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EXHIBIT 10.35
All sections marked with two asterisks ("**") reflect portions which have been
redacted. The unredacted exhibit has been filed separately with the Securities
and Exchange Commission as part of a request for confidential treatment.
LICENSE AGREEMENT
THIS AGREEMENT is entered into as of this 14th day of October, 1994 by and
between. Motorola, Inc., a Delaware corporation having an office at 0000 Xxxx
Xxxxxxxxx Xxxx, Xxxxxxxxxx, XX 00000 ("Motorola"), and X.X. Xxxxxxx Company, a
Minnesota corporation having an office at 000 Xxxxxxx Xxxxxxxxx, Xxxxxxxxxx, XX
00000 ("EFJ").
RECITALS
WHEREAS, both Motorola and EFJ are in the business of designing,
manufacturing and selling, among other things, two-way land mobile radio
products and systems;
WHEREAS, Motorola has developed and is manufacturing a proprietary
frequency division multiplexed (FDM) digital trunked two-way land mobile radio
system known as ASTRO(R) for use in the public safety communication market;
WHEREAS, the Associated Public Safety Communication Officers, Inc.
("APCO"), the National Association of State Telecommunications Directors
("NASTD") and certain agencies of the Federal government have established the
APCO Project 25 Steering Committee for the purpose of selecting various elements
of a public safety system advanced technology standard for interoperable digital
public safety radio communications;
WHEREAS, Motorola, EFJ and certain other companies have entered into a
Memorandum of Understanding dated January 24, 1992 (the "APCO 25 MOU"), pursuant
to which, among other things, Motorola has agreed to license certain of its
essential intellectual property rights from which the APCO Project 25 Standard
directly derives or the infringement of which could not be avoided for the
implementation of the APCO 25 Standard to EFJ and such other companies;
WHEREAS, Motorola and EFJ have committed to support Project 25 and to be
active advocates therefor in APCO and the Telecommunications Industry
Association ("TIA") proceedings, as well as in the marketplace;
WHEREAS, EFJ is presently developing a digital two-way land mobile radio
system, and Motorola and EFJ believe EFJ is particularly qualified to become an
alternate source of ASTRO(R) Products (including products that are compatible
with the APCO Project 25 Standard);
WHEREAS, EFJ desires to use Motorola's ASTRO(R) technology as the
foundation for its next generation FDM digital two-way radio product line; and
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WHEREAS, EFJ desires to purchase Finished Products from Motorola for
resale, to purchase Component Products from Motorola to incorporate into FDM
digital two-way radio products of EFJ's own manufacture, and to license from
Motorola certain intellectual property rights related to ASTRO(R) Products and
to obtain certain other rights from Motorola, all as may be necessary or useful
as a supplier of FDM digital two-way radio products; and
WHEREAS, Motorola desires to sell and license such products and rights to
EFJ, all upon the terms and subject to the conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
covenants and agreements contained herein, the parties hereto agree as follows:
ARTICLE I. DEFINITIONS.
The capitalized terms used herein shall have the meanings assigned to them
in this Article I, and shall include the singular as well as the plural:
1.1 "Affiliate" shall mean a corporation, company, partnership, joint
venture or other entity that is directly or indirectly under common control of a
party hereto, including a Subsidiary or parent company of such party.
1.2 "Agreement" shall mean this Agreement between EFJ and Motorola and
shall include Appendixes A through C attached hereto.
1.3 "APCO Project 25 Standard" shall mean the family of EIA/TIA documents
in the 102 series starting with TSB102 Project 25 System & Standard Definition.
1.4 "ASTRO(R)" constitutes a Motorola registered trademark for a digital
radio communication system.
1.5 "ASTRO(R) Products" shall mean the Motorola ASTRO(R) product line as of
the date of this Agreement and for a period of two (2) years thereafter,
including the products, Infrastructure, Subscriber Units, accessories and parts
listed on the DNUP, all Updates and ASTRO(R) Technology Modifications to such
products, and all modifications, enhancements and improvements to the current
ASTRO(R) product line required for compliance with the APCO Project 25 Standard.
1.6 "ASTRO(R) Technology Modifications" shall mean modifications to the
fundamental technology implemented to the ASTRO(R) Products that are required to
cause compliance with the APCO Project 25 Standard (for
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example, modulation, frame structure, signaling protocol, and signaling content
affecting compliance with the APCO Project 25 Standard). It is understood and
agreed by the Parties that Updates, features (for example, items relating to
product differentiation) and other product functionality and enhancements) do
not constitute ASTRO(R) Technology Modifications.
1.7 "Chip Sets" shall mean a Motorola kit (model number to be determined)
which includes the single package integrated circuits provided by Motorola for
use in Subscriber Units and which are identified by Motorola OMPAC part number
part kit on Appendix C.
1.8 "Component Products" shall mean Chip Sets (including subsequent
follow-on proprietary integrated circuits) subassemblies, and such other
components as are compatible with ASTRO(R) Products, including by way of example
and not limitation, measuring and testing equipment, tools and jigs.
1.9 "Delivered Technology" shall mean the information, including
confidential and trade secret information (in whatever form) as provided by
Motorola to EFJ, including but not limited to information necessary to allow EFJ
to manufacture, use, sell, service, and support ASTRO(R) Products, which
information shall be of sufficient kind and in sufficient detail so as to allow
EFJ to design enhancements, modifications, and differentiations with respect to
such ASTRO(R) Products. Such information shall specifically include, but is not
limited to, the following items of ASTRO(R) software in executable object code
form and with an Application Programmer's Interface ("API") if then available:
VSELP (vocoder methodology), the over-the-air interface, the SmartNet(R) digital
trunking protocols, DES encryption, and Motorola's DSP and radio operating
system. In the event an API is not available for any such software, then
Motorola shall substitute therefor the relevant and available software
requirements, structured analysis, structured design, pseudo code and source
code sufficient to permit EFJ to utilize such software in the manner
contemplated above. The parties understand and recognize that some information
regarding IMBE vocoding may not be available for provision by Motorola to EFJ,
due to contractual limitations imposed on Motorola by Digital Voice Systems,
Inc., the latter being the source for the IMBE vocoding information.
1.10 "DNUP" shall mean Motorola's published domestic net user price list
for ASTRO(R) Products in effect as of the date of this Agreement.
1.11 "Effective Date" shall mean the date on which this Agreement is fully
executed by authorized representatives of the parties hereto.
1.12 "FCC" shall mean the Federal Communications Commission.
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1.13 "Finished Products" shall mean ASTRO(R) Products, in finished form,
manufactured by or for Motorola, which ASTRO(R) Products may, or may not,
include any of Motorola's trademarks, such as the "ASTRO" trademark.
1.14 "Infrastructure" shall mean Motorola's ASTRO(R) Product stationary
transmitter/receivers (which may be base stations or repeaters), radio network
terminals or switches, antennas, controllers, system management modules,
consoles, voters and other such equipment manufactured by or for Motorola.
1.15 "Licensed Products" shall mean non-cellular FDM digital two-way radio
communications products that use Delivered Technology, either alone or in
conjunction with: ASTRO(R) Technology Modifications; or Updates, including both
infrastructure components and subscriber units.
1.16 "Motorola Patents" shall mean all present and future issued patents
(both as issued by the United States and other countries, and regardless of when
issued), which patents are owned and controlled by Motorola, provided, however,
that "Motorola Patents" shall not include any patents that claim innovations
related to materials used in semiconductor manufacturing, semiconductor
structures, and semiconductor manufacturing processes.
1.17 "Net Sales" shall mean gross xxxxxxxx (exclusive of federal, state or
local excise, sales or use taxes, freight charges, cost of packing, insurance,
or other transportation charges) for direct sales, leasing or other disposal by
EFJ to customers pursuant to an arms length transaction, less returns, provided
that such charges or costs are separately invoiced or are readily determinable
in accordance with generally accepted accounting principles.
1.18 "Object Code Software" shall mean the computer software programs
which Motorola will deliver to EFJ only in linkable object code and not in
source code, including, without limitation, the Radio Operating Software/Virtual
Radio Interface Software (also known as the "ROS/VRIS" software).
1.19 "Purchase Order" shall mean an offer by EFJ to purchase Finished and
Component Products using its standard purchase order form (the terms and
conditions of which shall not apply to any sales hereafter), setting forth
identification of the Finished and Component Products to be purchased by product
name and model or part numbers, quantities, transmitter and receiver
frequencies, if applicable, unit prices, requested shipment dates and ship-to
addresses.
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1.20 "Subscriber Units" shall mean Motorola's ASTRO(R) Product mobile radio
transceivers and portable transceivers.
1.21 "Subsidiary" shall mean a corporation, company, or other entity more
than fifty percent (50%) of whose outstanding shares or securities (representing
the right to vote for the election of directors or other managing authority)
are, now or hereafter, owned or controlled, directly or indirectly by a party
hereto, but such corporation, company, or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists.
1.22 "Update" shall mean information regarding modifications to an item of
Delivered Technology that has been made by Motorola or EFJ to correct an error
in such item which is reflected as an error in the associated Licensed Product
or the testing thereof. The form of the information shall be sufficient to allow
the recipient to implement such Update.
ARTICLE II. PURCHASE AND SUPPLY
2.1 Agreement of Purchase and Sale.
(a) Finished Products. On the terms and subject to the conditions set
forth herein, Motorola agrees to sell, and EFJ agrees to purchase, for the term
of this Agreement, the Finished Products, in such quantities as EFJ may order
from time to time as follows: Motorola shall only be obligated to sell relabeled
ASTRO(R) mobile radios, repeaters, and system infrastructure to EFJ for a period
of three (3) years (or, in the case of portable radios, for a period of seven
(7) years) from the Effective Date; and provided further, that, for the term of
this Agreement, Motorola shall be obligated to sell to EFJ such ASTRO(R) mobile
or portable radios and repeaters as EFJ may order from time to time as
additions, support or maintenance of ASTRO(R) Product systems sold by EFJ prior
to the end of such three (3) year period, provided, however, that Motorola shall
have the right to discontinue any particular Finished Product provided Motorola
provides sufficient written notice of at least one (1) year to EFJ so as:
(i) to allow EFJ to execute a lifetime buy of the affected Finished
Product; and/or
(ii) should Motorola be replacing the affected Finished Product with a
next generation Finished Product, to allow EFJ to purchase the next
generation Finished Product at comparable pricing.
Motorola further agrees that for a period of twelve (12) months from the date of
the first shipment of Finished Product Subscriber Units to EFJ but in no event
longer than 18 months from the Effective Date Motorola shall
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not provide or permit private labeling or branding of ASTRO(R) Product
Infrastructure for sale in the United States by any entity other than EFJ.
To seek compatibility and rapid market entries, EFJ agrees that for the first
three years of this Agreement, it shall not purchase its supply requirements of
Finished Product Subscriber Units excluding peripheral and accessories, from a
third party. Motorola acknowledges and agrees that EFJ may manufacture such
products for resale during such period.
(b) Component Products. On the terms and subject to the conditions set
forth herein, Motorola agrees to sell, and EFJ agrees to purchase, Component
Products in such quantities as EFJ may order from time to time, provided,
however, that Motorola shall have the right to discontinue any particular
Component Product provided Motorola provides sufficient written notice of at
least one (1) year to EFJ so as:
(i) to allow EFJ to execute a lifetime buy of the affected Component
Product; and/or
(ii) should Motorola be replacing the affected Component Product with
a next generation Component Product, to allow EFJ to design in to their
product the next generation Component Product.
