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EXHIBIT 10.4
CALLING COMMUNICATIONS CORPORATION
EMPLOYEE AGREEMENT AND PROPRIETARY
INFORMATION AGREEMENT
This Agreement is made and entered into as of the 29th day of October,
1993, by and between Calling Communications Corporation, a California
corporation (the "Company") and W. Xxxxxxx Xxxxxxx an individual resident at
0000 Xxxxxxxxxxx Xxxxxx, #00, Xxx Xxxxxxxxx, XX 00000 ("Employee")
RECITAL
As part of its ongoing program of research and development, the Company
desires to retain distinguished scientists and other Qualified individuals to
advise the Company with respect to its technology strategy and to assist it in
the research, development and analysis of the Company's opportunities. In
furtherance thereof, the Company and Employee desire to enter into this
Agreement.
AGREEMENT
In consideration of the mutual covenants set forth below, the parties
hereby agree as follows:
1. ESTABLISHMENT OF CONFIDENTIAL RELATIONSHIP
Employee recognizes that the Company is engaged in a continuous program
of research and development respecting its present and future business
activities. Employee understands that:
(a) As part of Employee's services performed for the Company, Employee
will be involved in discussions that relate to the Company's technology and
business strategy, and, in the course of performing services for the Company,
may develop new ideas or inventions or make other contributions of value to the
company.
(b) This Agreement creates a relationship of trust and confidence
between the Employee and the Company with respect to any information which is:
(i) applicable to the business of the company or any client or
customer of the Company: and
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(ii) is made known to Employee by the Company or by any client or
customer of the Company, or is learned by Employee while doing work for the
Company.
(c) The Company possesses and will continue to posses information: (i)
that has been created, discovered, developed, or otherwise become known to the
Company (including without limitation information created, discovered, developed
or made known by Employee arising out of Employee's relationship with the
Company); or (ii) in which property rights have been assigned or otherwise
conveyed to the Company by another entity, which information has commercial
value in the business in which the Company is engaged and is treated by the
Company as confidential. All such information is hereinafter referred to as
"Proprietary Information." By way of illustration, but not limitation,
Proprietary Information includes: (a) inventions, developments, designs,
applications, improvements, trade secrets, formulae, know-how, methods or
processes, discoveries, techniques and data (hereinafter collectively referred
to as "Inventions"); and (b) plans for research, development, new products,
marketing and selling, information regarding business plans, budgets and
unpublished financial statements, licenses, prices and costs, information
concerning suppliers and customers, and information regarding the skills and
compensation of employees of the Company.
Certain specific obligations of Employee arising out of Employee's
confidential relationship with the Company are set forth in Sections 6, 7, 8 and
10 of this Agreement.
2. RECOGNITION OF COMPANY'S RIGHTS; NONDISCLOSURE
(a) All Proprietary Information shall be the sole property of the
Company and its assigns, and the Company and its assigns shall be the sole owner
of all patents, copyrights and other rights in connection with such Proprietary
Information.
(b) At all times, both during the term of this Agreement and after its
termination, Employee will keep in confidence and trust all Proprietary
Information and shall not use or disclose any Proprietary Information or
anything related to such information without the written consent of the Company,
except as may be required in the ordinary course of performing services as an
Employee to the company.
3. NONDISCLOSURE OF THIRD-PARTY INFORMATION
Employee understands that the Company has received and in the future
will receive from third parties information that is confidential or proprietary
("Third-Party Information") subject to a duty on the part of the Company to
maintain the
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confidentiality of such information and to use it only for certain limited
purposes. During the term of this Agreement and thereafter, Employee will hold
Third-Party Information in the strictest confidence and will not disclose or use
Third-Party Information except as permitted by the agreement between the Company
and such third party, unless expressly authorized to act otherwise by an officer
of the Company in writing.
