EXHIBIT 10.29
DEVELOPMENT AND LICENSE AGREEMENT
This Development & License Agreement (this "Agreement") is entered into
and effective as of November __, 1998 (the "Effective Date") by and
between Microsoft Corporation, a Washington corporation located at Xxx
Xxxxxxxxx Xxx, Xxxxxxx, XX 00000 ("Microsoft") and Navitel
Communications, Inc., a California corporation located at 000 Xxxxxxxxxxx
Xxxx, Xxxxx 000, Xxxxx Xxxx, XX 00000 ("Navitel"). The Agreement
supersedes that certain Joint Development & License Agreement entered
into by Microsoft and Navitel dated July 9,1997 and that certain
Amendment Number 1 to Joint Development & License Agreement entered into
by Microsoft and Navitel dated January 23, 1998 (collectively, the
"Original Agreement").
RECITALS
A. Pursuant to the Original Agreement, Navitel and Microsoft
agreed to develop a software product which combines extensions to the
Windows CE operating system and applications software for an Internet-
enabled telephone (as defined below "Hermes").
B. Navitel and Microsoft wish to terminate the Original Agreement,
restructure their relationship, and clarify ownership of the technology
developed under the Original Agreement.
D. Microsoft desires to have Navitel provide certain development,
support and testing services in connection with Hermes and with
Microsoft's software platform known as "Windows CE," and Navitel desires
to provide such services to Microsoft.
E. Microsoft and Navitel intend that this Agreement supersede the
Original Agreement and serve as a master agreement establishing the basic
terms and conditions under which Navitel will undertake particular
development and testing projects for Microsoft.
AGREEMENT
1. TERMINATION OF THE ORIGINAL AGREEMENT
The parties agree that the Original Agreement is terminated in its
entirety as of the Effective Date. This Agreement supersedes all
terms and conditions of the Original Agreement.
2. DEFINITIONS
For the purposes of this Agreement, the following terms shall have
the following meanings:
2.1 "Approved Expense(s)" shall mean those reasonable and necessary
costs and expenses incurred by Navitel in performing work under this
Agreement that are identified as subject to reimbursement by
Microsoft in a Work Plan or an amendment thereto.
2.2 "Confidential Information" shall mean: (i) any trade secrets
relating to either party's product plans, designs, costs, prices and
names, finances, marketing plans, business opportunities, personnel,
research development or know-how; (ii) any information designated by
the disclosing party as confidential in writing or, if disclosed
orally, identified at the time of disclosure as being confidential,
or which, under the circumstances surrounding disclosure, ought to
be treated as confidential; and (iii) the terms and conditions of
this Agreement. "Confidential Information" shall not include
information that: (i) is or becomes generally known or available by
publication or otherwise through no fault of the receiving party;
(ii) is known and has been reduced to tangible form by the receiving
party at the time of disclosure and is not subject to restriction;
(iii) is independently developed by the receiving party; ; or
(iv) is made generally available by the disclosing party without
restriction on disclosure.
2.3 "Contractor Agreement" shall have the meaning given in Section
5.7.1.
2.4 "Deliverables" shall mean the items identified as deliverables, to
be delivered by Navitel to Microsoft, as more fully described in a
Work Plan.
2.5 "Derivative Technology" shall mean: (I) for copyrightable or
copyrighted material, any localization, translation (including
translation into other computer languages), portation, modification,
correction, addition, extension, upgrade, improvement, compilation,
abridgment, or other form in which an existing work may be recast,
transformed or adapted; (ii) for patentable or patented material,
any improvement thereon; and (iii) for material which is protected
by trade secret, any new material derived from such existing trade
secret material, including new material which may be protected by
copyright, patent and/or trade secret.
2.6 "Error(s)" shall mean defect(s) in a Deliverable which causes a
Severity Level 1,2, 3 or 4 error, as such errors are defined in
Exhibit B or as specified in a Work Plan.
2.7 "Hermes" shall mean Microsoft's software product for Internet-
enabled telephone devices whose primary purpose is to provide voice
communications for the end-user, which software product consists of
a version of Windows CE and the Hermes Applications.
2.8 "Hermes Applications" shall mean the detailed specifications of
design, functionality and technical implementation for Hermes and
other agreed-upon deliverables, as well as specific acceptance
criteria therefor.
2.9 "Hermes Specifications" shall mean the detailed specifications of
design, functionality and technical implementation for Hermes and
other agreed-upon Deliverables, as well as specific acceptance
criteria therefor.
2.10 "Hermes Technology" shall mean all Intellectual Property relating to
Hermes developed under or covered by the Original Agreement, other
than the Pre-Existing Technology, including, but not limited to, the
Hermes Applications, Hermes Telephone Card Design, Hermes
Specifications, Test Plan, User Education Plan, and the Hermes
project schedule.
2.11 "Hermes Telephony Card Design" shall mean the hardware design
created for the D9000/ODO platform to provide telephony services for
Hermes. The design includes block diagrams, layout, schematics, and
Printed Circuit Board layout, and support for the line interface,
modem, digital answering machine, hook-switch, speaker phone, and
other functionality required by the reference documentation and
specifications.
2.12 "Intellectual Property" shall mean any copyrights, patents
(including patent improvements), patent applications, patent rights,
trade secrets, or other intellectual property rights (but not
trademarks, trade names or service marks) under applicable law.
2.13 "Microsoft Internal Reference Number" shall mean a unique number
that may be assigned by Microsoft to each general project undertaken
by Navitel hereunder pursuant to the applicable Work Plan, which
number shall be used to track and record the hours worked by each
Navitel employee assigned to such Work Plan.
