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EXHIBIT NO. 10(b)
DEVELOPMENT AND MANUFACTURING LICENSE AGREEMENT
This Development and Manufacturing License Agreement (the "Agreement")
is made effective October 27, 1997 (the "Effective Date") by and between Sun
Microsystems, Inc., a Delaware corporation with its principal offices at 000 Xxx
Xxxxxxx Xxxx, Xxxx Xxxx, Xxxxxxxxxx 00000, by and through its Sun
Microelectronics division ("SME"), and Pinnacle Data Systems, Inc. a Ohio
corporation with its principal offices at 0000 Xxxxxx Xxxx, Xxxxxxxx, Xxxx 00000
("Pinnacle").
A. SME has developed and holds rights to a schematic design for a PCI card with
audio and ethernet functionality (the "PCI Card"), and certain "Open Boot PROM"
software for use with the PCI Card (the "OBP Software"): and
B. Pinnacle desire to develop, manufacture and sell a PCI Card which is based on
the SME schematic design and incorporates the OBP Software under license from
SME to customers approved in advance by SME; and
C. SME desires to grant limited license rights to Pinnacle for such purposes on
the terms and subject to the conditions set forth in this Agreement.
Now, therefore, in consideration of the mutual covenants and conditions
set forth below, the parties hereto agree as follows:
1. DEFINITIONS.
1.1 "Affiliate" means a business entity or entities controlled by,
under common control with, or controlling a party to this
Agreement.
1.2 "Approved Customer" means the parties to which Pinnacle is
authorized to sell the PCI Card, as listed in EXHIBIT D. SME
may change the list of Approved Customers during the term of
this Agreement in its business discretion upon written notice
to Pinnacle.
1.3 "Binary Code" means machine-readable, executable code of a
computer program.
1.4 "Confidential Information" means (i) all technical information
which SME discloses to Pinnacle under this Agreement, (ii)
that technical information of Pinnacle or business information
of either party which a party discloses to the other pursuant
to this Agreement which is designated as "confidential" or
"proprietary", or with words of similar meaning, in writing by
the disclosing party, or if disclosed verbally, designated as
"confidential" or "proprietary", or with words of similar
meaning, at the time of disclosure, (iii) any Source Code
provided under this Agreement, and (iv) the terms and
conditions of this Agreement.
1.5 "Derivative Technology" means the information, hardware
designs, software, and products derived from the Licensed
Technology by Pinnacle, including the PCI Card and all
necessary schematics, design database files, and other
information necessary to manufacture the PCI Card, and the all
derivative versions of the OBP Software in both Source Code
and Binary Code forms.
1.6 "Designated Equipment" means the computer equipment owned or
controlled by Pinnacle and specified in the Development Plan.
1.7 "Designated Site" means the business location controlled by
Pinnacle and identified in the Development Plan where Pinnacle
will use the Licensed Technology.
1.8 "Development Plan" means the milestones, deliverables,
schedule and other requirements for the development of PCI
Card by Pinnacle under this Agreement, as set forth in EXHIBIT
B.
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1.9 "Error Corrections" means changes or additions to the
Derivative Technology made for the purpose of: (i) complying
with the acceptance criteria for the PCI Card specified by
SME; or (ii) eliminate or avoid the occurrence or effect of
defect or error in the PCI Card.
1.10 "Intellectual Property Rights" means all intellectual property
rights worldwide (but specifically excluding trademarks,
service marks, trade dress, trade names, and design patent
rights) under statutory or common law or by contract and
whether or not perfected, including all (i) patent rights;
(ii) rights associated with works of authorship including
copyrights and mask work rights; (iii) rights relating to the
protection of trade secrets and confidential information; (iv)
any right analogous to those set forth herein and any other
proprietary rights relating to intangible property, now
existing, or hereafter filed, issued or acquired.
1.11 "Licensed Technology" means the schematic design for the PCI
Card, the OBP Software in Source Code form, and all other SME
Deliverables and Confidential Information of SME provided to
Pinnacle for the purposes of this Agreement.
