundry Arrangements
(collectively, a "New IBM Arrangement"), FutureTel shall not prevent
InnovaCOM from completing an agreement with respect thereto. To the extent
that InnovaCOM enters into any New IBM Arrangement, InnovaCOM hereby agrees
to indemnify and hold FutureTel harmless from and against any liability
FutureTel may incur arising out of or related to such New IBM Arrangement.
D. SIGN-OFF PROCEDURE. Prior to the execution of this
Agreement, FutureTel and InnovaCOM shall execute an acknowledgement of the
transfer of the Licensed Materials to InnovaCOM. Such acknowledgement will
include an exhibit identifying all files and documents relating to GECKO
that are transferred to InnovaCOM.
VI. WARRANTY
A. DISCLAIMER OF WARRANTY. THE LICENSED MATERIALS ARE PROVIDED
BY FUTURETEL ON AN "AS IS" BASIS. FUTURETEL HEREBY EXPRESSLY DISCLAIMS ALL
WARRANTIES, EXPRESS, STATUTORY OR IMPLIED REGARDING THE LICENSED MATERIALS
AND ANY RESULTS TO BE OBTAINED FROM THE USE THEREOF OR OF GECKO PRODUCTS TO
BE DEVELOPED THEREFROM, INCLUDING BUT NOT LIMITED TO ALL WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR USE, ACCURACY,
COMPLETENESS, ORIGINALITY AND NON-INFRINGEMENT, AND ALL WARRANTIES ARISING
FROM THE COURSE OF PERFORMANCE, COURSE OF DEALING AND USAGE OF TRADE OR
THEIR EQUIVALENTS UNDER THE LAWS OF ANY JURISDICTION. FUTURETEL DOES NOT
WARRANT THAT THE LICENSED MATERIALS WILL BE FREE FROM ERROR, UNAUTHORIZED
HIDDEN PROGRAMS INTRODUCED INTO THE LICENSED MATERIALS WITHOUT THEIR
KNOWLEDGE, OR WILL OPERATE UNINTERRUPTED.
VII. LIMITATION OF ACTION AND LIABILITY.
A. INNOVACOM'S REMEDIES. InnovaCOM's sole and exclusive remedy
for any damages or loss in any way connected with the Licensed Material,
whether by FutureTel's negligence, any breach of any other duty, shall be,
at FutureTel's option, the repair or replacement of the applicable Licensed
Material, or a refund of any amount paid hereunder by InnovaCOM in
connection with the applicable Licensed Material.
B. LIMITATION OF LIABILITY.
1. NO LIABILITY UNDER CERTAIN CIRCUMSTANCES. FUTURETEL
SHALL NOT BE LIABLE TO INNOVACOM, ANY AFFILIATE, ANY END USER OR ANY OTHER
PERSON OR ENTITY UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER
LEGAL OR EQUITABLE THEORY FOR: (1) ANY LOST PROFITS, LOST SAVINGS, LOST
DATA OR LOSS OF USE; (2) ANY CLAIMS AGAINST INNOVACOM OR ANY OF ITS
AFFILIATES BY ANY OTHER PARTY; (3) ANY INDIRECT, INCIDENTAL, SPECIAL,
CONSEQUENTIAL OR PUNITIVE DAMAGES OR COSTS; (4) COST OF PROCUREMENT OF
SUBSTITUTE GOODS OR SERVICES; OR (5) ANY DELAY OR FAILURE OF THE LICENSED
MATERIALS OR THE GECKO PRODUCTS TO PERFORM, ERRORS OF ANY KIND, EVENT OF
FORCE MAJEURE AND/OR MATTERS BEYOND ITS CONTROL, WHETHER OR NOT FUTURETEL
HAS BEEN ADVISED OR COULD HAVE FORESEEN THE POSSIBILITY OF SUCH DAMAGES.
INNOVACOM AGREES THAT THIS LIMITATION OF LIABILITY IS REASONABLE AND WILL
NOT CAUSE IT TO LOSE ANY EXPECTED BENEFITS, RIGHTS OR REMEDIES UNDER THIS
AGREEMENT.
2. AGGREGATE LIABILITY. In no event (including
unenforceability of the above limitations and independent of any failure of
essential purpose of the limited warranty and remedies provided hereunder)
shall FutureTel's aggregate liability for damages in connection with this
Agreement exceed the payment of
royalties to FutureTel by InnovaCOM associated with the applicable Licensed
Materials pursuant to the terms of Article III of this Agreement.
3. SEVERABILITY OF ACTIONS. IT IS EXPRESSLY
UNDERSTOOD AND AGREED THAT EACH AND EVERY PROVISION OF THIS AGREEMENT WHICH
PROVIDES FOR A LIMITATION OF LIABILITY, DISCLAIMER OF WARRANTIES OR
EXCLUSION OF DAMAGES, IS INTENDED BY
THE PARTIES TO BE SEVERABLE AND INDEPENDENT OF ANY OTHER PROVISION AND TO
BE ENFORCED AS SUCH.