2.14 "Microsoft Materials" shall have the meaning designated in the
applicable Work Plan.
2.15 "Navitel HermesTechnology" shall mean that portion of the Hermes
Technology assigned by Navitel to Microsoft pursuant to Sections
3.2, 3.3 and 3.4 below.
2.16 "Original Agreement" shall mean the Joint Development & License
Agreement executed by Microsoft and Navitel on July 9, 1997, as
amended by the Amendment Number 1 to Joint Development & License
Agreement entered into by Microsoft and Navitel dated January 23,
1998.
2.17 "Personnel Rate Schedule" shall mean that document attached to and
made a part of this Agreement as Exhibit D, setting forth the hourly
rates at which Microsoft shall pay Navitel for Services under this
Agreement.
2.18 "Pre-Existing Technology" shall mean the Intellectual Property in
and to the Technology described on Exhibit C, attached hereto,
developed by Navitel prior to the execution of the Original
Agreement and not, in any way, used or referred to in the
development of the Hermes Technology.
2.19 "Schedule" shall mean the schedule for completion of the Services
and delivery of the Deliverables contained in a Work Plan.
2.20 "Services" shall mean the design and development of the Work in
accordance with a Work Plan and Specifications.
2.21 "Specifications" means the specifications for the Services, as more
fully described in the applicable Work Plan.
2.22 "Technology" shall mean computer code in object or source code form,
plans, specifications, schemataics, ideas, know-how, techniques or
any other technology.
2.23 "Test Hardware" shall mean all of the hardware provided to Navitel
by Microsoft, or on behalf of Microsoft, for the limited purpose of
testing and developing the Work pursuant to a Work Plan and this
Agreement.
2.24 "Test Plan" shall mean the documentation which defines the
requirements for testing specific functionalities of the Hermes
software deliverables to ensure that they meet the Hermes
Specifications, and lists and defines the tests that must be done to
ensure that a tested functionality is covered completely.
2.25 "User Education Plan" shall mean the documentation that outlines
(schedules) the prototyping and usability testing for verification
of the model for user assistance, including printed and electronic
documentation, on-screen help dialogs and text, and localization
strategy.
2.26 "Windows CE" shall mean the Microsoft software platform known as
MicrosoftR WindowsR CE.
2.27 "Work" shall mean the work completed by Navitel for Microsoft, as
more fully described in the Specifications.
2.28 "Work Plan" means a detailed description of Services to be performed
by Navitel, including cost, delivery dates and Specifications.
Services shall be detailed in a separate Work Plan. Work Plans
shall be in the form attached hereto as Exhibit A, and shall be
signed by both parties, consecutively numbered (i.e. Work Plan X-0,
X-0, X-0, etc.) and attached to and made a part of this Agreement.
3. HERMES TECHNOLOGY.
3.1 Ownership. Microsoft shall own all Hermes Technology, including
but not limited to, all Hermes Technology developed by Navitel or
any third parties on behalf of Navitel.
3.2 Assignment. Navitel hereby assigns to Microsoft all of its right,
title and interest in and to the Hermes Technology. Such
assignments include, without limitation, the following:
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
3.2.1 *** that Navitel may possess or acquire in the Hermes
Technology and *** and equivalent rights in the Hermes
Technology ***, including all renewals and extensions of such
rights that may be secured under the laws now or hereafter in
force and effect in the United States of America or in any
other country or countries;
3.2.2 *** rights in and to the *** Hermes Technology or
developed in the course of Navitel's creation of the Hermes
Technology, including but not limited to *** regardless of
whether or not legal protection for the Hermes Technology is
sought;
3.2.3 The right to prepare Derivative Technology of the Hermes
Technology with exclusive rights to authorize others to do the
same;
3.2.4 Copies of any documents, magnetically or optically encoded
media, or other materials created by Navitel under the Original
Agreement; and
3.2.5 The right to xxx for infringements of the Hermes
Technology which may occur before the date of this Agreement,
and to collect and retain damages from any such infringements.
3.3 Assignment/Waiver of Moral Rights. Navitel hereby irrevocably
transfers and assigns to Microsoft any and all "moral rights" that
Navitel may have in the Hermes Technology and Derivative Technology
thereof. Navitel also hereby forever waives and agrees never to
assert any and all "moral rights" it may have in the Hermes
Technology and Derivative Technology thereof, even after termination
of this Agreement and any related Work.
3.4 Assistance. Navitel shall execute and deliver such instruments and
take such other action as may be requested by Microsoft to perfect
or protect Microsoft's rights in the Hermes Technology and to carry
out the assignments effected by this Section 3, and assist Microsoft
and its nominees in every proper way to secure, maintain, protect
and defend for Microsoft's own benefit all such rights in the Hermes
Technology in any and all countries. Navitel shall cooperate with
Microsoft in the filing and prosecution of any copyright or patent
applications that Microsoft may elect to file on the Hermes
Technology or inventions and designs relating to the Hermes
Technology.
3.5 License to Hermes Telephony Card Design. Microsoft grants Navitel a
worldwide, nonexclusive, perpetual, *** right to (1) make, use,
copy, modify, and create Derivative Technology of the Hermes
Telephony Card Design; (2) publically perform or display, import,
broadcast, transmit, distribute, license, offer to sell, and sell,
rent, lease or lend copies of the Hermes Telephony Card Design (and
Derivative Technology thereof); and (3) sublicense to third parties
the foregoing rights, including the right to sublicense to further
third parties.