1.12 "Pinnacle Deliverables" means the items to be delivered to SME
by Pinnacle for the purposes of this Agreement, as specified
in the Development Plan.
1.13 "Product Documentation" means any written materials developed
by Pinnacle for distribution with the PCI Card to Approved
Customers.
1.14 "Source Code" means code of a computer program that is not
executable by a computer system directly but must be converted
into machine language by compilers, assemblers, or
interpreters.
1.15 "SME Deliverables" means the items to be delivered to Pinnacle
by SME for the purposes of this Agreement, as specified in
Exhibit A.
2. DEVELOPMENT AND PRODUCT ORDERS.
2.1 DELIVERY OF SME DELIVERABLES. SME will deliver to Pinnacle one
(1) copy of each of the SME Deliverables within seven (7) days
of the Effective Date, unless a different date is specified in
Exhibit A for any individual items. SME shall deliver the
Licensed Technology to a common carrier, F.O.B. SME's
facilities. Pinnacle assumes all risk of loss upon SME's
transfer of the SME deliverables to a common carrier.
2.2 PINNACLE DEVELOPMENT. In consideration for the rights and
licenses granted to Pinnacle by SME under this Agreement,
Pinnacle agrees to design and develop the PCI Card according
to the Development Plan, and to deliver any Pinnacle
Deliverables to SME or its Approved Customers as provided by
the Development Plan.
2.3 CHANGES ORDERS. If SME desires to change the design of the PCI
Card or the Development Plan, SME will submit a written change
order to Pinnacle which includes a description of the
requested changes. Pinnacle will review the change order to
determine the feasibility of the proposed changes, and will
inform SME as to whether it accepts the change order within
five (5) business days of receipt. The change order will be
considered accepted when an authorized representative of
Pinnacle has executed the change order and delivered it to SME
in manner consistent with Section 13.1.
2.4 ORDERS FROM APPROVED CUSTOMERS, PRICE LIMITS. After completion
of the design and development of the PCI Card, Pinnacle agrees
to accept orders for the manufactured PCI Card from Approved
Customers, and to deliver the PCI Card according to
commercially reasonable terms. Pinnacle agrees that the prices
it quotes and charges for the PCI Card will be subject to the
limitations set forth in EXHIBIT D.
2.5 OEM ORDERS. SME will have the right to place orders for the
PCI Card with Pinnacle acting as an original equipment
manufacturer ("OEM") with the PCI Card product to bear an SME
product name.
3. OWNERSHIP.
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3.1 LICENSED TECHNOLOGY. Pinnacle acknowledges and agrees that SME
is and will remain the sole and exclusive owner of all right,
title and interest in the Licensed Technology and all
associated Intellectual Property Rights, and that Pinnacle
acquires only those rights in the Licensed Technology
specifically granted under this Agreement.
3.2 DERIVATIVE TECHNOLOGY. Pinnacle acknowledges and agrees that
SME will acquire ownership of all right, title and interest in
the Derivative Technology developed during the term of this
Agreement, whether developed independently by one of the
parties or jointly by SME and Pinnacle, and that Pinnacle
acquires only the rights to develop, use, and otherwise
exploit the Derivative Technology specifically granted under
this Agreement.
3.3 FURTHER ASSURANCES. Pinnacle will cooperate with SME and take
reasonable actions and execute necessary agreements,
instruments, and documents to perfect SME's ownership interest
in accordance with this Section, including, without
limitation, the execution of necessary and appropriate
instruments of assignment.
4. GRANT OF LICENSES.
4.1 LICENSED TECHNOLOGY. For Licensed Technology other than the
OBP Software, SME hereby grants Pinnacle a non-exclusive,
non-transferable right and license under SME's Intellectual
Property Rights in the Licensed Technology for the term of
this Agreement to (i) use, copy and modify the Licensed
Technology at the Designated Site for the purposes of
designing, developing, and manufacturing the PCI Card and
Derivative Technology; (ii) sell the PCI Card to Approved
Customers; and (iii) use the Licensed Technology to provide
support to Approved Customers.