4. SURVIVAL OF TERMINATION. The provisions of this
Article shall survive the termination of this Agreement.
VIII. INDEMNIFICATION
A. Indemnification. InnovaCOM agrees to indemnify FutureTel
and hold it harmless from and against any and all claims, actions,
liabilities, losses, costs, damages and expenses (including reasonable
attorneys' fees) (collectively, "Loss") associated with, arising from or
relating to the subject matter of this Agreement, including without
limitation any Loss resulting from: (1) any use of or reliance upon the
Licensed Materials, or any portion thereof, or modification or enhancement
thereof, by InnovaCOM or any sublicensee of InnovaCOM; and (2) the acts or
omissions of the employees, servants, agents, independent contractors, or
representatives of InnovaCOM, its sublicensees or any other party, whether
a failure to comply with the terms of this Agreement or pay any amount due
to FutureTel hereunder or otherwise. InnovaCOM further agrees to indemnify
FutureTel from any claims against FutureTel for incidental, special,
direct, or consequential damages, including any claims for lost profits,
lost savings, lost data or loss of use and loss of plant, equipment or
production, arising from or relating to the license, sublicense,
duplication, modification, enhancement, distribution or use of the Licensed
Materials, or any portion thereof, regardless of whether FutureTel has been
informed of the possibility of such damages.
B. FUTURETEL'S RIGHT TO COMMENCE INFRINGEMENT ACTIONS. Except
as provided in this Section, FutureTel shall have the sole right, but not
the obligation, to take such actions which it determines are reasonably
necessary or desirable in its sole discretion in connection with any
infringement or alleged infringement by a third party of any portion of the
Licensed Materials. InnovaCOM shall not undertake any action in response
to any infringement or alleged' infringement of the Licensed Materials
without the prior written consent of FutureTel. InnovaCOM agrees to
cooperate with and assist FutureTel in taking whatever action (including
consenting to being named as a party to any suit or other proceeding) which
FutureTel determines to be reasonably necessary or desirable. FutureTel
agrees to reimburse InnovaCOM for reasonable legal fees and other expenses
incurred in connection with FutureTel's investigating or bringing any such
claim, suit, damage, or loss.
C. SURVIVAL OF TERMINATION. The provisions of this Article
shall survive the termination of this Agreement.
IX. TERM AND TERMINATION
A. TERM. Unless sooner terminated as provided herein, this
Agreement and the licenses granted hereunder shall become effective upon
execution by FutureTel and InnovaCOM and shall continue in effect in
perpetuity.
B. TERMINATION. This Agreement and the license provided
hereunder shall terminate upon the earlier to occur of the following:
1. Upon ten (10) days' prior written notice of termination
by InnovaCOM to FutureTel, for any reason, after payment of all fees due to
FutureTel hereunder.
2. Thirty (30) days after either party gives the other
notice of the other's material breach of any provision of this Agreement
(other than InnovaCOM's intentional breach of its obligations under Article
V, which breach shall result in immediate termination), unless the
breaching party has cured such breach during such thirty (30) day period.
InnovaCOM's failure to pay any money due hereunder within thirty (30) days
of the date on which payment is due shall be a material breach hereunder,
and thirty days after FutureTel provides notice of such breach (e.g. a
minimum of sixty (60) days after the date such payment is due), the
licenses provided hereunder shall terminate unless InnovaCOM has cured such
nonpayment during such sixty (60) day period.
3. Immediately upon the existence of any one or more of
the following events with respect to either party, which remain uncured for
more than sixty (60) days: (a) entry of an order for relief under Title 11
of the United States Code; (b) the making of a general assignment for the
benefit of creditors; (c) the appointment of a general receiver or trustee
in bankruptcy of a party's business or property; or (d) action under any
state insolvency or similar law for the purpose of bankruptcy,
reorganization, or liquidation; unless within the specified sixty (60) day
period, the party in bankruptcy (including its receiver or trustee in
bankruptcy) provides to the other party adequate written assurances,
reasonably acceptable to such other party, of the party in bankruptcy's
continuing ability and willingness to fulfill all its obligations under
this Agreement.
C. EFFECT OF TERMINATION. Upon any termination of this
Agreement, InnovaCOM's rights under Article II shall immediately cease.
Within five (5) days after any termination for breach by InnovaCOM (except
a breach for nonpayment of any amount due hereunder) or within thirty (30)
days after termination for any reason, including breach of this Agreement
for nonpayment by InnovaCOM, InnovaCOM shall deliver to FutureTel
at InnovaCOM's sole cost and expense (adequately packaged and insured for
safe delivery), all copies of any Licensed Materials, and all Proprietary
Information of FutureTel. Alternatively, and at FutureTel's request,
InnovaCOM shall destroy all copies of any Licensed Materials, in every
form, including binary or other resulting files, and all copies of records
relating thereto, and all other FutureTel Proprietary Information.