2.2 Forecasts. Within one hundred eighty (180) days from the date hereof,
EFJ shall provide Motorola with a twelve (12) month forecast for each of EFJ's
anticipated quarterly purchases of Finished Products and Component Products.
Such forecasts shall be updated quarterly on a rolling basis for the next twelve
(12) month period, which updated forecasts shall be delivered to Motorola by the
end of each quarterly period. Such forecasts shall be used for the purpose of
facilitating Motorola's manufacturing schedules only and shall not be deemed to
be firm purchase orders or to create any minimum quantity purchase or supply
commitment on the part of EFJ or Motorola.
2.3 Purchase Orders; Lead Times. EFJ shall purchase Finished and Component
Products by submitting Purchase Orders to Motorola by mail or facsimile
transmission. Acceptance of an order shall only be upon the term and conditions
of this Agreement. Motorola agrees to provide to EFJ its Land Mobile Products
Sector's published monthly Shipping Schedule which lists current order lead
times for Finished Products. Should EFJ wish to order, or obtain an official
quoted delivery for an order, which quantity is greater than that to which the
standard lead times as listed on the Shipping Schedule apply, then Motorola will
provide a written quote of delivery schedule for the quantity requested in the
same manner as is provided to other customers.
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2.4 Purchase Price.
(a) Finished Products. The unit prices for Finished Products shall be as
set forth on Appendix B attached hereto.
(b) Component Products. The unit prices for Component Products shall be as
set forth on Appendix C attached hereto.
2.5 Shipment and Delivery: Title. The Finished and Component Products shall
be delivered F.O.B. Motorola's domestic shipping facilities. EFJ shall pay the
actual freight charges applicable to purchases hereunder. Motorola reserves the
right to make deliveries in installments and this Agreement shall be severable
as to such installments. Claims for shipment shortage shall be deemed waived
unless presented to Motorola in writing within forty-five (45) days from the
date of receipt of each shipment. Good title and risk of loss to the Finished
and Component Products sold hereunder shall pass to EFJ at the F.O.B. point.
Motorola shall retain and EFJ hereby grants Motorola a security interest in the
rights and possession in the Products until EFJ makes full payment. EFJ agrees
to cooperate in whatever manner necessary to assist Motorola in perfecting of
said security interest by completing the UCC-1 and such other security as
Motorola may from time to time reasonably request.
2.6 Payment. EFJ shall pay for the Finished and Component Products
purchased hereunder at Motorola's offices at 0000 X. Xxxxxxxxx Xxxx, Xxxxxxxxxx,
Xxxxxxxx 00000 or at such other place as Motorola may designate in writing.
Motorola shall provide its invoice either concurrently with or following
delivery of the Finished and Component Products. EFJ shall pay said invoice by
the thirtieth (30th) day of the month that immediately follows the month during
which Motorola delivers such invoice. Service charges at the lesser of one and
one-half percent per month, or the maximum rate allowed by law may be invoiced
on accounts more than thirty (30) days past due and shall be due and payable
upon receipt of such invoice.
2.7 Taxes. The prices set forth in this Agreement are exclusive of any
federal, state or local excise, sales, use, property, retailer's occupation or
similar taxes. If any such tax is determined to be applicable to the purchase of
the Finished and Component Products hereunder, EFJ shall be responsible for the
payment of such taxes.
2.8 Unlabeled Finished Products.
(a) For a supplemental charge as set forth in attached Appendix A, Motorola
agrees, upon EFJ's request, to provide the Finished Products to
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XXX without any external marks, names, insignia, logos or other similar
designations (excluding any required patent or FCC markings or designations)
identifying Motorola or indicating that such products are ASTRO(R) Products or
are manufactured by or for Motorola, unless otherwise required by law. The
parties agree that EFJ may place its marks, names, insignia, logos or other
similar designations on the Finished Products prior to resale, lease or other
disposition of the Finished Products.
(b) Motorola has the right to ship Finished Products to EFJ, which Finished
Products do not include any Motorola trademarks. To the extent that Motorola
removes Motorola trademarks from Finished Products by Motorola's own choice and
without instruction from EFJ, the cost of removing such trademarks shall be
borne by Motorola, provided that such costs shall not include, under any
circumstances, the addition of any EFJ trademarks.
2.9 Limited Warranty.
(a) Motorola warrants to EFJ and the original EFJ customer that the
Finished and Component Products which are shipped by Motorola will be free from
defects in material and workmanship under normal use and service for a period of
thirteen (13) months from the date of original shipment. Defective Finished and
Component Products or parts thereof will be repaired or replaced, free of
charge, for the full warranty period but the labor and travel costs to repair or
replace non-movable installed products or parts thereof will be provided, free
of charge, only for 120 days from the date of shipment. Freight charges to and
from the Motorola warranty service location shall at all times be EFJ's
responsibility.
(b) In the event of a defect during the applicable warranty periods above,
EFJ shall have the option of providing the warranty labor service itself or
requesting that Motorola provide such labor service in the manner described
above. In the event EFJ decides to provide the warranty labor service, Motorola
agrees to provide replacement parts, free of charge, for the full warranty
period. Motorola's repair or replacement of the product or part thereof shall be
the full extent of Motorola's liability, and EFJ's exclusive remedy, for breach
of the warranty. Travel and associated expenses of EFJ are not covered by these
warranties.
(c) THIS WARRANTY DOES NOT COVER defects or damage to the Finished and
Component Products resulting from: (i) use in other than their normal and
customary manner; (ii) misuse, accident or neglect; (iii) improper disassembly,
testing, operation, maintenance, installation, adjustment, alteration, repair or
any modification by EFJ or any other person without the prior written consent of
Motorola; (iv) Motorola's compliance with EFJ's design specifications and
instructions.
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(d) THIS WARRANTY DOES NOT COVER frequency sensitive components, towers,
vidicon tubes, test equipment and batteries, which are excluded but may carry
their own separate warranties. Non-Motorola manufactured equipment is excluded
from this warranty (unless bearing a Motorola Part Number in the form of an
alpha-numeric number) but such excluded equipment may be subject to a warranty
provided by such equipment manufacturers), a copy(ies) of which will be supplied
to EFJ on written request.
(e) All warranty labor service performed by Motorola will be provided at a
Motorola-owned service location within the United States.
(f) This express warranty is extended to EFJ and the original EFJ customer
only and only to those acquiring Finished and Component Products solely for
commercial, agricultural or governmental use.
THIS WARRANTY AND THOSE REFERENCED HEREIN ARE GIVEN IN LIEU OF ALL OTHER
WARRANTIES RELATING TO THE FINISHED AND COMPONENT PRODUCTS, EXPRESS OR IMPLIED,
WHICH ARE SPECIFICALLY EXCLUDED INCLUDING, WITHOUT LIMITATION, IMPLIED
WARRANTIES OF MERCHANT ABILITY AND FITNESS FOR A PARTICULAR PURPOSE. AS EACH
SYSTEM IS UNIQUE, MOTOROLA DISCLAIMS LIABILITY FOR RANGE, COVERAGE OR OPERATION
OF THE SYSTEM AS A WHOLE. IN NO EVENT SHALL MOTOROLA BE LIABLE FOR INCIDENTAL OR
CONSEQUENTIAL DAMAGES.
2.10 Spare Parts for Finished Products.
(a) Within sixty (60) days after the date hereof, Motorola shall provide
EFJ with a list of spare module and component parts (including part number,
description and price) which Motorola will make available to EFJ for EFJ's
servicing, repair and maintenance of the Finished Products. Any purchase order
issued by EFJ for such spare modules and component parts shall be subject to the
terms and conditions contained in this Agreement.
(b) Motorola agrees to maintain a reasonable supply of spare parts for the
Finished Products to support EFJ's anticipated spare parts requirements for a
period of ten (10) years for infrastructure products and for a period of seven
(7) years for subscriber products from the date of Motorola's last shipment of
Finished Products hereunder.
2.11 End User Sales,
EFJ agrees that during the term of this Agreement, for sales in the United
States, that it shall only sell and transfer title to Finished
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Products directly to end user customers, except where EFJ is a subcontractor to
a prime contractor to an end user customer.
Article III. Transfer of Deliverables and Other Information
3.1 Transfer of Delivered Technology. Upon the Effective Date, to
facilitate EFJ's ability to exercise the licenses granted hereunder, and further
to facilitate EFJ's manufacture of Licensed Products for resale, Motorola shall
continue the transfer of the Delivered Technology. Motorola shall use reasonable
efforts to complete such transfer as soon as possible. Any and all system design
configuration and implementation shall be EFJ's responsibility solely.
3.2 Updates. Each party shall furnish Updates to the other party, except
those Updates which are primarily manufacturing enhancements, within thirty (30)
days after correction of the error is established.
3.3 Material Defects. Notwithstanding the foregoing Section 3.2, in the
event that during the term of this Agreement, either party discovers any
material defect in a Licensed Product such that the Licensed Product does not
meet the data sheet specification for the Licensed Product for customers, such
party shall inform the other party of such defect within thirty (30) days of
such discovery.
3.4 Modifications. During the term of this Agreement, the parties shall
exchange with one another information regarding ASTR0(R) Technology
Modifications within thirty (30) days after its first shipment of products
reporting such modifications. At a minimum, such information shall include the
technical information that the disclosing party itself uses to implement the
ASTRO(R) Technology Modifications.
3.5 Software Warranty. For the first one (1) year following its initial
shipment, Motorola warrants that, when used as contemplated by this Agreement,
its software as provided to EFJ pursuant to this Agreement will be free from
reproducible defects that cause a material variance from its published
specification. This warranty may be extended by EFJ to EFJ's customers, in which
event the warranty period shall begin running upon delivery of the software to
the customer. Upon being notified by EFJ of a claim under this warranty,
Motorola shall investigate the claim and shall:
(a) in the event the defect shall be readily discoverable and resolvable,
promptly provide EFJ with a correction;
(b) in the event the defect shall not be readily discoverable and/or shall
not be readily resolvable, promptly provide EFJ with
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information regarding Motorola's investigation of the defect and
Motorola's plan to resolve the defect; or
(c) in the event the defect shall not be reproducible, Motorola shall be
entitled to charge EFJ with actual time and costs incurred by Motorola
while attempting to reproduce the reported defect, provided, however, that
EFJ shall be entitled, without cost, to one-half hour of actual time for
each identifiable defect regardless of whether the defect shall later be
found to be reproducible, and in the event that EFJ shall be charged for
actual time and costs pursuant to this section for a particular defect,
and it shall later be demonstrated that the particular defect is in fact
reproducible, then EFJ shall be entitled to a refund of the assessed
charges.
(d) The foregoing shall be the full extent of Motorola's liability, and
EFJ's only remedy under the Software warranty, except as provided in
Sections 12.2 and 12.3.