4.2 OBP SOFTWARE. SME hereby grants Pinnacle a non-exclusive,
non-transferable right and license under SME's Intellectual
Property Rights in the Licensed Technology to (i) use, copy
and modify the OBP Software in Source Code form on the
Designated Equipment only for use with the PCI Card; (ii)
compile the OBP Software in Source Code form on the Designated
Equipment, and make and incorporate copies of the OBP Software
in Binary Code form only into static memory of the PCI Card;
(iii) distribute the OBP Software in Binary Code form only,
and only as incorporated into static memory of the PCI Card
for sale to Approved Customers; and (iv) use the OBP Software
for purposes of providing support to Approved Customers. In
the event that, and only for so long as, the Designated
Equipment is not operative, Pinnacle may transfer to and use
the Licensed Software on back-up equipment at the Designated
Site, provided Pinnacle promptly informs SME of such transfer
in writing which identifies such other equipment.
4.3 PRODUCT DOCUMENTATION. SME grants to Pinnacle a nonexclusive,
nontransferable right and license under SME's Intellectual
Property Rights in the Licensed Technology to develop, copy,
and distribute Product Documentation with the PCI Card to
Approved Customers.
4.4 CONTROL OF DERIVATIVE TECHNOLOGY. Notwithstanding SME's
ownership of the Derivative Technology, during the term of
this Agreement as between the parties Pinnacle will have the
right to maintain exclusive control and possession of the
Derivative Technology.
5. LIMITATIONS AND OBLIGATIONS.
5.1 NO OTHER LICENSES. SME grants no rights or licenses to
Pinnacle in the Licensed Technology other than those
specifically stated in Section 3, and any use of the Licensed
Technology beyond the scope of such license grant shall
constitute a material breach of this Agreement.
5.2 PROPRIETARY NOTICES, PRODUCT NAMES. Pinnacle shall not remove
any proprietary notices of SME on any part of the Licensed
Technology without the prior, written permission of SME. When
the PCI Card is sold to Approved Customers, other than
pursuant to an OEM order placed by SME, the PCI Card will
carry a Pinnacle product name and any proprietary notices
Pinnacle deems
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necessary to protect its Intellectual Property Rights. When
the PCI Card is sold to SME on a OEM basis, the PCI Card will
also include such proprietary notices of SME as SME deems
necessary to protect its Intellectual Property Rights.
5.3 USE OF THIRD PARTIES. Pinnacle may retain third parties to
furnish services to it in connection with its use of Licensed
Technology, development of Derivative Technology, and design
and manufacture of the PCI Card only if reasonably required
for the purposes of this Agreement. Third parties who perform
work for Pinnacle must execute appropriate documents with
Pinnacle effecting assignments of all rights with respect to
such work to Pinnacle, and undertaking confidentiality
obligations with respect to the Licensed Technology which are
no less protective of SME's rights than this Agreement. SME
may, upon its request, review the form of such agreements
proposed for use by Pinnacle prior to use.
5.4 MANUFACTURING LIMITATIONS. If Pinnacle uses an Affiliate or
third party manufacturer for the PCI Card, Pinnacle may grant
a sublicense to such party to use only that Licensed
Technology and Derivative Technology as is necessary to enable
the manufacture of the PCI Card, on terms and conditions no
less protective of SME's rights than this Agreement. The
Affiliate or third party manufacturer must agree to return the
Licensed Technology and Derivative Technology to Pinnacle upon
termination of this Agreement or termination of production of
the PCI Card. Pinnacle may not provide the OBP software in
Source Code form to any such Affiliate or third party
manufacturer for any purpose.
