Exhibit 10.7
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
HDR INFRASTRUCTURE EQUIPMENT LICENSE AGREEMENT
This HDR Infrastructure Equipment License Agreement (the "Agreement") is entered
into on September 18, 2000 by and between XXXXXXXX Xxxxxxxxxxxx, a Delaware
Corporation, and Airvana, Inc., a Delaware corporation, with respect to the
following facts:
RECITALS
WHEREAS, QUALCOMM has developed certain proprietary Code Division Multiple
Access technology which may be useful in providing greater capacity and improved
quality and reliability compared to other Wireless internet technologies;
WHEREAS, LICENSEE desires to obtain a license of QUALCOMM's Intellectual
Property to manufacture and sell the Licensed HDR Products, and QUALCOMM desires
to grant such license in accordance with the terms and conditions set forth in
this Agreement; and
WHEREAS, QUALCOMM desires to obtain a license of LICENSEE's Intellectual
Property to manufacture and sell the Licensed HDR Products and Components and
LICENSEE desires to grant such license in accordance with the terms and
conditions set forth in this Agreement.
AGREEMENT
NOW THEREFORE, the parties hereby agree as follows:
1. HEADINGS AND DEFINITIONS.
All headings used in this Agreement are inserted for convenience only and
are not intended to affect the meaning or interpretation of this Agreement or
any clause. Reference to "third party or third parties" shall not mean either
Party. For the purpose of this Agreement, the following definitions apply:
"Affiliates" means, as to a Party, any present or future Parent of the Party and
any present or future Subsidiary of the Party and/or its Parent, but only for so
long as the Parent remains the Parent of the Party and the Subsidiary remains a
Subsidiary of the Party and/or its Parent. The term "Parent" means any
corporation or other legal entity that owns, directly or indirectly (i) more
than 50% of the shares or other securities of the Party entitled to vote for
election of directors (or other managing authority) of the Party or (ii) if such
Party does not have outstanding shares or securities, more than 50% of the
equity interest in such Party, but only for so long as such ownership or control
exists in (i) or (ii) above. The term "Subsidiary" of a Party means any
corporation or other legal
1
entity (i) the majority (more than 50%) of whose shares or other securities
entitled to vote for election of directors (or other managing authority) is now
or hereafter owned or controlled by such Party either directly or indirectly or
(ii) which does not have outstanding shares or security but the majority (more
than 50%) of the equity interest in which is now or hereafter owned or
controlled by such Party either directly or indirectly, but only for so long as
such ownership or control exists in (i) or (ii) above.
"CDMA" means code division multiple access technology.
"CDMA Applications" means all communication applications (regardless of the
transmission medium) which operate using code division multiple access ("CDMA")
technology, whether or not based on IS-95, cdma2000 or W-CDMA, and irrespective
of frequency band.
"CDMA ASICs" means QUALCOMM's cell site modem (CSM) CDMA application specific
integrated circuit, and any revision, generation, modifications or integration
to or of the CSM, purchased from QUALCOMM.
"Commercially Necessary IPR" means those Intellectual Property Rights which (i)
the Party or its Affiliates has the right to license to the other Party without
payment of royalties or any other consideration to any third party, (ii) are not
essential to the manufacture, use or sale of Licensed HDR Products and/or HDR
Components which comply with the specifications of the HAI and (iii) provide
Licensed HDR Products and/or Components with a competitive advantage (e.g.,
cost, lead-time or quality advantages) or which add to Licensed HDR Products or
Components a feature or other characteristic which may be reasonably required by
the market place; but the term Commercially Necessary IPR does not include any
trade name, trademark, service xxxx, or similar symbols, abbreviation,
contractions or simulations identifying the Party and its Affiliates (except as
set forth in Section 7, if the Party is QUALCOMM).
"Components" means application specific integrated circuits (ASICs), electronic
devices, integrated circuits, including firmware thereon, and/or families of
devices for use in products for CDMA Applications.
"Costs" means the actual labor, material and other direct costs, expenses and
associated indirect expenses, including overheads and general and administrative
expenses consistently applied in accordance with the U.S. generally accepted
accounting principles.
"Distributed Antenna" means a multi-node antenna system and related circuitry
that is designed to make use of delays in CDMA signal transmission and/or
reception so that rake receiver functionality can be utilized.
2
"Effective Date" means the date first set forth above.
"[**]" means [**], a [**] corporation and any of its subsidiaries in which it
owns or controls fifty percent (50%) or more of the voting power.
"Functions" means any or all of the following which incorporates any or all of
QUALCOMM's Intellectual Property: (i) handoff, (ii) CDMA waveform modulation
and/or demodulation, (iii) power control, (iv) rate control, (v) call packet
connection and/or routing, (vi) paging, (vii) data services, (viii) fax
services, (ix) system initialization and configuration, (x) diagnostic
monitoring or maintenance of any of the foregoing functions and/or (xi) any
other function.
"Future Commercially Necessary IPR" means all claims of any patents (foreign and
domestic) which fall within the definition of Commercially Necessary IPR, but
which do not fall within the definition of Included Commercially Necessary IPR.
"Have Made" means the right of LICENSEE under [**] Patents to have a third party
make a Licensed HDR Product for CDMA Applications for the use and benefit of
LICENSEE, provided that:
(i) LICENSEE owns and supplies the designs, or specifications, or working
drawings to such third party;
(ii) such designs, specifications, and working drawings are in sufficient
detail that no substantial additional design by such third party is
required;
(iii) such third party is not allowed to sell such Licensed HDR Product to
other third parties; and
(iv) each such Licensed HDR Product sold by LICENSEE shall bear the
trademarks, trade names, or other commercial indicia of LICENSEE,
although such Licensed HDR Products may be co-branded with the
trademarks, trade names, or other commercial indicia of the reseller
or distributor of such Licensed HDR Products. The requirements of this
subparagraph (iv) shall not apply where a customer requires that the
Licensed HDR Product bear only such customer's trademarks, trade
names, or other commercial indicia.
"HDR Air Interface" or "HAI" means the technical description of QUALCOMM's
proposed High Data Rate ("HDR") specification for data communication between
cell sites or other base station transceivers and user data terminals to the
extent adopted as an industry standard by recognized international standards
bodies and other CDMA-based standards which specify the same physical layer as
the HDR specification if approved by QUALCOMM
3
(i.e. QUALCOMM voted in favor of adopting such standard) and adopted by other
international standards bodies throughout the world.
"HDR BTS" means the HDR base station transceiver subsystem, which is wireless
access equipment that provides network transmit and/or receive functionality in
accordance with the HAI to and from HDR Terminals for Wireless Applications. The
HDR BTS is the link between the HDR Terminals and the internet. Included in the
HDR BTS are the antennas, transmitters, receivers, power amplifiers, controllers
and interface hardware to support the link to the internet. The HDR BTS does not
support wireless communications that are not based upon and compliant with the
HAI.
"HDR Channel Unit" or "HDR Infrastructure Modem Card" means any complete field
replaceable HDR BTS module or complete HDR Modem Assembly used to modulate or
demodulate the HDR waveform, process the data and/or perform ancillary functions
related to one or more CDMA channels for communication between an HDR BTS and
HDR Terminals. Examples of CDMA channels include, but are not limited to
traffic, pilot and control channels. HDR Channel Units do not support wireless
communications that are not based upon and compliant with the HAI.
"HDR Components" means application specific integrated circuits (ASICs),
electronic devices, integrated circuits, including firmware thereon, and/or
families of devices for use in Licensed HDR Products for Wireless Applications.
"HDR Enabling Infrastructure Equipment" means any product (including all of the
components, hardware, firmware and/or software contained therein) which performs
any or all of the Functions, irrespective of whether such product was initially
Sold as part of (included within) an HDR BTS, as an addition to existing HDR
BTS's, or for incorporation elsewhere within an HDR network. HDR Enabling
Infrastructure Equipment does not mean HDR Terminals, HDR Components (although
HDR Components may be incorporated into the HDR Enabling Infrastructure
Equipment that is Sold by a Party) or any assembly or subassembly that is not a
field replaceable unit. HDR Enabling Infrastructure Equipment includes, as an
example and not by way of limitation, (i) the HDR controller, (ii) the
Distributed Antenna, and (iii) any subsystem that includes selectors that
support soft and/or hard handoff.
"HDR Modem Assembly" means a complete HDR modem assembly which (i) incorporates
all or any part of QUALCOMM's Intellectual Property, (ii) complies with the HAI,
and (iii) operates solely when incorporated within, mechanically plugged into
and/or cabled to an HDR BTS. The HDR Modem Assembly must contain at a minimum a
complete printed circuit board and all of the circuitry, components and software
thereon, multiple integrated circuit devices, and all of
4
the circuitry necessary for the HDR BTS to perform all of the HDR reverse link
demodulation and HDR forward link modulation, and baseband processing.
"HDR Terminals" means a user data terminal which can be used to initiate and
receive Wireless CDMA data communications transmissions in accordance with the
HAI.