Article IV, Technical Assistance
4.1 Training: Technology, Product Service and Support Training. For three
(3) years from the Effective Date, EFJ shall have the right, subject to the
reasonable approval of Motorola as to scheduling, of access to up to three
Motorola engineers to receive technical assistance and training relating to the
Delivered Technology as well as product service and support training. Motorola
will make said engineers available to provide such technical assistance and
training, as well as other assistance to EFJ for the general purpose of this
Agreement, at no additional cost to EFJ. EFJ may request written information
relating, to any Delivered Technology discussed or otherwise considered, and
Motorola shall promptly provide EFJ with such information if it is reasonably
available. EFJ will pay all of its own travel expenses incurred in connection
with the visits provided for in this Section 4.1(a). All visits pursuant to this
Section shall be coordinated through the Documentation Managers for each party.
Motorola shall be available, during normal business hours, to respond by
telephone to a reasonable number of inquiries by EFJ.
4.2 Additional Resources. In addition to the technical personnel resources
provided for in Section 4.1 above, to execute the scope of this Agreement it is
anticipated that Motorola will provide the equivalency of up to twelve
additional man years of resources to EFJ for up to the next three calendar
years, This access to Motorola's technical community shall be provided through
the 3 aforementioned Motorola employees. In addition, in order to assist EFJ's
internal product development effort, Motorola shall make available to EFJ its
ASTRO(R) Product training courses on a custom basis at mutually convenient dates
and locations.
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4.3 Rules on Premises. Representatives and personnel of each party, during
the time they are present on the premises of the other party, shall be subject
to all rules and regulations prevailing on such premises. Each party shall be
responsible for the payment of all compensation and expenses of its respective
representatives and personnel. None of the representatives or personnel of
either party shall be considered, for any reason to be an employee of the other.
4.4 Custom Software Services. Beyond the scope of this Agreement, upon
receiving EFJ's request, Motorola shall provide a quote, in accordance with
Appendix A2, for custom software services for EFJ, to modify and enhance the
Object Code Software upon EFJ's request, and deliver the modifications and
enhancements to EFJ.
4.5 Mutual Indemnification. Each party agrees that if (i) any of its
employees, (ii) any of its authorized agents, or (iii) any authorized legal
representative of the persons referred to in clauses (i) or (ii) ("Claimant")
shall present any claim or institute any suit or action against the other party
hereto, or its directors, officers, agents or employees, for any physical
property damage or personal injury, including death, arising out of the
performance of this Agreement, the party employing or authorizing the Claimant
shall defend and indemnify the other party, and its directors, officers, agents
and employees, against any and all such claims, suits or actions.
4.6 Source Code. Both parties recognize that source code is a particularly
sensitive and valuable form of information. Pursuant to this Agreement, when an
appropriate Application Programmer's Interface does not exist for a given item
of ASTRO(R) software executable object code that Motorola has delivered to EFJ
under this Agreement, EFJ has the right to receive corresponding source code
from Motorola. Both parties understand and agree that the total quantity of
source code that EFJ could potentially review under this Agreement is large, and
that appropriate safeguards are necessary in order to ensure that Motorola's
source code is properly used and cared for.
All requests for source code shall be made within three (3) years of when
Motorola first makes the corresponding object code available, and shall be made
in writing by, and shall be coordinated and scheduled through, the Documentation
Managers identified in Section 8.1 below. When making a written request for
source code, EFJ shall indicate in that writing whether the identified source
code is going to be reviewed for potential use, or is going to be actually used
in the near-term to facilitate product differentiation. Motorola shall not be
required to provide to EFJ during any ninety (90) day period more source code
than EFJ shall be able to usefully assimilate within that ninety (90) day period
of time. When EFJ receives source code to review for potential use, EFJ shall,
within
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ninety (90) days of receiving access to the Source code, either: (a) return the
source code; or (b) provide Motorola with a written statement indicating that
EFJ will make near-term actual use of the source code to facilitate product
differentiation. When holding Motorola source code, in addition to observing the
general requirements set forth in Article VIII regarding the handling of
confidential information, EFJ shall additionally number all copies of the source
code, and shall maintain a written record of the location of the original and
all copies at all times. When returning source code to Motorola, EFJ shall
indicate in writing that the original and all copies have either been returned
or destroyed.
Article V. Compensation
5.1 Support for APCO Project 25. In partial consideration of the licenses
and rights granted to EFJ hereunder, EFJ agrees to cooperate and to work
together with Motorola to support the APCO Project 25 Standard, including but
not limited to making joint proposals in support of the Standard when
appropriate.
5.2 Non refundable payment. In partial consideration of the licenses and
rights granted to EFJ hereunder, EFJ agrees to pay to Motorola a nonrefundable
sum of five million dollars ($5,000,000) in calendar installments as follows:
$1 Million within 45 days of the Effective Date of this contract;
$2.5 Million by June 30, 1995; and
$1.5 Million by December 31, 1995.
5.3 Royalty. (a) In further partial consideration of the licenses and
rights granted to EFJ hereunder, EFJ agrees to pay Motorola a continuing royalty
of ** of EFJ's or its Subsidiary's Net Sales of EFJ Licensed Products
(exclusive of Finished Products provided by Motorola to EFJ) during the period
starting on the date of EFJ's first commercial shipment of Licensed Products
until ten (10) years thereafter.
(b) Following the period set forth in Section 5.3(a), in further partial
consideration of the licenses and rights granted to EFJ hereunder, EFJ agrees to
pay Motorola a continuing royalty of ** of EFJ's or its Subsidiary's Net Sales
of EFJ Licensed Products (exclusive of Finished Products provided by Motorola to
EFJ) for a second ten (10) year period.
(c) Licensed Products shall be considered as used, sold, leased, or
otherwise disposed of, as the case may be, when either billed out, delivered,
shipped or mailed to customers.
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5.4 Record Keeping: Inspection Rights. With respect to the royalty set
forth in this Article V, EFJ shall keep full, clear and accurate records with
respect to Licensed Products subject to royalty. These records shall be retained
for a period of three (3) years from date of payment notwithstanding the
expiration or other termination of this Agreement. Motorola shall have the
right, through a mutually agreed upon independent certified public accountant
and at its expense, to examine and audit, not more than once a year, and during
normal business hours, all such records and such other records and accounts as
may under recognized accounting practices contain information bearing upon the
amount of royalty payable to Motorola under this Agreement. Prompt adjustment
shall be made by whichever party is in arrears to compensate for any errors or
omissions disclosed by such examination or audit. Neither such right to examine
and audit nor the right to receive such adjustment shall be affected by any
statement to the contrary appearing on checks or otherwise, unless such
statement appears in a letter signed by both parties, expressly waiving such
right to examine and audit.
5.5 Payments, Within sixty (60) days after the end of each semiannual
period ending on June 30th or December 31st, commencing with the semiannual
period ending December 31, 1994 and continuing thereafter until all royalties
payable hereunder shall have been reported and paid, EFJ shall furnish to
Motorola a statement in suitable form certified by an authorized officer showing
all Licensed Products subject to royalties which were sold, leased, or otherwise
disposed of during such semiannual period, and the amount of royalty payable
thereon. If no products subject to royalty have been sold, leased, or otherwise
disposed of, that fact shall be shown on such statement. Also, within such sixty
(60) days EFJ shall pay to Motorola the royalties payable hereunder for such
semiannual period. Motorola and EFJ will determine the form of the statement
prior to submission of the first such statement.
5.6 Excluded Products. Notwithstanding the above, royalty payment shall
not be due on the sale of any Finished Products that are purchased from Motorola
by EFJ.
Article VI. Licenses
6.1 Motorola Grant of Rights to EFJ.
(a) Patent License. Motorola hereby grants to EFJ a non-exclusive,
non-assignable, royalty-bearing license, without the right to sublicense except
as otherwise specifically provided for herein, under Motorola's Patents to use
Delivered Technology, ASTRO(R) Technology Modifications, and Updates to make, to
have made, use, and sell, lease, or otherwise dispose of Licensed Products. This
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license is limited to those Motorola Patent claims that cover the use and/or
practice of the deliverables that are provided by Motorola to EFJ in the
Delivered Technology, ASTRO(R) Technology Modifications, and Updates.
(b) Copyright and Trade Secret License. Motorola hereby grants to EFJ a
non-exclusive, non-assignable, royalty-bearing license, without the right to
sublicense except as otherwise specifically provided for herein, under
Motorola's copyrights and trade secret rights to use, copy, prepare derivative
works of, distribute, sell, lease, or otherwise dispose of the Delivered
Technology, ASTRO(R) Technology Modifications, and Updates when designing,
making, using, and selling Licensed Products. The provisions of this Section
6.1(b) are granted subject to the confidentiality obligations as set forth
herein, including those provisions set forth below in Article VIII.
(c) License Provisos.
i) The license of Article VI specifically includes the right to reverse
engineer the Delivered Technology, ASTRO(R) Technology Modifications,
and Updates, provided such reverse engineering is in support of EFJ's
efforts to use, design, manufacture, sell, and support Licensed
Products, and the results of any such reverse engineering effort are
used only for the purpose of using, designing, manufacturing, selling,
and supporting Licensed Products. When exercising this right to reverse
engineer, EFJ shall continue to maintain all of Motorola's Confidential
Information (as defined below) in confidence in accordance with the
provisions of Article VIII of this Agreement. Notwithstanding the
above, to the extent that Motorola shall deliver to EFJ any object code
that implements IMBE vocoding, EFJ shall not have the right to reverse
engineer such object code.
ii) When exercising its right under this Article VI, EFJ shall:
a) ensure that Motorola's Confidential Information (as defined
below) remains protected by informing the manufacturer of the
confidential nature of such information and of Motorola's rights in
such information, and by requiring the manufacturer to sign a
confidentiality agreement having confidentiality terms at least as
restrictive as those contained in this Agreement;
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b)not use a manufacturer that is itself a radio manufacturer unless
Motorola shall first provide its permission in writing to EFJ; and
c)not have made outside the U.S. any software based product or
component unless Motorola shall first provide its permission in
writing to EFJ.
iii) The license of Article VI specifically includes the right to transfer
to end users or customers a sublicense to use Licensed Products that the
end user acquires from EFJ, but excludes any right to otherwise sublicense
any of the other rights provided herein.
iv) The license of Article VI specifically includes the right to copy,
prepare derivative works of, publish, use, and distribute end user
documentation as is provided by Motorola to EFJ, subject to the
limitations on use of Motorola's trademarks as set forth below in Section
6.1(c)(vi).
v) The license of Article VI specifically excludes any rights to any
maskworks.
vi) The license of Article VI specifically excludes any right to use any
of Motorola's trademarks, including the ASTRO(R) trademark, without
Motorola's previously obtained written authorization on a case-by-case
basis, which written authorization is signed by an officer of Motorola.
viii) The license of Article VI does not include the right to manufacture,
use, or sell IMBE vocoding. Motorola's right to include IMBE vocoding in
Motorola's products is provided to Motorola by Digital Voice Systems,
Inc., and Motorola has no right to sublicense such rights to EFJ, except
to the extent that EFJ receives a right to use and sell Finished Products
as obtained from Motorola that include IMBE vocoding.
ix) EFJ shall use reasonable good faith efforts, in consultation with
Motorola, to implement a software protection program designed to protect,
among other things, Licensed Products that include Motorola-provided
software.
x) EFJ agrees that subscriber units, base stations, and repeaters
manufactured by or for it under the license of Article VI will be
interoperable with the common air interface last delivered by
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Xxxxxxxx xx XXX for ASTRO(R) Products and/or the APCO Project 25 Standard.
xi)Under the license of Article VI, EFJ also has the right to manufacture
and (or, to the extent obtained from Motorola) offer for sale to an
end-user customer products that are compatibly interoperable with
Motorola's analog Smartnet family of trunked radio systems or Motorola's
analog Securenet family of systems that include Motorola proprietary
encryption capability, provided the end-user customer specifically
requires that products as provided by EFJ to the end-user customer be
compatible with both the digital radio system and a Motorola-provided
analog radio system.