6. SUPPORT.
6.1 SME SUPPORT. SME will be under no express obligation to
support, enhance, or correct deficiencies in the Licensed
Technology. SME may provide Pinnacle with technical support in
its sole business discretion to facilitate transfer of the SME
Deliverables to Pinnacle, and to clarify Pinnacle's
understanding of the Licensed Technology for purposes of
designing and manufacturing the PCI Card, and modifying the
OBP Software in Source Code form. SME reserves the right to
charge consulting and engineering services fees according to
its standard rates if SME is required to commit significant
resources to supporting Pinnacle. SME will provide Pinnacle
with advance notice of its intention to charge fees for
services before providing any such services, and the parties
will execute a separate, written consulting and engineering
services agreement stating their respective rights and
obligations with respect to the services.
6.2 SUPPORT FOR APPROVED CUSTOMERS. Pinnacle agrees to provide
technical support, including Error Corrections, directly to
Approved Customers subject to commercially reasonable terms.
7. PAYMENTS AND TAXES.
Subject to SME's rights under Section 6, each party will bear any and
all costs and expenses it incurs for the purposes of this Agreement,
and neither party will have a right to receive license fees or other
compensation for the deliverables delivered and rights granted under
this Agreement.
8. TRADEMARKS, MARKETING ATTRIBUTION.
8.1 SUN TRADEMARKS. "Sun Trademarks" means all names, marks,
logos. designs, trade dress, and other brand designations used
by Sun Microsystems, Inc. ("Sun") and SME in connection with
the SME Technology and Sun's products. Pinnacle may refer to
SME Technology and Sun's products by the associated Sun
Trademarks, provided that such reference is not misleading and
complies with the then current Sun Trademark and Logo
Policies. Pinnacle shall not remove, alter, or add to any Sun
Trademarks, nor shall it co-logo Sun's products. Specifically,
Pinnacle shall not use the names "Sun," Solaris," "Java," or
any other Sun Trademark in the name of any Developed Product,
e.g., Developed Products may not be named 'SunXYZ" or
"JavaXYZ" or "XYZ for Solaris."
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Pinnacle is granted no right, title, or license to, or
interest in, any Sun Trademarks. Pinnacle acknowledges Sun's
rights in Sun Trademarks and agrees that any use of Sun
Trademarks by Pinnacle shall inure to the sole benefit of Sun.
Pinnacle agrees not to (a) challenge Sun's ownership or use
of, (b) register, or (c) infringe any Sun Trademarks, nor
shall Pinnacle incorporate any Sun Trademarks into Pinnacle's
trademarks, service marks, company names, Internet addresses,
domain names, or any other similar designations. If Pinnacle
acquires any rights in any Sun Trademarks by operation of law
or otherwise, it will immediately at no expense to Sun assign
such rights to Sun along with any associated goodwill,
applications, and/or registrations.
8.2 ATTRIBUTION FOR PINNACLE MARKETING. Pinnacle may use only the
following, in its entirety, in connection with the marketing
of the PCI Card, where "XYZ" is the name of the PCI Card: "XYZ
is derived from designs and incorporates software technology
licensed from Sun Microsystems, Inc."
9. TERM AND TERMINATION.
9.1 TERM. This Agreement shall commence as of the Effective Date
and expire three (3) years thereafter; provided, that this
Agreement shall automatically renew for successive one (1)
year periods unless either party notifies the other of its
desire that this Agreement expire more than sixty (60) days
before the anniversary of the Effective Date, whereupon this
Agreement shall expire upon such date. Upon expiration of this
Agreement, Pinnacle shall immediately discontinue use of the
Licensed Technology and shall promptly return all Licensed
Technology and Derivative Technology in Pinnacle's possession
to SME. Notwithstanding the foregoing, Pinnacle may retain
only such copies of Licensed Technology and Derivative
Technology as are necessary to support the Approved Customers,
provided that (i) Pinnacle agrees to treat such Licensed
Technology and Derivative Technology in accordance with the
terms of this Agreement including, without limitation, the
confidentiality terms, and (ii) Pinnacle agrees to promptly
return such Licensed Technology and Derivative Technology to
SME when it is no longer necessary to support the Approved
Customers. In addition, Pinnacle shall permanently destroy or
disable all electronically reproducible copies of the Licensed
Technology and Derivative Technology, including any electronic
files or documents containing any portion of the Licensed
Technology or Derivative Technology.