4. PRE-EXISTING TECHNOLOGY
Navitel hereby grants to Microsoft a perpetual, nonexclusive,
worldwide, ***, license under any patents covering its Pre-Existing
Technology to the extent necessary to combine any of the Hermes
Technology and the Work with any hardware or software.
5. WORK
5.1 Services. Navitel shall perform the Services in accordance with the
applicable Work Plan and pursuant to the Specifications. The parties
agree to discuss in good faith issues that may arise in performance
of the work tasks associated with each Work tasks associated with
each Work Plan, including any issues regarding compliance with the
timing of Deliverables set forth in the Work Plan.
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
5.2 Status Reports. Navitel shall provide to Microsoft a current and
accurate monthly status report, in a form reasonably acceptable to
Microsoft, detailing the status of each project covered in the Work
Plan, including current budget tracking and assessment of ability to
meet project milestones. Navitel shall also provide such additional
status reports regarding work in progress as the Microsoft project
manager may reasonably request from time to time.
5.3 Personnel Rate Schedule. Navitel shall have on its staff, at the
levels and at the rates specified in Exhibit D, trained and
experienced personnel that primarily are dedicated to and available
for the Microsoft projects set forth in the Work Plans.
5.4 Personnel Adjustments. Navitel shall use its best efforts to ensure
that personnel providing Services under this Agreement (i) are
available to work on additional Work Plans which are similar to
those for which they have provided Services previously and (ii) are
not unnecessarily and inefficiently moved between Work Plans in
progress. Navitel shall consult with Microsoft when establishing
and changing the project teams assigned to each Work Plan. Navitel
will ensure that its engineering team working on Windows CE related
projects shall be working exclusively on Windows CE. Unless
otherwise specified in a Work Plan, Navitel shall not ***.
5.5 Personnel on Microsoft Campus. The Navitel personnel may be located
at the Microsoft premises to further the objectives of the
development and testing activities described in this Agreement.
Navitel acknowledges that its personnel will be required to execute
Microsoft's standard agreements for email and security card access.
Navitel is not authorized to use, and agrees that it shall not use
its location on the Microsoft campus, or its access to Microsoft
employees or facilities, to obtain information or materials from
sources at Microsoft, other than as expressly authorized by
Microsoft. For example, although Navitel employees will be given
security card access to select facilities at Microsoft, it is
Microsoft's intent to grant access to only the office space
allocated to Navitel and such other spaces as may, from time to
time, be designated by Microsoft. It is not Microsoft's intent to
grant Navitel employees full access to all areas of the Microsoft
premises accessible by security card or to other floors of such
premises. Navitel agrees to direct its employees not to access
areas of the Microsoft premises other than those specifically
designated by Microsoft. Navitel employees shall abide by all
Microsoft rules, regulations, and security measures while present at
Microsoft site.
5.6 Microsoft Materials License Grant. Microsoft hereby grants Navitel a
non-exclusive, limited license in the Microsoft Materials for
internal use only as necessary to create the Deliverables. Nothing
herein shall be deemed to be an assignment to Navitel of any right,
title and interest in the Microsoft Materials. All rights not
expressly granted herein are expressly reserved by Microsoft.
5.7 Contractors.
Navitel may disclose the Microsoft Materials to a third party
contractor and employ such contractor as a third party contractor of
Navitel to use such Microsoft Materials in accordance with this
Agreement, provided that Navitel complies with all of the following:
5.7.1 Navitel and its contractor enter into a written agreement
(hereinafter "Contractor Agreement") that expressly provides
that Microsoft is a third party intended beneficiary of the
Contractor Agreement with rights to enforce such agreement, and
that requires contractor:
5.7.1.1 to comply with obligations identical to those
imposed on Navitel by this Agreement;
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
5.7.1.2 to cease all reference to, and to return all full or
partial copies of, the Microsoft Materials upon
notice from Navitel or Microsoft of the termination
or expiration of this Agreement; and
5.7.1.3 to pay Microsoft's or Navitel's attorneys' fees if
Navitel or Microsoft employs attorneys to enforce
any rights arising out of the Contractor Agreement;
5.7.2 Navitel guarantees its contractors' fulfillment of the
applicable obligations imposed on Navitel by this Agreement;
5.7.3 Navitel hereby indemnifies Microsoft with respect to any
and all damages of any kind, without limitation, caused by
unauthorized reproduction and/or distribution of any portion of
the Microsoft Materials by any such contractor or by any other
breach of the Contractor Agreement by any such contractor; and
5.7.4 Navitel notifies Microsoft of the name and address of any
contractor with which Navitel intends to enter into a
Contractor Agreement before execution of such agreement, and
Microsoft approves in writing such contractor. Navitel's
notice to Microsoft shall also include a written summary of the
terms of any such Contractor Agreement(s), including: the
specific activity to be performed by the contractor; the
quantities involved; the term of the agreement with the
contractor; and such samples as Microsoft may reasonably
request of the work product of the contractor. Navitel shall
promptly notify Microsoft of the termination, expiration or
significant modification of the terms of such Contractor
Agreement(s).
5.8 Acceptance.
5.8.1 Microsoft shall evaluate each Deliverable and *** business
days after Microsoft's receipt of any preliminary version and
*** after receipt of the final version of the Deliverable.
Acceptance shall be in writing, and Microsoft shall not
unreasonably withhold its acceptance. If Microsoft identifies
Errors in a Deliverable *** days following receipt of notice
thereof ***.
5.8.2 For documentation or report Deliverables, Microsoft shall
evaluate each version of such Deliverable. In the event that it
requires corrections, Microsoft shall specify the corrections
needed and Navitel shall deliver an amended version of such
documentation within *** working days.
