CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
MEMORANDUM OF UNDERSTANDING
JOINT PRODUCT DEVELOPMENT AND MARKETING
This Memorandum of Understanding ("this MOU") is entered into this 2nd
day of September 1999 ("Effective Date"), by and between UTStarcom, Inc., a
corporation having its principal place of business at 0000 Xxxxxx Xxx Xxxxxxx,
Xxxx 000 Xxxxxxx, Xxxxxxxxxx 00000, X.X.X. ("Developer"), and Matsushita
Communication Industrial Co., Ltd., a corporation having its principal place of
business at 0-0-0, Xxxxxxxxxx-xxxxxxx, Xxxxxx-xx, Xxxxxxxx, 000-0000, Xxxxx,
acting through its Communication Systems Division ("Co-developer").
WITNESSETH:
WHEREAS, Co-developer desires to have Developer provide engineering
expertise in connection with the joint development of a product which combines
the functionality of a PBX and a LAN, referred to as an Internet Protocol
Telephony Switch ("IPTS"), which is developed based on the High Level
Requirement for IPTS ("HLR") provided by Co-developer to Developer, and which
Co-developer intends to consider for commercial marketing; and
WHEREAS, Co-developer is also considering a licensing arrangement under
certain intellectual property rights of Developer in connection with the IPTS;
and
WHEREAS, Developer desires to provide its engineering expertise, and to
grant a license under its intellectual property rights to Co-developer; and
WHEREAS, Co-developer desires to provide its proprietary information
with respect to specifications and market information for its own PBX products;
and
WHEREAS, the parties have entered into a mutual Confidential Disclosure
Agreement dated July 5, 1999 ("Confidential Agreement") to exchange the
confidential information owned by each party;
NOW, THEREFORE, Co-developer and Developer hereby express their
intention to agree as follows:
1. SERVICES AND PRODUCT DEVELOPMENT; INTELLECTUAL PROPERTY RIGHTS;
CONFIDENTIALITY
a. ENGINEERING SERVICES. In consideration of the fees agreed to in
Section 2[a] of this MOU, Developer will use its best efforts to provide to
Co-developer its engineering services related to development of the IPTS
described in Exhibit A of this MOU, which is incorporated into this MOU by
reference. Developer's engineering services shall be provided to Co-developer
pursuant to Exhibit B (Schedule of Deliverables), Exhibit C (Preliminary Release
Schedule) and Exhibit D (MCI Business Regulations: Regulations on New Product
Development, Rec.#RT-0402 Version 5), which are also incorporated into this MOU
by reference. Developer's representative[s] shall confer with Co-developer as
requested to discuss and report on the progress of the development work
described in Exhibits B, C and D.
b. INTELLECTUAL PROPERTY RIGHTS. Co-developer agrees that Developer
retains full and exclusive rights and ownership in any and all letters patent,
inventions, software, firmware, algorithms, know-how, trademarks, copyrights and
trade secrets described in Exhibit E of this MOU, any Confidential Information
(as defined in the Confidential Agreement), and any other proprietary rights
which Developer currently possesses (and which are described in Exhibit E
hereto), develops independently in the course of providing engineering services
pursuant to this MOU, or is otherwise entitled to by law. In the event any
improvement, enhancement, addition or
other modification to the IPTS is invented, created or perceived jointly by the
parties during the term of this MOU ("Joint Property"), such Joint Property
shall be jointly owned by the parties hereto. Any application for protection of
Joint Property, and any associated costs for such protection, shall be mutually
agreed upon by the parties in the form of a separate written agreement in
advance of attempt to protect the Joint Property. The parties hereto may use
Joint Property for any purpose without the consent of the other party and
without any compensation or accounting to the other party.
c. CONFIDENTIALITY. The Confidential Agreement is incorporated herein
as Exhibit F, and shall continue in full force and effect with respect to the
subject matter of this MOU during the term of this MOU, notwithstanding any
provision of the Confidential Agreement to the contrary.