6.2 EFJ Grant of Rights to Motorola.
(a) Patent License. EFJ hereby grants to Motorola a non-exclusive,
non-assignable, royalty-free license, without the right to sublicense except as
otherwise specifically provided for herein, under EFJ's patents to make (but not
to have made any software driven product or component), use, and sell, lease, or
otherwise dispose of:
i) the Delivered Technology;
ii) Motorola developed products that incorporate EFJ-provided ASTRO(R)
Technology Modifications and Updates, provided, however, that such license
shall not include items relating to product differentiation or product
functionality that are not required for compliance with the APCO Project
25 Standard or correction of an error in the corresponding product; or
iii) Motorola-provided ASTRO(R) Technology Modifications and Updates,
provided, however, that such license shall not include items relating to
product differentiation or product functionality that are not required for
compliance with the APCO Project 25 Standard or correction of an error in
the corresponding product; or
iv) Motorola developed products that incorporate EFJ developed technology
that is essential for over-the-air compatible operation with an EFJ system
when such compatibility requires both such EFJ developed essential
technology and technology that has been licensed to EFJ under Section 6.1
of this Agreement.
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(b) Copyright and Trade Secret License. EFJ hereby grants to Motorola a
non-exclusive, non-assignable, royalty-free license, without the right to
sublicense except as otherwise specifically provided for herein, under EFJ's
copyrights and trade secret rights to use, copy, prepare derivative works of,
distribute, sell, lease, or otherwise dispose of EFJ-provided ASTRO(R)
Technology Modifications and Updates when designing, making, using, and selling
Licensed Products. The provisions of this Section 6.2(b) are provided subject to
the confidentiality obligations as set forth herein, including those provisions
set forth below in Article VIII.
(c) License Provisos.
i) This license specifically includes the right to reverse engineer
EFJ-provided ASTRO(R) Technology Modifications and Updates, provided
such reverse engineering is in support of Motorola's efforts to use,
design, manufacture, and support Licensed Products, and the results
of any such reverse engineering effort are used only for the purpose
of using, designing, manufacturing, selling, and supporting Licensed
Products. When exercising this right to reverse engineer, Motorola
shall continue to maintain all of EFJ's Confidential Information (as
defined below) in confidence in accordance with the provisions of
Article VIII of this Agreement.
ii) When exercising its right under this Article VI, Motorola shall:
a) ensure that EFJ's Confidential Information (as defined
below) remains protected by informing the manufacturer of the
confidential nature of such information and of EFJ's rights in
such information, and by requiring the manufacturer to sign a
confidentiality agreement having confidentiality terms at
least as restrictive as those contained in this Agreement;
and
b) not use a manufacturer that is itself a radio manufacturer
unless EFJ shall first provide its permission in writing to
Motorola.
iii) The license of Article VI specifically includes the right to
transfer a sublicense to use to the end users of Licensed Products,
but excludes any right to otherwise sublicense any of the other
rights provided herein.
iv) The license of Article VI specifically excludes any rights to
any maskworks.
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v) The license of Article VI specifically excludes any right to use
any of EFJ's trademarks without EFJ's previously obtained written
authorization on a case-by-case basis, which written authorization
is signed by an officer of EFJ.
vi) Under the license of Article VI, Motorola also has the right to
manufacture and (or, to the extent obtained from EFJ) offer for
sale to an end-user customer products that are compatibly
interoperable with EFJ's analog Multi-Net family of trunked radio
systems, provided the end-user customer specifically requires that
products as provided by Motorola to the end-user customer be
compatible with both the digital radio system and an EFJ-provided
analog radio system.
Article VII, Term, Termination and Assignability
7.1 Term. This Agreement shall remain in effect for twenty (20) years from
the Effective Date, provided, however, the rights and obligations of Article
2.1(b), Article 2.9, Article 2.10(b), Article 12.2(c), Article 12.3(c), Article
12.3(d), Article VI, and Article VIII shall continue.
7.2 Cure.
(a) If either party shall at any time commit a major breach in the
performance of any of its obligations under Article II (which obligations shall
include the payment of any monies due thereunder), and the defaulting party
shall not cure the major breach within ninety (90) days after written notice
from the complaining party to the defaulting party specifying the nature of the
major breach, then the complaining party shall have the right to withhold future
performance under Article 2.1(a) and 2.8.
(b) If either party shall at any time commit a major breach in the
performance of any of its obligations under Article VIII, and the defaulting
party shall not cure the major breach within ninety (90) days after written
notice from the complaining party to the defaulting party specifying the nature
of the major breach, then the complaining party shall have the right to withhold
future performance under Article 3.1, 3.2, and 3.4.
7.3 Default Under Section 5.2. If EFJ shall fail to pay Motorola any
undisputed amount due under Section 5.2 of this Agreement, and such failure to
pay shall continue for ninety (90) days after written notice from Motorola to
EFJ, specifying the nature of the default under Section 5.2, then Motorola shall
have the right to cancel this Agreement by giving written notice of cancellation
to EFJ. If such notice of
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cancellation is given, this Agreement shall terminate on the thirtieth (30th)
day after such notice is given. EFJ shall have the right to cure any such
failure to pay up through but not after the date of termination. In the event of
a cure of the failure to pay, such cure shall be considered as effective
retroactively to the date of such failure to pay.
7.4 Dissolution or Liquidation. This Agreement is personal to each of the
parties hereto, and either party shall have the right to cancel this Agreement
by giving written notice of cancellation to the other party at any time upon or
after: 1) the filing by the other party of a petition commencing a proceeding
with respect to itself in bankruptcy or insolvency; 2) any adjudication by a
court of competent jurisdiction that the other party is bankrupt or insolvent;
3) the appointment of a receiver for all or substantially all of the property of
the other party which appointment shall remain in effect for 180 days; or 4) the
making by the other party of any assignment or attempted assignment of this
Agreement for the benefit of creditors. Upon the giving of such notice of
cancellation this Agreement shall be terminated forthwith.
7.5 Assignment an Bankruptcy. This Agreement is personal to each of the
parties hereto and if this Agreement is assigned pursuant to the bankruptcy
code, any and all monies and other consideration of the assignment shall be
payable directly to Motorola and will be the property of Motorola and not the
property of EFJ or the estate of EFJ.
7.6 Change of Control,
(a) In the event a change of control of EFJ occurs and control is held,
directly or indirectly by any of the following companies, or combination
thereof:
Telefonaktiebolaget LM Ericsson,
Alcatel Alsthom Compagnie Generale D' Electricite,
Alcatel Cit S.A.,
Hitachi, Ltd.,
Philips Electronics N.V.,
Toshiba Corporation,
Matsushita Electric Industrial Co., Ltd.,
Matsushita Electric Works, Ltd.,
NEC Corporation, or
Matra, S.A.;
then Motorola has the right to immediately terminate this agreement.
(b) In the event a change of control of EFJ occurs and control is held,
directly or indirectly by any third party manufacturer in the telecommunications
industry, other than those listed in (a) above, Motorola shall have the right to
cancel this Agreement at any time thereafter upon giving twelve (12) months
written notice thereof to
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XXX and/or the third party and, upon the giving of such notice of cancellation,
this Agreement shall terminate in accordance therewith.
(c) For purposes of this Section "control" means;
(i) that the controlling entity owns, directly or indirectly, stock
or other interest in EFJ representing more than fifty percent of the
aggregate stock or other interest entitled to vote for the election
of directors or other decisions reserved to a vote by owners of such
stock or other interests; or
(ii) that the controlling entity has the power to direct the
management or policies of EFJ, directly or indirectly, whether
through the ownership of voting securities, by contract, merger, or
acquisition of assets of EFJ, or otherwise.
7.7 No Assignment. This Agreement and any rights or licenses granted
herein are personal to each party and shall be binding upon and inure to the
benefit of the parties hereto and their respective successors and assigns;
provided, however, that except as otherwise permitted herein, neither party
shall assign any of its rights or privileges hereunder without the prior written
consent of the other party. Any attempted assignment in derogation of the
foregoing shall be null and void and shall be considered a material breach.
7.8 Effects of Termination.
(a) If this Agreement is terminated by Motorola under 7.3, 7.4, or 7.6, any
Delivered Technology, ASTRO(R) Technology Modifications, and Updates previously
transferred to EFJ shall be returned to Motorola forthwith, and all licenses
granted to either party under Article VI shall terminate; providing however,
that sublicenses granted to customers or end users of Licensed Products shall
continue indefinitely. Both parties hereto shall agree, and hereby do agree, and
shall cause their respective Subsidiaries and affiliates, to hold all
Confidential Information (as defined herein) in confidence under the terms and
conditions set forth herein in Article VIII.
(b) Notwithstanding any provision contained herein to the contrary, no
termination of this Agreement, by expiration or otherwise, shall release either
party from any of its obligations then accrued hereunder, including obligations
to furnish statements, to pay compensation, and to permit the inspections of
records, files and books of account.
7.9 Delay. No failure or delay on the part of either party in exercising
its right of termination hereunder for any one or more causes
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shall be construed to prejudice its right of termination for such or for any
other or subsequent cause.
Article VIII. Confidentiality
8.1 Document Managers. Each party shall designate one or more
Documentation Managers. The responsibility of the Documentation Managers for
each party will be to control the exchange of information between the parties,
and to monitor within their company the distribution of information received
from the other party to those who have a need to know such information. The
Documentation Managers for each party shall also arrange conferences and
visitations between personnel of the respective parties, maintain pertinent
records and the like, and acknowledge the receipt from the other party of all
information.
The initial Documentation Manager for Motorola shall be Xxxx Xxxxxx, and the
initial Documentation Manager for EFJ shall be Xxx Xxxxxxx.
Disclosures of information by one party to the other party pursuant to this
Agreement shall be made by the Documentation Manager for the disclosing party to
the Documentation Manager for the receiving party.
8.2 Marking of Confidential Information. Information in tangible form which
is confidential to a party hereto will contain an appropriate legend, such as
"Motorola Confidential Proprietary" or "EFJ Confidential Information". If such
disclosure is orally and/or visually made, it shall be identified at the time of
disclosure as being confidential and shall be summarized in a written resume
within twenty (20) days following such disclosure. The resume will specifically
point out that which is confidential in sufficient detail to allow the receiving
party to identify that information deemed to be confidential. Such resume will
also contain an appropriate legend as set forth above. When such disclosure is
in graphic form or in the form of a computer program or database, it shall be
identified as confidential by a label with an appropriate legend or by notice of
the confidential nature of the information appearing in machine-readable form in
the program or database. Any information delivered in accordance with the
foregoing procedures shall be deemed "Confidential Information" of the party
delivering such information.
