AMENDED AND RESTATED LICENSE AGREEMENT BY AND BETWEEN TRACE TECHNOLOGIES L.L.C. AND SNAPTRACK, INC.
EXHIBIT
10.17
CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE CONFIDENTIAL
PORTIONS HAVE BEEN REDACTED AND ARE DENOTED BY A TRIPLE ASTERISK (***).
THE
CONFIDENTIAL PORTIONS HAVE BEEN SEPARATELY FILED WITH THE
COMMISSION.
AMENDED
AND RESTATED
BY
AND BETWEEN
TRACE
TECHNOLOGIES L.L.C. AND SNAPTRACK, INC.
THIS
AMENDED AND RESTATED LICENSE AGREEMENT,
collectively referencing that certain prior license agreement entered
as of
August 20, 1999, and as amended, by and between STI and Locate Networks,
Inc.
(the “Agreement”)
is
made and entered into as of January 16, 2006 (the “Effective
Date”)
by and
between SnapTrack, Inc. (“STI”
or
“SnapTrack”),
a
California corporation with its registered business office at 0000 Xxxxxxxxx
Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000, and Trace Technologies L.L.C.,
(“Trace”),
a
Nevada limited liability company with its principal place of business
located at
0000 Xxxxx 000xx
Xxxxxx,
Xxxxx, Xxxxxxxx 00000. STI and Trace may individually be referred to
as a
“party” and collectively as the “parties” in this Agreement. Except as is
expressly and otherwise provided herein, this Agreement supersedes and
replaces
as of and after the Effective Date the prior License Agreement made and
entered
as of August 20, 1999, as amended, by and between STI and Trace Technologies
L.L.C., as successor-in-interest to substantially all of the assets of
Locate
Networks, Inc. (the “Prior
License”).
BACKGROUND
WHEREAS,
Trace
is
in the business of designing, developing, marketing and selling proprietary
wireless communication devices, including a location pager device for
use and
operation on ReFLEX networks, in conjunction with related location services.
WHEREAS,
STI
is
developing software and related technology based on its proprietary Assisted
Global Positioning System (“
A-GPS”)
technology.
WHEREAS,
as
part
of the acquisition by Trace of substantially all of the assets of Locate
Networks, Inc. on June 1, 2004, the License Agreement that was made and
entered
as of August 20, 1999, as amended, by and between STI and Locate Networks,
Inc.,
was assigned by Locate Networks, Inc. to Trace as the successor-in-interest
to
substantially all of the assets of Locate Networks, Inc.
WHEREAS,
the
parties desire to further delineate and set forth the terms and conditions
under
which Trace will continue to: (i) license the use of STI’s A-GPS Software to
design, develop, market and sell such wireless communication devices
for use in
performing paging operations on ReFLEX networks, and (ii) obtain from
STI
maintenance and technical support and engineering services for the STI
Server
Software in connection with its use with such wireless communication
devices.
NOW,
THEREFORE, in
consideration of the agreements contained herein and for such other good
and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties hereby agree as follows:
AGREEMENT
In
consideration of the agreements contained herein, the parties agree as
follows:
1. Definitions.
As used
herein:
“Affiliate”
means
any entity that controls, is controlled by, or under common control with
a
party, where “control” means the direct or indirect beneficial ownership of more
than fifty percent (50%) of the outstanding voting interests of such
entity (but
only so long as such entity meets these requirements).
“Authorized
Distributors”
means
third parties authorized by Trace, pursuant to a written agreement between
Trace
and such third party, to distribute Wireless Devices.
“Authorized
Licensee”
means
any person or entity to which STI has licensed for distribution to third
parties
the Client Program under a written license agreement with STI.
“Authorized
Manufacturers”
means
third parties that manufacture Wireless Devices on behalf of Trace.
“Authorized
Service Centers”
means
third parties that install and host the Server Software on servers for
the
benefit of Trace and in accordance with the provisions of Section 2(b).
“Client
Program”
means,
in object code format only, the STI software, logic designs, and net
lists that
were or are provided by STI to an Authorized Licensee and, when installed
in the
Wireless Device, help analyze GPS data and enable communications between
the
Wireless Device and the Server Software to provide position location
information
to Subscribers.
“Client
Software”
means,
in object code format only, the STI software, logic designs, and net
lists that
were provided by STI to Trace on or prior to the Effective Date and accepted
by
Trace and, when installed in the Wireless Device, help analyze GPS data
and
enable communications between the Wireless Device and the Server Software
to
provide position location information to Subscribers.
“Client
Technology”
shall
mean that certain client software described on Exhibit
B.
“Communications
Interface Protocol”
means
the detailed STI protocol which defines the way the Client Software or
Client
Program interacts with the Server Software, as modified from time to
time by STI
upon written notice to Trace.
“Confidential
Information”
of
a
party means any information disclosed by that party to the other party
pursuant
to this Agreement which is in written, graphic, machine readable or other
tangible form and is marked “Confidential,” “Proprietary” or in some other
manner to indicate its confidential nature. Confidential Information
may also
include oral information disclosed by one party to the other pursuant
to this
Agreement, provided that such information is designated as confidential
at the
time of disclosure. Notwithstanding the foregoing, (i) all information
STI
provides to Trace that relates to the Software or the Engineering Services
shall
be deemed STI’s Confidential Information, and (ii) all information Trace
provides to STI that relates to the Wireless Device, Wireless Services
or other
Trace products or services shall be deemed Trace’s Confidential Information.
“DSP”
means
a
digital signal processor.
“DSP
Implementation”
means
an implementation of Client Software which (a) includes a DSP, (b) fully
conforms to the Communications Interface Protocol, and (c) requires the
use of
the Server Software on a server that is remote from a Wireless
Device.
“End
User”
means
any third party, including but not limited to a Subscriber, which obtains
a
Wireless Device solely for its own personal or business use and not for
further
commercial distribution or resale.
“End
User License”
means
an end user license agreement which contains, among others, the end user
restrictions set forth on Exhibit
A.
“Enhancements”
means
accuracy improvements, speed improvements, and/or the addition of new
functionality to the Server Software, but excluding any New Implementations.
For
purposes of interpretation of this Agreement, “improvements” shall include bug
fixes, error corrections, and minor new releases signified by an increase
in the
number to the right of the decimal point of the Server Software, but
shall
exclude New Implementations.
“Engineering
Services”
means
technical training, design consulting, document creation, implementation,
testing, and engineering development services that STI may provide under
this
Agreement, including, without limitation, such services that STI may
provide in
accordance with Section 4(b) below.
“First
Level Technical Support”
means
support which Trace will provide directly to End Users, Authorized Distributors,
Authorized Service Centers, and Authorized Manufacturers, including,
without
limitation, answering questions, resolving technical difficulties related
to the
Wireless Devices and Wireless Services that Trace is capable of resolving
without the assistance of STI, and providing on-site technical support
to
Authorized Distributors, Authorized Service Centers, and Authorized
Manufacturers.
“Intellectual
Property Rights”
means
any trade secrets, patents, copyrights, trademarks, know-how, moral rights
and
other intellectual property rights existing under the laws of any governmental
authority, domestic or foreign including all applications and registrations
relating to any of the foregoing.
“MMGPS
Implementation”
means
an implementation of a Client Program which (a) is based on Verilog RTL
core
receiver position engine software, (b) fully conforms to the Communications
Interface Protocol, and (c) requires the use of the Server Software on
a server
that is remote from a Wireless Device.
“Necessary
IP”
means
all patent and patent application entitled to an effective filing date
occurring
at any time prior to the expiration or earlier termination of this Agreement
and
which are essential or useful to the development, manufacture, use, sale,
importation, disposal or distribution of licenses or other rights to
the
Software or a Client Program in order to comply with the location services
portion of the specifications of any wireless communications standard
adopted
for any air interface anywhere in the world.