InnovaCOM further agrees to erase all copies of any Licensed Materials from
any storage media.
D. NO REFUND. Except as otherwise expressly provided herein,
in the event of any termination hereunder, InnovaCOM shall not be entitled
to any refund of any payments made to FutureTel.
X. ARBITRATION
Except for the right of either party to apply to a court of
competent jurisdiction for a Temporary Restraining Order to preserve the
status quo or prevent irreparable harm pending the selection and
confirmation of a panel of arbitrators, and for the right of FutureTel to
bring suit on an open account for any payments due FutureTel hereunder, any
controversy or claim arising out of or relating to this Agreement, or the
breach thereof, shall be settled by arbitration in Santa Xxxxx County,
California, in accordance with the Commercial Arbitration Rules of the
American Arbitration Association, and judgment upon the award rendered by
the arbitrators may be entered in any court having jurisdiction thereof.
Arbitration shall be conducted by a panel of three (3) members, one member
selected by FutureTel, one member selected by InnovaCOM and the third
member, who shall be chairman, selected by agreement between the other two
(2) members. The arbitrators shall have the authority to grant injunctive
relief in a form substantially similar to that which would otherwise be
granted by a court of law. The parties obligations under this Article XI
shall survive termination of this Agreement.
XI. GENERAL PROVISIONS
A. AGREEMENT BINDING. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective successors
and permitted assigns for purposes of carrying out this Agreement.
B. RIGHTS TO INJUNCTIVE RELIEF. Both parties acknowledge that
remedies at law may be inadequate to provide either party with full
compensation in the event of the other party's material breach of Articles
II, V, VI, VII or VIII, and that the non-breaching party shall therefore be
entitled to seek injunctive relief in the event of any such material
breach.
C. ENTIRE AGREEMENT. This Agreement and each Schedule attached
hereto constitutes the complete and exclusive statement of the agreement
between FutureTel and InnovaCOM, and all previous representations,
discussions and writings are merged in this Agreement. This Agreement may
be modified only by a writing signed by both parties. This Agreement and
each Schedule attached hereto shall prevail over any additional,
conflicting or inconsistent terms and conditions which may appear on any
purchase order or other document furnished by InnovaCOM to FutureTel.
D. SEVERABILITY. It is the intent of the parties that in case
any one or more of the provisions contained in this Agreement shall be held
to be invalid or unenforceable in any respect, such invalidity, illegality,
or unenforceability shall not affect the other provisions of this
Agreement, and this Agreement shall be construed as if such invalid,
illegal or unenforceable provision had never been contained herein.
E. NO WAIVER. If either party should waive any breach of any
provision of this Agreement, it shall not thereby be deemed to have waived
any preceding or succeeding breach of the same or any other provision
hereof.
F. HEADINGS. Section and subsection headings of this Agreement
are inserted for convenience only and shall not be deemed to constitute a
part hereof nor to affect the meaning thereof.
G. COUNTERPARTS. This Agreement may be signed in two (2)
counterparts, each of which shall be deemed an original and which shall
together constitute one Agreement.
H. ADVERTISING AND PUBLICITY. Neither party shall use the name
of the other in publicity, advertising, or similar activity, without the
prior written consent of the other, except that InnovaCOM hereby consents
to FutureTel's inclusion of InnovaCOM's name in customer listings which may
be published from time to time as part of FutureTel's marketing efforts.
I. GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of California without
reference to its conflicts of law principles.
J. NOTICES. All notices or reports which are required or may
be given pursuant to the terms of this Agreement shall be in writing and
shall be deemed duly given when delivered to the respective executive
offices of FutureTel and InnovaCOM at the addresses first set forth above.
K. REPRESENTATIVE. Each party shall have the following
representatives who shall promptly give or obtain all
necessary information and decisions relating to GECKO and the Documentation
and this Agreement. Each party shall contact the designated representative
of the other party at such times as it deems necessary to facilitate proper
performance of the mutual obligations of the parties under this Agreement.
Each party may change its designated representative upon thirty (30) days
written notice to the other party.
FutureTel: Xxxxxx Xxxx
InnovaCOM: Xxxx Xxx
L. FORCE MAJEURE. Neither party shall be liable for any delay
or nonperformance of any provision of this Agreement (other than for the
payment of amounts due hereunder) due to fire, explosion, flood or other
natural catastrophe, governmental legislation, act, orders or regulations,
strikes or labor difficulties, to the extent any such event is not
occasioned by the negligence of the delayed party, and the time for
performance of such provision shall he deemed to be extended for a period
equal to the duration of the conditions preventing performance. The party
affected by an event described in the preceding sentence shall use its
reasonable efforts to minimize the delays caused by such events. Each
party shall notify the other as promptly as practicable of the occurrence
of a force majeure event hereunder.