8.3 Term of Confidentiality. Except as provided hereinafter, for a period
of ten (10) years from the date of receipt of the Confidential Information of
the disclosing party, as measured from the date of first receipt under this
Agreement, not exceeding three (3) years from the date of expiration of this
Agreement, the receiving party agrees to use the same care and discretion to
avoid disclosure, publication, or dissemination of received Confidential
Information outside the receiving
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party as the receiving party employs with similar information of its own which
it does not desire to publish, disclose, or disseminate. If the Confidential
Information of the disclosing party was first received under any other agreement
previously entered into by the parties relating to the subject matter of this
Agreement, the period of confidentiality shall be as specified in this
Agreement.
8.4 Permitted Disclosures. Disclosure, by a party hereto, of any
Confidential Information of the other party shall not be precluded if such
disclosure is:
(a) in response to a valid order of a court or other governmental body;
provided, however, that the responding party shall notify the other party and
that the responding party shall first have made a good faith effort to obtain a
protective order requiring that the information and/or documents so disclosed be
used only for the purpose for which the order was issued; or
(b) otherwise required by law; or
(c) necessary to establish its rights under this Agreement, provided that
appropriate protections are taken to ensure the continuing confidentiality of
the Confidential Information.
8.5 Exclusions. The obligations specified in this Article VIII. will not
apply to any Confidential Information of a party hereto, that:
(a) is already in the possession of the receiving party without obligation
of confidence;
(b) is independently developed by the receiving party;
(c) is or becomes publicly available without breach of this Agreement;
(d) is or becomes available to the receiving party on a non-confidential
basis from a source, other than the disclosing party or its authorized
representatives, which the receiving party reasonably believes not to be
prohibited from disclosing such Confidential Information by a contractual, legal
or fiduciary obligation;
(e) is released for disclosure by the disclosing party with its written
consent; or
(f) is inherently disclosed in the use, lease, sale or other distribution
of any product or service licensed hereunder, or normal and essential
documentation therefor, by or for the receiving party.
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8.6 Ownership of Materials. It is expressly understood that any drawings,
blueprints, descriptions, or other papers, resumes, documents, tapes, or any
other media, and all copies or derivatives thereof, shall remain the property of
the disclosing party, and the receiving party is authorized to use those
materials only within the scope of the licenses herein granted. Notwithstanding
the period of confidentiality set forth in Section 8.3 the receiving party may
not transfer such material or any portion thereof to a third party unless
otherwise permitted pursuant to this Agreement.
Article IX. Inventions
9.1 Motorola Inventions. All discoveries, improvements, inventions, and
trade secrets, made in the performance of this Agreement solely by Motorola
personnel shall be the sole and exclusive property of Motorola, subject to the
licenses granted herein, and Motorola shall retain any and all rights to file
any patent applications thereon.
9.2 EFJ Inventions. All discoveries, improvements, inventions, and trade
secrets, made in the performance of this Agreement solely by EFJ personnel shall
be the sole and exclusive property of EFJ, subject to the licenses granted
herein, and EFJ shall retain any and all rights to file any patent applications
thereon.
9.3 Joint Inventions. All discoveries, improvements, inventions, and trade
secrets made in the performance of this Agreement jointly by EFJ personnel and
Motorola personnel, shall be the property jointly of EFJ and Motorola, each
party having an equal and undivided one-half (1/2) interest therein.
9.4 Patent Applications for Joint Inventions. In the case of each
discovery, improvement or invention jointly owned by EFJ and Motorola in
accordance with Section 9.3, Motorola shall have the first right of election to
file patent applications in the United States and other countries. Motorola
shall notify EFJ in writing, at the earliest practicable date, whether or not,
and in which countries of the world, Motorola elects to file such patent
application. EFJ shall have the right to file patent applications on such
discovery, improvement or invention in all other countries. Each party, at its
own expense, shall cooperate fully with the filing party as may be necessary for
the proper preparation, filing and prosecution of each such patent application
and the maintenance, renewal and defense of each patent covering such discovery,
improvement or invention. The expense for preparing, filing and prosecuting each
joint application, and for issuance of the respective patent shall be borne by
the party which prepares and files the application. Where such joint
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application for patent is filed by either party in a country which requires the
payment of annual taxes or annuities on a pending application or on an issued
patent, the filing party, prior to filing, shall notify the other party,
requesting the other party to indicate whether it will agree to pay one-half
(1/2) of such annual taxes or annuities. If, within sixty (60) days after
receiving such notice, the non-filing party fails to assume in writing the
obligation to pay its one-half (1/2) share of such annual taxes or annuities, or
if either party subsequently fails, within sixty (60) days of demand, to
continue such payments, it shall forthwith relinquish to the other party,
providing said other party continues such payments, its right, title and
interest to such foreign application and patent, subject, however, to retention
of a paid-up, non-exclusive, nonassignable and irrevocable license, without the
right to grant sub licenses, in favor of the relinquishing party and its
Subsidiaries, to make, have made, use, lease, sell, or otherwise dispose of
apparatus and/or use or practice any methods under said application and patent.
9.5 Abandonment of Applications. In the event that the filing party shall
determine to abandon, or otherwise not to prosecute, any jointly owned patent
application, or not to maintain, defend or renew any jointly owned patent, it
shall notify the other party thereof, in writing, at the earliest practicable
date, and such other party shall have the right, at its expense, to prosecute
such application or to take up such maintenance or defense, or prosecute such
renewal, as the case may be. The filing party agrees, at the other party's
expense, to cooperate fully with the other party to assist the other party in
obtaining, maintaining, defending and renewing such patent right hereunder.
Thenceforth, the party exercising its right under this Section 9.5 shall be
deemed "the filing party" for purposes of Sections 9.4 and 9.5.
9.6 Rights to Joint Inventions. Each party shall have the right to grant
non-exclusive licenses under each jointly owned patent application or patent,
provided that it shall have fulfilled its obligation, if any, to pay its share
of taxes or annuities imposed on such pending application or patent on any terms
and conditions that it desires; and such party shall retain any consideration
that it may receive therefor without having to account to the other joint owner.
Each party consents to the granting of such non-exclusive licenses by the other
party, and agrees not to assert any claim with respect to any such patent or
application licensed by the other party against the licensee or licensees
thereunder for the terms of any such license.
Article X. Prohibited Subject Matter
Under no circumstances shall the parties hereto exchange or discuss with
one another any matter which is not relevant to the performance of this
Agreement.
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Article XI. Publication
All notices to third parties and all other publicity concerning the terms
and conditions of this Agreement shall be jointly planned and coordinated by the
parties. Neither of the parties shall act unilaterally in this regard without
the prior written approval of the other party, which approval shall not
unreasonably be withheld; provided, however, that nothing herein will prohibit
any party from issuing any such release or public announcement or from filing
such reports or other data and information as such party determines to be
required by law, rule or regulation applicable to it, in which case the party
making such determination will use reasonable efforts to give the other party
notice in advance of any such release or filing.
Article XII. General Provisions
12.1 Complete Agreement. This Agreement, and the schedules attached hereto
and made a part hereof, embody the entire understanding of the parties with
respect to the subject matter contained herein and shall supersede all previous
communications, representations or understandings, or agreements either oral or
written, between the parties relating to the subject matter hereof. No amendment
or modification of this Agreement shall be valid or binding upon the parties
unless signed by their respective, duly authorized officers.
12.2 Limitations on Warranties. Nothing contained in this Agreement shall
be construed as:
(a) conferring any rights to use in advertising, publicity, or other
marketing activities any name, trademark, or other designation of either party
hereto, including any contraction, abbreviation, or simulation of any of the
foregoing, provided such restriction shall not apply to device identification
numbers and descriptions and each party hereto agrees not to use the existence
of this Agreement in any marketing activity without the express written approval
of the other party; or
(b) conferring by implication, estoppel, or otherwise upon either party
hereunder any license or other right except the licenses and rights expressly
granted hereunder to a party hereto; or
(c) a warranty or representation that the manufacture, sale, lease, use, or
other disposition of any products that are manufactured by other than Motorola
using Delivered Technology, Motorola-provided ASTRO(R) Technology Modification,
or Updates will be free from infringement of
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third party patents, provided, however, that if promptly notified in writing,
Motorola will defend any claim against EFJ that alleges that U.S. patents,
copyrights, or trade secrets of another have been infringed solely by:
i) Motorola's unaltered software as provided to EFJ as Delivered
Technology, provided, however, that this indemnity shall not apply
to the IMBE vocoder to the extent that the vocoder technology as
included with Delivered Technology shall be based on information
provided by Digital Voice Systems, Inc.;
ii) Motorola's unaltered software as provided to EFJ as an ASTRO(R)
Technology Modification or Update, provided, however, that this
indemnity shall not apply with respect to third party patents that
are identified as essential to the APCO Project 25 Standard steering
committee; and
iii) EFJ software authored by EFJ, provided:
- such EFJ software is substantially based upon and functionally
substitutes for at least one of Delivered Technology,
Motorola-provided ASTRO(R) Technology Modifications, or
Motorola-provided Updates; and
- the claim of infringement would exist regardless of whether
the EFJ software or the corresponding Motorola software, for
which the EFJ software is a substitute, were used by EFJ, and EFJ
would otherwise be indemnified by Motorola for use of such
corresponding Motorola software;
and Motorola will save and hold EFJ harmless from any judgment,
damages, awards, or reasonably incurred expenses, including
reasonable attorney's fees arising out of any such claim (excluding,
however, any such attorney's fees as are incurred subsequent to
Motorola providing notice to EFJ that Motorola is assuming control
of such defense).
Upon Motorola's request, EFJ agrees to reasonably assist in any defense and
surrender control of the suit to Motorola. Motorola may elect, at any time, to
modify or replace such software with equivalent non-infringing items, obtain the
right to continue using the software or, if these remedies are not reasonably
available, to accept return of such software and to refund to EFJ a
corresponding reimbursement that is pro-rated with respect to the term of this
Agreement; or
(d) a warranty that the recipient party will successfully manufacture
products based upon the Delivered Technology transferred hereunder including
technical assistance; or
(e) an obligation to bring or prosecute actions or suits against third
parties for infringement, or to secure and/or maintain any of its intellectual
property rights; or
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(f) limiting the rights which a party has outside the scope of this
Agreement; or
(g) permission to disclose the terms and conditions of this Agreement to
any third party without the written permission and consent of the other party,
which consent shall not be unreasonably withheld, except as otherwise required
by law.
12.3 Representations and Warranties. Motorola and EFJ hereby make the
following representations:
(a) The terms and conditions of this Agreement do not violate any provision
of either party's bylaws, charter or any other agreement to which either is a
party or by which either is bound.
(b) Each transferor warrants that the items of Delivered Technology,
Updates, and ASTRO(R) Technology Modifications transferred hereunder shall be
substantially the same as those then used by the transferor in its own
manufacturing operation.
(c) Motorola hereby represents that the Delivered Technology does not
infringe the valid copyright of any third party, and contains, no unauthorized
confidential information belonging to any third party.
(d) If promptly notified in writing, Motorola will defend any claim against
EFJ that alleges that U.S. patents, copyrights, or trade secrets of another have
been directly infringed by Motorola's Finished Products or Components and will
save and hold EFJ harmless from any judgment, damages, awards, or reasonably
incurred expenses, including reasonable attorney's fees arising out of any such
claim (excluding, however, any such attorney's fees as are incurred subsequent
to Motorola providing notice to EFJ that Motorola is assuming control of such
defense). Upon Motorola's request, EFJ agrees to reasonably assist in any
defense and surrender control of the suit to Motorola. Motorola may elect, at
any time, to modify or replace products with equivalent non-infringing items,
obtain the right to continue using the products or, if these remedies are not
reasonably available, to accept return of the products. Without limiting any
other terms and conditions in this Agreement, Motorola shall have no liability
for infringement that arises from any modification of Motorola's Finished
Products or Components by EFJ or at EFJ's instruction.