"Included Commercially Necessary IPR" means (1) with respect to the Intellectual
Property Rights being licensed by QUALCOMM, (a) all claims of any patents
(foreign and domestic) which are now issued or which are applied for on or
before [**] (or, in the case of foreign patents or patent applications filed
after [**], have a priority date based on a domestically filed patent
application filed on or before [**]) and which constitute Commercially Necessary
IPR and (b) all copyright, trade secrets, know-how, technical assistance and
other intellectual property rights which constitute Commercially Necessary IPR
and which may be furnished by QUALCOMM to LICENSEE pursuant to and during the
term of this Agreement and (2) with respect to the Intellectual Property Rights
being licensed by Licensee, (a) all claims of any patents (foreign and domestic)
which are now issued or which are applied for on or before [**] (or, in the case
of foreign patents or patent applications filed after [**], have a priority date
based on a domestically filed patent application filed on or before [**]) and
which constitute Commercially Necessary IPR and (b) all copyright, trade
secrets, know-how, technical assistance and other intellectual property rights
which constitute Commercially Necessary IPR and which may be furnished by
LICENSEE to QUALCOMM pursuant to and during the term of this Agreement.
"Intellectual Property Rights" means patents, copyrights, trade secrets,
know-how and other intellectual property rights.
"[**] Patents" means U.S. Patent Nos. [**] and any continuation,
continuation-in-part and divisional application based on such patents, and any
foreign counterparts of such patents, continuations, continuations-in-part or
divisional applications.
"IS-95 Related Systems" means IS-95 and any single carrier system with a
spreading bandwidth not greater than 1.25 MHz and based on or derived from
IS-95.
"Licensed HDR Products" means only the HDR BTS, HDR Channel Units, and HDR
Enabling Infrastructure Equipment.
"LICENSEE" means Airvana, Inc., a Delaware Corporation.
5
"LICENSEE's Intellectual Property" means LICENSEE's and its Affiliates'
Technically Necessary IPR and LICENSEE's and its Affiliates' Included
Commercially Necessary IPR.
"Masks" and "Mask Sets" mean the mask sets for Components and/or the computer
output data used to generate the mask sets for Components.
"Net Selling Price", with respect to each Licensed HDR Product Sold by LICENSEE,
shall mean one of the following, whichever is applicable:
(a) When Sold by LICENSEE to a Purchaser (a "Purchaser" being a person or
entity that does not control LICENSEE, is not controlled by LICENSEE or is not
in common control with LICENSEE; and the term "control" for the above purposes
shall mean the direct or indirect ownership or control of more than a twenty
five percent interest), the Net Selling Price shall be [**];
(b) When Sold by LICENSEE to a person or entity that is not a Purchaser (a
"Related Buyer"), the Net Selling price shall be [**] Related Buyer [**] Related
Buyer of Licensed HDR Products to a Purchaser but in no event less than [**].
(c) When retained by LICENSEE for its own use or lease, or when Sold by
LICENSEE to a Related Buyer for the Related Buyer's own use or lease, the Net
Selling Price shall be [**].
"Party" shall individually mean QUALCOMM or LICENSEE and the term "Parties"
shall collectively mean QUALCOMM and LICENSEE.
"[**]" shall mean [**], a company existing under the laws of [**].
"[**] HDR Technically Necessary Patents" means claims of any patents which [**]
(or any of its Affiliates) own or have the right to license that are essential
or claimed by [**] or any of its Affiliates to be essential to the manufacture,
use or sale of Licensed HDR Products (i.e., must necessarily be infringed upon
in order to comply with the HAI). Notwithstanding anything to the contrary
herein, the term "[**] HDR Technically Necessary Patents" at a minimum includes
U.S. patent numbers: [**], and their foreign counterparts.
"QUALCOMM's Intellectual Property" means QUALCOMM's Technically Necessary IPR
and QUALCOMM's Included Commercially Necessary IPR and [**] Patents; provided
that, notwithstanding the foregoing, the term "QUALCOMM's Intellectual Property"
shall not include any intellectual property, including but not limited to
patents, owned by [**].
6
"Qualifying Licensed HDR Product" means a Licensed HDR Product which contains
and incorporates a CDMA ASIC purchased by LICENSEE from QUALCOMM.
"Selling Price" means the gross selling price and/or value of other
consideration charged by the LICENSEE or its final vendee Related Buyer for each
Licensed HDR Product in the form in which it is Sold (whether or not assembled
and without excluding therefrom any Components or subassemblies thereof which
are included with such Licensed HDR Product) [**]. If Licensed HDR Products are
Sold in combination with other separate and distinct products or services (the
"Other Products"), the Selling Price for such Licensed HDR Products (the
"Combined Licensed HDR Products") shall be the [**] which LICENSEE charged to
Purchasers for Licensed HDR Products (of the same or substantially the same
quality and quantity) that were Sold without being combined with other products
or services in the [**] or in the most recent previous [**] in which Sales were
made. If no such Licensed HDR Products have been Sold to a Purchaser in the same
or any previous [**] to permit the fair determination of an arm's length price
of the Combined Licensed HDR Product, then the Selling Price for such Combined
Licensed HDR Product shall be the Selling Price charged by LICENSEE for such
Combined Licensed HDR Products [**] of the Other Products that LICENSEE can
clearly and convincingly prove were not part of the consideration allocated to
the Sale of the Licensed HDR Product being combined with other products or
services, [**] of the Licensed HDR Product. For the purpose of this definition,
"Sold in combination with" shall mean that two or more separate and distinct
products are sold together for a single price provided that such separate and
distinct products are not physically integrated into a single product.
"Sold," "Sale," "Sell" means put into use, sold, leased or otherwise transferred
and a sale shall be deemed to have occurred upon putting into use, shipment or
invoicing, whichever shall first occur.
"Technically Necessary IPR" means all claims of any patents (foreign and
domestic) issued on, before or after the Effective Date which (i) the Party or
its Affiliates has the right to license to the other Party without payment of
royalties or any other consideration to any third party (except for payments to
the Party or its Affiliates and payments to third persons for the invention or
creation made by such third persons while employed by any of the Party or its
Affiliates) and (ii) is essential to the manufacture, use or sale of a usable
Licensed HDR Product which complies with the specifications of the HAI (i.e.,
must be infringed upon in order to comply with the HAI) and/or Components, but
the term Technically
7
Necessary IPR does not include (a) manufacturing process, (b) semiconductor
structure not specific to Components and (c) any trade name, trademark, service
xxxx, or similar symbols, abbreviation, contractions or simulations identifying
the Party and its Affiliates.
"Wireless" and "Wireless Applications" means terrestrial-based, land mobile,
wireless data telecommunications applications, including but not limited to
cellular, personal communications services (PCS), wireless local loop and
wireless Wide Area Network (WAN) applications which are based upon and compliant
with the HAI. Notwithstanding the foregoing, the terms "Wireless" and/or
"Wireless Applications" shall not include (i) satellite applications (defined as
any application which utilizes a direct connection between the subscriber unit
and any satellite), and/or (ii) Cordless Telephone Applications (defined as
applications not dependent on use of a switch, including but not limited to a
PABX switch, for interface to the public network).
2. TERM OF AGREEMENT.
This Agreement shall commence upon the Effective Date and, unless otherwise
terminated or canceled as provided herein, shall continue in full force and
effect thereafter.
3. UP-FRONT LICENSE FEE TO QUALCOMM.
In partial consideration of the rights granted to LICENSEE under this
Agreement, LICENSEE shall pay an up-front license fee to QUALCOMM in the amount
of [**] dollars (US$[**]) (the "Up-Front License Fee"). LICENSEE shall pay the
Up-Front License Fee no later than [**] days after the Effective Date.
4. QUALCOMM LICENSE.
4.1 Grant of License From QUALCOMM. Subject to the terms and conditions of
this Agreement, including but not limited to timely payment of the license fees
and royalties set forth herein, QUALCOMM hereby grants to LICENSEE a worldwide,
personal, nontransferable and non-exclusive license (without the right to
sublicense, except to Affiliates of LICENSEE as permitted in Section 4.3) to use
QUALCOMM's Intellectual Property solely for Wireless Applications (a) to make
(and have made) and import, use, sell, lease or otherwise dispose of Licensed
HDR Products and (b) to make (and have made) HDR Components that have been
exclusively designed by or for LICENSEE (which design is owned and used
exclusively by LICENSEE) and import, use, sell, lease or otherwise dispose of
HDR Components; provided, however that such HDR Components may only be used,
sold, leased or otherwise disposed of by LICENSEE if they are included and used,
sold, leased or otherwise disposed
8
of by LICENSEE as part of and within complete Licensed HDR Products of LICENSEE
(or as replacement parts for Licensed HDR Products previously sold by LICENSEE).
No other, further or different license is hereby granted or implied.
4.1.1 [**] Patents. As part of QUALCOMM's Intellectual Property being
licensed under Section 4.1 above, QUALCOMM is granting rights to LICENSEE under
the [**] Patents. Notwithstanding anything to the contrary contained in this
Agreement, the license to LICENSEE under the [**] Patents granted in Section 4.1
may terminate in accordance with the provisions set forth below:
4.1.1.1 If LICENSEE or its Affiliates initiates a CDMA patent
infringement lawsuit against [**] or its affiliates (or their customers)
asserting that any product manufactured and sold by [**] for use in non-IS-95
based wireless applications infringes any of LICENSEE's (or its Affiliates')
patents and LICENSEE (or its Affiliates) does not prevail in such lawsuit, then
the license granted by QUALCOMM to LICENSEE under this Agreement only with
respect to the [**] Patents shall immediately terminate.
4.1.1.2 Licensed HDR Products that Contain QUALCOMM's CDMA ASICs.
Notwithstanding if the license under this Agreement as to the [**] Patents
terminates under Section 4.1.1.1 above, Licensed HDR Products manufactured by
LICENSEE for IS-95 based Wireless Applications, which Licensed HDR Products
incorporate QUALCOMM's CDMA ASICs purchased from QUALCOMM, will be free from
infringement from the [**] Patents.