M. FURTHER ASSURANCES. Each party hereto shall, without
further consideration, execute such documents and deliver such materials as
may be necessary or appropriate to further the purposes of this Agreement.
Without limiting the generality of the foregoing, each party shall give the
other all assistance reasonably required to perfect or ensure such other
party's ownership of Derivative Works and any other property developed in
connection with this Agreement, including executing and delivering such
instruments and taking such other actions as such other party may
reasonably require to establish, maintain, evidence, defend or enforce its
exclusive ownership of, and rights related such property.
IN WITNESS WHEREOF, the undersigned, intending to be legally bound
have duly executed this Agreement to become effective as of the date first
above written.
InnovaCOM, Inc.
By: _________________________
Name: Xxxx Xxx
Title: CEO
FutureTel, Inc.
By: _________________________
Name: Xxxxxx Xxxx
Title: President
SCHEDULE A
ADDITIONAL DEFINITIONS
I. GECKO:
A. SPECIFICATIONS: Document referred to as "GECKO Design
Specification." Represented by the frame readable document named
"gecko.1.3."
B. C-MODEL SOURCE CODE:
The code represented on pages 11-19 of the attached 30-page "LIST
OF FILES." The C-Model Source Code performs software simulation
for encoding, decoding, and other functions with the GECKO
hardware.
C. VERILOG SOURCE CODE:
The code represented on pages 1-11 of the attached "LIST OF
FILES." The Verilog Source Code represents the logical structure
of the GECKO modules in source code format.
D. SIMULATION ENVIRONMENT:
All test benches/simulation suites used to stimulate the GECKO
design in either behavioral or gate level verification. These
test benches consist of Verilog or C-Model or other modules used
for stimulation or verification of the design. These files can
be found on pages 1-11 in the attached "LIST OF FILES."
E. MICROCODE:
The code:
i) required to exercise the design for the purpose of design
verification;
ii) required to enable the GECKO chip to perform any and all
functions pursuant to its design. This microcode is
represented by the ".asm" files on pages 1-2 of the attached
"LIST OF FILES," including the "assemble.c" file.
F. SYNTHESIS AND SIMULATION WITH IBM LIBRARY:
i) Gate-level libraries for IBM process represented on pages 27
and 28 of the attached "LIST OF FILES."
ii) Synopsis scripts necessary for module and top-level
synthesis to generate gate-level netlists. These are
represented on pages 19-24 of the attached "LIST OF FILES."
G. NETLIST:
Gate-level netlist generated using IBM libraries. The netlist is
represented on pages 28-30 of the attached "LIST OF FILES."
H. IBM MASK:
Ultimate physical representation of the final device.
I. IBM SILICON:
The final GECKO integrated circuit in wafer, bare die, or
packaged form.
SCHEDULE B
EXCLUSIVE GECKO SUBLICENSES
Oki Semiconductor
Mitsubishi Electronics Corporation
Toshiba, Ltd.
SCHEDULE C
OKI TRANSACTION
1. OKI COVERED TRANSACTIONS. Any transaction by and between
InnovaCOM and OKI directly involving the Licensed Materials shall be
subject to a royalty as set forth in this Section. Any such transaction
shall be referred to herein as an "OKI Covered Transaction."
2. APPLICABLE ROYALTIES. InnovaCOM shall pay to FutureTel a
royalty in the percentage specified below for the applicable year on the
Gross Revenues received by InnovaCOM in connection with the applicable OKI
Covered Transaction during that year, until the expiration of Year 7.
Specifically, for all OKI Covered Transactions, InnovaCOM shall pay to
FutureTel 10% of the Gross Revenues received by InnovaCOM in connection
with such transaction during Year 1; 10%k of the Gross Revenues received by
InnovaCOM in connection with such transaction during Year 2; 8% of the
Gross Revenues received by InnovaCOM in connection with such transaction
during Year 3; 5% of the Gross Revenues received by InnovaCOM in connection
with such transaction during Year 4: 3% of the Gross Revenues received by
InnovaCOM in connection with such transaction during Year 5; 1% of the
Gross Revenues received by InnovaCOM in connection with such transaction
during Year 6; and 1% of the Gross Revenues received by InnovaCOM in
connection with such transaction during Year 7, as follows:
Year 1 Year 2 Year 3 Year 4 Year 5 Year 6 Year 7
20% 15% 8% 5% 3% 1% 1%
SCHEDULE D
MEMBERS OF GECKO TEAM
Xxx Xx
Xxxxx Xxxxx
Ren-Yuh Xxxx
Xxxxx Bhargaua