5.8.3 Navitel shall use all reasonable commercial efforts to
complete and deliver the Deliverables set forth in a Work Plan
to Microsoft, according to the applicable Schedule provided in
such Work Plan. Additional information, reports, documentation
and the like regarding the Services shall be provided by
Navitel to Microsoft upon the reasonable request of Microsoft.
Navitel shall promptly raise with Microsoft any issues that
arise (or which Navitel reasonably foresees arising) regarding
the quality or performance of the Deliverables set forth in the
Work Plan, as well as any deviation from the applicable Work
Plan for such Deliverables. The parties shall use all
reasonable efforts to promptly address any such issues that may
arise, including the establishment of an appropriate recovery
plan to the extent required.
5.8.4 If Navitel fails to deliver any Deliverable within the
dates specified in the Work Plan, and if any Errors discovered
before acceptance cannot be eliminated in the correction period
specified in the Work Plan or in Exhibit B if no correction
period is specified in the Work Plan, then Microsoft may, at
its option: (i) retain the Deliverable (including any
applicable documentation) with rights as set forth in Section
3, and pay Navitel for all outstanding payment milestones for
which Microsoft has accepted corresponding Deliverables, with
no further development fee to be paid to Navitel thereafter;
(ii) extend the correction
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
period; or (iii) suspend its performance and/or terminate this
Agreement for cause pursuant to Section 12.2.2.
5.9 Design Review & Specifications Changes. Navitel understands that
there may be additions, deletions or other changes which may affect
the Specifications at any time during the term of any Work Plan and
this Agreement. Upon notice of any such changes by Microsoft,
Navitel and Microsoft shall work together to make any necessary
changes to the Specifications, and Navitel shall alter the Services
and the applicable Work Plan (if necessary) in order to accommodate
any such changes to the Specifications.
5.10 ***. Except for Work Plan A-1, Microsoft shall have the right to
***. In the event that Microsoft ***prior to completion of Services
under that Work Plan, Microsoft shall retain any and all Work
existing in whatever form at the *** of the applicable Work Plan
(including any applicable documentation) with rights as set forth in
Section 3, and pay Navitel for all outstanding payment milestones
applicable to the retained Work, ***. Upon the *** completion of any
Work Plan, Navitel shall return all Microsoft Materials applicable
to such Work Plan within *** days of receipt of ***.
6. PAYMENT.
6.1 Hermes Technology; Derivative Technology of Pre-Existing Technology.
The parties agree that Navitel has received complete and final
payment in consideration for the assignments and licenses provided
in this Agreement. No further payment shall be due Navitel under
this Agreement unless specifically provided for in Work Plans to
this Agreement executed by the parties.
6.2 Services. Microsoft agrees to pay Navitel for work performed in
accordance with the Work Plans based upon the Personnel Rate
Schedule and for any Approved Expenses identified in the Work Plan,
provided that (i) Navitel has completed and delivered all
corresponding Deliverables; (ii) Microsoft has accepted such
Deliverables; and (iii) Navitel shall not exceed the maximum payable
amount specified in any Work Plan without obtaining Microsoft's
prior written approval.
6.3 Invoices. Unless otherwise specified in a Work Plan, Navitel shall
invoice Microsoft by the fifth business day of each month for the
amounts due for work performed under any Work Plan in the prior
month. Billing will be recorded in hourly increments by project, and
any assigned Microsoft Internal Reference Number, sufficient for
Microsoft to determine the number of hours each engineer worked on
any given Microsoft project on each day. In the event that
Microsoft provides a form to detail Navitel xxxxxxxx, Navitel agrees
to utilize such forms as Microsoft may supply. Microsoft shall pay
each invoice within thirty (30) days of receiving each invoice,
provided that Microsoft has accepted the Deliverable described in
the invoice. Microsoft shall be entitled to conditionally accept
Services billed each month, subject to final approval of the Work
associated with such Services upon completion of the project set
forth in the applicable Work Plan. If Microsoft rejects any Work
pursuant to Section 5.8 above, then Microsoft shall be entitled, in
addition to any other remedies available, to deduct an amount from
any subsequent invoice equal to the amount Microsoft previously paid
for the rejected Work or portion thereof. Invoices shall include
reasonable supporting materials (not including any source code-type
information, which is to be delivered as part of the Deliverables
set forth in the Work Plan) documenting the Services performed by
Navitel.
7. RIGHTS TO DELIVERABLES
7.1 Work Made For Hire. The Work has been specially ordered and
commissioned by Microsoft. Navitel agrees that the Work is a "work
made for hire" for copyright purposes, with all copyrights in the
Work owned by Microsoft.
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
7.2 Assignment. To the extent that the Work does not qualify as a work
made for hire under applicable law, and to the extent that the Work
includes material subject to copyright, patent, trade secret, or
other proprietary right protection, Navitel ***, including, but not
limited to:
7.2.1 *** that Navitel may possess or acquire in the Work ***,
including all renewals and extensions of such rights that may
be secured under the laws now or hereafter in force and effect
in the United States of America or in any other country or
countries;
7.2.2 *** rights in and to ***, including but not limited to ***
regardless of whether or not legal protection for the Work is
sought;
7.2.3 The right to prepare Derivative Technology with exclusive
rights to authorize others to do the same;
7.2.4 Copies of any documents, magnetically or optically
encoded media, or other materials created by Navitel under
this Agreement; and
7.2.5 The right to xxx for infringements of the Work which may
occur before the date of this Agreement, and to collect and
retain damages from any such infringements.