4.2 Royalties. In partial consideration of the rights granted to Licensee
under the License Agreement, Licensee shall pay to QUALCOMM, no later than [**]
days after the end of each [**] during the term of the License Agreement, an
amount equal to [**] percent ([**]%) of the Net Selling Price for each HDR
Channel Unit or HDR Enabling Infrastructure Equipment that is Sold during [**]
by Licensee and its Affiliates, whether such HDR Channel Unit or HDR Enabling
Infrastructure Equipment is manufactured by Licensee or by third parties.
Notwithstanding the foregoing, with respect to each HDR Channel Unit or HDR
Enabling Infrastructure Equipment that is sold or delivered [**] of the Net
Selling Price of [**] such HDR Channel Unit or HDR Enabling Infrastructure
Equipment. LICENSEE shall not be required to pay royalties on HDR Channel Units
or HDR Enabling Infrastructure Equipment provided at no charge (or other
material consideration) to customers as demonstration or trial units,
9
provided that the total capacity of such demonstration or trial units upon which
LICENSEE does not pay royalties shall not exceed [**] per year.
4.2.1 Royalty Base Evaluation. Upon LICENSEE's written request,
QUALCOMM agrees to hold good faith discussions with LICENSEE to assist LICENSEE
in determining those items Sold by LICENSEE that fall within the definition of
HDR Enabling Infrastructure Equipment.
4.3 Right To Sublicense Affiliates. LICENSEE shall have the right to grant
sublicenses only to Affiliates of LICENSEE with respect to any rights conferred
upon LICENSEE under this Agreement; provided, however, that any such sublicense
shall be subject in all respects to the restrictions, exceptions, royalty and
other payment obligations, reports, termination provisions, and other provisions
contained in this Agreement; provided, however that no additional up-front
license fee shall be required to be paid with respect to any such sublicense.
LICENSEE shall also pay or cause its sublicensed Affiliates to pay the same
royalties on all Licensed HDR Products Sold by its sublicensed Affiliates as if
LICENSEE had Sold such Licensed HDR Products. LICENSEE shall report to QUALCOMM
the Net Selling Price for all Licensed HDR Products Sold by each such Affiliate.
LICENSEE shall be responsible and liable to QUALCOMM in the event that any of
its sublicensed Affiliates fails under any such sublicense to honor and comply
with all obligations of LICENSEE as though said obligations were made expressly
applicable to the sublicensed Affiliate. Except as set forth above, LICENSEE
shall have no right to sublicense any of QUALCOMM's Intellectual Property. Any
sublicense by LICENSEE to an Affiliate of LICENSEE shall terminate immediately
if such Affiliate ceases to be an Affiliate of LICENSEE.
4.4 Taxes. Any taxes, duties or imposts other than income or profits taxes
assessed or imposed upon the sums due hereunder, shall be borne and discharged
by LICENSEE and no part thereof shall be deducted from the amounts payable to
QUALCOMM under any clause of this Agreement, said amounts to be net to QUALCOMM,
free of any and all deductions. Notwithstanding the foregoing, in the event sums
payable under this Agreement become subject to income or profits taxes under the
tax laws of any country and applicable treaties between the United States and
such country, LICENSEE may, if and to the extent required by law, withhold from
each payment the amount of said income or profits taxes due and required to be
withheld [**] of each payment. LICENSEE will furnish and make available to
QUALCOMM relevant receipts regarding the payment of any country taxes paid over
to any country's government on behalf of QUALCOMM. Such tax receipts will
clearly indicate the amounts that have been withheld from the gross amounts due
to QUALCOMM. Any and all other taxes, levies, charges or fees will be paid by
LICENSEE for its own account.
10
4.5 Conversion to U.S. Dollars. Royalties shall be paid in U.S. dollars. To
the extent that the Net Selling Price for Licensed HDR Products Sold by LICENSEE
outside of the United States is paid to LICENSEE other than in U.S. dollars,
LICENSEE shall convert the portion of the royalty payable to QUALCOMM from such
Net Selling Price into U.S. dollars at the official rate of exchange of the
currency of the country from which the Net Selling Price was paid, as quoted by
the U.S. Wall Street Journal (or the Chase Manhattan Bank or another agreed-upon
source if not quoted in the Wall Street Journal) for the last business day of
the calendar quarter in which such Licensed HDR Products were Sold. If the
transfer of or the conversion into U.S. dollars is not lawful or possible, the
payment of such part of the royalties as is necessary shall be made by the
deposit thereof, in the currency of the country where the sale was made on which
the royalty was based to the credit and account of QUALCOMM or its nominee in
any commercial bank or trust company of QUALCOMM's choice located in that
country, prompt notice of which shall be given by LICENSEE to QUALCOMM.
4.6 [**] Covenant Not to Assert. QUALCOMM hereby represents and warrants
that [**], on behalf of itself and its Affiliates, covenants that [**] and its
Affiliates will not assert any of the [**] HDR Technically Necessary Patents
against LICENSEE's (or, if sublicensed in accordance with Section 4.3 of this
Agreement, LICENSEE's Affiliates') manufacture, use, sale, or importation of
Qualifying Licensed HDR Products solely for Wireless Applications; provided,
however, that [**] and/or its Affiliates may assert the [**]' HDR Technically
Necessary Patents against LICENSEE if LICENSEE asserts any of its patents
against [**] or its Affiliates and any of their telephone products or if
LICENSEE initiates a declaratory judgment action, reexamination proceedings or
opposition proceedings challenging the validity of any of the [**] HDR
Technically Necessary Patents. Nothing in this Section 4.6 shall prohibit, limit
or covenant against [**] rights to assert any of its patents against LICENSEE or
its Affiliates for infringement relating to any time division multiple access
(TDMA) equipment or system (including, without limitation, [**]).
4.7 [**] Patents.
4.7.1 [**] Patents Sublicensed. The term "[**] Patents" means all of
the following patents which are owned or sublicenseable by [**] without payment
of any royalty or other consideration to a third party: (a) [**] patents which,
but for the sublicenses granted under Section 4.7.2 below, would be infringed by
the use of QUALCOMM's CDMA ASICs for their intended purposes (the "[**] ASIC
Patents"), and (b) [**] Essential Patents which are, or are claimed by [**] to
be, essential to IS-95 Rev A or Rev B, whether or not such Essential Patents are
infringed by the use of QUALCOMM's CDMA ASICs (the
11
"Other [**] Patents"). For example, by incorporating QUALCOMM's existing (as of
the Effective Date) CDMA ASIC into a Licensed HDR Product Sold by LICENSEE, the
[**] Patents sublicensed to LICENSEE would include, but not necessarily be
limited to all of the following patents that [**] asserted against QUALCOMM in
litigation: U.S. Patent Nos. [**], and their foreign counterparts, reissuances,
divisionals, continuations and continuations in part.
The term "Essential Patents" means those patents (in any country of the
world) as to which it is, or is claimed by the patent owner to be, not possible
on technical (but not commercial) grounds, taking into account normal technical
practice and the state of the art generally available at the time of adoption or
publication of the relevant standard for CDMA Applications, to make, sell,
lease, otherwise dispose of, repair, use or operate equipment or methods which
comply with such standard without infringing such patent.
4.7.2 Sublicense Under [**] Patents. The following sublicense is
granted subject to the terms and conditions of this Agreement (including but not
limited to the payment of royalties hereunder in accordance with Section 4.2)
and Section 4.7.3 below: With respect only to those Licensed HDR Products Sold
by LICENSEE and its Affiliates that contain QUALCOMM's CDMA ASIC, QUALCOMM
hereby grants to LICENSEE a sublicense under all of the [**] ASIC Patents solely
for CDMA Applications and under all of the Other [**] Patents solely for IS-95
Related Systems to make (and Have Made), use, sell, offer for sale, lease or
otherwise dispose of, and import Licensed HDR Products into which QUALCOMM's
CDMA ASIC is incorporated. Notwithstanding the foregoing, no right or sublicense
is being granted for or may be extended under patents that apply to the portion
of any product that implements an air interface other than CDMA or analog (e.g.,
no rights and sublicenses are granted for or may be extended under patents that
apply to the GSM part of any product).
4.7.3 Non-Assertion Against [**]. The sublicense granted to LICENSEE
under Section 4.7.2 above shall continue only so long as LICENSEE and its
Affiliates do not assert, either in litigation or by a direct communication, any
Essential Patents for CDMA Applications against [**] CDMA subscriber,
infrastructure or test equipment products and LICENSEE does not dismiss such
litigation or withdraw such assertion or offer a royalty-free license under such
patents within [**] days after QUALCOMM's receipt of notice from [**] of such
litigation or communication.
4.8 Option to Obtain Infrastructure Equipment License. No later than [**]
months from the Effective Date, LICENSEE, at its option, may elect to obtain
from QUALCOMM an infrastructure equipment license on terms and conditions set
forth in the "Infrastructure Equipment License Agreement," a copy of which is
attached hereto as Exhibit B and incorporated herein by reference.