“New
Implementations”
means
a
new major release of the Server Software, signified by an increase in
the number
to the left of the decimal point, that incorporates significant new
functionality, new methods, or new techniques of implementing STI’s A-GPS or
other technology within the Server Software and which STI may develop
and offer
to its server licensees for use in the performance of assisted position
location
determination. New Implementations may be subject to incremental fees
and/or
modified support terms.
“Project
Plan”
means
the project plan, set forth on Exhibit
B
of the
Prior License, which establishes a timetable for the parties to develop
detailed
specifications, resource requirements, schedules, and milestones related
to the
integration of the Software into Wireless Devices.
“Server
Software”
means,
in object code format only, STI location server software that (a) is
installed
on a server that is remote from the Wireless Devices, (b) assists in
determining
the location of the Wireless Devices, and (c) communicates with Wireless
Devices
using the Communications Interface Protocol.
“Software”
means
the Client Software, Server Software, and WARN Software.
“Subscriber”
means
a
person who obtains a Wireless Device and who has authorized access to
the
Wireless Service.
“WARN”
means
the wide area reference network of A-GPS receivers which provide satellite
information and differential corrections for a wide geographic
area.
“WARN
Software”
means
STI wide area reference network software, in object code format only,
which
manages and consolidates data from a wide area network for use by the
Server
Software.
“Wireless
Device”
means
a
paging device (i) on which the DSP Implementation of the Client Software
or the
MMGPS Implementation of the Client Program is installed, and (ii) which
(a)
communicates with the server on which the Server Software is installed
via the
Wireless Network to transmit position location data or assistance information
to
and/or from such paging device and (b) is not capable of transmitting
or
receiving voice data or voice communications.
“Wireless
Network”
means
the two-way paging ReFLEX networks.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-4-
“Wireless
Service”
means
wireless location services, which in any way incorporate the Software
or utilize
output of the Software to offer location dependent applications or data
to
Subscribers, and which Trace offers through the Wireless Network.
2. License
Rights
(a) Client
Software License.
Subject
to the terms, conditions, and restrictions of this Agreement, without
the right
to sublicense except as explicitly set forth herein, STI hereby grants
to Trace
a nonexclusive, perpetual, irrevocable, nontransferable (except as set
forth in
Section 14(b)) license under STI’s Intellectual Property Rights in the DSP
Implementation of the Client Software, to (i) modify the Client Software
only as
necessary to integrate the Client Software with the Wireless Devices,
provided
that such changes do not alter the core functionality of the Client Software,
(ii) make (or have made by Authorized Manufacturer(s) only) and sell
(either
directly or through Authorized Distributors) Wireless Devices, (iii)
sublicense
to End Users the right to use the Client Software as embedded on the
Wireless
Devices, (iv) use the Client Software solely as is necessary to provide
First
Level Technical Support, and (v) sublicense to third parties the right
to modify
the Client Software only as necessary to integrate the Client Software
with the
Wireless Devices, provided that such changes do not alter the core functionality
of the Client Software, and further provided that such third party signs
an
agreement with Trace which contains terms substantially similar to those
set
forth on Exhibit
C.
(b) Server
Software License.
Subject
to the terms, conditions, and restrictions of this Agreement, STI hereby
grants
Trace a nonexclusive, perpetual, irrevocable, nontransferable (except
as set
forth in Section 14(b)) license, without the rights to sublicense except
as
explicitly set forth herein, under STI’s Intellectual Property Rights in the
Server Software, to (i) internally test and develop Wireless Devices
for use
with the Server Software, (ii) sublicense to Authorized Service Centers
only the
right to install, host and use internally the Server Software on servers
owned
and controlled by Trace or such Authorized Service Centers solely as
is
necessary to enable Trace to provide Wireless Services for use on or
with
Wireless Devices to Subscribers, and (iii) use internally the Server
Software
solely as is necessary to provide First Level Technical Support.
(c) Trademarks.
Subject
to the terms, conditions and restrictions of this Agreement, STI hereby
provides
on behalf of XXXXXXXX Xxxxxxxxxxxx the right to use the QPointÔ
trademark of XXXXXXXX Xxxxxxxxxxxx subject to and in accordance with
the
provisions contained in Exhibit
D
to this
Agreement.
(d) Reserved
Rights and Restrictions.
Except
for the limited rights and licenses granted to Trace under this Agreement,
STI
retains all STI right, title, and interest in and to the Software and
all copies
thereof, and all STI Intellectual Property Rights related thereto. Trace
will
not, and is not licensed to (i) use the Server Software with software
(other
than the Client Software) which has functionality similar to the functionality
of the Client Software, or (ii) use the Client Software with software
(other
than the Server Software) which has functionality similar to the functionality
of the Server Software. Except as explicitly set forth in this Section
2, Trace
shall not, directly or through any person or entity, in any form or manner,
copy, distribute, reproduce, incorporate, modify, create future derivative
works
of, use or allow access to the Software or decompile, reverse engineer,
reverse
translate, disassemble or otherwise attempt to derive source code from
the
Software.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-5-
(e)
***
(f) Backup
Copies.
Trace
may make and maintain a copy of the Software in machine-readable, object
code
format, and a copy of the related documentation, solely for nonproductive
backup
purposes.
3. Trace
Responsibilities
(a) Marketing.
Trace
shall use commercially reasonable efforts to market, promote, and distribute
the
Wireless Devices and to market and promote the Wireless Service.
(b) End
User Licensing.
Trace
will include a copy of an End User License with each Wireless Device
sold to End
Users.
(c) Authorized
Manufacturers, Service Centers, and Distributors.
Trace
will not sublicense the Server Software to an Authorized Service Center,
or the
Client Software to an Authorized Manufacturer, without the prior written
consent
of STI, which consent shall not be unreasonably withheld or delayed;
provided,
that such consent shall not be required for Authorized Service Centers
or
Authorized Manufacturers located in the United States, Canada, or the
European
Union. Trace shall (i) ensure that each Authorized Manufacturer, Authorized
Service Center, and Authorized Distributor acknowledges in writing, adheres
to,
and does not perform any act inconsistent with, the terms and conditions
of this
Agreement, (ii) use commercially reasonable efforts to ensure that Authorized
Manufacturers, Authorized Service Centers, and Authorized Distributors
do not
reverse engineer, decompile, disassemble, or modify the Software, and
(iii)
execute a non-disclosure agreement at least as protective of STI as the
provisions of Section 9 of this Agreement prior to discussing or sublicensing
the Client Software to Authorized Manufacturers or the Server Software
to
Authorized Service Centers.
(d) Non-Use
of Open Source.
Neither
Trace nor any Authorized Service Centers shall incorporate, link, distribute
or
use any third party software or code in conjunction with any Software
in such a
way that: (i) creates, purports to create or has the potential to create,
obligations with respect to the Software, including, without limitation,
the
distribution or disclosure of any source code; or (ii) grants, purports
to
grant, or has the potential to grant to any third party any rights to
or
immunities under any of STI’s Intellectual Property Rights, including, without
limitation, any rights which may exist in or relate to the Software.
Without
limiting the generality of the foregoing, Trace shall not incorporate,
link,
distribute or use the Software with any code or software licensed under
the GNU
General Public License (“GPL”), Lesser General Public License (“LGPL”), Mozilla,
and/or any other open source license, in any manner that could cause
or could be
interpreted or asserted to cause the Software (or any modifications,
enhancements or revisions thereto) to become subject to the terms of
the GPL,
LGPL, Mozilla and/or such other open source license. Trace shall also
cause each
of its Authorized Service Centers to agree and covenant in writing not
to
incorporate, link, distribute or use the Software with any code or software
licensed under the GPL, LGPL, Mozilla, and/or any other open source license,
in
any manner that could cause or could be interpreted or asserted to cause
the
Software (or any modifications, enhancements or revisions thereto) to
become
subject to the terms of the GPL, LGPL, Mozilla and/or such other open
source
license, and to recognize SnapTrack as an intended third party beneficiary
of
this obligation with the right to enforce such obligation against such
Authorized Service Centers.