(e) Without limiting the foregoing provisions in Sections 12.2(c), 12.3(b),
(c), and (d) NEITHER PARTY MAKES ANY WARRANTY AS TO THE ACCURACY, SUFFICIENCY,
OR SUITABILITY FOR THE OTHER'S USE OF ANY INFORMATION OR ASSISTANCE PROVIDED
HEREUNDER FOR THE MANUFACTURE, OR THE YIELD FROM THE MANUFACTURE THEREOF, OR FOR
THE QUALITY OF SUCH PRODUCT MADE THEREBY.
-28 -
29
(f) NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT, UNDER NO CIRCUMSTANCES
SHALL EITHER PARTY BE RESPONSIBLE TO THE OTHER FOR ANY INDIRECT, CONSEQUENTIAL,
OR INCIDENTAL DAMAGES.
12.4 Notices. Except as otherwise provided for herein, all notices required
or permitted to be given hereunder shall be in writing (including telegraphic
communication) and shall be sent by registered mail (return receipt requested
and postage prepaid), facsimile, overnight or two-day courier or delivered in
person and shall be addressed as follows:
If to Motorola:
MOTOROLA, INC.
0000 X. Xxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attn: Vice President of Patents,
Trademarks and Licensing
Telecopier Number: (000) 000-0000
If to EFJ:
X.X. XXXXXXX COMPANY
000 Xxxxxxx Xxxxxxxxx
Xxxxxxxxxx, Xxxxxxxxx 00000
Attn: General Counsel
Telecopier Number: (000) 000-0000
Either party may change its address by a notice given to the other party in the
manner set forth above. Mailed notices given as herein provided shall be
considered to have been given seven (7) days after the mailing thereof,
telegraphic or facsimile shall be considered to have been given on the day sent,
overnight or two-day courier sent notices shall be considered to have been given
three (3) days after sending, and delivered in person notices shall be
considered to have been given on the day of delivery.
12.6 Force Majeure. Anything contained in this Agreement to the contrary
notwithstanding, the performance of the obligations of the parties hereto shall
be subject to all laws, both present and future, of any
-29-
30
government having jurisdiction over a party hereto, and to orders, regulations,
directions, or requests of any such government, or any department, agency, or
corporation thereof, and to any contingencies resulting from war, acts of public
enemies, strikes or other labor disturbances, fires, floods, acts of God, or any
causes of like or different kind beyond the control of the parties. The parties
hereto shall be excused from any failure to perform or any delay in the
performance of any obligation hereunder to the extent such failure or delay is
caused by any such law, order, regulation, direction, request, or contingency.
12.7 No Waiver. Any failure or delay on the part of either party in the
exercise of any right or privilege hereunder shall not operate as a waiver
thereof, nor shall any single or partial exercise of any such right or privilege
preclude other or further exercise thereof or of any other right or privilege.
12.8 Severability. Should any provision of this Agreement become invalid
or unenforceable, this will not affect the validity of the other provisions
which shall remain in full force and effect.
12.9 Export. Each party agrees not to export or re-export, or cause to be
exported or re-exported, any technical data (including any Delivered Technology
received hereunder), or the direct product of such technical data, to any
country to which, under the laws of the United States of America, either party
is or may be prohibited from exporting its technology or the direct product
thereof.
12.10 Headings. The captions used in this Agreement are for convenience
only and are not to be used in interpreting the rights and obligations of the
parties under this Agreement.
12.11 Other Documents. The parties agree to execute all documents and
instruments and take such actions as may be reasonably requested by a party
hereto, and which are reasonably within the party's reasonable ability to
accomplish, in order to effect and carry out the purposes and intent of this
Agreement, and the transactions contemplated herein.
12.12 FCC. Type Acceptance and Other Governmental Matters. Motorola agrees
to provide EFJ with such assistance as EFJ may reasonably request to assist EFJ
in obtaining all necessary FCC type acceptances for Finished Products, Component
Products and Licensed Products and any additional type acceptance, certificates,
permission or authority from the United States Office of Export Administration
and any other applicable domestic of foreign governmental agencies to export
such products to locations outside the United States. Notwithstanding the
foregoing, EFJ is solely responsible for obtaining any licenses or other
-30-
31
authorizations required by the FCC or any other federal, state or local
governmental agency.
12.13 CHOICE OF LAW. THE APPLICABLE LAW GOVERNING ANY CAUSE OF ACTION
ARISING OUT OF THIS AGREEMENT, OR THE PERFORMANCE BY EITHER PARTY HERETO, SHALL
BE GOVERNED BY THE LAWS OF THE STATE OF ILLINOIS, U.S.A.
12.14 Independent Contractor. Nothing contained herein, or done in
pursuance of this Agreement, shall constitute the parties as entering upon a
joint venture or shall constitute either party hereto the agent for the other
party for any purpose or in any sense whatsoever.
-31-
32
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed as of
the dates below written.
MOTOROLA, INC. X. X. XXXXXXX COMPANY
By:/s/ XXXXXX X. XXXXXXX By: /S/ XXXXXXX X. XXXXXX
------------------------------- --------------------------------------
Signature Signature
Name: XXXXXX X. XXXXXXX Name: XXXXXXX X. XXXXXX
--------------------------- -----------------------------------
Vice-President - Marketing and
Title: Exec. V.P. President, CMPS Title: North American Sales
--------------------------- -----------------------------------
Date: 10/14/94 Date: 10/14/94
--------------------------- ----------------------------------
By: /s/ XXXXX X. XXXXXXX
----------------------------
Signature
Xxxxx X. Xxxxxxx
Vice President, Patents
Trademarks and Licensing
Date: 11/14/94
--------------------------
-32-
33
APPENDIX A
Supplemental Charges
1a. Tooling Costs to Private Label an Astro Saber Portable
LINE CHANGES DESCRIPTION TOOLING MANPOWER ASSUMED NOT
ITEM (000's) (MANMTH) TO CHANGE
------------------------------------------------------------------------------------------------------------------------------------
RADIOS ONLY
------------------------------------------------------------------------------------------------------------------------------------
1.1.0 Housing Appearance ** ** internal configuration
or housing
1.1.1 PTT Xxxxx & ham Appearance ** ** button locators
1.1.2 PTT paddle Appearance ** **
1.1.3 Monitor & Ratt buttons Appearance ** ** button locators
1.1.4 Vehicle Adapter must use
VA ADDERs (line 5.1.0) result of above see 5.1.0 below
1.1.5 Radio tray must use Xxxxx'g
case ADDER (line 1.8.1) result of above see 1.8.1 below
--------------------------------------------------------------------------------------------------------------------
RADIO 1.2.0 Baseplate Appearance ** ** Transceiver attachment
to baseplate
1.2.1 Contacts Appearance ** ** B+ mounting point
(to accommodate
transceiver)
1.2.2 Latch Appearance ** **
1.2.3 Seals result of above ** **
1.2.4 Battery hag must use Batt'y
Hsg ADDER (line 2.1.0) result of above see 2.1.0 below
--------------------------------------------------------------------------------------------------------------------
1.3.0 Model I grill Appearance ** Locations of display,
buttons, speaker,
mic
1.3.1 Felt result of above ** ** " " "
--------------------------------------------------------------------------------------------------------------------
1.4.0 Model II grill Appearance ** Locations of display,
buttons, speaker,
mic
1.4.1 Keypad(1) Appearance ** ** " " "
1.4.2 Felt result of above ** ** " " "
--------------------------------------------------------------------------------------------------------------------
1.5.0 Model III grill Appearance ** Locations of display,
buttons, speaker,
mic
1.5.1 Keypads(2) Appearance ** ** " " "
1.5.2 Felt result of above ** ** " " "
--------------------------------------------------------------------------------------------------------------------
1.6.0 Control Top Appearance ** ** Location & design of
Rt bushing &
Rt switching
1.6.1 Label Appearance ** **
1.6.2 Knobs (Volume Frequency Appearance ** ** Switches, Switch
A/B Secure) locations &
mounting
--------------------------------------------------------------------------------------------------------------------
1.7.0 Antennas
1.7.1 ...Helicals (1 UHF, 2 VHF's) Appearance ** **
1.7.2 ...Whips (1 800, 1 UHF) Appearance ** **
1.7.3 ...Dipole (1 800) Appearance ** **
1.7.4 ...Quarterwave (1 800) Appearance ** **
--------------------------------------------------------------------------------------------------------------------
1.8.0 Shipping Case & manuals
1.8.1 ...Radio tray result of batt'y ** **
& housing
1.8.2 ...Manual, User Appearance ** **
1.8.3 ...Manual Service Appearance ** **
--------------------------------------------------------------------------------------------------------------------
1.9.0 Accessory Connector ass'y
1.9.1 ADDER OPTION 1: APPEARANCE ONLY
1.9.2 ...Univ'l conn plate Appearance ** ** Contact location &
internal design
1.9.3 ...Rt Contact Appearance ** ** Contact location &
internal design
1.9.4 ...Control Top (add'l costs) Appearance ** ** Acc'y retain'g method,
feature for VA
conformance
1.9.5 ADDER OPTION 2: FUNCTION & APPEARANCE
1.9.6 ...Acc'y retain'g features Funct'n & Appearance ** **
1.9.7 ...Flex, acc'y conn result of above ** ** B+ & transceiver
accessory pickup
design
1.9.8 ...Radio's acc'y connector result of above ** **
1.9.9 ...Conn for cable-type acc'ys
must use Cable ADDER
(line 6.1.0) see 6.1.0 below
1.9.10 ...Vehicle Adapter must use
VA ADDER's (line 5.3.0) result of above see 5.3.0 below
------------------------------------------------------------------------------------------------------------------------------------
2.1.0 Battery housing Appearance ** ** Charging contact
locations do not
move
BATTERY 2.1.1 Bottom cover result of above ** **
2.1.2 Flex circuit result of above ** ** Charging contact
locations do not
move
2.1.3 Chargers must use CHGR ADDER's
(lines 3.1.0 & 4.1.0) result of above see 3.1, 4.1 below
2.1.4 Vehicle Adapter must use
VA ADDER (line 5.1.0) result of above see 5.1.0 below
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
ACCESSORIES
------------------------------------------------------------------------------------------------------------------------------------
3.1.0 ADDER OPTION 1: POCKET ONLY as a result of battery changes
Single 3.1.1 ...Charger pocket result of battery ** ** Use Aztec version
Charg'r changes charger
3.2.0 ADDER OPTION 2: APPEARANCE OF CHARGER HOUSING
3.2.1 ...Charger housing Appearance ** ** Use Aztec version
charger
------------------------------------------------------------------------------------------------------------------------------------
4.1.0 ADDER OPTION 1: POCKET ONLY as a result of battery changes
Multi 4.1.1 ...Charger pocket result of battery ** ** All but pocket design
Charg'r changes remains the same
4.2.0 ADDER OPTION 2: APPEARANCE OF CHARGER HOUSING
4.2.1 ...Charger housing Appearance ** **
------------------------------------------------------------------------------------------------------------------------------------
5.1.0 ADDER OPTION 1: POCKET ONLY as a result of battery & housing changes
Vehicle 5.1.1 ...VA pocket result of batt'y & ** ** New pocket fits within
Adapter housing constraints of
VA housing
5.1.2 ...VA face plate result of batt'y & ** ** Keypad & display
housing remain the same
5.1.3 ...VA radio locator result of batt'y & ** ** Mating parts don't
housing require changes
5.2.0 ADDER OPTION 2: APPEARANCE OF VEHICLE ADAPTER
5.2.1 ...VA housing Appearance ** ** Assembly does not
change
5.2.2 ...VA keypad Appearance ** ** Circuit board does
not change
5.3.0 ADDER OPTION 3: VA ACCESSORY CONNECTOR as a result of radio acc'y conn changes
5.3.1 ...VA accessory connector result of acc'y conn Must be quoted
5.3.2 ...VA Rt connector result of acc'y conn Must be quoted
5.3.3 ...VA connector circuit board result of acc'y conn Must be quoted
------------------------------------------------------------------------------------------------------------------------------------
6.1.0 ADDER OPTION 1: REDESIGN OF ACCESSORY CABLE CONNECTOR
6.1.1 ...Connector housing Must be quoted
6.1.2 ...Connector plate Must be quoted
6.1.3 ...Retaining method Must be quoted
6.2.0 Microphone housing Appearance ** ** Same microphone
internals
Cable-type 6.2.1 ...cover Appearance ** ** Same microphone
Acc'ys 6.2.2 ...PTT paddle Appearance ** ** internals
(mic's, etc) 6.2.3 ...Lapel clip Appearance ** **
6.2.4 ...strain relief Appearance ** **
6.2.5 ...labels Appearance ** **
6.3.0 Keyloaders
6.3.1 ...keyloading cable see ADDER Option ** **
(line 6.1)
6.3.2 ...keyload adapter (Hirose) see ADDER Option ** **
(line 6.1)
------------------------------------------------------------------------------------------------------------------------------------
Carry 7.1.0 Standard belt loop Appearance ** **
cases 7.1.1 Swivel version Appearance ** **
------------------------------------------------------------------------------------------------------------------------------------
B. Clip 8.1.0 Clip Appearance ** **
8.1.1 Bracket Appearance ** **
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Approv'ls 9.1.0 Radio -- FM, Military Standards, FCC, etc. ** **
9.1.1 Accessory -- UL, Military Standards ** **
------------------------------------------------------------------------------------------------------------------------------------
RADIO TOTAL: ** **
ACCESSORY TOTAL ** **
License Agreement Between Motorola & EFJ 10/14/94
34
APPENDIX A
Supplemental Changes
1b. Tooling Costs to Private Label an Astro Spectra Mobile
-------------------------------------------------------------------------------------------------------
Tooling Manpower
Changes Description (x1000) (mm) Not changed
-------------------------------------------------------------------------------------------------------
Mid power Chassis (casting) Appearance ** ** Mounting trunion, circuit boards, xxxxxxx,
---------------------------------------------------------- heat sink attachment, location of antenna,
dash/remote Covers(2) Appearance ** ** power, and accessory connectors
----------------------------------------------------------
mount Heat sink (casting) Appearance ** **
----------------------------------------------------------
Front plate ....