12
4.9 [**] Royalty Rate. If LICENSEE exercises the option set forth in
Section 4.8 of this Agreement, then beginning on the effective date of such
exercise and subject to the limited exceptions set forth below, if QUALCOMM
grants a license to a third party to manufacture and sell Licensed HDR Products
[**] under the terms and conditions of Section 4.2, and, which license will
permit such third party to manufacture and sell Licensed HDR Products for use
within Wireless Applications, QUALCOMM shall (i) promptly notify LICENSEE of the
[**], and (ii) extend to LICENSEE [**] and, at [**]. If LICENSEE intends to
accept such [**] rates, LICENSEE shall have up to [**] days after the date of
such notice to notify QUALCOMM that it accepts a license from QUALCOMM on such
[**], provided that LICENSEE must also, at QUALCOMM's request, accept and be
bound by all other material terms and conditions granted by QUALCOMM [**].
The above paragraph shall not apply with respect to (i) [**] of LICENSEE's
exercise of the option set forth in Section 4.8 of this Agreement, (ii) any
license granted by QUALCOMM to its Affiliates or (iii) any license granted by
QUALCOMM, [**] for which consists in whole or in part of patent rights or other
rights of such substantial value as, in the reasonable judgment of QUALCOMM, to
warrant (a) [**] provided in this Agreement, or (b) [**]. This Section 4.9 shall
not apply retroactively, nor shall it be construed as entitling LICENSEE to [**]
the grant of such third party license to such other licensee.
5. LICENSE BY LICENSEE
5.1 Grant of License from LICENSEE. Subject to the terms and conditions of
this Agreement, LICENSEE hereby grants to QUALCOMM a worldwide, personal,
nontransferable, non-exclusive, fully-paid, irrevocable and royalty free license
(without the right to sublicense, except to Affiliates of QUALCOMM as permitted
in Section 5.2) to use LICENSEE's Intellectual Property (a) to make (and have
made) and import, use, sell, lease or otherwise dispose of Licensed HDR Products
solely for Wireless Applications and (b) to make (and have made) Components that
have been exclusively designed by or for QUALCOMM (which design is owned and
used exclusively for QUALCOMM) and import, use, sell, lease or otherwise dispose
of Components. No other, further or different license is hereby granted or
implied.
5.2 Right To Sublicense Affiliates. QUALCOMM shall have the right to grant
sublicenses only to Affiliates of QUALCOMM with respect to any rights conferred
upon QUALCOMM under this Agreement; provided, however, that any such sublicense
shall be subject in all respects to the restrictions, exceptions, termination
provisions, and other provisions contained in this Agreement. QUALCOMM, in
addition to its sublicensed Affiliates, shall be responsible and liable to
LICENSEE in the event that any of its sublicensed Affiliates fails under any
such sublicense to honor and comply with all obligations of QUALCOMM as
13
though said obligations were made expressly applicable to the sublicensed
Affiliate. Except as set forth above, QUALCOMM shall have no right to sublicense
any of LICENSEE's Intellectual Property. Any sublicense by QUALCOMM to an
Affiliate of QUALCOMM shall terminate immediately if such Affiliate ceases to be
an Affiliate of QUALCOMM.
5.3 License Of Future Commercially Necessary IPR. Each Party agrees that,
to the extent it makes licenses of Future Commercially Necessary IPR generally
available to third parties, it will, if requested by the other Party, offer such
licenses to the other Party on commercially reasonable terms and conditions.
5.4 No LICENSEE Deliverables. Except as expressly provided for in this
Agreement, LICENSEE shall have no obligation to disclose any LICENSEE
Intellectual Property, know-how, trade secrets or other technology to QUALCOMM,
to Affiliates of QUALCOMM or to any third party.
6. COMMITMENT BY LICENSEE
6.1 Covenant Not to Assert. LICENSEE hereby covenants that neither it nor
its Affiliates will assert any of LICENSEE's Technically Necessary IPR against
any of QUALCOMM's other HDR infrastructure equipment licensees and their
Affiliates (collectively, the "Authorized Licensees") with respect to such
Authorized Licensee's use of any of LICENSEE's Technically Necessary IPR to
make, use and sell HDR infrastructure equipment and/or HDR Components solely for
Wireless Applications, provided that such Authorized Licensee has agreed with
QUALCOMM to an equivalent undertaking not to assert claims against LICENSEE and
its Affiliates. LICENSEE does not by this Section 6.1 agree, on behalf of itself
or its Affiliates, to waive its rights to assert any of LICENSEE's Commercially
Necessary IPR against any Authorized Licensee with respect to such Authorized
Licensee's use of any of LICENSEE's Commercially Necessary IPR. Any Authorized
Licensee that has agreed with QUALCOMM to an equivalent undertaking not to
assert claims shall be regarded as a third party beneficiary of this Section
6.1. QUALCOMM will promptly notify LICENSEE of any Authorized Licensees that
have agreed to such an equivalent undertaking.
6.2 License to Third Parties. The parties agree that it is in the interest
of each of the Parties and of the Wireless industry to obtain the widest
possible acceptance of the final HAI. Accordingly, LICENSEE agrees to negotiate
in good faith to promptly grant to Authorized Licensees which do not meet the
requirements of Section 6.1 a license to use all of LICENSEE's Technically
Necessary IPR to make, use and sell HDR infrastructure equipment and HDR
Components for Wireless Applications. Each such license shall be granted at
reasonable rates and otherwise on reasonable terms and conditions consistent
14
with LICENSEE's licensing policies, which may include that such third party
grant a cross-license to LICENSEE of technically necessary intellectual property
rights owned by such third party.
6.3 Commercial Efforts. LICENSEE shall use commercially reasonable efforts
to market, promote and sell Licensed HDR Products throughout the world.
7. MARKING
LICENSEE agrees to affix to the exterior or the interior of all Licensed
HDR Products incorporating any of QUALCOMM's Intellectual Property a legible
notice reading: "Licensed by XXXXXXXX Xxxxxxxxxxxx under one or more of the
following Patents," followed by a list of applicable patent numbers taken from
the list of QUALCOMM's patents or as may otherwise be instructed by QUALCOMM.
8. QUALITY CONTROL
8.1 General Quality of Licensed HDR Products. Throughout the term of this
Agreement, LICENSEE shall maintain, for the Licensed HDR Products manufactured
or Sold by it, at least the same manufacturing, servicing and quality standards
currently utilized by LICENSEE in connection with its similar analog and, if
applicable, other digital products.
8.2 Standards Compliance Testing. LICENSEE represents and warrants that the
Licensed HDR Products and HDR Components that it makes or has made will adhere
with and conform to, in all respects, the specifications contained in the HAI
and that LICENSEE shall comply with the rules, regulations or other requirements
set by such authorized standards body. LICENSEE shall, at QUALCOMM's reasonable
written request, permit QUALCOMM or entities designated by QUALCOMM and accepted
by LICENSEE, which acceptance shall not be unreasonably withheld or delayed, to
perform tests of Licensed HDR Products being marketed by LICENSEE to ensure
compliance and conformity with the HAI. If such tests indicate material
noncompliance or nonconformity therewith, such tests shall be at LICENSEE's cost
and LICENSEE shall reimburse QUALCOMM for any such reasonable tests performed by
QUALCOMM at [**]. If such test does not indicate material noncompliance or
nonconformity, the test shall be at [**]. Nonconforming Licensed HDR Products,
if any, shall not be sold or marketed by LICENSEE until the non-conformity is
corrected.
15
9. INFORMATION
9.1 Restrictions on Disclosure and Use. All documentation and technical and
business information and intellectual property in whatever form recorded that a
Party does not wish to disclose without restriction ("Information") shall remain
the property of the furnishing Party and may be used by the receiving Party only
as follows. Such Information (a) shall not be reproduced or copied, in whole or
part, except for use as expressly authorized in this Agreement; and (b) shall,
together with any full or partial copies thereof, be returned or destroyed when
no longer needed or upon any termination of this Agreement, and (c) shall be
disclosed only to employees or agents of a Party with a need to know. Moreover,
such Information shall be used by the receiving Party only for the purpose of
performing under this Agreement or in the exercise of its rights it may receive
under the provisions of this Agreement. Unless the furnishing Party consents in
this Agreement or otherwise in writing, such Information shall be held in strict
confidence by the receiving Party. The receiving Party may disclose such
Information to other persons, upon the furnishing Party's prior written
authorization, but solely to perform acts which this clause expressly authorizes
the receiving Party to perform itself and further provided such other person
agrees in writing (a copy of which writing will be provided to the furnishing
Party at its request) to the same conditions respecting use of Information
contained in this clause and to any other reasonable conditions requested by the
furnishing Party. These restrictions on the use or disclosure of Information
shall not apply to any Information: (i) which can be proven to be or have been
independently developed by the receiving Party or lawfully received free of
restriction from another source having the right to so furnish such Information;
or (ii) after it has become generally available to the public without breach of
this Agreement by the receiving Party; or (iii) which at the time of disclosure
to the receiving Party was known to such Party free of restriction and clearly
evidenced by documentation in such Party's possession; or (iv) which the
disclosing Party agrees in writing is free of such restrictions.
9.2 Scope of Information. Information is subject to this Section 9 whether
delivered orally or in tangible form and without regard to whether it has been
identified or marked as confidential or otherwise subject to this Section 9.
Each Party agrees to use its best efforts to xxxx or otherwise identify
proprietary all Information they desire to be subject to the terms of this
clause before furnishing it to the other Party. And, upon request, a Party shall
promptly identify whether specified information must be held by the requesting
Party subject to this clause. Information which is delivered orally may be
summarized in writing by the disclosing Party and delivered to the receiving
Party within [**] days after disclosure thereof.