9.2 TERMINATION. This Agreement may be terminated as follows:
9.2.1 By either party upon sixty (60) days' written notice
specifying breach if the other party fails to comply with any
of the material terms or conditions of this Agreement unless
within the period of notice, all specified breaches have been
remedied.
9.2.2 By SME upon ten (10) days' written notice, it Pinnacle
violates the license or confidentiality terms of this
Agreement.
9.3 EFFECT OF TERMINATION- PINNACLE'S BREACH. In the event of
termination of this Agreement due to a breach by Pinnacle, the
rights and licenses granted by SME to Pinnacle will
immediately terminate and Pinnacle will have no further right
to the Licensed Technology or the Derivative Technology.
Within ten (10) days after termination, Pinnacle must return
all copies of the Licensed Technology and Derivative
Technology in Pinnacle's possession or control. In addition,
Pinnacle must permanently destroy or disable all
electronically reproducible copies of the Licensed Technology
and Derivative Technology and any electronic files or
documents containing any portion of the Licensed Technology or
Derivative Technology. Upon request by SME, a duly authorized
officer of Pinnacle must certify to SME that Pinnacle has
destroyed or returned all copies of the Licensed Technology
and Derivative Technology as required under this Subsection.
9.4 CHANGE OF CONTROL. In the event of the direct or indirect
taking over or assumption of control of Pinnacle or of
substantially all of its assets by any government,
governmental agency or other third party. SME may terminate
this Agreement upon written notice to Pinnacle.
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9.5 LIMITATION OF LIABILITY. Neither party shall have the right to
recover damages or indemnification of any nature, whether by
way of lost profits, expenditures for promotion, payment for
goodwill or otherwise made in connection with the business
contemplated by this Agreement, due to the expiration or
permitted or lawful termination of this Agreement. EACH PARTY
WAIVES AND RELEASES THE OTHER FROM ANY CLAIM TO COMPENSATION
OR IDEMNITY FOR TERMINATION OF THE BUSINESS RELATIONSHIP
UNLESS SUCH TERMINATION IS IN BREACH OF THIS AGREEMENT.
9.6 SURVIVAL. Rights and obligations under this Agreement which by
their nature should survive, will remain in effect after
termination or expiration hereof.
10. CONFIDENTIAL INFORMATION.
10.1 OBLIGATION. Except as provided in this Agreement, a receiving
party may not use, make, have made, distribute or disclose any
copies of Confidential Information it receives from the
disclosing party pursuant to this Agreement, in whole or in
part, without the prior written authorization of such
disclosing party. Each party shall hold in confidence any
Confidential Information received from the other pursuant to
this Agreement and shall protect the confidentiality thereof
with no less than reasonable care, for the term of this
Agreement, but in no event less than five (5) years from the
date of receipt of the Confidential Information, except for
Source Code which shall be protected in perpetuity.
10.2 EXCEPTIONS. Notwithstanding any provisions contained herein
concerning nondisclosure and non-use of the Confidential
Information, the obligations of Section 10.1 shall not apply
to any portion of the Confidential Information which a
receiving party can demonstrate:
(i) is now, or hereafter through no act or failure to act on
the part of receiving party becomes, generally known in the
electronics industry;
(ii) is known to receiving party at the time of receiving such
Confidential Information without an obligation of
confidentiality;
(iii) is hereafter rightfully furnished to receiving party by
a third party without restriction on disclosure; or
(iv) is independently developed by receiving party without any
use of the Confidential Information.
10.3 EMPLOYEE ACCESS. Confidential Information may only be
disclosed to employees having a need to know such Confidential
Information for purposes of this Agreement. Each party shall
inform its employees having access to the Confidential
Information of the limitations, duties and obligations
regarding nondisclosure and copying of any or all of the
Confidential Information.
10.4 NOTICE OF VIOLATION. Each party agrees to provide notice to
the other immediately after learning of or having reason to
suspect a breach of any of the provisions of this Section.