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-6-
4. STI
Responsibilities
(a) Delivery
of Software.
Trace
acknowledges and agrees that STI has fulfilled all of its obligations
as of the
Effective Date to deliver the Software deliverables set forth on Exhibit
E
to
Trace. Upon written request by Trace, STI will provide Trace during the
term of
this Agreement with (i) any Enhancements to the Server Software that
STI may
make available to its other server licensees, subject to the payment
by Trace of
amounts due under this Agreement for such Enhancements, and (ii) any
New
Implementations of the Server Software that STI may make available to
any of its
licensees, subject to the payment by Trace of any incremental fees and/or
agreement to any modified support and/or other terms applicable generally
to
licensees receiving such New Implementations.
(b) Engineering
Services.
From
time to time, Trace may propose in writing to STI Engineering Services
which
Trace desires STI to provide to Trace. Such proposal will contain detailed
specifications of the Engineering Services, which Trace desires STI to
provide.
Within thirty (30) days after receiving such Trace proposal and if STI
is
willing to perform such engineering services, STI will inform Trace in
writing
of the terms, conditions and pricing under which STI will perform such
Engineering Services, and will include estimates of STI’s time and materials
rates, as well as travel expenses anticipated to be incurred with respect
to the
provision of such Engineering Services. If STI is willing to provide
such
Engineering Services to Trace, and Trace desires to acquire such Engineering
Services, STI and Trace will mutually agree in writing upon the terms,
conditions and pricing under which STI will provide such Engineering
Services to
Trace.
(c) SnapWarn
Service Feed.
During
the period in which STI has available to it access to A-GPS reference
receiver
network services from a third party for sale to other parties, and subject
to
the payment by Trace of all amounts due under this Agreement, STI will
provide
Trace with access to STI’s commercial, A-GPS reference receiver network services
in North America for use with the Server Software that is licensed by
STI to
Trace under this Agreement (the “SnapWarn
Service Feed”).
(d) New
Implementations.
Trace
acknowledges that STI may choose to seek and obtain additional fees and
charges,
or modified license or support terms, for the New Implementations that
STI may
develop. If STI develops any such New Implementations and chooses to
make them
available to any of STI’s other Server Software licensees, then STI will make
such New Implementations available to Trace under this Agreement, subject,
however, to the payment by Trace to STI, on a timely basis when due,
of all
then-current additional fees and charges which apply to such New Enhancements
generally and the agreement by Trace to any modified license, support
or other
terms that apply to such New Enhancements generally. If any such New
Enhancements are made available by STI to Trace, then they will be deemed
to be
part of the Software licensed to Trace under the license provisions in
this
Agreement.
5. Prices
and Payment
(a) Fees.
In
consideration of STI’s delivery of the Software and provision of service and
support as provided under this Agreement, Trace will pay STI the fees
set forth
on Exhibit
F.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-7-
(b) Late
Payments.
All
amounts which Trace does not pay on a timely basis as required by this
Agreement
shall be subject to a late charge equal to one and one-half percent (1.5%)
per
month (or, if less, the maximum allowed by applicable law). In the event
that
any payment due hereunder is not received by STI within thirty (30) days
of the
date on which it is due as provided in Exhibit
F,
and STI
has provided Trace notice and thirty (30) days to cure such deficiency
and Trace
has failed to do so, STI reserves the right to suspend performance until
such
delinquency is corrected.
(c) Payment
Method.
All
payments by Trace hereunder shall be made by wire transfer to such bank
account
as shall be designated by STI in writing.
(d) Taxes.
Trace
will be responsible for the billing, collecting and remitting of sales,
use,
value added, and other comparable taxes reasonably determined by Trace
to be due
with respect to the sale or distribution of the Wireless Devices and/or
the
Wireless Services. STI shall not be liable for any taxes, including without
limitation income taxes, withholdings, value added, franchise, gross
receipts,
sales, use property or similar taxes, duties, levies, fees, excises or
tariffs
incurred in connection with the development, manufacture, sale, or distribution
of the Wireless Devices and/or the Wireless Services. Trace takes full
responsibility for all such taxes, including penalties, interest and
other
additions thereon. Trace shall not be liable for any taxes, including
without
limitation income taxes, withholdings, value added, franchise, gross
receipts,
sales, use property or similar taxes, duties, levies, fees, excises or
tariffs
reasonably determined by STI to be due with respect to the license to
Trace of
the Client Software and Server Software hereunder, except to the extent
such
taxes, duties, levies, fees, excises or tariffs are incurred in connection
with
the development, manufacture, sale, or distribution of the Wireless Devices
and/or the Wireless Services. STI takes full responsibility for all such
taxes,
including penalties, interest and other additions thereon.
(e) Withholding
Taxes.
If,
after a determination by foreign tax authorities, any taxes are required
to be
withheld on payments made by Trace to STI, Trace may deduct such taxes
from the
amount owed STI and pay them to the appropriate taxing authority; provided
however, that Trace shall promptly secure and deliver to STI an official
receipt
for any such taxes withheld or other documents necessary to enable STI
to claim
a U.S. foreign tax credit, and further provided that Trace will promptly
notify
STI of and refund to STI the full amount of any reimbursements received
by Trace
for such taxes. Trace will use commercially reasonable efforts to ensure
that
any taxes withheld are minimized to the extent possible under applicable
law.
Notwithstanding the foregoing, if Trace should make any assignment of
this
Agreement to a foreign entity as set forth under Section 14(b), then
all
payments to STI under this Agreement shall be made by such entity without
deduction or offset for any withholding taxes imposed by foreign tax
authorities.
(f) Reports.
Within
thirty (30) days after the end of each month during the term of this
Agreement,
Trace shall provide STI with reports of (i) the number of Wireless Devices
sold
by Trace or Authorized Distributors during such month, and (ii) the number
of
Subscribers who had authorized access to the Wireless Service at any
time during
such month.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-8-
(g) Audit
Rights.
Trace
shall maintain full and complete records of distribution of Wireless
Devices and
the provision of Wireless Service by Trace, including without limitation
copies
of the reports described in Section 5(f), for at least three (3) years
after the
termination or expiration of this Agreement. STI shall, at any time during
the
period when Trace is obliged to maintain such records, be entitled to
audit such
records, as well as the computers which track access to and usage of
the
Wireless Service by Subscribers, upon thirty (30) days written notice,
in order
to confirm the accuracy of the reports described in Section 5(f); provided,
that
STI may conduct no more than one such audit in any twelve (12) month
period. Any
such audit shall be performed at STI’s expense during normal business hours with
a minimum of two (2) business days advance written notice, and shall
be
conducted in such a manner as not to unreasonably interfere with Trace’s normal
business operations; provided, that the cost of such audit shall be promptly
paid by Trace if such audit reveals an underpayment by Trace of more
than five
percent (5%) of the amounts payable by Trace to STI in any twelve (12)-month
period.
6. Intentionally
Left Blank.
7. Support
(a) Warranty
Support.
STI
shall provide warranty support during the Warranty Period directly to
Trace as
set forth in Section 11.
(b) STI
Technical Support to Trace.