16
9.3 Furnishing Information to Third Parties. Nothing herein shall be deemed
to bar disclosure of Information by a receiving Party to third party
subcontractors, prospective customers or Affiliates of the receiving Party with
a need to know, without the written consent of the furnishing Party, if such
disclosure is reasonably necessary for enjoyment of the receiving Party's rights
to use Intellectual Property Rights licensed under this Agreement, and provided
that each such third party agrees in writing to protect the Information under
terms and conditions comparable, in all material respects, to the terms
contained in this Section 9 and Section 17 with respect to survivability.
10. WARRANTY/ DISCLAIMER/ LIMITATION OF LIABILITY.
10.1 QUALCOMM Warranty. QUALCOMM represents and warrants that it has the
right to enter into this Agreement with LICENSEE and that it has the right to
grant the licenses granted hereunder.
10.2 Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER
PARTY MAKES ANY WARRANTIES IN THIS AGREEMENT AS TO PRODUCTS, TECHNOLOGY,
MATERIALS, SERVICES, INFORMATION OR OTHER ITEMS IT FURNISHES TO THE OTHER PARTY,
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE, OR THAT SUCH ITEMS ARE FREE FROM THE
RIGHTFUL CLAIM OF ANY THIRD PARTY, BY WAY OF INFRINGEMENT OR THE LIKE.
10.3 Limitation of Liability. EXCEPT IN THE CASE OF A BREACH OF SECTION 9
OF THIS AGREEMENT, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY
INCIDENTAL, CONSEQUENTIAL OR ANY OTHER INDIRECT LOSS OR DAMAGE ARISING OUT OF
THIS AGREEMENT OR ANY RESULTING OBLIGATION OR THE USE OF ANY INTELLECTUAL
PROPERTY RECEIVED HEREUNDER, WHETHER IN AN ACTION FOR OR ARISING OUT OF BREACH
OF CONTRACT, FOR TORT, OR ANY OTHER CAUSE OF ACTION. EACH PARTY SHALL BE
PERMITTED TO ENJOIN THE UNAUTHORIZED USE BY THE OTHER PARTY OR ITS AFFILIATES OF
ANY OF THE PARTY'S INFORMATION.
10.4 Negation of Representation and Warranties. Nothing contained in this
Agreement shall be construed as (a) requiring the filing of any patent
application, the securing of any patent or the maintaining of any patent in
force; (b) a warranty or representation by either Party as to the validity or
scope of any patent, copyright or other intellectual property right; (c) a
warranty or representation that any manufacture, sale, lease, use or importation
will be free from infringement of patents, copyrights or other intellectual
property rights of others, and it shall be the sole responsibility of LICENSEE
to make such
17
determination as is necessary with respect to the acquisition of licenses under
patents and other intellectual property of third parties; (d) an agreement to
bring or prosecute actions or suits against third parties for infringement; (e)
an obligation to furnish any manufacturing assistance; or (f) conferring any
right to use, in advertising, publicity or otherwise, any name, trade name or
trademark, or any contraction, abbreviation or simulation thereof (other than as
set forth in Section 7).
11. INDEMNITY FOR DAMAGE TO PERSONS, PROPERTY OR BUSINESS
11.1 Indemnification by LICENSEE. LICENSEE shall indemnify, defend and hold
QUALCOMM harmless from, any and all claims, judgments, liabilities, costs and
expenses (including attorneys' fees) arising out of or related, directly or
indirectly, to any injury, loss or damage to persons, property or business
arising from, relating to, or in any way connected with, any Licensed HDR
Products or Components which LICENSEE or its Affiliates manufactures or has
manufactured and sells to a third party or its Affiliate. LICENSEE agrees to
indemnify and hold harmless QUALCOMM against all liability or responsibility of
LICENSEE or of others for any failure attributable to LICENSEE in production,
design, operation or otherwise of products manufactured by or on behalf of
LICENSEE and Sold to third parties, except if such liability or responsibility
is due to infringement claims with respect to QUALCOMM's Intellectual Property.
11.2 Indemnification by QUALCOMM. QUALCOMM shall indemnify, defend and hold
LICENSEE harmless from, any and all claims, judgments, liabilities, costs and
expenses (including attorneys' fees) arising out of or related, directly or
indirectly, to any injury, loss or damage to persons, property or business
arising from, relating to, or in any way connected with, any Licensed HDR
Products or Components which QUALCOMM or its Affiliates manufactures or has
manufactured and sells to a third party or its Affiliate. QUALCOMM agrees to
indemnify and hold harmless LICENSEE against all liability or responsibility of
QUALCOMM or of others for any failure attributable to QUALCOMM in production,
design, operation or otherwise of products manufactured by or on behalf of
QUALCOMM and Sold to third parties, except if such liability or responsibility
is due to infringement claims with respect to LICENSEE's Intellectual Property.
11.3 Notice, Defense and Cooperation. The party seeking indemnification
under Section 11.1 or 11.2 above shall provide the indemnifying party with
prompt notice of any claim within such provisions, shall give the indemnifying
party the full right to defend any such claim and shall cooperate fully in such
defense.
18
12. TERMINATION
12.1 Termination Without Cause by LICENSEE. LICENSEE may for any reason, at
any time when it is not using any of QUALCOMM's Intellectual Property, terminate
this Agreement upon ninety (90) days' prior written notice to QUALCOMM; provided
that all license fees and royalties which have accrued under the terms of the
Agreement shall be due and owing and all such amounts and all previous amounts
paid are and shall remain non-refundable. In the event of any such termination,
the license granted by LICENSEE to QUALCOMM in Section 5.1 and 5.2 shall
survive.
12.2 Termination For Cause by QUALCOMM. QUALCOMM may terminate this
Agreement, by written notice to LICENSEE, if LICENSEE shall at any time default
in the payment hereunder or the making of any report hereunder, or shall commit
any material breach of any covenant, representation, warranty or agreement
herein contained, or shall make any false report to QUALCOMM; provided, however,
that in the case of any such breach which is capable of being cured, QUALCOMM
shall not have a right to terminate this Agreement for cause unless and until
LICENSEE shall have failed to remedy any such default, breach or report within
[**] days after written notice thereof by QUALCOMM. LICENSEE shall be able to
effectuate such cure with respect to a default in the payment of any royalty
hereunder no more than three times during the term of this Agreement. Upon
termination of this Agreement for cause, LICENSEE shall duly account to QUALCOMM
for all royalties and other payments within ten days of such termination.
12.3 Termination for Cause by LICENSEE. LICENSEE may terminate this
Agreement, by written notice to QUALCOMM, if QUALCOMM shall at any time commit
any material breach of any material covenant, representation, warranty or
agreement herein contained; provided, however, that in the case of any such
breach which is capable of being cured, LICENSEE shall not have a right to
terminate this Agreement for cause unless and until QUALCOMM shall have failed
to remedy any such material breach within [**] days after receipt by QUALCOMM of
written notice thereof by LICENSEE.
12.4 Bankruptcy, Dissolution or Liquidation. Either Party shall also have
the right to terminate this Agreement with immediate effect by giving written
notice of termination to the other Party at any time upon or before sixty (60)
days after the occurrence of any of the following events with respect to such
other Party (unless such event ceases within such period): (a) insolvency,
bankruptcy or liquidation or filing of any application therefor, or other
commitment of an affirmative act of insolvency; (b) attachment, execution or
seizure of substantially all of the assets or filing of any application
therefor; (c) assignment or transfer of that portion of the business to which
this Agreement
19
pertains to a trustee for the benefit of creditors; (d) disposition, by sale or
assignment of all of its rights, of that portion of the business or the material
assets to which this Agreement pertains in violation of Section 14 of this
Agreement; or (e) termination of its business or dissolution.
12.5 Termination of Agreement in the Event of Litigation. The license from
QUALCOMM to Licensee shall terminate in the event that LICENSEE initiates any
litigation against QUALCOMM or its Affiliates which includes any claim for
intellectual property infringement and LICENSEE does not prevail on all such
intellectual property infringement claims.
12.6 Rights Upon Termination. Upon any expiration or termination of this
Agreement, whether for cause or not, all licenses granted hereunder shall also
terminate (except as expressly stated in Section 12.1), and each Party shall
immediately (i) cease using any of the other Party's Intellectual Property
Rights and (ii) return or destroy all information and documentation furnished by
the other Party to such Party. Any termination or expiration of this Agreement
under this Section 12 shall not relieve LICENSEE from its obligation under
Section 13 hereof to make a report or from its liability for payment of
royalties on Licensed HDR Products Sold on or prior to the date of such
termination or expiration and shall not prejudice the right to recover any
royalties or other sums due or accrued at the time of such termination or
expiration and shall not prejudice any cause of action or claim accrued or to
accrue on account of any breach or default. Furthermore, any termination or
expiration of this Agreement under this Section shall not prejudice the right of
QUALCOMM to conduct a final audit of the records of the LICENSEE in accordance
with the provisions of Section 13 hereof. No termination hereunder shall limit
the rights of a Party to sell those Licensed HDR Products in inventory or in
process at the time of termination, subject to payment of the royalty applicable
to the sale of such Licensed HDR Products and continued compliance with the
other provisions of this Agreement.
13. RECORDS AND AUDITS.
13.1 Records. LICENSEE shall keep accurate and complete books and records
concerning any Licensed HDR Products it may sell under this Agreement. As
applicable, such books and records shall include the date of transaction
involving sales of Licensed HDR Products, including the number of items Sold.