4. ASSIGNMENT OF PROPRIETARY RIGHTS
Employee hereby assigns to the Company Employee's entire right, title
and interest in and to any and all Inventions (and all Proprietary Rights with
respect thereto) whether or not patentable or registerable under copyright or
similar statutes, made or conceived of or reduced to practice or learned by
Employee, either alone or jointly with others, during the term of this Agreement
in the course of or as a result of performing employment services hereunder.
Employee agrees that all such inventions are the sole property of the Company.
This paragraph 4 shall not apply to Inventions which do not relate to the
present or planned business or research and development of the Company's
laboratories or on the Company's premises and not using the Company's tools,
devices, equipment or Proprietary Information. Employee understands that, to the
extent this Agreement shall be construed in accordance with the laws of any
state which precludes a requirement in an agreement to assign certain classes of
inventions made by an individual acting as an Employee, this paragraph 8 shall
be interpreted not to apply to any invention which a court rules and/or the
Company agrees falls within such classes.
5. ENFORCEMENT OF PROPRIETARY RIGHTS
Employee further agrees to assist the Company in every proper way to
obtain from time-to-time and to enforce United States and foreign patents,
copyrights, and other rights and protections relating to Company Inventions in
any and all countries. To that end, Employee will execute, verify and deliver
such documents and perform such other acts (including appearances as a witness)
as the Company may reasonably request for use in applying for, obtaining,
sustaining and enforcing such patents, copyrights and other rights and
protections on Company Inventions. In addition, Employee agrees to execute,
verify and deliver assignments of such patents, copyrights, and other rights and
protections to the Company or its designee. Employee's obligation to assist the
Company in obtaining and enforcing patents, copyrights, and other rights and
protections relating to such Company Inventions in any and all countries shall
continue beyond the termination of this Agreement, but the Company shall
compensate Employee at a reasonable rate after such termination for
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the time and related travel and business expenses actually spent by Employee at
the Company's request on such assistance.
In the event the Company is unable, after reasonable effort, to secure
Employee's signature on any document needed to apply for or prosecute any
patent, copyright, or other right or protection relating to a Company Invention,
Employee hereby irrevocably designates and appoints the Company and its duly
authorized officers and agents as his agent and attorney in fact, to act for and
on his behalf to execute, verify and file any such applications and to do all
other lawfully permitted acts to further the prosecution and issuance of
patents, copyrights, and other rights and protections thereon with the same
legal force and effect as if executed by Employee.
6. OBLIGATION TO KEEP COMPANY INFORMED
(a) During the term of this Agreement, Employee shall promptly disclose
to the Company, or any persons designated by it, fully and in writing and will
hold in trust for the sole right amid benefit of the Company any and all
Inventions, whether or not patentable or protectable by copyright, of which
Employee becomes aware that are in the field of Telecommunications (the
"Field"), however, Employee shall not be obligated to disclose (i) information
received by Employee from others under a contractual binder of confidentiality
or (ii) information subject to an obligation of confidentiality under any
applicable Employer guideline of policy referred to in paragraph 8(c) below.
(b) In addition, after termination of this Agreement, Employee will
disclose all patent applications filed by him within a year after such
termination. At the time of each such disclosure, Employee will advise the
Company in writing of any Inventions that Employee believes are not subject to
the assignment provisions of Section 6 above; and Employee will at that time
provide to the Company in writing all evidence necessary to substantiate that
belief.
7. PRIOR INVENTIONS
Inventions, if any, patented or unpatented, which Employee made prior to
the execution of this Agreement, are excluded from the scope of this Agreement.
To preclude any possible uncertainty, Employee has set forth on Exhibit A
attached hereto a complete list of all inventions in the Field that Employee
has, alone or jointly with others, conceived, developed or reduced to practice
or caused to be conceived, developed or reduced to practice prior to the
execution of this Agreement, that Employee considers to be his property and that
Employee wishes to have excluded from the scope of this Agreement. If disclosure
of any such Invention on Exhibit A would cause Employee to violate any prior
confidentiality agreement, Employee
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understands that he is not to list such Inventions in Exhibit A but is to inform
the Company that all such Inventions have not been listed for that reason.