Subject
to payment by Trace of all of the applicable then-current and mutually
agreed
upon fees and its compliance with all other material provisions of this
Agreement, STI will provide to Trace technical support, and those Enhancements
that STI normally provides to others in connection with such support,
all in
accordance with the provisions set forth on Exhibit
G.
(c) End
User Support.
Trace
shall be responsible for all First Level Technical Support.
8. Proprietary
Rights
(a)
Retention
of Ownership.
Each
party shall retain ownership of its respective Intellectual Property
Rights that
(i) its employees have developed or may in the future develop
or (ii)
it has acquired or will acquire in the future from others.* Confidential
material redacted and filed separately with the Commission**
(b) Cross
License Rights.
Trace
hereby grants, on behalf of itself and its Affiliates, to STI an irrevocable,
perpetual, non-exclusive, royalty-free, fully paid-up, worldwide right
and
license under the Necessary IP of Trace and its Affiliates to (i) make
and have
made the Software, and (ii) use, offer to sell, sell, import and otherwise
dispose of the Software. STI may not sublicense the rights granted in
Section
8(b)(i), except to its Affiliates. STI may not sublicense the rights
granted in
Section 8(b)(ii), except to its Affiliates and the direct and indirect
customers
of STI and its Affiliates.
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-9-
(c) Covenant
Not to Assert Obligations.
Each
agreement which Trace enters into with an Authorized Service Center which
grants
rights to use the Software, determined regardless of version or brand
(each, a
“Covered Item”) shall contain a covenant by such Authorized Service Center not
to assert, bring or cause to be brought against any licensor or other
licensee
of a Covered Item (provided that such other licensee has also agreed
to a
similar covenant) any claim, suit, action or proceeding alleging that
a Covered
Item infringes any claim of any patent, patent application or substantially
similar intellectual property right. In the event that any such Authorized
Service Center will not so covenant for whatever reason, then Trace may
request
for STI to provide a written waiver of such requirement in accordance
with the
provisions of Section 14(a) of this Agreement. STI will consider any
such
request made by Trace. Each licensor or other licensee of a Covered Item
shall
be an intended third party beneficiary of this covenant and obtain the
right to
enforce this covenant against each of the foregoing parties. This covenant
shall
be binding on all successors-in-interest to, or assignees or transferees
of, the
Covered Items or any parties that may subsequently receive the right
to enforce
any patent, patent application or substantially similar intellectual
property
right applicable to the Covered Items. Trace shall inform all such
successors-in-interest, or transferees or assignees, of the existence
of this
covenant and obtain their written agreement to be bound to this covenant
prior
to any attempted or purported transfer thereof.
9. Confidentiality
(a) Nondisclosure.
Each
party shall treat as confidential all Confidential Information of the
other
party, shall not use such Confidential Information except as set forth
herein
and in order to allow the parties to meet their obligations under this
Agreement, and shall not disclose such Confidential Information to any
third
party. Without limiting the foregoing, each of the parties shall use
at least
the same degree of care that it uses to prevent the disclosure of its
own
confidential information of like importance to prevent the disclosure
of
Confidential Information disclosed to it by the other party under this
Agreement. Each party shall promptly notify the other party of any actual
or
suspected misuse or unauthorized disclosure of the other party’s Confidential
Information. Notwithstanding anything to the contrary, nothing in this
Agreement
shall prevent either party from disclosing the Confidential Information
of the
other party to its Affiliates provided, however, that such Affiliates
have
agreed to treat such Confidential Information in a manner that is consistent
with the confidentiality obligations imposed on such party under this
Agreement.
(b) Exceptions.
Notwithstanding the above, neither party shall have liability to the
other with
regard to any Confidential Information of the other which the receiving
party
can prove:
(i) was
in
the public domain at the time it was disclosed or has entered the public
domain
through no fault of the receiving party;
(ii) was
known
to the receiving party, without restriction, at the time of disclosure,
as
demonstrated by documents or other materials in existence at the time
of
disclosure;
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-10-
(iii) is
disclosed with the prior written approval of the disclosing party;
(iv) was
independently developed by the receiving party without any use of the
Confidential Information, as demonstrated by documents or other materials
created at the time of such independent development;
(v) becomes
known to the receiving party, without restriction, from a source other
than the
disclosing party without breach of this Agreement by the receiving party
and
otherwise not in violation of the disclosing party’s rights;
(vi) is
disclosed pursuant to the order or requirement of a court, administrative
agency, or other governmental body; provided, however, that the receiving
party
shall provide prompt written notice thereof to the disclosing party to
enable
the disclosing party to seek a protective order or otherwise prevent,
limit or
restrict any such disclosure.
(c) Return
of Confidential Information.
Upon
expiration or termination of this Agreement, each party shall return
all
Confidential Information received from the other party, including all
copies
thereof.
(d) Remedies.
Any
breach of the restrictions contained in this Section 9 is a breach of this
Agreement which may cause irreparable harm to the non-breaching party.
Any such
breach shall entitle the non-breaching party to injunctive relief in
addition to
all legal remedies.
(e) Confidentiality
of Agreement.
Each
party shall be entitled to disclose the existence of this Agreement,
but agrees
that the terms and conditions of this Agreement shall be treated as Confidential
Information and shall not be disclosed to any third party; provided,
however,
that each party may disclose the terms and conditions of this
Agreement:
(i) as
required by any court or other governmental body subject, however, to
the
provisions of Subsection 9(b)(vi) above;
(ii) as
otherwise required by law subject, however, to the provisions of Subsection
9(b)(vi) above;
(iii) to
legal
counsel or employees of the Affiliates of the parties that have agreed
to
maintain in confidence such terms and conditions in a manner consistent
with the
confidentiality provisions set forth herein;
(iv) in
confidence, to accountants, banks, and financing sources and their advisors
that
have agreed to maintain in confidence such terms and conditions in a
manner
consistent with the confidentiality provisions set forth herein;
(v) to
the
extent necessary to enforce this Agreement or any rights of a party;
or
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-11-
(vi) in
confidence, in connection with an actual or proposed merger, acquisition,
or
similar transaction to a third party that has agreed to maintain in confidence
such terms and conditions in a manner consistent with the confidentiality
provisions set forth herein.
10. Indemnification
***
11. Warranty
and Disclaimer
***
12. Term
and Termination
(a) Term.
This
Agreement shall be effective from the Effective Date and, unless terminated
earlier pursuant to the provisions of this Section 12, continue in effect
on a perpetual basis.
(b) Termination
With Cause.
If
either party materially defaults in the performance of any material provision
of
this Agreement, then the non-defaulting party may give written notice
to the
defaulting party that if the default is not cured within thirty (30)
days the
Agreement will be terminated. If the non-defaulting party gives such
notice and
the default is not cured during the thirty (30)-day period, then the
Agreement
shall automatically terminate at the end of that period.
(c) Termination
Without Cause.
Either
party may terminate this Agreement upon twenty-four (24) months written
notice
to the other party.
(d) Termination
for Insolvency and Related Events.
Either
party may immediately terminate this Agreement upon written notice to
the other
party: (i) upon the institution by or against such other party of
insolvency, receivership or bankruptcy proceedings or any other proceedings
for
the settlement of such party’s debts, (ii) upon such other party’s making
an assignment for the benefit of creditors, or (iii) upon such other
party’s dissolution or ceasing to do business.
(e) Survival
of Certain Terms.
The
provisions of Sections 1, 2(a), 2(b), 2(d), 2(e), 2(f), 3(d), 5, 8, 10,
11,
12(e), 13, and 14 of this Agreement shall survive the termination of
this
Agreement for any reason. The provisions of Section 9 shall survive the
termination of this Agreement for five (5) years. All other rights and
obligations of the parties shall cease upon termination
of this Agreement.
13. Limitation
of Liability.