LICENSEE shall require in its agreements with sublicensees that each sublicensee
agree to record keeping and audits substantially the same as described in this
Section 13. LICENSEE hereby agrees to cause its sublicensees to provide to
LICENSEE the records and supporting information sufficient to evidence the
accuracy of the royalty report to be submitted to QUALCOMM. Such records
(together with all supporting information) shall be included in the
20
records described herein and subject to audit by QUALCOMM as provided in this
Section. LICENSEE's agreements with its sublicensees shall expressly state that
QUALCOMM shall be able to enforce rights under Section 13.2 below directly
against any such sublicensee. LICENSEE shall furnish QUALCOMM within [**] days
after the end of each [**] a certificate, in the form attached hereto as Exhibit
A, signed by a responsible official of LICENSEE showing the transactions and
corresponding amounts during said [**] and any other information as may be
reasonably requested by QUALCOMM.
13.2 Audits. QUALCOMM may, no more than once each calendar year, cause its
independent public accounting firm to conduct an audit on reasonable notice of
LICENSEE's applicable books and records and sublicensee's records and its
supporting information obtained under Section 13.1 above to confirm the royalty
paid or to be paid to QUALCOMM in accordance with the terms and conditions set
forth in Section 4.2 above. The cost of such audit shall be borne by QUALCOMM,
unless such audit determines that the LICENSEE has underpaid the royalties due
hereunder by the lesser of (a) more than five percent (5%) or (b) [**]; in which
case, LICENSEE shall, in addition to paying the deficiency plus late payment
charges, pay the cost of such audit. LICENSEE shall preserve and maintain all
such books and records required for audit for a period of [**] years after the
[**] for which the books and records apply (but not more than [**] years after
any termination of this Agreement). All information acquired by QUALCOMM from
such audit shall be considered Information subject to the terms and conditions
of Section 9.
14. ASSIGNMENT.
Except as provided in this clause, LICENSEE shall not assign this Agreement
or any right or interest under this Agreement, nor delegate any obligation to be
performed under this Agreement (an "assignment"), without QUALCOMM's prior
written consent, which consent shall be at QUALCOMM's sole discretion, provided,
however, that such consent shall not be unreasonably withheld in the case that
such assignment or delegation is to a party deemed by QUALCOMM not to be in an
actual or potential dispute with QUALCOMM. For purposes of this Agreement, an
"assignment" by LICENSEE under this Section shall be deemed to include, without
limitation, the following: (a) a change in the beneficial ownership of LICENSEE
of greater than fifty percent (50%) (whether in a single transaction or a series
of transactions) if LICENSEE is a partnership, trust, limited liability company
or other like entity; (b) the acquisition of more than fifty percent (50%) of
any class of LICENSEE's voting stock (or any class of non-voting security
convertible into voting stock) by another party (whether in a single transaction
or series of transactions); or (c) the sale of more than fifty percent (50%) of
LICENSEE's assets (whether in a single
21
transaction or series of transactions). Any attempted assignment in
contravention of this Section 14 shall be void and ineffective.
15. COMPLIANCE WITH U.S. REGULATIONS.
Nothing contained in this Agreement shall require or permit LICENSEE or
QUALCOMM to do any act inconsistent with the requirements of (a) the regulations
of the United States Department of Commerce, or (b) the foreign assets controls
or foreign transactions controls regulations of the United States Treasury
Department, or (c) of any similar United States law, regulation or executive
order as the same may be in effect from time to time. To enable QUALCOMM to
export QUALCOMM's Intellectual Property or technical data to LICENSEE in
compliance with the requirements of the Export Administration Regulations (EAR),
LICENSEE hereby gives its assurance to QUALCOMM that LICENSEE will not re-export
or otherwise disclose, directly or indirectly, any of QUALCOMM's Intellectual
Property or "technical data" received from QUALCOMM, nor allow the direct
product thereof to be shipped directly or indirectly to any of the countries set
forth in this Section 15, unless permitted by U.S. law in effect at the time of
such export. To enable LICENSEE to export LICENSEE's Information or other
technical data to QUALCOMM in compliance with the requirements of the EAR,
QUALCOMM hereby gives its assurance to LICENSEE that QUALCOMM will not re-export
or otherwise disclose, directly or indirectly, any of LICENSEE's Information or
technical data received from LICENSEE, nor allow the direct product thereof to
be shipped directly or indirectly to any of the countries set forth below in
this Section 15, unless permitted by U.S. law in effect at the time of such
export:
Albania
Afghanistan
Angola
Armenia
Azerbaijan
Belarus
Bulgaria
Cambodia
Cuba
Estonia
Federal Republic of Yugoslavia (Serbia only)
Georgia
Iran
Iraq
Kazakhstan
Kyrgystan
Laos
Latvia
Libya
Lithuania
Macau
Moldova
Mongolia
North Korea
People's Republic Of China
Romania
Russia
Sudan
Syria
Tajikistan
Turkmenistan
Ukraine
Uzbekistan
Vietnam
22
Each Party agrees that no products, proprietary data, know-how, software, or
other information received from the other Party will be directly employed in
missile technology, sensitive nuclear, or chemical biological weapons end uses
or by such end users. The foregoing obligations are U.S. legal requirements, and
therefore, such obligations shall survive any termination of this Agreement.
16. PUBLICITY.
Except as provided in Section 21 of this Agreement, each Party (the
"Publishing Party") shall submit to the other Party proposed copy of all
advertising wherein the name, trademark, code, specification or service xxxx of
the other Party is mentioned; and the Publishing Party shall not publish or use
such advertising without the other Party's prior written approval. Such approval
shall be granted or withheld as promptly as possible (usually within [**] days),
and may be withheld only for good cause. No license is granted by LICENSEE to
QUALCOMM hereunder with respect to LICENSEE's or its Affiliates' trade name,
trademark, code, specification or service xxxx. No license is granted by
QUALCOMM to LICENSEE hereunder with respect to QUALCOMM's or its Affiliates'
trade name, trademark, code, specification or service xxxx.
17. SURVIVAL OF OBLIGATIONS.
The Parties' rights and obligations which, by their nature, would continue
beyond the termination, cancellation, or expiration of this Agreement, including
but not limited to those rights and obligations of the parties set forth in
Section 9 entitled "INFORMATION," shall survive such termination, cancellation,
or expiration.
18. SEVERABILITY.
If any provision in this Agreement shall be held to be invalid or
unenforceable, the remaining portions shall remain in effect. In the event such
invalid or unenforceable provision is considered an essential element of this
Agreement, the Parties shall promptly negotiate a replacement provision.
19. NON-WAIVER.
No waiver of the terms and conditions of this Agreement, or the failure of
either Party strictly to enforce any such term or condition on one or more
occasions shall be construed as a waiver of the same or of any other term or
condition of this Agreement on any other occasion.
23
20. NOTICES.
All notices, requests, demands, consents, agreements and other
communications required or permitted to be given under this Agreement shall be
in writing and shall be mailed to the Party to whom notice is to be given, by
facsimile, and confirmed by first class mail, postage prepaid, and properly
addressed as follow (in which case such notice shall be deemed to have been duly
given on the day the notice is first received by the Party):
XXXXXXXX Xxxxxxxxxxxx Airvana, Inc.
0000 Xxxxxxxxx Xxxxx 00 Xxxxx Xxxx
Xxx Xxxxx, XX 00000-0000 Xxxxx, XX 00000
Facsimile No.: (000) 000-0000 Facsimile No.: 000-000-0000
Telephone No.: (000) 000-0000 Telephone No.: 000-000-0000, x4030
Attn: President Attn: Xxxxx Xxxxxx, President & CEO
with a copy to: with a copy to:
General Counsel Xxxxxxx Xxxxxxxxxx
Xxxx and Xxxx
00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Tel: 000-000-0000
Fax: 000-000-0000
The above addresses can be changed by providing notice to the other Party
in accordance with this Section.
21. PUBLICATION OF AGREEMENT.
The Parties agree to keep the existence of this Agreement and the fact that
LICENSEE is a QUALCOMM licensee confidential until the earlier of the first
commercial shipment of a Licensed HDR Product by LICENSEE, the mutual written
consent of both parties to an earlier announcement or the date one year after
the Effective Date (the "Publication Date"). Except as may otherwise be required
by law or as reasonably necessary for performance hereunder, each Party shall
keep this Agreement and its provisions confidential and shall not disclose this
Agreement or its provisions without first obtaining the written consent of the
other Party, which consent shall not be unreasonably withheld. After the
Publication Date, the confidentiality obligations hereunder do not apply to the
existence of this Agreement or the fact that QUALCOMM and LICENSEE has executed
this Agreement, but do apply to the terms and conditions of this Agreement. Any
press release or other announcement by either Party concerning the entering into
of this Agreement shall be subject to the
24
prior written approval of other Party, which approval shall not be unreasonably
withheld. In case a press release or other public announcement to the effect of
the Parties' entering into of this Agreement is issued by either Party pursuant
to the preceding sentence, (i) QUALCOMM may thereafter make a press release or
other public announcement to the effect that LICENSEE is one of QUALCOMM's
licensees for Licensed HDR Products without prior written approval of LICENSEE
and (ii) LICENSEE may thereafter make a press release or other public
announcement to the effect that LICENSEE is licensed by QUALCOMM for Licensed
HDR Products without prior written approval of QUALCOMM.