2. FEES
a. NON-RECURRING ENGINEERING FEES - AMOUNTS AND DATES. Co-developer
will pay Developer fees upon the events and the deliveries defined in Exhibit B
of this MOU, and in the amounts set forth below:
EVENTS AND DELIVERIES PAYMENT
--------------------- -------
Co-developer and Developer execute this MOU
Developer delivers Preliminary Product Proposal defined in
Exhibit B to Co-developer - by September 2,1999 [*]
Developer delivers Design Specification defined in Exhibit B
to Co-developer - by October 15, 1999 [*]
Developer delivers Release 0.5 System defined in Exhibit B
to Co-developer - by December 17, 1999 [*]
3. FUTURE EXECUTION OF FORMAL CONTRACT
If the parties mutually agree that the development of the IPTS is both
technically feasible and commercially practicable, the parties may execute a
formal contract for the commercial development of the IPTS, which would be
executed by the parties contingent upon the completion of the functional
specification by no later than January 31,1999. The formal contract provisions
would address (but not be limited to) the following items: product deliverables;
product development schedule; payment terms; licensing of intellectual property
rights; exclusive or non-exclusive marketing and distribution rights. The
parties understand and agree that (a) Section 3 hereof is intended solely as an
expression of the parties' potential intent to enter into a future agreement
under the conditions and as to the subject matter set forth in this Section 3;
and (b) such future agreement, if any, shall be reduced to a written contract
between the parties by no later than January 31, 2000. Notwithstanding the
foregoing, neither party is obligated by virtue of this Section 3 to enter into
or negotiate towards any agreement whatsoever.
4. TERM, TERMINATION AND SURVIVAL
a. TERM. This MOU shall be effective as of the Effective Date, and
shall be remain in force until January 31, 2000.
b. TERMINATION. Either party may terminate this MOU at any time by
giving the other party 60 days prior written notice.
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
c. SURVIVAL. The Section 1 and this 4[c] will survive any expiration
or termination of this MOU
5. EXPORT ADMINISTRATION
Each party will comply with any applicable export laws, regulations or
other restrains of any countries, including but not limited to the U.S.A. and
Japan.
6. GOVERNING LAW
The validity, construction and performance of this MOU shall be
governed by substantive laws of State of New York.
7. INTEGRATION
This MOU sets forth the entire agreement and understanding between the
parties and supersedes all prior agreements, proposals, communications and
discussions between the parties, whether written or oral, relating to the
subject matter hereof.
8. DISPUTE RESOLUTION
The parties will attempt to settle amicably any dispute that arises in
connection with this MOU. If such dispute cannot so settled within 60 days of
its occurrence, either party may avail itself of any applicable remedies.
IN WITNESS WHEREOF, the parties have, by their duly authorized
representatives to the parties, executed this MOU on the date first above
written.
AGREED:
DEVELOPER: CO-DEVELOPER:
/s/ Hong Xxxxx Xx /s/ Y. Katsura
------------------------ -------------------------
Signature Signature
HONG XXXXX XXXXX KATSURA
------------------------ -------------------------
Name Name
PRESIDENT DIRECTOR
------------------------ -------------------------
Title Title
Exhibit A: IPTS Preliminary Product Proposal
Exhibit B: Schedule of Deliverables
Exhibit C: Preliminary Release Schedule
Exhibit D: MCI Business Regulations on New Product
Exhibit E: List of Developer's IPR related to the IPTS
Exhibit F: Confidential Disclosure Agreement
Exhibits A-E
[*]
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
EXHIBIT F
Confidential Agreement
(MUTUAL CONFIDENTIAL DISCLOSURE AGREEMENT)
MUTUAL CONFIDENTIAL DISCLOSURE AGREEMENT
This Agreement made and entered into by and between
UTStarcom, Inc., a corporation having its principal place of business at 0000
Xxxxxx Xxx Xxxxxxx, Xxxxx 000 Xxxxxxx, Xxxxxxxxxx 00000, U.S.A., (hereinafter
called "UTS"), and
Panasonic Telecommunication Systems Company, Division of Matsushita Electric
Corporation of America, a Delaware, USA corporation, having a place of business
at Two Panasonic Way, Secaucus, New Jersey 07094, U.S.A, (hereinafter called
"PTSC"), and
Panasonic Information and Networking Technologies Laboratory, Laboratory of
Panasonic Technologies, Inc., a Delaware, USA corporation, having a place of
business at Xxx Xxxxxxxx Xxx, Xxxxxxxxx, Xxx Xxxxxx 00000, U.S.A., (hereinafter
called "PINTL"), and
Matsushita Communication Industrial Corporation of U.S.A., a US corporation
having its place of business at 000 Xxxxxxx 00 Xxxxx Xxxxxxxxx Xxxx, Xxxxxxx
00000, U.S.A, acting through its Systems Department (hereinafter called
"MCUSA"), and
Matsushita Communication Industrial Co., Ltd., a Japanese corporation, having
its place of business at 0-0-0, Xxxxxxxxxx-xxxxxxx, Xxxxxx-xx, Xxxxxxxx,
000-0000, Xxxxx, acting through its Communication Systems Division (hereinafter
called "MCI").