EXCEPT
FOR ALL BREACHES OR VIOLATIONS OF THE LICENSE GRANTS, LICENSE RESTRICTIONS,
COVENANT NOT TO ASSERT, NON-USE OF OPEN SOURCE AND/OR CONFIDENTIALITY
PROVISIONS
SET FORTH IN THIS AGREEMENT, IN NO EVENT SHALL EITHER PARTY’S TOTAL AGGREGATE
LIABILITY ARISING UNDER THIS AGREEMENT EXCEED ONE
OR
MORE CLAIMS WILL BE AGGREGATED TO DETERMINE THE SATSIFACTION OF THIS
LIMITATION.
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-12-
NOTWITHSTANDING
THE FOREGOING, TRACE’S
REQUIRED PAYMENT OF ANY FEES OR OTHER AMOUNTS DUE OR OTHERWISE PAYABLE
TO STI
UNDER THIS AGREEMENT SHALL NOT COUNT TOWARD THE LIMITATION OF LAIBILITY
CAP FOR
TRACE THAT IS SET FORTH HEREIN. EXCEPT FOR ALL BREACHES OR VIOLATIONS
OF THE
LICENSE GRANTS, LICENSE RESTRICTIONS, COVENANT NOT TO ASSERT, NON-USE
OF OPEN
SOURCE AND/OR CONFIDENTIALITY PROVISIONS SET FORTH IN THIS AGREEMENT,
IN
NO
EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY COSTS OF PROCUREMENT
OF
SUBSTITUTE PRODUCTS OR SERVICES, LOST PROFITS, LOST SAVINGS, OR ANY
CONSEQUENTIAL, SPECIAL, INCIDENTAL, EXEMPLARY OR INDIRECT DAMAGES, HOWEVER
CAUSED AND BASED ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE, TORT
OR
STRICT LIABILITY), ARISING OUT OF OR RELATING TO THIS AGREEMENT, AND
EVEN IF A
PARTY HAS BEEN ADVISED OR IS AWARE OF THE POSSBILITY OF SUCH DAMAGES.
THE
PARTIES ACKNOWLEDGE AND AGREE THAT THE AMOUNTS PAYABLE HEREUNDER ARE
BASED IN
PART UPON THESE LIMITATIONS, THE PARTIES WOULD NOT HAVE ENTERED INTO
THIS
AGREEMENT ABSENT SUCH LIMITATIONS, AND THESE LIMITATIONS SHALL APPLY
NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED
REMEDY.
14. Miscellaneous
(a) Amendments
and Waivers.
Any
term of this Agreement may be amended or waived only with the written
consent of
the authorized representatives of the parties or their respective permitted
successors and assigns. Any amendment or waiver effected in accordance
with this
Section 14(a) shall be binding upon the parties and their respective
successors and assigns.
(b) Successors
and Assigns.
Neither
party shall assign or transfer any of its rights, obligations or privileges
(by
operation of law or otherwise) hereunder without the prior written consent
of
the non-assigning party. Notwithstanding the foregoing sentence, (i)
STI shall
have the right to assign or transfer the Agreement, or some or all of
its
rights, obligations and privileges, under this Agreement to XXXXXXXX
Xxxxxxxxxxxx without obtaining consent from Trace, and (ii) each party
shall
have the right to assign its rights, obligations and privileges hereunder
to a
merger partner, successor in interest to that party’s business, or acquirer of
all or substantially all of that party's business or assets without obtaining
consent from the non-assigning other party to such assignment. Any attempted
assignment or transfer in derogation of the foregoing provisions shall
be null
and void. The terms and conditions of this Agreement shall inure to the
benefit
of and be binding upon the respective permitted successors and assigns
of the
parties. Nothing in this Agreement, express or implied, is intended to
confer
upon any party other than the parties hereto or their respective successors
and
assigns any rights, remedies, obligations, or liabilities under this
Agreement, except as expressly provided in this Agreement.
(c) Governing
Law.
This
Agreement and all acts and transactions pursuant hereto and the rights
and
obligations of the parties hereto shall be governed, construed and interpreted
in accordance with the laws of the State of California, United States
of
America, without giving effect to principles of conflicts of law that
would
result in the application of the laws of a different state or to the
United
Nations Convention on Contracts for the International Sale of
Goods.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-13-
(d) Jurisdiction
and Venue.
Each of
the parties to this Agreement hereby consents to the exclusive jurisdiction
and
venue of the state and federal courts that are located in San Diego County,
California, United States of America.
(e) Counterparts.
This
Agreement may be executed by authorized representatives of the parties
in two or
more counterparts, each of which shall be deemed an original and all
of which
together shall constitute one instrument.
(f) Construction.
The
titles and subtitles used in this Agreement are used for convenience
only and
are not to be considered in construing or interpreting this Agreement.
All
references in this Agreement to the “purchase”
or
“sale”
of
Software means the acquiring or granting, respectively, of a license
to use such
Software, and to exercise any other rights pertaining to such Software
that are
expressly set forth in this Agreement.
(g) Notices.
Any
notice required or permitted by this Agreement shall be in writing and
shall be
deemed sufficient upon receipt, when delivered personally or by courier,
overnight delivery service or confirmed facsimile or electronic mail,
or
forty-eight (48) hours after being deposited in the regular mail as certified
or
registered mail (airmail if sent internationally) with postage prepaid,
if such
notice is addressed to the party to be notified at such party’s address or
facsimile number as set forth below, or as subsequently modified by written
notice.
| To STI: |
To
Trace:
|
|
SnapTrack,
Inc.
|
Trace
Technologies, L.L.C.
|
|
Attn:
Senior Director, Product Management
|
Attn:
Chief Executive Officer
|
|
000
Xxxxxxxx Xxxxxxxxxx Xxxxxxx
|
0000
Xxxxx 000xx Xxxxxx
|
|
Xxxxx
000
|
Xxxxx,
Xxxxxxxx 00000
|
|
Xxxxxxxx,
Xxxxxxxxxx 00000
|
X.X.X.
|
|
U.S.A
|
|
|
Fax:
(000) 000-0000
|
Fax:
000-000-0000
|
With
copy
to Legal Counsel at above address
(h) Severability.
If one
or more provisions of this Agreement are held to be unenforceable under
applicable law, the parties agree to renegotiate such provision in good
faith,
in order to maintain the economic position enjoyed by each party as close
as
possible to that under the provision rendered unenforceable. In the event
that
the parties cannot reach a mutually agreeable and enforceable replacement
for
such provision, then (i) such provision shall be excluded from this
Agreement, (ii) the balance of the Agreement shall be interpreted as if
such provision were so excluded and (iii) the balance of the Agreement
shall be enforceable in accordance with its terms.
(i) Independent
Contractor.
Neither
party shall, for any purpose, be deemed to be an agent of the other party
and
the relationship between the parties shall only be that of independent
contractors. Neither party shall have any right or authority to assume
or create
any obligations or to make any representations or warranties on behalf
of any
other party, whether express or implied, or to bind the other party in
any
respect whatsoever.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-14-
(j) Force
Majeure.
In the
event that either party is prevented from performing or is unable to
perform any
of its obligations under this Agreement (other than a payment obligation)
due to
any Act of God, fire, casualty, flood, earthquake, war, strike, lockout,
epidemic, destruction of production facilities, riot, insurrection, material
unavailability, or any other cause beyond the reasonable control of the
party
invoking this Section, and if such party shall have used its best efforts
to
mitigate its effects, such party shall give prompt written notice to
the other
party, its performance shall be excused, and the time for the performance
shall
be extended for the period of delay or inability to perform due to such
occurrences.
(k) Entire
Agreement.