8. NO CONFLICTING OBLIGATION
(a) Employee represents that Employee's performance of services as an
Employee to the Company does not and will not breach any agreement to keep in
confidence any proprietary information of another entity acquired by Employee in
confidence or in trust prior to the date of this Agreement.
(b) Employee has not entered into, and hereby agrees not to enter into,
any agreement either written or oral in conflict with this Agreement.
(c) The provisions of this Agreement are subject to the understanding
that Employee is affiliated with the Employer and must fulfill certain
obligations to the Employer pursuant to the guidelines or policies adopted by
the Employer, copies of which guidelines or policies, if any, are attached
hereto. If Employee is required to disclose any Inventions to the Employer
pursuant to applicable guidelines or policies, he shall promptly notify the
Company of such obligation, specifying the nature of such disclosure and
identifying the applicable guideline or policy under which disclosure is
required, prior to making such disclosure.
(d) Employee agrees to submit to the Company any proposed publication
which contains any discussion relating to the Company or work performed by
Employee for the Company hereunder. It is understood that Employee may proceed
with such publication unless, within 90 days of the receipt by the Company of
such publication unless, Employee is notified by the Company that such
publication contains Proprietary Information.
9. NO IMPROPER USE OF MATERIALS
Employee agrees not to bring to the Company or to use in the performance
of services for the Company any materials or documents of a present or former
employer of Employee, or any materials or documents obtained by Employee under a
binder of confidentiality imposed by reason of another of Employee's consulting
or employment relationship, unless such materials or documents are generally
available to the public or Employee has authorization from such present or
former employer or client for the possession and unrestricted use of such
materials. Employee understands that Employee is not to breach any obligation of
confidentiality that Employee has to present or former employers or clients, and
agrees to fulfill all such obligations during the term of this Agreement.
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10. TERM AND TERMINATION
The obligations and liabilities of the Company and Employee may be
terminated hereunder only as follows:
(a) Either party may terminate this Agreement in the event of a material
breach by the other party of any of the covenants contained herein if such
breach continues uncured for a period of thirty (30) days after written notice
of such breach; and
(b) The parties may mutually agree in writing to terminate this
Agreement upon sixty (60) days written notice, unless the parties mutually agree
to a shorter notice period.
11. EFFECT OF TERMINATION
Upon the expiration of this Agreement, each party shall be released from
all obligations and liabilities to the other occurring or arising after the date
of such termination, except that any termination of this Agreement shall not
relieve Employee of Employee's obligations under paragraphs 2, 3, 4, 5, 6, 7 and
8 hereof, nor shall any such termination relieve Employee or the Company from
any liability arising from any breach of this Agreement. Upon termination of
this Agreement for any reason whatsoever, Employee shall promptly surrender and
deliver to the Company all documents, notes, laboratory notebooks, drawings,
specifications, calculations, sequences, data and other materials of any nature
pertaining to Employee's work with the Company, and any documents or data of any
description (or any reproduction of any documents or data) containing or
pertaining to any Proprietary Information. Employee agrees that in the event of
such termination, Employee will cooperate with the Company in completing and
signing the Company's termination statement for scientific Employees.
12. EXTENSION OF TERM
The Company may, at any time prior to termination, renew this Agreement
for additional one-year periods by giving Employee written notice of its
election to renew; provided, however, that the Company shall not be entitled to
renew this Agreement after it has exercised its option to renew four times.
13. ASSIGNMENT
The rights and liabilities of the parties hereto shall bind and inure to
the benefit of their respective successors, heirs, executors, and
administrators, as the case may be;
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provided that, as the Company has specifically contracted for Employee's
services Employee may not assign or delegate Employee's obligations under this
Agreement either in whole or in part without the prior written consent of the
Company.
14. LEGAL AND EQUITABLE REMEDIES
Because Employee's services are personal and unique and because Employee
may have access to and become acquainted with the Proprietary Information of the
Company, the Company shall have the right to enforce this Agreement and any of
its provisions by injunction, specific performance or other equitable relief
without prejudice to any other rights and remedies that the Company may have for
a breach of this Agreement.