11. WARRANTIES; HIGH RISK APPLICATIONS.
11.1 LICENSED TECHNOLOGY. Pinnacle acknowledges that the Licensed
Technology may be in the process of change or development.
Licensed Technology and SME Confidential Information is
provided "AS IS".
11.2 DERIVATIVE TECHNOLOGY. Pinnacle acknowledges and warrants that
the PCI Card will meet or exceed the acceptance criteria
specified by SME and delivered to Pinnacle as stated in
Exhibit A, and that the manufactured PCI Card will be free
from errors which materially impairs its functionality.
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11.3 DISCLAIMER. SME DOES NOT MAKE AND DISCLAIMS ANY EXPRESS OR
IMPLIED WARRANTIES OR CONDITIONS WITH RESPECT TO THE LICENSED
TECHNOLOGY AND RELATED MATERIALS INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OF NON-INFRINGEMENT OF THIRD PARTY
RIGHTS, DESIGN, MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OR WARRANTIES ARISING FROM A COURSE OF DEALING OR
PERFORMANCE OR USAGE OF TRADE. No agent of SME is authorized
to incur warranty obligations on behalf of SME or modify the
limitations as set forth herein.
11.4 HIGH RISK APPLICATIONS. Licensed Technology is not designed or
intended for use in on-line control of aircraft, air traffic,
aircraft navigation or aircraft communications; or in the
design, construction, operation or maintenance of any nuclear
facility. SME disclaims any express or implied warranty of
fitness for such uses. Pinnacle represents that it will not
use Licensed Technology or Derivative Technology and will not
use, distribute or resell the PCI Card for such purposes and
that it will use its best efforts to ensure that Approved
Customers are provided with a copy of this Subsection.
11.5 PRODUCT LIABILITY. Pinnacle shall not, in connection with
the marketing of the PCI Card represent, either directly or
indirectly, that SME has certified or approved of the form,
fit, function, performance or compatibility thereof. Pinnacle
shall indemnity, release, defend and hold SME harmless from
all claims, damages, losses, costs and expenses, including
reasonable attorneys' fees and expenses, arising in defense of
any claim of product liability in any way relating to the PCI
Card or Derivative Technology, provided that SME (i) gives
Pinnacle written notice of such claim, (ii) cooperates with
Pinnacle, at Pinnacle's expense, in the defense of the claim,
and (iii) gives Pinnacle the right to control the defense and
settlement of the claim, except that Pinnacle may not enter
into any settlement that affects SME's rights or interest
without SME's prior written approval. SME has no authority to
settle any claim on behalf of Pinnacle.
12. LIMITATION OF LIABILITY.
12.1 INFRINGEMENT. SME IS NOT RESPONSIBLE FOR ANY LIABILITY RELATED
TO ANY CLAIM ALLEGING THAT THE USE OF LICENSED TECHNOLOGY,
USE, MANUFACTURE OR, SALE OF THE PCI CARD INFRINGES THE
INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY.
12.2 GENERAL LIMITATION. Except for breach of Sections 10, 11.3 or
11.4, and to the extent not prohibited by applicable law.
A. SME's aggregate liability to Pinnacle for claims
relating to this Agreement, whether in contract or tort, shall
be limited to the total of any payments made to SME by Pinnacle
for services provided under Section 6.
B. Pinnacle's aggregate liability to SME for claims
relating to this Agreement, whether in contract or tort, shall
be limited to the total of the gross revenue received by
Pinnacle from the sale of the PCI Card to Approved Customers
during the term of this Agreement.
B. Neither party will be liable for any indirect,
punitive, special, incidental or consequential damage in
connection with or arising out of this Agreement, including
loss of business, revenue, profits, use, data or other economic
advantage. however it arises, whether in contract or in tort,
even it that party has been previously advised of the
possibility of such damages.
C. Liability for damages shall be limited and excluded,
even if any exclusive remedy provided for in this Agreement
fails of its essential purpose.