This
Agreement (as amended pursuant to Section 14(a)), including Exhibits
A-G,
constitutes the entire agreement of the parties pertaining to the subject
matter
hereof, and merges and supersedes any and all prior negotiations and
drafts of
the parties with regard to the transactions contem-plated herein. Except
as
otherwise provided herein, any and all other written or oral agreements
existing
between the parties hereto regarding such transactions are expressly
superseded
by this Agreement, including, without limitation, the Prior License and
that
certain Deferred Payment Agreement, effective June 2, 2004 (the “Deferred
Payment Agreement”).
(l) Advice
of Legal Counsel.
Each
party acknowledges and represents that, in executing this Agreement,
it has had
the opportunity to seek advice regarding its legal rights from legal
counsel and
that the person signing on its behalf has read and understood all of
the terms
and provisions of this Agreement. This Agreement shall not be construed
against
any party by reason of the drafting or preparation thereof.
(m) Import
and Export Requirements.
Trace
shall, at its own expense, pay all import and export licenses and permits,
customs charges and duty fees, if any, and shall take all other actions,
if any,
required to accomplish the export and import of the Software and Wireless
Devices. Trace acknowledges that any obligation of STI to provide Software
under
this Agreement shall be subject in all respects to all United States
laws and
regulations governing the license and delivery of technology and products
by
persons subject to the jurisdiction of the United States. Trace shall
not
export, directly or indirectly, any Software or Wireless Devices or related
information without first obtaining all necessary and required licenses
and
approvals from all appropriate governmental agencies or authorities.
Upon
request by STI and in a format that STI may reasonably determine, Trace
will
complete on Trace letterhead and return immediately to STI an End Use
Export
Questionnaire and Certification, and otherwise assist STI in addressing
questions or issues that STI may have regarding the export or import
of Software
and Wireless Devices.
IN
WITNESS WHEREOF, the
parties have executed this Agreement through their duly authorized
representatives to become effective as of the Effective Date.
| SnapTrack, Inc. |
Trace
Technologies
L.L.C.
|
| By: | By: | |||
| Name: | Name: | |||
| Title: | Title: | |||
| Date: | Date: |
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-15-
Exhibit
A
END
USER LICENSE
All
End
User Licenses shall include provisions that:
(1) the
End
User is granted only a personal, nontransferable, and nonexclusive right
to use
the Software, as installed on the Wireless Device, only for its own personal
and
business purposes and only with respect to the Wireless Service;
(2) STI
and/or its licensors retain all of their Intellectual Property Rights
in the
Software, and no title to such intellectual property is transferred to
the End
User;
(3) the
End
User agrees not to reverse assemble, decompile, or otherwise attempt
to derive
source code from the Software;
(4) the
End
User agrees to comply with all export and re-export restrictions and
regulations
of the Department of Commerce or other United States agency or authority,
and
not to transfer, or authorize the transfer, of the Software to a prohibited
country or otherwise in violation of any such restrictions or
regulations;
(5) the
End
User receives a warranty (if any) on the Software from Trace, and STI
makes no
warranties to the End User in connection with the Software, and expressly
disclaims any implied warranties of merchantability or fitness for a
particular
purpose;
(6) STI
shall
not be liable to the End User for any indirect, consequential, incidental
or
special damages arising out of the use or license of the Software, regardless
of
the theory of liability (including negligence and strict liability);
and
(7) The
Software and documentation (if any) are considered "commercial computer
software" and "commercial computer software documentation", respectively,
pursuant to DFAR Section 227.7202 and FAR Section 12.212, as applicable.
Any
use, duplication or disclosure of the Software (and documentation, if
any) by
the U.S. Government is subject to the restrictions set forth in DFAR
Section
227.7202 for military agencies, and FAR Section 12.212 for civilian
agencies.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-16-
Exhibit
B
DESCRIPTION
OF CLIENT TECHNOLOGY
***
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-17-
Exhibit
C
THIRD
PARTY DEVELOPER LICENSE
(1) the
third
party is granted only a personal, nontransferable, and nonexclusive right
to use
the Client Software solely as is necessary to integrate the Client Software
with
the Wireless Devices, provided that such changes do not alter the core
functionality of the Client Software;
(2) STI
or
its licensors retain all of their Intellectual Property Rights in the
Client
Software, and no title to such intellectual property is transferred to
the third
party;
(3) the
third
party agrees to comply with all export and re-export restrictions and
regulations of the Department of Commerce or other United States agency
or
authority, and not to transfer, or authorize the transfer, of the Client
Software to a prohibited country or otherwise in violation of any such
restrictions or regulations;
(4) the
third
party receives a warranty (if any) on the Client Software from Trace,
and STI
makes no warranties to the third party in connection with the Client
Software,
and expressly disclaims any implied warranties of merchantability or
fitness for
a particular purpose;
(5) STI
shall
not be liable to the third party for any indirect, consequential, incidental
or
special damages arising out of or relating to the use or license of the
Client
Software, regardless of the theory of liability (including negligence
and strict
liability); and
(6) The
Client Software contains know-how and other information that is the exclusive
property of STI. The third party and its employees and agents shall maintain
the
confidentiality of this information and shall not sell, license, sublicense,
publish, display, distribute, disclose or otherwise make available this
information to any third party nor use such information except as authorized
by
this Agreement and the third party’s agreement with Trace. The third party
agrees that it will take appropriate action by instruction, agreement
or
otherwise with such third party’s employees to satisfy its obligations under
this Agreement with respect to use, protection and security of STI’s
confidential information. The third party agrees to immediately notify
STI and
Trace of the unauthorized disclosure or use of the Client Software and
to assist
STI in remedying such unauthorized use or disclosure.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-18-
Exhibit
D
Trademark
License and Restrictions
1. Limited
Right to Use QPoint Trademark.
Subject
to the terms in this Exhibit, STI hereby grants to Trace a non-exclusive,
non-assignable, and nontransferable right (without the right to sublicense)
within those geographies for which Trace is permitted to sublicense Server
Software under this Agreement to reproduce and display the QPoint trademark
(comprising the word “QPoint” with a curved line beneath), in literature,
promotional materials and advertising of Trace for the Server Software
sublicensed by Trace.
2. Use
by Trace.
The use
by Trace of the QPoint trademark shall be in accordance with the applicable
trademark law and policies of XXXXXXXX Xxxxxxxxxxxx regarding advertising
and
trademark usage, as set forth in the trademark guidelines of XXXXXXXX
Xxxxxxxxxxxx or as otherwise designated by XXXXXXXX Xxxxxxxxxxxx from
time to
time. Except as provided in this Exhibit or as subsequently mutually
agreed in
writing, Trace agrees not to associate the QPoint trademark with products
or
services other than the Server Software. Trace agrees not to use any
other
trademark or service xxxx in proximity to the QPoint trademark or combine
the
xxxx with another xxxx so as to create a composite xxxx.
3. Trademark
Obligations.
Trace
agrees that whenever the QPoint trademark is used in advertising or in
any other
manner, such use will include the appropriate “TM”, “SM” or R inside a circle,
as specified by XXXXXXXX Xxxxxxxxxxxx, and Trace shall acknowledge that
such
trademark is owned by XXXXXXXX Xxxxxxxxxxxx. Trace acknowledges and agrees
that
XXXXXXXX Xxxxxxxxxxxx is the sole and exclusive owner of the entire right,
title
and interest, (including without limitation accompanying goodwill), in
and to
the QPoint trademark. Trace shall not do or cause to be done any act
or anything
contesting or in any way impairing or reducing the right, title, and
interest of
XXXXXXXX Xxxxxxxxxxxx in or to the QPoint trademark. Trace understands
and
agrees that use of the QPoint trademark in connection with the Products
shall
not create any right, title, or interest, in or to the use of the QPoint
trademark and that all such uses and all goodwill associated with the
QPoint
trademark will inure to the benefit of XXXXXXXX Xxxxxxxxxxxx.