15. GOVERNING LAW; SEVERABILITY
This Agreement shall be governed by and construed according to the laws
of the State of California. If any provision of this Agreement is found by a
court of competent jurisdiction to be unenforceable, that provision shall be
severed and the remainder of this Agreement shall continue in full force and
effect.
16. COMPLETE UNDERSTANDING; MODIFICATION
This Agreement, and all other documents mentioned herein, constitute the
final, exclusive and complete understanding and agreement of the parties hereto
as it pertains to confidentiality and supersedes all prior understandings and
agreements. Any waiver, modification or amendment of any provision of this
Agreement shall be effective only if in writing and signed by the parties
hereto.
17. NOTICES
Any notices required or permitted hereunder shall be given to the
appropriate party at the address specified in this Agreement or at such other
address as the party shall specify in writing. Such notice shall be deemed given
upon personal delivery to the appropriate address or sent by certified or
registered mail, three (3) days after the date of mailing.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first written above.
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TELEDESIC CORPORATION/ EMPLOYEE
CALLING COMMUNICATIONS CORPORATION
0000 X. Xxxxxx Xxxxxx Xxxxx 0000 Xxxxxxxx Xxxxx
Xxxxx 000 Xxxxxxxx, XX 00000
Xxxx Xxxxxx, Xxxxxxxxxx 00000
By:
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Xxxxxx X. Xxxx W. Xxxxxxx Xxxxxxx
Title:
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Chairman December 1, 1993
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EXHIBIT A
CALLING COMMUNICATIONS CORPORATION
0000 X. Xxxxxx Xxxxxx Xxxxx, Xxxxx 000
Xxxx Xxxxxx, Xxxxxxxxxx 00000
Gentlemen:
1. The following is a complete list of all inventions or improvements
relevant to the subject matter of any engagement as a Employee to Calling
Communications Corporation (the "Company") that have been made or conceived or
first reduced to practice by me alone or jointly with others prior to my
engagement by the Company:
X No inventions or improvements.
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See below:
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Additional sheets attached.
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2. I propose to use in my consulting work the following devices,
materials and documents of a former employer that are not generally available to
the public, which materials and documents may be used in my consulting work
pursuant to the express written authorization of my former employer (a copy of
which is attached hereto):
X No materials
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See below:
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Additional sheets attached.
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Very truly yours,
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Date Name
10
BANK OF AMERICA LOAN MODIFICATION AGREEMENT
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This agreement amends the Promissory Note dated June 19, 1998 ("Note")
and Business Loan Agreement dated June 19, 1998 ("Business Loan Agreement"),
each executed by Teledesic, L.L.C. ("Borrower") in favor of Bank of America,
N.A. ("Bank"), formerly Bank of America National Trust and Savings Association,
doing business as Seafirst Bank (Predecessor"), regarding a loan in the maximum
principal amount of $9,960,000.00 (the "Loan"), which currently has a maximum
principal amount of $11,275,000.00. All references to Predecessor in any of the
loan documents entered into by Borrower with regard to the Loan are hereafter
deemed to be references to Bank. For mutual consideration, Borrower and Bank
agree to amend the above loan documents as follows:
1. Maturity Date. The maturity date of the Note is changed to September
30, 2000. Bank's commitment to make advances to Borrower under its line of
credit is also extended to September 30, 2000.
2. Other Terms. Except as specifically amended by this agreement of any
prior amendment, all other terms, conditions, and definitions of the Note,
Business Loan Agreement, and all other security agreements, guaranties, deeds of
trust, mortgages, and other instruments or agreements entered into with regard
to the Loan shall remain in full force and effect.
DATED June 29, 2000
Bank: Borrower:
BANK OF AMERICA, N.A. TELEDESIC, L.L.C.
By: Teledesic Corporation, Managing
Member
By XXXXXX X. LOOK
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Title: Senior Vice President
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By XXXXXX XXXXX
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Title: President
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