Radios (remote mount only) Appearance ** **
-------------------------------------------------------------------------------------------------------------------------
High power Chassis (casting) Appearance ** ** Mounting plate, circuit boards, xxxxxxx,
---------------------------------------------------------- location of antenna, power and accessory
remote mount Cover Appearance ** ** connectors
----------------------------------------------------------
Handle (casting) Appearance ** **
--------------------------------------------------------------------------------------------------------------------------------
Front cover Appearance ** ** Display, microphone connector shape and
---------------------------------------------------------- location, board retainer, control head
Buttons Appearance, ** ** attachment, mounting trunion
location
----------------------------------------------------------
Dash Mount Knobs Appearance, ** **
location
----------------------------------------------------------
W4 Lightpipe Function ** **
----------------------------------------------------------
Circuit board Function ** **
----------------------------------------------------------
Keypad Function ** **
----------------------------------------------------------
Lens & weld fixturing Appearance ** **
-------------------------------------------------------------------------------------------------------------------------
Front cover Appearance ** ** Display, microphone connector shape and
---------------------------------------------------------- location, board retainer, control head
Buttons .... (change Appearance, ** ** attachment, mounting trunion
not needed if W4 is location
Dash Mount changed)
W5 ----------------------------------------------------------
Lightpipe Function ** **
----------------------------------------------------------
Circuit board Function ** **
----------------------------------------------------------
Keypad Function ** **
----------------------------------------------------------
Lens & weld fixturing Appearance ** **
-------------------------------------------------------------------------------------------------------------------------
Front cover.... Appearance ** ** Display, microphone connector shape and
(change not needed if board retainer, control head attachment,
W5 is changed mounting trunion
----------------------------------------------------------
Buttons .... (change Appearance, ** **
not needed if W4 or location
W5 is changed)
----------------------------------------------------------
Dash Mount Lightpipe .... Function ** **
(change not needed
W7 if W5 is changed)
----------------------------------------------------------
Circuit board Function ** **
----------------------------------------------------------
Control Keypad .... (change Function ** **
Heads not needed if W5
is changed)
----------------------------------------------------------
Lens .... (change Appearance ** **
not needed if W5
is changed)
-------------------------------------------------------------------------------------------------------------------------
Remote Mount Same as W4 dash plus Appearance ** ** Display, microphone connector shape and
W4 back cover ______ location, board retainer, control head
Back cover attachment, mounting trunion
--------------------------------------------------------------------------------------------------------------------------
Remote Mount Same as W5 or W7 Appearance ** ** Display, microphone connector shape and
W5 &/or W7 dash plus back cover attachment, mounting trunion
____ Back cover
--------------------------------------------------------------------------------------------------------------------------
Front cover Appearance ** ** Display, microphone connector shape and
---------------------------------------------------------- location, board retainer, control head
Back cover Appearance ** ** attachment, mounting trunion
----------------------------------------------------------
Buttons .... (change Appearance, ** **
not needed if other location
Remote Mount C/H is changed)
----------------------------------------------------------
W9 Lightpipe Function ** **
----------------------------------------------------------
Circuit board Function ** **
----------------------------------------------------------
Keypad Function ** **
----------------------------------------------------------
Lens Appearance ** **
--------------------------------------------------------------------------------------------------------------------------------
Mic Logo only Appearance ** ** Cord, internal electronics, connectors
----------------------------------------------------------
Housings (2) & grill Appearance ** **
--------------------------------------------------------------------------------------------------------------------------------
Remote Logo only Appearance ** ** Cable, internal electronics, connectors,
Speaker ----------------------------------------------------------
Housings (2) Appearance ** ** mounting bracket
----------------------------------------------------------------------------------------------------------
Siren Logo only Appearance ** ** Internal electronics, connectors, mounting
PA ---------------------------------------------------------- hardware
Chassis & weld Appearance ** **
fixturing
----------------------------------------------------------
Cover Appearance ** **
--------------------------------------------------------------------------------------------------------------------------------
Dash Mount Power Appearance ** ** Connectors
----------------------------------------------------------------------------------------------------------
Remote Power, high Appearance ** ** Connectors
Mount ----------------------------------------------------------
Cables Power, mid Appearance ** **
----------------------------------------------------------
Siren Appearance ** **
----------------------------------------------------------
Control head Appearance ** **
---------------------------------------------------------------------------------------------------------------------------------
Manuals User Appearance ** **
Service Appearance ** **
---------------------------------------------------------------------------------------------------------------------------------
License Agreement Between Motorola & EFJ 10/14/94
35
---------------------------------------------------------------------------------------------------------------------
Appendix A - 1.c Tooling Costs to Private Label an Astro Quantar/Quantro,
---------------------------------------------------------------------------------------------------------------------
Quantar Receiver, Astro-TAC Comparator, Astro DIU
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
Description Tooling ($K) Staff months Comments
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
HARDWARE
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
Quantar/Quantro chassis 1 included below Screened on painted sheet metal
---------------------------------------------------------------------------------------------------------------------
Quantar satellite receiver 1 3 Screened on painted sheet metal
---------------------------------------------------------------------------------------------------------------------
Astro-TAC comparator 1 included above Screened on painted sheet metal
---------------------------------------------------------------------------------------------------------------------
Infra cabinet doors (each) 1 1 Different sizes available - screen on painted sht mtl
---------------------------------------------------------------------------------------------------------------------
DIU 1 3 Pad printed on plastic housing - my guess
---------------------------------------------------------------------------------------------------------------------
Central controller 1 2 Screened on cabinet and plate attached
---------------------------------------------------------------------------------------------------------------------
Remote controller 1 2 Plate attached to cabinet
---------------------------------------------------------------------------------------------------------------------
Series II console furniture Screened on painted sheet metal
---------------------------------------------------------------------------------------------------------------------
Series II CRT console Screened on painted sheet metal
---------------------------------------------------------------------------------------------------------------------
Series II CRT computer
---------------------------------------------------------------------------------------------------------------------
Trunking user terminal
---------------------------------------------------------------------------------------------------------------------
Trunking user keyboard
---------------------------------------------------------------------------------------------------------------------
XXXX II CRT
---------------------------------------------------------------------------------------------------------------------
XXXX II computer
---------------------------------------------------------------------------------------------------------------------
System watch computer
---------------------------------------------------------------------------------------------------------------------
Zone watch CRT
---------------------------------------------------------------------------------------------------------------------
Zone watch computer
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
SCREEN SOFTWARE
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
Console screens 4 Includes FPP, CRT, CTL and testing
---------------------------------------------------------------------------------------------------------------------
System watch 1 Estimate
---------------------------------------------------------------------------------------------------------------------
Trunking zone manager 1 Estimate
---------------------------------------------------------------------------------------------------------------------
Trunking XXXX manager 1 Estimate
---------------------------------------------------------------------------------------------------------------------
RSS screens (per part number) 1
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------
NOTE: This list is incomplete. Motorola agrees to complete this list and to provide pricing
on a fair and reasonable basis consistent with the methodologies used in developing the prices
and staff months (to be charged at ** per year) listed above.
---------------------------------------------------------------------------------------------------------------------
License Agreement Between Motorola and EFJ 10/14/94
36
APPENDIX A
Supplemental Charges
2. Custom Software Services per section 4.4
The cost per engineer shall be ** per year. EFJ shall allow Motorola
sufficient time to identify and assign additional engineers from the time of
written notification by EFJ of the requirement as follows:
1 to 3 Engineers, 3 Months
4 to 8 Engineers, 6 Months
9 to 12 Engineers, 9 Months
License Agreement Between Motorola & EFJ 10/14/94
00
XXXXXXXX X
Finished Products Pricing
All Astro products listed on the following Motorola R01 pricebook pages:
Astro Quantar/Quantro Conventional Section 5.0, pages 37-37H dated 12/15/93
Base Stations and Repeaters, Xxxxx- (xxxx 00, 00X, 00X, 00X dated 7/20/94)
sories and options.
To be sold at the following discounts from the current DNUP price as of the date
of order receipt:
800 MHz versions, **
150 MHz and 450 MHz versions:
1st 50 units in total, **
2nd 50 units in total, **
3rd 50 units in total, **
all units thereafter, **.