4. Quality. Trace
shall not use the QPoint trademark in any manner that would injure the
reputation of XXXXXXXX Xxxxxxxxxxxx and/or the QPoint trademark. Trace
agrees
that all goods or services used in connection with the QPoint trademark
shall
conform to quality standards set forth by XXXXXXXX Xxxxxxxxxxxx. Trace
agrees to
cooperate with XXXXXXXX Xxxxxxxxxxxx in facilitating the monitoring by
XXXXXXXX
Xxxxxxxxxxxx and control of the nature and quality of goods and services
of
Trace used in connection with the QPoint trademark, and to supply XXXXXXXX
Xxxxxxxxxxxx with specimens of use of the QPoint trademark upon request.
Should
XXXXXXXX Xxxxxxxxxxxx notify Trace in writing that the Products and/or
the use
of the QPoint trademark does not conform to the standards set by XXXXXXXX
Xxxxxxxxxxxx, Trace shall have thirty (30) days to bring such use into
conformance and to provide to XXXXXXXX Xxxxxxxxxxxx with a specimen of
such
conforming use or to cease usage of the QPoint trademark.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-19-
5. Infringement
Proceedings and Trademark Registration.
XXXXXXXX Xxxxxxxxxxxx shall have the sole right and discretion to bring
legal or
administrative proceedings to enforce the trademark rights of XXXXXXXX
Xxxxxxxxxxxx and its affiliates, including actions for trademark infringement
or
unfair competition proceedings involving the QPoint trademark. Trace
shall not,
during or after the term of the Agreement, register the QPoint trademark,
other
trademarks or services xxxx of XXXXXXXX Xxxxxxxxxxxx and its Affiliates,
or any
xxxx substantially similar to any trademark or service xxxx of XXXXXXXX
Xxxxxxxxxxxx and its Affiliates in any country or jurisdiction.
6. Substitution
of Trademark.
QUALCOMM and its Affiliates reserve the right to substitute other marks
for the
QPoint trademark upon notice to Trace, and in such event Trace agrees
to
immediately discontinue use of its selected xxxx and begin use of the
substitute
xxxx, which thereafter shall be considered a QPoint trademark and subject
to the
terms and conditions of this Exhibit.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-20-
Exhibit
E
STI
DELIVERABLES
As
of the
Effective Date, STI has delivered to Trace all STI Deliverables that
STI is
obligated to deliver or otherwise provide under this Agreement, and all
such STI
Deliverables have been accepted by Trace, as successor-in-interest to
substantially all of the assets of Locate Networks, Inc. All such STI
Deliverables comprised items that existed as of June 25, 2001, and do
not
include any subsequently developed items. The following is a description
of all
such STI Deliverables:
| 1. |
Deliverable
1A and 1B:
|
Deliverable
1A:
***
Deliverable
1B:
***
| 2. |
Deliverable
2:
|
Deliverable
2:
***
| 3. |
Deliverable
3:
|
Deliverable
3:
***
| 4. |
Deliverable
4:
|
Deliverable
4:
***
| 5. |
Deliverable
5:
|
Deliverable
5:
***
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-21-
Exhibit
F
PAYMENTS
AND PAYMENT TERMS
1. Upfront
License Fees
(a) License
Fees.
Trace
will pay STI ***
in
upfront license fees as follows: (i) *** on ***, (ii) *** on ***, (iii)
*** on
***, (iv) *** upon the Initial Acceptance of Deliverable 2 as described
on
Exhibit
E,
(v) ***
upon the Final Acceptance of Deliverable 2 as described on Exhibit
E,
(vi)
*** upon the Initial Acceptance of Deliverable 3 as described on Exhibit
E,
(vii)
*** upon the Final Acceptance of Deliverable 3 or Deliverable 5, whichever
first
occurs, as described on Exhibit
E,
(viii)
*** upon the Initial Acceptance of Deliverable 4 as described on Exhibit
E,
and
(ix) *** upon the Final Acceptance of Deliverable 4 or Deliverable 5,
whichever
first occurs as described on Exhibit
E
(collectively, the “Upfront
License Fees”).
STI
hereby acknowledges that it has received on or prior to the Effective
Date
payment in full of all of the above amounts set forth in this Section
1(a) and
that any late fees under the Deferred Payment Agreement that may be due,
if any,
from Trace to STI as of the date of execution of this Agreement by both
parties
are hereby waived.
(b) Non-Recurring
Engineering Fee.
Trace
will pay STI *** on *** non-recurring engineering services which STI
provides to
Trace hereunder pursuant to the Project Plan. STI hereby acknowledges
and agrees
that it has received on or prior to the Effective Date payment in full
of the
amount set forth in this Section 1(b).
2. Server
Software Royalties.
Within
thirty (30) days after the end of each month, Trace will pay STI a royalty
for
each Subscriber who had authorized access to the Wireless Service at
any time
during each such month in accordance with the following schedule:
|
Number
of Subscribers
|
Fee
Per Subscriber Per Month
(in
U.S. Dollars)
|
|
***
|
***
|
|
***
|
***
|
|
***
|
***
|
3. Client
Software Royalties.
Within
thirty (30) days after the end of each month, Trace will pay STI a royalty
for
each Wireless Device sold by Trace or an Authorized Distributor during
each such
month in accordance with the following schedule:
________________________
*** Confidential
material redacted and filed separately with the Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-22-
|
Number
of Wireless Devices
|
Per
Unit Royalty
(in
U.S. Dollars)
|
|
***
|
***
|
|
***
|
***
|
|
***
|
***
|
|
***
|
***
|
|
***
|
***
|
For
the
avoidance of doubt, Trace shall not be obligated under this Section 3
to pay STI
a client software royalty on any Wireless Device that contains a Client
Program
which has been included as part of a discrete position location application
specific circuit that Trace has purchased from an Authorized Licensee
and
included in such Wireless Device provided, however, that such Authorized
Licensee has paid all royalties due to STI for inclusion, use and/or
distribution of the discrete position location application specific circuit
containing such Client Program. On royalty reports that Trace submits
for
Wireless Devices, Trace will indicate whether such Wireless Devices contain
Client Software or a Client Program and, if such Wireless Devices contain
a
Client Program, the source from which Trace obtained rights to use the
Client
Program.
4. Support
and Maintenance.
For
each twelve (12)-month period beginning August 23, 2004 for which Trace
elects
to request in writing that STI provide support and maintenance services
for the
Server Software under this Agreement, Trace will pay STI *** of the Server
Software royalties due pursuant to Section 2 of this Exhibit
F
for the
applicable twelve (12)-month period or ***, whichever is greater, to
receive
support for the Server Software for such twelve (12)-month period in
accordance
with Exhibit
G.
All
fees for such support and maintenance services will be due and payable
no later
than thirty (30) days prior to the commencement of a given twelve (12)-month
support term; provided, however, that to receive support for the Server
Software
for a given twelve (12)-month support term, Trace will pay STI (a) ***
no later
than thirty (30) days prior to the commencement of such twelve (12)-month
support term, and (b) the difference, if such difference is non-negative,
between *** of the Server Software royalties due during such twelve (12)-month
support term and *** upon the expiration of such twelve (12)-month support
term.
Notwithstanding anything to the contrary, if Trace discontinues or elects
not to
take support services for the Server Software or Client Software at any
time
after ***, in order to reinstate such support services for the Server
Software
or Client Software, as the case may be, Trace must pay STI all amounts
that
would have previously been required to be paid for support services after
such
date for the Server Software or Client Software, as the case may be,
determined
as if Trace had elected to receive from STI such support services therefore
on
an uninterrupted basis under this Agreement.