13. MISCELLANEOUS.
13.1 NOTICES. All written notices required by this Agreement must
be delivered in person or by means evidenced by a delivery
receipt and will be effective upon receipt.
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13.2 RELATIONSHIP. This Agreement is not intended to create a
relationship such as a partnership, franchise, joint venture,
agency, or employment relationship. Neither party may act in a
manner which expresses or implies a relationship other than
that of independent contractor, nor bind the other party.
13.3 GOVERNING LAW. Any action related to this Agreement will be
governed by California law and controlling U.S. federal law.
No choice of law rules of any jurisdiction will apply.
13.4 ATTORNEY'S FEES. In addition to any other relief, the
prevailing party in any action arising out of this Agreement
shall be entitled to attorneys' fees and costs.
13.5 FORCE MAJEURE. A party is not liable under this Agreement for
non-performance caused by events or conditions beyond that
party's control if the party makes reasonable efforts to
perform. This provision does rot relieve Pinnacle of its
obligation to make payments then owing.
13.6 AVAILABLE RELIEF. Nothing herein is to be construed as
limiting either party from seeking injunctive or other
equitable relief at any time. Pinnacle acknowledges and agrees
that (i) the restrictions on its use and disclosure of SME's
Confidential Information and the restrictions and limitations
on the licenses granted to Pinnacle are reasonable and
necessary to protect legitimate interests, (ii) in the event
of a violation by Pinnacle of any of the provisions of
Sections 3, 4, or 10, remedies at law will be inadequate and
such violation will cause irreparable damages to SME within a
short period of time, and (iii) SME will be entitled to
injunctive relief against every violation of these Sections.
13.7 ASSIGNMENT. Neither party may assign or otherwise transfer any
of its rights or obligations under this Agreement, without the
prior written consent of the other party, except that SME may
assign its right to payment and may assign this Agreement to
any of its Affiliates.
13.8 WAIVER. Any express waiver or failure to exercise promptly any
right under this Agreement will not create a continuing waiver
or any expectation of non in-enforcement.
13.9 SEVERABILITY. If any provision of this Agreement is held
invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not in any
way be affected or impaired thereby, and shall be interpreted,
to the extent possible, to achieve the purposes as originally
expressed in the invalid, illegal or unenforceable provision.
13.10 EXPORT CONTROL. The Licensed Technology, Derivative Technology
and SME Confidential Information are subject to U.S. export
control laws and may be subject to export or import
regulations in other countries. Pinnacle agrees to comply
strictly with all such laws and regulations and acknowledges
that it has the responsibility to obtain such licenses to
export, re-export or import as may be required after delivery
to Pinnacle.
13.11 ENTIRE AGREEMENT. This Agreement, including the attached
Exhibits, is the parties' entire agreement relating to its
subject matter. It supercedes all prior or contemporaneous
oral or written communications, proposals, conditions,
representations and warranties and prevails over any
conflicting or additional terms of any quote, order,
acknowledgement, or other communication between the parties
relating to its subject matter during the term of this
Agreement. No modification to this Agreement will be binding,
unless in writing and signed by an authorized representative
of each party.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives as of the Effective Date.
SUN MICROELECTRONICS PINNACLE DATA SYSTEMS, INC.
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A DIVISION OF SUN MICROSYSTEMS, INC.
BY: /s/ Xxx Xxxxxxxxx BY: /s/ Xxxx X. Xxxx
------------------------------------ ---------------------------------------
NAME: Xxx Xxxxxxxx NAME: Xxxx X. Xxxx
---------------------------------- ------------------------------------
TITLE: V.P. TITLE: C.E.O.
--------------------------------- ------------------------------------
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The Exhibits to this Agreement are:
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Exhibit A - SME DELIVERABLES
Exhibit B - DEVELOPMENT PLAN
Exhibit C - PRICING
Exhibit D - APPROVED CUSTOMERS
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EXHIBIT A
SME DELIVERABLES
For delivery upon the Effective Date:
1. Schematics for PCI Card, 12 pages, electronic file, PostScript format
2. Netlist report for PCI Card components, electronic file, text format
3. Xxxx of materials, electronic file, text format
4. Component Placement drawing, electronic file, PostScript format
5. PCIO User's Manual
6. Source Code for Open Boot Software, electronic file, text format
For delivery on or before 10/31/97
1. Acceptance criteria for prototype boards
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EXHIBIT B
DEVELOPMENT PLAN
(1) SCHEDULE AND PINNACLE DELIVERABLES.