7.3 Assistance. At Microsoft's expense, Navitel shall execute and
deliver such instruments and take such other action as may be
requested by Microsoft to perfect or protect Microsoft's rights in
the Work and to carry out the assignments set forth in this Section
7.
7.4 Assignment/Waiver of Moral Rights. Navitel hereby irrevocably
transfers and assigns to Microsoft any and all "moral rights" that
Navitel may have in the Work and Derivative Technology thereof.
Navitel also hereby forever waives and agrees never to assert any
and all "moral rights" it may have in the Work and Derivative
Technology, even after termination of the Services.
8. NO OBLIGATION/INDEPENDENT DEVELOPMENT
Notwithstanding any other provision of this Agreement, Microsoft
shall have no obligation to market, sell or otherwise distribute
Hermes, the Hermes Applications or any Work, either alone or in any
Microsoft product. Except as provided in Section 9, nothing in this
Agreement will be construed as restricting Microsoft's ability to
acquire, license, develop, manufacture or distribute for itself, or
have others acquire, license, develop, manufacture or distribute for
such party, similar technology performing the same or similar
functions as the technology contemplated by this Agreement, or to
market and distribute such similar technology in addition to, or in
lieu of, the technology contemplated by this Agreement.
9. CONFIDENTIALITY
9.1 Each party shall protect the other's Confidential Information from
unauthorized dissemination and use with the same degree of care that
such party uses to protect its own like information. Neither party
will use the other's Confidential Information for purposes other
than those necessary to directly further the purposes of this
Agreement. Neither party will disclose to third parties the other's
Confidential Information without the prior written consent of the
other party. Except as expressly provided in this Agreement, no
ownership or license rights are granted in any Confidential
Information.
9.2 Each party acknowledges that monetary damages may not be a
sufficient remedy for unauthorized disclosure of Confidential
Information and that, in the event of such unauthorized disclosure,
the non-breaching party shall be entitled, without waiving any other
rights or remedies, to such injunctive or equitable relief as may be
deemed proper by a court of competent jurisdiction.
9.3 The parties' obligations of confidentiality under this Agreement
shall not be construed to limit either party's right to
independently develop or acquire products without use of the other
party's Confidential Information.
10.WARRANTIES
10.1 Navitel. Navitel warrants and represents that:
10.1.1 It has the full power to enter into this Agreement and
make the assignments and license rights set forth herein;
10.1.2 It has not previously and will not grant any rights to any
third party that are inconsistent with the rights granted to
Microsoft herein;
10.1.3 All Navitel Hermes Technology shall not infringe any
copyright or misappropriate any trade secret held by any third
party;
10.1.4 All Navitel Hermes Technology, as of the Effective Date
shall not, to Navitel's knowledge without any duty to
investigate, infringe any patent held by any third party;
10.1.5 All Work (including without limitation all Deliverables)
is original to Navitel and does not infringe any copyright,
patent, trade secret, or other proprietary right held by any
third party;
10.1.6 All Navitel Hermes Technology and all Work (including
without limitation all Deliverables), has been or will be
created by employees of Navitel within the scope of their
employment and under obligation to assign inventions to
Navitel, or by independent contractors under written
obligations to assign all rights in such Hermes Technology or
Work to Navitel;
10.1.7 Neither Navitel's execution nor performance of this
Agreement will result in a breach of any other agreement or
obligation by which Navitel is bound; and
10.1.8 The Services shall be performed in a professional manner
and shall be of a high grade, nature, and quality.
10.2 Microsoft. Microsoft warrants and represents that:
10.2.1 It has the full power to enter into this Agreement and
make the assignments and license rights set forth herein; and
10.2.2 It has not previously and will not grant any rights to any
third party that are inconsistent with the rights granted to
Navitel herein.
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
11. INDEMNITY
11.1 Indemnity.
11.1.1 Navitel shall, at its expense, defend, indemnify and hold
harmless Microsoft and Microsoft's subsidiaries, affiliates,
directors, officers, employees, agents and independent
contractors from any and all costs, damages, liabilities and
fees reasonably incurred by Microsoft, including but not
limited to fees of attorneys and other professionals, with
respect to any claim or action arising out of or in any way
related to a breach by Navitel of this Agreement, including
without limitation of the warranties and representations set
forth in Section 10 above; provided that: (i) Microsoft
provides Navitel reasonably prompt notice in writing of any
such claim or action and permits Navitel, through counsel
mutually acceptable to Microsoft and Navitel, to answer and
defend such claim or action; (ii) Microsoft provides Navitel
information, assistance and authority, at Navitel's expense and
reasonable request, to help Navitel defend such claim or
action; and (iii) Navitel will not be responsible for any
settlement made by Microsoft without Navitel's written
permission, which permission will not be unreasonably withheld.
11.1.2 Microsoft shall have the right to employ separate counsel
and participate in the defense of any claim or action. Navitel
shall reimburse Microsoft upon demand for any payments made or
losses suffered by it at any time after the date hereof, based
upon the judgment of any court of competent jurisdiction or
pursuant to a bona fide compromise or settlement of claims,
demands, or actions, in respect to any damages related to any
claim or action under this Section 11.
11.1.3 Navitel may not settle any claim or action under this
Section 11 on Microsoft's behalf without first obtaining
Microsoft's written permission, which permission will not be
unreasonably withheld. In the event Microsoft and Navitel
agree to settle a claim or action, Navitel agrees not to
publicize the settlement without first obtaining Microsoft's
written permission, which permission will not be unreasonably
withheld.