22. APPLICABLE LAW; VENUE.
This Agreement is made and entered into in the State of California and
shall be governed by and construed and enforced in accordance with the laws of
the State of California without regard to conflict of laws principles. Any
dispute, claim or controversy arising out of or relating to this Agreement, or
the breach or validity hereof, except for those disputes expressly addressed in
Section 23 hereof, shall be adjudicated only by a court of competent
jurisdiction in the county of San Diego, State of California.
23. DISPUTES RELATING TO FOREIGN PATENTS.
Any controversy, claim or dispute (separately or collectively, the
"Dispute") as to whether a product manufactured and/or sold by LICENSEE outside
the United States would, but for the license granted hereunder, infringe any
foreign patent of QUALCOMM licensed hereunder and therefore is subject to
royalties hereunder, shall be resolved in accordance with the procedures
specified in this Section 23 which shall be the sole and exclusive procedures
for the resolution of any such Dispute.
The Parties will attempt in good faith to resolve promptly any Dispute by
negotiations between senior executives of the Parties who have the authority to
settle the Dispute. If the Dispute is not resolved within [**] days of a party's
written request for negotiation, either party may initiate arbitration as
hereinafter provided.
A Party desiring to commence arbitration shall provide written notice to
the other Party setting forth the Dispute(s) to be arbitrated. Within [**] days
of receipt of such written notice, the Parties will attempt in good faith to
reach agreement on an impartial arbitrator having as nearly as practicable the
following qualifications in order of importance: (1) at least ten years
experience in patent litigation, including substantial participation in at least
two patent trials, and/or ten years experience in patent prosecution in the
telecommunications field and/or at least three years experience as a Federal
Court of Appeals or District Court Judge, (2) expertise in the field of digital
25
spread spectrum communications as applied to the telecommunications industry,
and (3) some familiarity with the patent laws of the country or countries at
issue in the Dispute. In the event the Parties are unable to agree upon an
arbitrator within [**] days of the above written notice, the arbitrator shall be
selected by Judicial Arbitration and Mediation Service/Endispute, Inc. (or some
similar company if the Judicial Arbitration and Mediation Service/Endispute,
Inc. is not available). The selected arbitrator shall be impartial and shall
have, as nearly as practicable, the qualifications set forth above. The Parties
will share equally the fees and expenses of the arbitrator.
The arbitration hearing shall commence in San Diego within [**] days of the
appointment of the arbitrator. The Parties shall be entitled to conduct
discovery prior to the arbitration hearing in accordance with Federal Rules of
Civil Procedure, subject to any limitations ordered by the arbitrator.
The arbitration hearing shall be conducted in accordance with the Federal
Rules of Civil Procedure and the Federal Rules of Evidence or such other
procedures and rules set by the arbitrator. The arbitrator shall be authorized
and empowered only to rule as to whether products manufactured and/or Sold by
LICENSEE in a foreign country or countries would, but for the license granted
hereunder, infringe any claim of the applicable foreign patent(s) of QUALCOMM,
and if so, the amount of the royalties owed by LICENSEE as to such product(s)
under Section 4.2 of this Agreement. The arbitrator shall award attorneys' fees
and costs to the prevailing Party. The arbitrator shall have no authority to
determine whether or not any product(s) of LICENSEE imported into or
manufactured and/or Sold in the United States is subject to the payment of
royalties under this Agreement or to determine any other issue except those
expressly set forth above. The arbitrator shall have no authority to make any
finding or award as to the validity or enforceability of any patent.
The final award of the arbitrator shall be rendered in writing and signed
by the arbitrator. The final award shall be entered within [**] days of the
commencement of the arbitration hearing. Each Party agrees to abide by the
arbitration award, and to the enforcement of the arbitration award in the United
States. Each Party further agrees that judgment may be entered upon the award in
any court of competent jurisdiction in the United States.
24. LATE CHARGE.
Each Party may charge the other a late charge, with respect to any amounts
that the other owes hereunder and fails to pay on or before the due date, in an
amount equal to the lesser of one and [**] percent ([**]%) per month, pro-rated,
or the maximum amount permitted by law.
26
25. ATTORNEYS' FEES.
In the event of any proceeding to enforce the provisions of this Agreement,
the prevailing Party (as determined by the court) shall be entitled to
reasonable attorneys' fees as fixed by the court.
26. ENTIRE AGREEMENT.
The terms and conditions contained in this Agreement supersede all prior
and contemporaneous oral or written understandings between the Parties with
respect to the subject matter thereof and constitute the entire agreement of the
Parties with respect to such subject matter, except as set forth in a Supply
Agreement between the Parties. Such terms and conditions shall not be modified
or amended except by a writing signed by authorized representatives of both
Parties.
27. INDEPENDENT CONTRACTORS.
The relationship between QUALCOMM and LICENSEE is that of independent
contractors. QUALCOMM and LICENSEE are not joint venturers, partners, principal
and agent, master and servant, employer or employee, and have no other
relationship other than independent contracting parties.
28. U.S. DOLLARS.
All payments to be made hereunder shall be made in dollars of the United
States of America by wire-transfer and at a bank to be designated by the payee.
27
29. FORCE MAJEURE
Neither Party shall be in default or liable for any loss or damage
resulting from delays in performance or from failure to perform or comply with
terms of this Agreement (other than the obligation to make payments, which shall
not be affected by this provision) due to any causes beyond its reasonable
control, which causes include but are not limited to Acts of God or the public
enemy; riots and insurrections; war; fire; strikes and other labor difficulties
(whether or not the Party is in a position to concede to such demands);
embargoes; judicial action; lack of or inability to obtain export permits or
approvals; and acts of civil or military authorities.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed as of the Effective Date. This Agreement may be signed in counterpart.
XXXXXXXX Xxxxxxxxxxxx LICENSEE
BY: /s/ X. Xxxxxxx BY: /s/ Xxxxxxx X. Xxxxxx
--------------------------------- ------------------------------------
TITLE: Senior Vice President TITLE: President & CEO
28
EXHIBIT A
CERTIFICATE
The undersigned official of ________ ("LICENSEE") is providing the following
information to QUALCOMM pursuant to that certain HDR Infrastructure Equipment
License Agreement entered into between LICENSEE and QUALCOMM (the "Agreement").
All capitalized terms used in this Certificate have the definitions ascribed to
them in the Agreement.
This Certificate reflects the Royalties payable by LICENSEE for the [**] ended:
________________, 20___.
DETERMINATION [**] FROM SELLING
GENERAL INFORMATION REGARDING "SALE" OF SELLING PRICE PRICE CALCULATION OF ROYALTIES
----------------------------------------------------- ------------- ----------------- ------------------------------------
Date and Country of If sold to Number of Selling Price [**] [**] Applicable Applicable Amount of
Sale by LICENSEE and Related Buyer, Licensed HDR paid by Net Selling Royalty Royalty
Affiliates (e.g., if identity of Products Sold Purchaser Price Percentage
sold for use in the Related Buyer.
United States, state
"sold for use in
U.S.")
TOTAL ROYALTIES _______
DUE AND PAYABLE $______
The undersigned hereby certifies that the foregoing represents an accurate and
complete record of all royalties due and payable by LICENSEE for the [**]
specified above.
Signature:
---------------------------
Title:
-------------------------------
Date:
--------------------------------
EXHIBIT B
INFRASTRUCTURE EQUIPMENT LICENSE AGREEMENT
This Infrastructure Equipment License Agreement (the "Agreement") is entered
into on _______________, 2000 by and between XXXXXXXX Xxxxxxxxxxxx, a Delaware
Corporation, and ________________________________, a ___________________________
corporation, with respect to the following facts:
RECITALS
WHEREAS, QUALCOMM has developed certain proprietary Code Division Multiple
Access technology which may be useful in providing greater capacity and improved
quality and reliability compared to other Wireless telephone technologies;
WHEREAS, LICENSEE desires to obtain a license of QUALCOMM's Intellectual
Property to manufacture and sell the Licensed Products, and QUALCOMM desires to
grant such license in accordance with the terms and conditions set forth in this
Agreement; and
WHEREAS, QUALCOMM desires to obtain a license of LICENSEE's Intellectual
Property to manufacture and sell the Licensed Products and LICENSEE desires to
grant such license in accordance with the terms and conditions set forth in this
Agreement.
AGREEMENT
NOW THEREFORE, the parties hereby agree as follows:
1. HEADINGS AND DEFINITIONS.
All headings used in this Agreement are inserted for convenience only and
are not intended to affect the meaning or interpretation of this Agreement or
any clause. Reference to "third party or third parties" shall not mean either
Party. For the purpose of this Agreement, the following definitions apply:
"Affiliates" means, as to a Party, any present or future Parent of the Party and
any present or future Subsidiary of the Party and/or its Parent, but only for so
long as the Parent remains the Parent of the Party and the Subsidiary remains a
Subsidiary of the Party and/or its Parent. The term "Parent" means any
corporation or other legal entity that owns, directly or indirectly (i) more
than 50% of the shares or other securities of the Party entitled to vote for
election of directors (or other managing authority) of the Party or (ii) if such
Party does not have outstanding shares or securities, more than 50% of the
equity interest in such Party, but only for so long as such ownership or control
exists in (i) or (ii) above. The term "Subsidiary" of a Party means any
corporation or other legal entity (i) the majority (more than 50%) of whose
shares or other securities entitled to vote for election of directors (or other
managing authority) is now or hereafter owned or controlled by such Party either
directly or indirectly or (ii) which does not have outstanding shares or
security but the majority (more than 50%) of the equity interest in which is now
or hereafter owned or controlled by such Party either directly or indirectly,
but only for so long as such ownership or control exists in (i) or (ii) above.