ITEM START DEADLINE
0. SMCC give PDSi all documentation 10/27/97
on PCI card to be designed
1. Parts database creation 10/31/97 11/03/97
(footprints, vendors)
2. Vendors approval 11/04/97
3. Design Verification Plan 11/15/97
4. Purchasing 11/08/97 11/28/97
5. Layout concepts 11/08/97 (parts location, etc.)
6. Mechanical drawings 11/03/97 11/09/97
6. Mechanical parts manufacturing 11/10/97 11/28/97
7. Layout and Routing 11/08/97 11/ 23/97
(1st revision)
8. Layout and Routing Review 11/12/97
9. Layout and Routing 11/12/97 11/17/97
(2nd revision)
10. Rev.1 boards manufacturing 11/17/97 11/26/97
11. Two boards population with 11/29/97 11/30/97
components
12. First bring up and testing 11/30/97
13. Code Modification and 11/08/97 11/31/97
PROM Programming
14. ECOs 11/30/97 11/31/97
15. Two P1 boards shipment to GTE 12/12/97
16. ECOs 11/31/97 12/11/97
17. Documentation 12/12/97
(1) SCHEDULE AND PINNACLE DELIVERABLES (CONTINUED).
13
ITEM START DEADLINE
18. Ten P1 boards population with 12/12/97 12/19/97
components, ECOs
19. Ten P1 boards bring up and 12/22/97 12/25/97
testing
20. Ten PI boards shipment to GTE 12/26/97
21. Environmental and Compliance 12/26/97 01/14/97
Testing
22. Rev-2 Layout and Routing 01/15/97 01/19/97
23. Rev.2 boards manufacturing 01/20/98 01/30/98
24. Ten boards population with 02/01/98 02/04/98
components
25. Second bring up and 02/07/98
testing
26. ECOs 2/07/98 02/08/98
27. Ten P2 boards shipment to GTE 02/09/98
28. System testing with customer 02/10/98 02/20/98
hardware and software
29. ECOs 02/23/98 02/24/98
30. Mass production preparation: 02/25/98 03/13/98
-stencil design
-production documentation
-vendor approval
31. FCS 03/16/98
The dates in this Development Plan assume a Effective Date of 10/27/97 for the
Agreement. If the actual Effective Date is later than 10/27/97, the parties
agree that the dates in this Development Plan will be extended by a
corresponding number of days.
(2) DESIGNATED SITE: Pinnacle Data Systems, Inc.
0000 Xxxxxx Xxxx
Xxxxxxxx, Xxxx 00000
(3) DESIGNATED EQUIPMENT: Sun Ultra Xxxxx 000, XXX
Xxxx# 501-2836, CPU SN#013859 Host ID 80a568,
IP Address 8:0:20:80:A5:68
14
EXHIBIT C
PRICING
1. SALES TO APPROVED CUSTOMERS. In making sales of the manufactured PCI
Card to Approved Customers, Pinnacle will charge no more than five
hundred and 00/100 US dollars ($500.00) per unit for the first two (2)
years from the Effective Date of the Agreement.
2. SALES TO SME. Notwithstanding the above paragraph, for the term of the
Agreement SME will be entitled to purchase the manufactured PCI Card
from Pinnacle for Pinnacle's manufacturing cost, plus 20% for overhead
and profit.
15
EXHIBIT D
APPROVED CUSTOMERS
The following are Approved Customers under this Agreement:
GTE Corporation, Government Systems Corp., Communications Systems
Division, (No other GTE Divisions, or GTE Affiliates without separate
approval)
Sun Microsystems, Inc., or any of its Affiliates