WITNESSETH
1. Any term listed in Attachment 1, as used herein, shall have the meaning set
forth therein. In addition, PTSC, PINTL, MCUSA and MCI shall be referred to
collectively herein as the "Matsushita Parties".
2. This Agreement shall be applicable to Information disclosed by any Of the
Matsushita parties to UTS or by UTS to any of the Matsushita parties party
during the Disclosure Period.
3. In order to be treated in accordance with the terms and conditions of this
Agreement,
(a) the Information shall be disclosed in tangible form conspicuously
labeled by the disclosing party as "Confidential" or "Proprietary", or
(b) if the Information is disclosed orally, through demonstration or in
other intangible form, the disclosing party must specifically designate
it as "Confidential" or "Proprietary" at the time of such disclosure
and confirm it in writing conspicuously labeled as "Confidential" or
"Proprietary" to be received by the receiving party within thirty
(30) days following such disclosure.
Any Information received or transmitted electronically shall be deemed
disclosed in tangible form.
4. During the Confidentiality Period, each receiving party agrees to extend
the following treatment ("Confidential Treatment") to the Information of
each disclosing party:
(a) to use the same reasonable care in keeping confidential the Information
of the disclosing party as it uses for its own confidential information
of a similar nature (such reasonable care herein referred to as
"Protective Efforts"), and
(b) to use the Information only for the Purpose, except as the disclosing
party may otherwise agree in writing.
A receiving party shall not be liable for inadvertent disclosure of the
Information of a disclosing party, provided it has made Protective Efforts
and, upon discovery of any such inadvertent disclosure of the Information
of the disclosing party, the receiving party promptly advises the
disclosing party of the inadvertent disclosure and endeavors to prevent any
further inadvertent disclosure. The receiving party shall not be liable for
unauthorized disclosure or use by persons who are or have been its
employees unless the receiving party fails to make Protective Efforts.
5. Confidential Treatment shall not be extended to Information of a
disclosing party that:
(a) was in the public domain at the time it was disclosed or becomes
part of the public domain after disclosure, including, without
limitation, disclosure in a U.S. or foreign patent or printed
publication, or inherent disclosure through the unrestricted use,
lease, sale or other disposal of products embodying the same; or
(b) was known to the receiving party at the time of its disclosure or
becomes known to it
2
from a party other than disclosing party who has the apparent right to
transfer or disclose such Information; or
(c) is independently developed by the receiving party without reliance on
the Information of the disclosing party; or
(d) is disclosed by the disclosing party to a third party without
restrictions on such third party's rights to disclose or use the same;
or
(e) is approved for release upon the disclosing party's prior written
consent; or
(f) is disclosed by the receiving party pursuant to judicial order,
requirement of a governmental agency or by operation of law, provided
that the receiving party informs the disclosing party within thirty
(30) days after receiving notice of its obligation to make such
disclosure, and takes reasonable steps to limit the scope of such
disclosure; or
(g) is disclosed by the disclosing party to the receiving party after
written notification by the receiving party that it will not accept any
further Information in confidence.
6. This Agreement shall not be construed to bind or impose obligations upon
any divisions and/or business units of MCI, Matsushita Electric Corporation
of America, MCUSA or Panasonic Technologies, Inc., or their parent
companies, subsidiaries and/or affiliated companies other than the
above-mentioned divisions, except for any of such divisions and/or business
units as receive disclosure of the Information.
7. Each disclosing party understands that each receiving party may currently
or in the future be developing internally, or receiving from other parties,
information that may be similar to Information of the disclosing party.