11.2 Duty to Correct. Notwithstanding Section 11.1, should the Navitel
Hermes Technology, the Work or any portion thereof be held to
constitute an infringement and use of the Navitel Hermes Technology,
the Work or any portion thereof as contemplated by this Agreement be
enjoined or be threatened to be enjoined, Navitel shall notify
Microsoft and immediately, at Navitel's expense: (i) procure for
Microsoft the right to continue use, sale, and marketing of the
Navitel Hermes Technology, the Work, or portion thereof, as
applicable; or (ii) replace or modify the Navitel Hermes Technology,
the Work, or portion thereof, with a version that is non-infringing,
provided that the replacement or modified version meets the
specifications in the applicable Work Plan to Microsoft's
satisfaction. If (i) or (ii) are not available to Navitel, in
addition to any damages or expenses reimbursed under Section 11.1,
***.
12.TERM AND TERMINATION
12.1 Term. The term of this Agreement shall commence as of the Effective
Date and shall continue until terminated as provided in this
Section 12.
12.2 Termination by Microsoft.
12.2.1 After June of 1999 Microsoft may terminate this Agreement
for any reason by providing Navitel thirty (30) days prior
written notice.
12.2.2 Microsoft shall have the right to cancel any Work Plan,
other than Work Plan A-1, with or without cause by providing
Navitel with written notice of such cancellation. Upon receipt
of such notice, Navitel will discontinue all work thereunder.
Except in cases of termination for cause, Microsoft will pay
for all work performed by Navitel up until the date of receipt
of the cancellation notice. In the event of cancellation upon
request by Microsoft, Navitel agrees to turn over to Microsoft
all work in progress within ten (10) days.
12.3 Termination By Either Party For Cause. Either party may suspend
performance and/or terminate this Agreement and/or any Work Plan,
including Work Plan A-1, immediately upon written notice at any time
if:
12.3.1 The other party is in material breach of any material
warranty, term, condition or covenant of this Agreement and/or
applicable Work Plan, other than those contained in Section 9,
and fails to cure that breach within thirty (30) days after
written notice thereof; or
12.3.2 The other party is in material breach of Section 9.
12.4 Effect of Termination.
12.14.1 In the event of termination or expiration of this
Agreement or any Work Plan for any reason, Sections 1,2, 3, 4,
7, 8, 9, 10, 11, 12, 13 and 14 shall survive termination.
Neither party shall be liable to the other for damages of any
sort resulting solely from terminating this Agreement in
accordance with its terms. Any assignments, licenses or
sublicenses already granted by Navitel or Microsoft under this
Agreement shall not be affected by any termination of this
Agreement and shall remain in full force and effect.
12.14.2 Return of Materials. Upon termination of this Agreement,
Navitel shall return all Microsoft Materials and or Microsoft
Confidential Information in Navitel's possession or under its
control within ten (10) days following the termination date.
Navitel shall take all necessary steps to ensure that
electronic copies of such Microsoft Materials and other
Microsoft Confidential Information are not retained by Navitel
or its employees. Navitel shall provide a declaration signed by
an officer of Navitel attesting that all copies of Microsoft
Materials and Microsoft Confidential Information and related
materials have been returned to Microsoft and/or destroyed.
13. LIMITATION OF LIABILITIES
13.1 NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES, EVEN IF SUCH PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
13.2 THIS PROVISION HAS NO APPLICATION TO SECTIONS 5.6, 9 AND 11.
14. GENERAL
14.1 Notices. All notices and requests in connection with this Agreement
shall be deemed given as of the day they are received either by
messenger, delivery service, or in the United States of America
mails, postage prepaid, certified or registered, return receipt
requested, and addressed as follows:
To Navitel: To Microsoft:
Navitel Communications, Inc. Microsoft Corporation
000 Xxxxxxxxxxx Xxxx, Xxxxx 000 Xxx Xxxxxxxxx Xxx
Xxxxxxx, XX 00000-0000
Xxxxx Xxxx, XX 00000 Attention: Vice President,
Attention: Xxxx Xxxxxx Consumer Appliance Group
Phone: 000-000-0000 Phone: 000-000-0000
Fax: 000-000-0000 Fax: 000-000-0000
Copy to: Copy to:
Xxxxx X. Xxxxxx Law & Corporate Affairs
Dow, Xxxxxx & Xxxxxxxxx, PLLC Fax: (000) 000-0000
0000 Xxx Xxxxxxxxx Xxxxxx, X.X.
Xxxxx 000
Xxxxxxxxxx, X.X. 00000-0000
Fax: 000-000-0000
or to such other address as a party may designate pursuant to this
notice provision.
14.2 Independent Contractors. Navitel is an independent contractor for
Microsoft, and nothing in this Agreement shall be construed as
creating an employer-employee relationship, a partnership, or a
joint venture between the parties.
14.3 Taxes. In the event taxes are required to be withheld on payments
made under this Agreement by any U.S. (state or federal) or foreign
government, the paying party may deduct such taxes from the amount
owed the receiving party and pay them to the appropriate taxing
authority. The paying party shall in turn promptly secure and
deliver to the receiving party an official receipt for any taxes
withheld. The paying party will use reasonable efforts to minimize
such taxes to the extent permissible under applicable law.
14.4 Governing Law. This Agreement shall be governed by the laws of the
State of Washington as though entered into between Washington
residents and to be performed entirely within the State of
Washington, and Navitel consents to jurisdiction and venue in the
state and federal courts sitting in the State of Washington. In any
action or suit to enforce any right or remedy under this Agreement
or to interpret any provision of this Agreement, the prevailing
party shall be entitled to recover its costs, including reasonable
attorneys' fees.