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-23-
5. SnapWARN
Service Feed.
Within
thirty (30) days after the end of each month during which STI has made
available
to Trace a SnapWARN Service Feed, Trace will pay to STI a fee for access
to such
SnapWARN Service Feed based on the highest amount of Subscribers that
may exist
during such month, which fee shall be determined as follows:
|
Number
of Subscribers
|
Service
Fee
(in
U.S. Dollars)
|
|
***
|
***
|
|
***
|
***
|
|
***
|
***
|
6. Price
Changes.
Notwithstanding anything to the contrary, in connection with any price
change
for Support and Maintenance Services or the SnapWARN Service Feed that
STI
implements with its other system integrators and/or resellers, STI may
at its
option adjust, upon notice to Trace, the prices for Support and Maintenance
Services and/or the SnapWARN Service Feed contained in this exhibit to
be
consistent with such price change. Such written notice may be provided
by STI
via electronic mail or pursuant to the notice provisions in this Agreement.
Upon
submission of any such price change, the Parties may, but shall not be
required,
to update this exhibit. In the event of any price increase, STI will
provide
notice to Trace of such increase at least sixty (60) days in advance
of the date
on which such price increase will become effective.
7. Engineering
Services.
Trace
will pay STI for all Engineering Services that STI provides to Trace
as provided
in Section 4(b), other than the Engineering Services set forth in Section
1(b)
of this Exhibit
F.
For
Engineering Services requested and approved by Trace pursuant to the
provisions
of Section 4(b), Trace will pay STI within thirty (30) days after the
date of
receipt of STI’s monthly invoice to Trace.
8. Travel
Expenses.
Trace
will pay STI for all reasonable travel expenses associated with STI’s provision
of Engineering Services as such expenses are approved by Trace. Trace
will pay
STI within thirty (30) days after the date of receipt of STI’s invoice for all
such pre-approved travel expenses.
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-24-
Exhibit
G
SUPPORT
PLAN
1. Definitions.
For
purposes of this Exhibit, the following terms shall have the following
meanings.
Any terms not defined in this Exhibit shall have the meaning set forth
in the
Agreement.
“Error(s)”
means
any verifiable and reproducible failure of the Server Software to materially
conform to the documentation for such Server Software. The term “Error” shall
not include any failure of the Server Software that: (a) results from the
misuse or improper use of the Server Software; (b) does not materially
affect the operation and use of the Server Software; (c) results from any
modification to the Server Software not made by or on behalf of STI;
or
(d) results from the failure to incorporate or use any Enhancements to the
Server Software after such are made available to Trace by STI .
“Error
Correction(s)”
shall
mean either (a) a modification or addition to or deletion from the Server
Software that, when made to such Server Software, materially conforms
the Server
Software to the specifications or other documentation for such Server
Software,
or (b) a procedure or routine that, when observed in the regular operation
of
the Server Software, eliminates the material adverse effect of such Error
on
Trace.
“Major
Error”
means
any demonstrable Error in the Server Software that: (a) causes the Server
Software to have a significant loss of intended function as set forth
in the
specifications or other documentation for the Server Software; (b) causes
or is
likely to cause data to be lost or destroyed; or (c) prevents the Server
Software from being installed or executed on the properly configured
environment.
“Moderate
Error”
shall
mean any demonstrable Error in the Server Software that: (a) causes the
Server
Software to operate improperly; or (b) produces results materially different
from those described in the specifications, but which error does not
rise to the
level of a Major Error.
“Minor
Error”
shall
mean any demonstrable Error that: (a) causes a function to not execute
as set
forth in the specifications for such Server Software, without a significant
loss
of intended functionality; or (b) disables one or more nonessential
functions.
“Second
Level Support”
means
support of Trace’s or Trace’s authorized technical support agent’s First Level
Technical Support personnel to identify and resolve Errors remotely,
by
telephone, e-mail or fax communication.
“Workaround”
shall
mean that STI has diagnosed the Error and has implemented, or enabled
Trace to
implement, a temporary solution that allows the Server Software to regain
functionality and provide all major functions in accordance with the
specifications for the Server Software.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-25-
2. Services
2.1 Trace
Responsibilities.
Trace
will provide all on site server technical support with respect to the
Server
Software. Trace agrees to notify STI in writing promptly following the
discovery
of any Error. STI agrees to make available to Trace a list of known Errors
and
to notify Trace in writing promptly following the discovery of any Error.
Trace
agrees, subject to STI’s compliance with all necessary security procedures, to
enable STI to access remotely the server on which the Server Software
is
installed to enable STI to support Trace remotely as set forth under
this
support plan. Further, upon discovery of an Error, Trace agrees, if requested
by
STI, to submit to STI a list of output and any other data that STI may
reasonably require to reproduce the Error and the operating conditions
under
which the Error occurred or was discovered. All information, oral or
written,
communicated between the parties concerning any Errors, is deemed to
be
Confidential Information and shall be governed by Section 9 of the
Agreement.
2.2 STI
Telephone and Online Support.
Technical support communications between Trace and STI will include electronic
mail, facsimile, and telephone. A technical support telephone number
will be
provided by STI, and will be adequately staffed by a customer technical
support
representative during normal business hours, Pacific Standard Time, excluding
holidays (“Support
Hours”).
2.3 STI
Response to Errors.
STI
will provide Second Level Support to Trace to ensure a consistent and
high level
of operation of the Server Software. In the event Trace notifies STI
of an Error
in the Server Software, STI will provide Second Level Support to Trace
or
Trace’s authorized technical support agent to facilitate the implementation
of
an Error Correction to the Server Software. STI shall use commercially
reasonable efforts to correct Errors in accordance with the below response
times, with as little disruption to Trace’s service as commercially
practicable.
(a) Major
Errors.
STI
shall, within ***
after
the receipt of notice of any Major Error, contact Trace to verify such
Major
Error and begin a resolution process. Upon STI’s verification of such Major
Error, STI will use its commercially reasonable efforts to provide a
Workaround
for such Major Error, and will use its commercially reasonable efforts
to
provide an Error Correction for such Major Error until such Error Correction
is
provided.
(b) Moderate
Errors.
STI
shall, within *** after the receipt of notice of any Moderate Error,
contact
Trace to verify such Moderate Error. Upon STI’s verification of such Moderate
Error, STI will use its commercially reasonable efforts to provide a
Workaround
for such Moderate Error. STI will provide an Error Correction for such
Moderate
Error in the next scheduled maintenance release of the Server
Software.
________________________
*** Confidential
material redacted and filed separately with the
Commission
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-26-
(c) Minor
Errors.
Upon
STI’s receipt of notice of a Minor Error and upon STI’s verification of such
Minor Error, STI will initiate work to provide Error Correction for such
Minor
Error in the next regular release of the Server Software.
2.4 Exclusions
from Support Services.
Support
Services under this Exhibit
G
include
Second Level Support for the Server Software only. Support Services do
not
include support for any failure or defect in the Server Software caused
by any
of the following:
(a)
the
improper use, alteration, or damage of the Server Software by Trace or
persons
other than STI employees or consultants;
(b)
modifications
to the Server Software not made or authorized by STI, unless such modifications
were made by a STI employee, subcontractor, agent, or other third party
acting
on behalf of STI; or
(c) use
of
Server Software on hardware that has not been approved by STI for use
with the
Server Software.
3. Enhancements.
Subject
to the payment by Trace to STI of all applicable support and other fees
due to
STI under the Agreement, STI will provide to Trace any applicable Enhancements
(as defined in Section 1 of the Agreement) to the Server Software.
Trace/STI
Amended and Restated License Agreement
Proprietary
and Confidential
-27-
