RIGHT OF NEGOTIATION AGREEMENT
This Right of Negotiation Agreement dated August 28, 1996 is entered
into between NetSpeak Corporation, a Florida corporation (the "Company"), and
Motorola, Inc., a Delaware corporation ("Motorola").
The Company and Motorola are entering into a Common Stock and Warrant
Purchase Agreement dated the date hereof (the "Purchase Agreement") which
requires the execution and delivery of this Agreement.
Therefore, in consideration of Motorola's execution and delivery of,
and performance of its obligations under, the Purchase Agreement, and the mutual
promises, covenants and agreements contained herein, the Company and Motorola
agree as follows:
1. The Company agrees to not grant (1) any non-exclusive license of any
of its proprietary rights without notifying Motorola of the existence of such a
non-exclusive license and offering to Motorola a non-exclusive license on the
same or better terms and (2) any exclusive license of any of its proprietary
rights without first giving Motorola at least 30 days notice of the Company's
intention to do so. Proprietary rights of the Company shall include patents,
trademarks, trade names, trade dress, mask works, copyrights, applications and
registrations for the foregoing, computer software, data and documentation,
trade secrets (including ideas, formulas, know-how, inventions (whether or not
patentable or reduced to practice), manufacturing and production processes and
techniques, research and development information, drawings, specifications,
designs, plans, proposals, technical data, copyrightable works, financial and
marketing plans and customer and supplier lists) and all other intellectual
property rights and copies and tangible embodiments of all of the foregoing.
2. The Company hereby grants to Motorola a separate and additional
right of first negotiation, pursuant to which the Company will not grant to any
party other than Motorola a license for the Company's public switched telephone
network gateway products, for the specific field of use of cable modem
infrastructure and cellular infrastructure, without first negotiating with
Motorola for an exclusive, worldwide license for such field of use, with such
license to bear royalties payable by Motorola at rates reflecting most favored
customer pricing.
3. The Company hereby grants to Motorola a separate and additional
right of first negotiation, pursuant to which the Company will not grant to any
party other than Motorola a license for the field of use of embedding of the
Company's client technology in wireless devices, without first negotiating with
Motorola for an exclusive, royalty-bearing, worldwide, perpetual license for
such field of use, with such license bearing royalties payable by Motorola at
rates reflecting most favored customer pricing.
4. The Company's obligations under paragraph 1 above shall expire at
such time as Motorola and its affiliates own less than 5% of the Company's
outstanding Common Stock. The
Company's obligations under paragraphs 2 and 3 above shall expire on August 28,
1997, unless arbitration proceedings under paragraph 5 below are then pending.
5. The parties agree to negotiate in good faith towards reaching
mutually satisfactory terms of license agreements under paragraphs 1, 2 and 3
above within 60 days after the commencement of negotiations. Should the parties
reach impasse on any issue in such negotiations, or be unable to reach agreement
within 60 days of the commencement of negotiations, the parties agree to submit
their differences to resolution by binding arbitration before a single
arbitrator in the City of Chicago, under the Commercial Arbitration Rules of the
American Arbitration Association, the award under which shall be final and
binding and may be entered in any court having jurisdiction. While the
arbitrator should strive to effect a license agreement fair to both parties, his
or her decision need not necessarily be that a license agreement must be entered
into if he or she determines that the parties negotiated in good faith.
6. This Agreement represents the entire agreement of the parties with
respect to the rights granted herein. The provisions of Section 8.2, 8.3, 8.4,
8.6, 8.9 (first sentence), 8.10 and 8.11 of the Purchase Agreement are hereby
incorporated by reference herein and made a part hereof, MUTATIS MUTANDIS.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date written above.
MOTOROLA, INC. NETSPEAK CORPORATION
By: /S/ XXXXXX X. XXXXXX By:/S/ XXXXXXX X. XXXXX
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Title: VICE PRESIDENT AND GENERAL MANAGER Title:CHAIRMAN OF THE BOARD
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Motorola New Enterprises
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