Accordingly, neither this Agreement nor receipt of Information hereunder
shall limit a receiving party's development and marketing of concepts,
techniques, products or systems similar to or competing with the
Information of the disclosing party, nor will this Agreement or receipt of
Information hereunder prevent a receiving party from undertaking similar
efforts or discussion with any third parties. Nothing in this paragraph
shall be construed to diminish in any way the obligations of the parties
set forth in paragraph 4 hereof.
8. It is understood that the receipt of Information under this Agreement shall
not create any obligation in any way limiting or restricting the
dispatching, assignment and/or
3
reassignment of employees of the receiving party.
9. Nothing contained in this Agreement shall be construed as
(a) obliging or entitling any party to furnish to or receive from any
other party any goods or services that may be referenced herein;
or
(b) an agreement or commitment by any party to enter into further
business relationships including, but not limited to, development,
purchasing or licensing; or
(c) granting or conferring expressly, implicitly, or otherwise, any
rights by license or otherwise for any invention, discovery or
improvement made, conceived, or acquired prior to or after the
date of this Agreement; or
(d) granting any license, express or implied, in the Information to
any receiving party other than to use the Information in the
manner and to the extent authorized by this Agreement.
10. Each party will act as an independent contractor and not as an agent or
employee of any other party, and no party will have the authority to
bind any other party. This Agreement will not create a joint venture,
partnership or other business relationship or entity of any kind, or an
obligation or commitment to form such relationship or entity.
11. Export Control
(a) The respective disclosing party shall be responsible for obtaining
any export license required under applicable laws or regulations
with respect to the export to MCI of any Information of such
disclosing party. MCI will provide such disclosing party with
reasonably necessary cooperation for obtaining such export
license.
(b) In the event that a Japanese governmental authorization is
required for the disclosure of MCI's Information under this
Agreement, MCI will not disclose such Information until MCI
obtains such authorization.
12. This Agreement shall be governed by and construed in accordance with
the laws of Japan irrespective of its conflict-of-laws rules.
13. This Agreement represents the entire understanding among the parties
with respect to the Information, and no waiver, alteration, or
modification of any of the provisions hereof
4
shall be binding on the parties unless made in writing and signed by the
duly authorized representatives of the parties. This Agreement and its
rights and obligations may not be assigned or transferred by any party
without the prior written consent of the other parties. This Agreement
shall be binding on the parties, their successors and assigns.
IN WITNESS WHEREOF, the parties have, by their duly authorized representatives,
executed this Agreement as of the date shown below.
MCI: UTS:
Matsushita Communication Industrial UTStarcom, Inc.
Co., Ltd., acting through its
Communication System Division
BY: BY:
-------------------------------- -------------------------
NAME: NAME:
------------------------------ -----------------------
TITLE: TITLE:
----------------------------- ----------------------
DATE: DATE:
------------------------------ -----------------------
PTSC: PINTL:
Panasonic Telecommunication Systems Panasonic Information and
Company, Division of Matsushita Electric Networking Technologies
Corporation of America Laboratory, Laboratory of
Panasonic Technologies, Inc.
BY: BY:
-------------------------------- -------------------------
NAME: NAME:
------------------------------ -----------------------
TITLE: TITLE:
----------------------------- ----------------------
DATE: DATE:
------------------------------ -----------------------
MCUSA:
5
Matsushita Communication Industrial
Corporation of America
acting through its Systems Department
BY: BY:
-------------------------------- -------------------------
NAME: NAME:
------------------------------ -----------------------
TITLE: TITLE:
----------------------------- ----------------------
DATE: DATE:
------------------------------ -----------------------
6
Attachment 1
Definitions
1. "Information", to the extent disclosed by UTS, means information regarding
UTS's capability to participate in the development of a next-generation
PBX system, disclosed in accordance with Article 3. "Information", to the
extent disclosed by any of the Matsushita Parties, means information
regarding the marketing and functional requirements for a PBX system and
any business plan, forecasts, customer information or similar information
relating to PBX systems.
2. "Purpose" means the evaluation of UTS's capability to participate in the
development of a next-generation PBX system.
3. "Disclosure Period" means July 5, 1999 through October 4, 1999.
4. "Confidentiality Period" means a period of three years following the end
of the Disclosure Period, during which the parties treat the Information
in accordance with the terms and conditions of this Agreement.
7