14.5 Assignment. This Agreement shall be binding upon and inure to the
benefit of each party's respective successors and lawful assigns.
Neither party may assign this Agreement, without the prior written
approval of the other party,
14.6 Construction. If for any reason a court of competent jurisdiction
finds any provision of this Agreement, or portion thereof, to be
unenforceable, that provision of the Agreement will be enforced to
the maximum extent permissible so as to effect the intent of the
parties, and the remainder of this Agreement will continue in full
force and effect. Failure by either party to enforce any provision
of this Agreement will not be deemed a waiver of future enforcement
of that or any other provision. This Agreement has been negotiated
by the parties and their respective counsel and will be interpreted
fairly in accordance with its terms and without any strict
construction in favor of or against either party.
14.7 Entire Agreement. This Agreement does not constitute an offer by
Microsoft and it shall not be effective until signed by both
parties. This Agreement constitutes the entire agreement between
the parties with respect to the subject matter hereof and merges and
supersedes all prior and contemporaneous communications (including
without limitation the OEM Development and Testing Agreement between
the parties dated as of August 20, 1996 and the Original Agreement).
It shall not be modified except by a written agreement dated
subsequent to the date of this Agreement and signed on behalf of
Navitel and Microsoft by their respective duly authorized
representatives. This Agreement may be executed by the parties in
counterparts.
IN WITNESS WHEREOF, the parties have entered into this Agreement as of
the Effective Date written above.
MICROSOFT CORPORATION NAVITEL COMMUNICATIONS, INC.
/s/ Xxxxx Xxxxxx /s/ Xxxx Xxxxxx
By (Sign) By (Sign)
Xxxxx Xxxxxx Xxxx Xxxxxx
Name (Print) Name (Print)
SVP COO
Title Title
11/23/98 11/16/98
Date Date
/s/ DMB Legal
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
WORK PLAN A-1
HERMES MILESTONES 4 AND 5 & RELEASE CANDIDATE
Project Description
The overall scope of the project is the development of the Hermes
Technology and related Deliverables for the purpose of enabling
Microsoft's OEMs to create devices running Hermes.
Microsoft will provide overall project direction, feature direction and
on-going input. Microsoft will create functional and behavior
specifications for the features to be developed by providing the feature
list, and providing feedback and direction to Navitel on preliminary
specifications prepared by Navitel.
Work Specifications
The Hermes project follows the milestone development process - the
project schedule is divided into development milestones with associated
testing activity. For each milestone the key features are identified,
specified, implemented, tested and delivered to customers. Each
milestone has an associated set of Deliverables and Services.
Milestone 4 ("M4") - The work currently being completed in Milestone 4,
also known as ***of the Hermes Development Schedule ("***"). The M4
features include the following: ***.
Milestone 5 ("M5") The work currently scheduled to be completed and
delivered in M5 is described in the Hermes Project Development Schedule,
as modified from time to time by Microsoft. The currently scheduled
features for M5 Hermes *** include: *** and Hermes ***.
Milestone 6 ("M6") - Milestone 6 is the work to be scheduled following
the completion of M5 and initial product RTM. The anticipated high
priority features for M6 include ***. Part of the M6 milestone ***.
Services and Deliverables
Planning Deliverables
Project Schedule - Overall project schedule for designing, implementing,
testing, supporting and documenting the Hermes technology and related
deliverables.
Hermes Feature List - The detailed list of software features and
functionality to be implemented in the Hermes software release.
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Hermes Deliverables List - The complete list of all deliverables related
to a specific Hermes release, including specifications, plans, software,
documentation, tests, and other such deliverables as may be agreed upon
by Microsoft and Navitel.
Work Items - The list of work items and tasks for each of the functional
areas required to perform the Services specified by the detailed
Specification, Feature list and Deliverables List. Work items should be
identified such that the granularity is on the order of a person/week, so
that the development schedule can be managed and tracked on a weekly
basis.
Development Schedule - The development schedule for a specific Hermes
release, identifying all the development work items associated required
to implement functionality in the Hermes Feature List. Organized in PERT
form by developer, indicating dependencies, key deliverables and
milestones, updated on a bi-weekly basis. Microsoft shall determine the
major milestones and implementation priority with input from Navitel.
Milestone Post-mortem Report - A roll-up summary of the postmortem
reports from each functional area and summary of postmortem meeting which
shall identify the top 10 process improvements to be implemented in the
subsequent milestones, the top 10 critical issues in each functional
area, the top 10 things that worked well, and any other topics that may
arise during the generation of the Milestone Post-mortem Report or as may
be requested by Microsoft.
Development Deliverables
Project Source Code - For each milestone, the development Deliverables
include the entire source tree necessary to build the project, including
binaries and other components delivered to third parties.
Hermes Adaptation Kit
Hermes Adaptation Kit ("HAK") _The collection of software and documents
delivered to OEMs and other third parties to enable the design,
development and testing of Hermes-compatible hardware designs, software
drivers, applications, hardware peripherals and other related products.
HAK Support Services
Ongoing technical support to third parties developing products with the
HAK.
Test Deliverables
Hermes Test Kit - The *** other test deliverables required to test and
certify the Hermes deliverables.
Test Status Report - Weekly summary of testing status - ***, and other
such information appropriate and as may be requested by Microsoft.
Milestone Test Summary Report - Summary report for each development
milestone indicating ***, and other such information as Microsoft may
request.