* - NOTE: The pages published to date do NOT include trunking products. The same
discount levels will apply when these are added.
Astro Quantar Conventional Receivers Section 5.0, pages 38-38A dated 12/15/93
Astro-TAC Digital Voting Comparator Section 5.0, pages 39-39A dated 12/15/93
Astro Digital Interface Unit Section 5.0, pages 40-40A dated 12/15/93
and other Astro Infrastructure To Be Determined.
To be sold at a ** discount from the current DNUP price as of the date of
order receipt.
* - NOTE: The pages published to date do NOT include trunking products. The same
discount levels will apply when these are added.
License Agreement Between Motorola & EFJ 10/14/94
00
XXXXXXXX X
Finished Products Pricing
All Astro products listed on the following Motorola RO1 pricebook pages:
Astro Digital Saber Portable Series, Section 5.0, pages 35-35M dated 12/15/93
Accessories and Options. (page 35J dated 5/1/94)
Astro Digital Spectra Mobile Series Section 5.0, pages 36-36N dated 12/15/93
Accessories and Options. (page 36D dated 5/1/94; 36L dated
dated 2/1/94)
To be sold at the following discounts from the current DNUP price as of the date
of order receipt based on the annual quantity purchased:
Annual Quantity Discount
25 minimum - 100 **
100 - 000 **
000 - 0000 **
1000 - 1500 **
1500 - 2000 **
Greater then 2000 **
*- NOTE: The pages published to date do NOT include trunking products. The same
discount levels will apply when these are added.
License Agreement Between Motorola & EFJ 10/14/94
39
APPENDIX C
Chip Sets (includes Kits) Pricing
The following Astro kits:
Astro Digital Saber Portable kits NTN7749B - Vocon board **
NLD8892B - VHF RF board **
NLE4244C2 - UHF RF board **
XXX0000 X - 000 XXx XX board **
Astro Digital Spectra Mobile kits HLN6458B - Vocon board **
HRN6014A - VHF RF board **
HRN6020A - UHF RF board **
HRN6019A - 800 MHz RF board **
Five year price validity to be reviewed every 6 months. Price not to rise
greater than the wholesale price index. Will entertain learning curve price
reductions.
The following Astro integrated circuits:
ADSIC - P/N 5105457W19 **
ABACUS - P/N 5105457W20 **
SLIC IV - P/N 5105457W06 **
FRAC-N - P/N 5105625U31 **
STATION DSP GLUE CHIP - P/N 5184625T05 **
DES (NON XL) ENCRYPTION CHIP - P/N 5183977M69 **
ENCRYPTION ASIC OR RISC CHIP - UNDEVELOPED AT THIS TIME*
* -- Price will have to be negotiated when part is available. Motorola will give
EFJ software to program either part.
The following connectors will be made available to EFJ as required:
Encryption module mating connector
FLASHport mating connector
Five year price validity to be reviewed every 6 months. Price not to rise
greater than the wholesale price index. Will entertain learning curve price
reductions.
License Agreement Between Motorola & EFJ 10/14/94
40
[XX XXXXXXX LETTERHEAD]
July 27, 1995
Xx. Xxxxx Xxxxxx
Motorola, Inc.
0000 Xxxx Xxxxxxxxx Xxxx
Xxxxxxxxxx, XX 00000-0000
VIA FEDERAL EXPRESS
RE: LICENSE AGREEMENT BETWEEN MOTOROLA, INC. ("MOTOROLA") AND
X.X. XXXXXXX COMPANY ("EFJ") DATED OCTOBER 14, 1994 (THE
"LICENSE AGREEMENT")
Dear Xxxxx:
As you know, Section 5.2 of the License Agreement requires EFJ to pay
Motorola $5,000,000. To date, EFJ has paid Motorola the first installment of
$1,000,000. As a result of negotiations over the last several weeks, EFJ and
Motorola have agreed that Section 5.2 of the License Agreement is amended to
require EFJ's payment of the remaining $4,000,000, without any interest, service
or late payment charges, according to the following revised schedule:
1. $720,000 payable in twelve monthly payments of $60,000 due on the first
day of each month commencing September 1, 1995 and continuing on each
consecutive month thereafter to and including August 1, 1996; and
2. One final payment of $3,280,000 due on August 31, 1996.
Except as amended herein, the License Agreement shall remain in full force
and effect.
Please acknowledge Motorola's acceptance and agreement to this amendment
to the License Agreement by signing both originals of this amendment below.
After signing, please return one of the originals to me for our files.
X.X. Xxxxxxx Company
By: [SIG]
---------------------------
Title: President and CEO
Agreed to and Accepted:
Motorola, Inc.
By: [SIG]
--------------------------------------
Sr. Vice Pres. & General Manager
Title: Radio Network Solutions Group, Land
--------------------------------------
Mobile Product Xxxxxx
00
SECOND AMENDMENT
THIS SECOND AMENDMENT is dated and effective as of September 27, 1995,
between Motorola, Inc., a Delaware corporation ("Motorola"), and X.X. Xxxxxxx
Company, a Minnesota corporation ("EFJ").
RECITALS
WHEREAS, Motorola and EFJ entered into that certain License Agreement
dated October 14, 1994, which was subsequently amended by agreement dated July
27, 1995 (the "First Amendment", said License Agreement and First Amendment
being hereinafter referred to as the "Agreement"); and
WHEREAS, the parties desire to amend the Agreement as set forth below.
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration the receipt and sufficiency of which the parties hereby
acknowledge, the parties agree as follows:
1. Section 5.3(a) of the Agreement is hereby amended by deleting the words
"**" in the third line of such Section and substituting the words "**".
2. Section 5.3(b) of the Agreement is hereby deleted in its entirety.
3. Appendix B to the Agreement is hereby deleted in its entirety and
superseded and replaced by the revised Appendix B attached hereto and
incorporated herein by reference.
4. If EFJ fails to pay any of the installments due under the First
Amendment and any such failure continues for more than thirty (30) days after
EFJ receives Motorola's written notice of non-payment, the amendments to Section
5.3 (a) and (b) and Appendix B of the Agreement set forth herein shall terminate
as of the expiration of such thirty (30) day period and be replaced by the terms
contained in the Agreement prior to the date hereof.
5. Except as expressly modified in this Second Amendment, the terms,
conditions and provisions of the Agreement shall remain in full force and
effect. Each party hereby represents that the individual signing below has all
necessary power, authority and approvals to execute and deliver this Second
Amendment.
IN WITNESS WHEREOF, this Second Amendment is executed by the parties as of
the date set forth above.
MOTOROLA, INC. X.X. XXXXXXX COMPANY
By [SIG] By [SIG]
--------------------------------- -----------------------------------
Its Sr. Vice Pres. & General Its Pres.
----------------------------- -----------------------------------
Manager Radio Network Solutions
Group, Land Mobile Products
Xxxxxx
00
XXXXXXXX X
Finished Products Pricing
All Astro products listed on the following Motorola R01 pricebook pages:
Astro Quantar/Quantro Conventional Section 5.0, pages 37-37H dated 12/15/93
Base Stations and Repeaters, Xxxxx- (xxxx 00, 00X, 00X, 00X dated 7/20/94)
sories and options.
To be sold at the following discounts from the current DNUP price as of the date
of order receipt:
800 MHz versions, **
150 MHz and 450 MHz versions
1st 50 units in total, **
2nd 50 units in total, **
3rd 50 units in total, **
all units thereafter, **.
* - NOTE: The pages published to date do NOT include trunking products. The same
discount levels will apply when these are added.
Astro Quantar Conventional Receivers Section 5.0, pages 38-38A dated 12/15/93
Astro-TAC Digital Voting Comparator Section 5.0, pages 39-39A dated 12/15/93
Astro Digital Interface Unit Section 5.0, pages 40-40A dated 12/15/93
and other Astro Infrastructure To Be Determined.
To be sold at a ** discount from the current DNUP price as of the date of
order receipt.
* - NOTE: The pages published to date do NOT include trunking products. The same
discount levels will apply when these are added.
License Agreement Between Motorola & EFJ 10/14/94
00
XXXXXXXX X
Finished Products Pricing
Astro products listed on the following Motorola R01 pricebook pages:
Astro Digital Spectra Mobile Series Section 5.0, pages 36-36N dated 12/15/93
Accessories and Options (page 36D dated 5/1/94; 36L dated 2/1/94)
To be sold at the following discounts from the current DNUP price as of the date
of order receipt based on the annual quantity purchased:
Annual Quantity Discount
--------------- --------
25 minimum - 100 **
100 - 000 **
000 - 0000 **
1000 - 1500 **
1500 - 2000 **
Greater than 2000 **
Astro Digital Saber Portable Series Section 5.0, pages 35-35M dated 12/15/93
Accessories & Options (page 35J dated 5/1/94)
To be sold at a ** discount from the DNUP price as of the date of order
receipt regardless of quantity purchased.
* - NOTE: The pages published to date do NOT include trunking products. The same
discount levels will apply when these are added.
License Agreement Between Motorola & EFJ 10/1 4/94,
44
[EFJohnson LETTERHEAD]
XXXXXXX XXXXXX
Chairman and Chief Executive Officer
June 25, 1996
Xxxxx Xxxxxx VIA FEDERAL EXPRESS
Motorola, Inc.
0000 X. Xxxxxxxxx Xxxx
Xxxxxxxxxx, XX 00000-0000
RE: LICENSE AGREEMENT BETWEEN MOTOROLA, INC. ("MOTOROLA") AND X.X.
XXXXXXX COMPANY ("EFJ") DATED OCTOBER 14, 1994, AS AMENDED JULY 27,
1995 AND SEPTEMBER 27, 1995 (COLLECTIVELY, THE "LICENSE AGREEMENT")
Dear Xxxxx:
As you know, Section 5.2 of the License Agreement requires EFJ to pay
Motorola $5,000,000 (the "Section 5.2 Payment"). Under the License Agreement,
EFJ will have paid Motorola a total of $1,720,000 towards the Section 5.2
Payment as of August 1, 1996. As a result of negotiations over the last several
weeks, EFJ and Motorola have agreed that Section 5.2 of the License Agreement is
amended to require EFJ's payment of the remaining $3,280,000, due on August 31,
1996, without any interest, service or late payment charges, according to the
following revised schedule:
1. $1,800,000 payable in twelve monthly payments of $150,000 due on the
first day of each month commencing September 1, 1996 and continuing on
each consecutive month thereafter to and including August 1, 1997;
2. One final payment of $1,480,000 due on August 31, 1997; and
3. If EFJ completely refinances its current debt and equity structure at
any time prior to August 31, 1997, the unpaid balance of the Section
5.2 Payment as of such refinancing shall be immediately payable.
Except as amended herein, the License Agreement shall remain in full force
and effect.
45
Xxxxx Xxxxxx
Page 2
June 25, 1996
Please acknowledge Motorola's acceptance and agreement to this amendment
to the License Agreement by signing both originals of this amendment below.
After signing, please return one of the originals to me for our files.
X.X. Xxxxxxx Company
By: [SIG]
----------------------------------------------
Title: President and CEO
AGREED TO AND ACCEPTED:
MOTOROLA, INC.
By: [SIG]
------------------------------------------
Title: Vice President and General Manager