Hermes Documentation Deliverables
Hermes Documentation Plan - Overall plan and approach for creating the
Hermes documentation, including user manual, help, error messages and
other user education elements.
Hermes User Manual - The user manual shall be created in accordance with
Microsoft design guidelines and supplied to OEMs for incorporation in to
their user manuals.
Final Specifications and Design Documentation
Hermes Specification - the collection of documents that describe the
requirements, design, specifications, behavior, functionality,
architecture, implementation, schedule, testing and support of the Hermes
release, including software applications, OS and OS extensions and
hardware.
Microsoft Materials
For purposes of this Work Plan, Microsoft Materials shall mean materials
delivered by Microsoft to Navitel, in its discretion, which may include
any or all the following: (i) Windows CE source code, (ii) Windows CE
application source code, (iii) source code for other products within the
Windows family as determined by Microsoft to be necessary or desirable;
(iv) documentation, and (v) other Technology.
Schedule
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Navitel will commence the Services as of the Effective Date and complete
all Services and deliver all Deliverables no later ***. Navitel will
provide Microsoft with the Deliverables according to the following
delivery schedule:
Date Due Deliverable
*** ***
*** ***
*** ***
*** ***
*** ***
*** ***
*** ***
*** ***
The Delivery Schedule is subject to change by agreement by both parties.
Expected Staffing Level Requirements
During the course of this Work Plan, the Navitel team focused on Hermes
is anticipated to include the following:
*** Project Manager / Development Manager
*** OEM Program Managers
***Engineers split between Applications, OS and Hardware
***Test/QA Manager
***Testers/Test Engineers
*** Designer
*** Network Administrator / Build Engineer
The composition of the Navitel development team may change over time
assuming that such change is driven by Microsoft requirements or request
in response to customers. The exact functional division and individual
membership is less important than that the collective team meets the
projected needs of the agreed upon feature list and schedule.
Payment
For the Work completed by Navitel pursuant to this Work Plan A-1,
Microsoft shall pay to Navitel an advance of *** to be applied against
and recouped from future payments due by Microsoft to Navitel (the
"Advance"). The Advance shall be paid
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
by wire transfer within *** days of the Effective Date of this Work Plan.
The Advance shall be offset against payments otherwise due Navitel by
Microsoft under this Work Plan by *** each month for each of April, May
and June of 1999 ("Repayment Months"). In the event Microsoft owes
Navitel less than *** in any Repayment Month, any remainder shall be
carried forward and applied against and recouped from the following
month. In the event Navitel is in receipt of any unearned portion of the
Advance upon termination or expiration of this Work Plan or of the
Agreement, Navitel shall immediately return such unearned portion of the
Advance to Microsoft within *** days of such termination or expiration.
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Notwithstanding Section 6.3 of the Agreement, Navitel shall submit an
invoice within *** days following the last day of each calendar month for
Work completed under this Work Plan. Each invoice shall be sufficiently
detailed to indicate the number of hours worked by each employee on each
Deliverable, tasks completed or in process, and such other detail as
Microsoft may request.
Payment for the Services shall not *** in total, and *** per calendar
month.
Navitel shall be solely responsible for any expenses incurred in the
performance of the Services under this Work Plan, however the following
may be Approved Expenses, subject to Microsoft prior written approval.
MS Requested Travel / Entertainment
Should Microsoft request that Navitel travel for the purposes of
supporting Hermes, including but not limited to OEM site visits,
trade-shows, conferences and sales or marketing meetings. This
should not apply to Navitel executive travel, nor travel related to
maintaining the business relationship.
MS Requested Equipment
Equipment expenditures solely related to Hermes development, such as
D-9000 development boards, Hermes Telephony Cards, servers, D-9000
upgrades, Flash/memory chips, XXXX components, etc. Microsoft should
approve such expenditures in writing or e-mail prior to Navitel
purchase..
THE FOREGOING WORK PLAN A-1 IS AGREED TO AND ACCEPTED BY THE PARTIES:
MICROSOFT CORPORATION NAVITEL COMMUNICATIONS, INC.
/s/Xxxxx Xxxxxx /s/ Xxxx Xxxxxx
By (Sign) By (Sign)
Xxxxx Xxxxxx Xxxx Xxxxxx
Name (Print) Name (Print)
SVP COO
Title Title
11/23/98 Nov 16 1998
Date Date
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
EXHIBIT B
MAINTENANCE PROBLEM SEVERITY AND RESOLUTIONS
Severity Criteria Time Limit
1 Critical: Problem which prevents or seriously ***
impairs the performance of substantially all major
functions.
2 Severe Impact: Problem which prevents or ***
seriously impairs the performance of a major function.
3 Degraded Operation: Problem which disables or ***
seriously impairs the performance of a minor function.
4 Trivial: Problem which disables or impairs the ***
performance of a minor function.
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
EXHIBIT C
PRE-EXISTING TECHNOLOGY
Navitel ***
Navitel ***
Navitel ***:
***
***
***
***
***
***
Navitel ***.
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
EXHIBIT D
PERSONNEL RATE SCHEDULE
Navitel will charge Microsoft at the applicable rate specified below for
each hour of services rendered under a Work Plan by the associated Job
Title using assigned Microsoft Internal Reference Numbers, if any.
Total Staffing Levels
Job Title Hourly Rate
Engineering Director ***
Development Lead ***
Apps Engineer ***
Apps Engineer ***
Systems Engineer ***
Project Manager ***
Program Manager ***
QA Manager ***
QA Lead ***
QA Engineer ***
QA Tester ***
Project Support ***