"BSC" means the base station controller, which contains the controlling elements
and resources that provide a channel between the BTS(s) and the System Switch.
The BSC or any of the elements contained within the definition of the BSC may be
a part of or integrated into the System Switch.
"BTS" means the base station transceiver subsystem, which is wireless access
equipment that provides for network receive and/or transmit functionality to
and/or from Subscriber Units as a part of a cell site for Wireless Applications.
The BTS is the link between the Subscriber Units and the BSC. Included in the
BTS are the antennas, transmitters, receivers, power amplifiers and interface
hardware to support the link to the BSC.
"CDMA" means code division multiple access technology.
"CDMA Applications" means all communication applications (regardless of the
transmission medium) which operate using code division multiple access ("CDMA")
technology, whether or not based on IS-95, cdma2000 or W-CDMA, and irrespective
of frequency band.
"CDMA ASICs" means QUALCOMM's cell site modem (CSM) CDMA application specific
integrated circuit, and any revision, generation, modifications or integration
to or of the CSM, purchased from QUALCOMM.
"CDMA Enabling Infrastructure Equipment" means any product (including all of the
Components, hardware, firmware and/or software contained therein) which performs
any or all of the Functions and which is for use as part of (included within)
either the BTS, BSC or System Switch, irrespective of whether initially Sold as
part of (included within) a BTS, BSC or System Switch or as products to be added
to existing BTS's, BSC's or System Switches. CDMA Enabling Infrastructure
Equipment does not mean Subscriber Units, Components (although Components may be
incorporated into the CDMA Enabling Infrastructure Equipment that is Sold by a
Party) or any assembly or subassembly that is not a field replaceable unit. CDMA
Enabling Infrastructure Equipment includes, as an example and not by way of
limitation, the (i) [**], (ii) [**] that is [**] so that the [**] can be
utilized and (iii) [**], meaning the [**] that includes (a) [**], (b) [**], (c)
[**] using any QUALCOMM Intellectual Property, (d) [**] using any QUALCOMM
Intellectual Property and/or (e) other service options using any QUALCOMM
Intellectual Property.
"Channel Units" means any BTS module or field replaceable assembly used to
modulate or demodulate the CDMA waveform, process the data and/or perform
ancillary functions related to one or more CDMA channels for communication
between a BTS and Subscriber Units. Examples of CDMA channels include, but are
not limited to traffic, paging, sync, pilot and access channels. Channel Units
may contain Components.
"Commercially Necessary IPR" means those Intellectual Property Rights which (i)
the Party or its Affiliates has the right to license to the other Party without
payment of royalties or any other consideration to any third party, (ii) are not
essential to the manufacture, use or sale of Licensed Products and/or Components
which comply with the specifications of the CAI and (iii) provide Licensed
Products and/or Components with a competitive advantage (e.g., cost, lead-time
or quality advantages) or which add to Licensed Products or Components a feature
or other
-2-
characteristic which may be reasonably required by the market place; but the
term Commercially Necessary IPR does not include any trade name, trademark,
service xxxx, or similar symbols, abbreviation, contractions or simulations
identifying the Party and its Affiliates (except as set forth in Section 8, if
the Party is QUALCOMM).
"Common Air Interface" or "CAI" means the technical description of QUALCOMM's
CDMA digital air interface specification for communication between cell site or
other base station transceivers and Subscriber Units to the extent adopted as an
industry standard by the Telecommunications Industry Association or other
recognized international standards bodies. The term "Standard" includes only (i)
the TIA's IS-95 digital cellular standard and the related standards issued in
association therewith (e.g., XX-00, XX-00, XX-00, IS-99), and (ii) other CDMA
standards which specify the same Physical Layer as IS-95 if approved by QUALCOMM
(i.e. QUALCOMM voted in favor of adopting such standard) and adopted by other
international standards bodies throughout the world, and (iii) QUALCOMM's
proposed cdma2000 standards.
"Components" means application specific integrated circuits (ASICs), electronic
devices, integrated circuits, including firmware thereon, and/or families of
devices for use in products for wireless telecommunication applications.
"Costs" means the actual labor, material and other direct costs, expenses and
associated indirect expenses, including overheads and general and administrative
expenses consistently applied in accordance with the U.S. generally accepted
accounting principles.
"Distributed Antenna" means a multi-node antenna system and related circuitry
that is designed to make use of delays in CDMA signal transmission and/or
reception so that the rake receiver functionality can be utilized.
"Effective Date" means the date first set forth above.
"[**]" means [**], a [**] corporation and any of its subsidiaries in which it
owns or controls fifty percent (50%) or more of the voting power.
"Functions" means any or all of the following which incorporates any or all of
QUALCOMM's Intellectual Property: (i) handoff, (ii) CDMA waveform modulation and
/or demodulation, (iii) power control, (iv) call packet connection and/or
routing, (v) paging, (vi) voice encoding and/or decoding (vocoder) services,
(vii) data services, (viii) fax services, (ix) system initialization and
configuration, (x) diagnostic monitoring or maintenance of any of the foregoing
functions and/or (xi) any other function.
"Future Commercially Necessary IPR" means all claims of any patents (foreign and
domestic) which fall within the definition of Commercially Necessary IPR, but
which do not fall within the definition of Included Commercially Necessary IPR.
"Have Made" means the right of LICENSEE under [**] Patents to have a third party
make a Licensed Product for CDMA Applications for the use and benefit of
LICENSEE, provided that:
(i) LICENSEE owns and supplies the designs, or specifications, or working
drawings to such third party;
-3-
(ii) such designs, specifications, and working drawings are in sufficient
detail that no substantial additional design by such third party is
required;
(iii) such third party is not allowed to sell such Licensed Product to
other third parties; and
(iv) each such Licensed Product sold by LICENSEE shall bear the trademarks,
trade names, or other commercial indicia of LICENSEE, although such
Licensed Products may be co-branded with the trademarks, trade names,
or other commercial indicia of the reseller or distributor of such
Licensed Products. The requirements of this subparagraph (iv) shall
not apply where a customer requires that the Licensed Product bear
only such customer's trademarks, trade names, or other commercial
indicia.
"Included Commercially Necessary IPR" means (1) with respect to the Intellectual
Property Rights being licensed by QUALCOMM, (a) all claims of any patents
(foreign and domestic) which are now issued or which are applied for [**] and
which constitute Commercially Necessary IPR and (b) all copyright, trade
secrets, know-how, technical assistance and other intellectual property rights
which constitute Commercially Necessary IPR and which may be furnished by
QUALCOMM to LICENSEE pursuant to and during the term of this Agreement and (2)
with respect to the Intellectual Property Rights being licensed by Licensee, (a)
all claims of any patents (foreign and domestic) which are now issued or which
are applied for [**] and which constitute Commercially Necessary IPR and (b) all
copyright, trade secrets, know-how, technical assistance and other intellectual
property rights which constitute Commercially Necessary IPR and which may be
furnished by LICENSEE to QUALCOMM pursuant to and during the term of this
Agreement.
"Intellectual Property Rights" means patents, copyrights, trade secrets,
know-how and other intellectual property rights.
"[**] Patents" means U.S. Patent Nos. [**] and any continuation,
continuation-in-part and divisional application based on such patents, and any
foreign counterparts of such patents, continuations, continuations-in-part or
divisional applications.
"IS-95 Related Systems" means IS-95 and any single carrier system with a
spreading bandwidth not greater than 1.25 Mhz and based on or derived from
IS-95.
"Licensed Products" means only the BSC, BTS, System Switch, Channel Units, and
CDMA Enabling Infrastructure Equipment.
"LICENSEE" means _____________________________________________________________.
"LICENSEE's Intellectual Property" means LICENSEE's and its Affiliates'
Technically Necessary IPR and LICENSEE's and its Affiliates' Included
Commercially Necessary IPR.
"Masks" and "Mask Sets" mean the mask sets for Components and/or the computer
output data used to generate the mask sets for Components.
-4-
"Net Selling Price", with respect to each Licensed Product Sold by LICENSEE,
shall mean one of the following, whichever is applicable:
(a) [**];
(b) [**].
(c) [**].
"Party" shall individually mean QUALCOMM or LICENSEE and the term "Parties"
shall collectively mean QUALCOMM and LICENSEE.
"[**]" shall mean [**], a company existing under the laws of [**].
"[**]' CDMA Technically Necessary Patents" means claims of any patents which
[**] (or any of its Affiliates) own or have the right to license that are
essential or claimed by [**] or any of its Affiliates to be essential to the
manufacture, use or sale of Licensed Products (i.e., must necessarily be
infringed upon in order to comply with the CAI). Notwithstanding anything to the
contrary herein, the term "[**] CDMA Technically Necessary Patents" at a minimum
includes U.S. patent numbers: [**], and their foreign counterparts.
"Physical Layer" shall have the same meaning as given in the TIA's IS-95 digital
cellular standard.
"QUALCOMM's Intellectual Property" means QUALCOMM's Technically Necessary IPR
and QUALCOMM's Included Commercially Necessary IPR and [**] Patents; provided
that, notwithstanding the foregoing, the term "QUALCOMM's Intellectual Property"
shall not include any intellectual property, including but not limited to
patents, owned by [**].
"Qualifying Licensed Product" means a Licensed Product which contains and
incorporates a CDMA ASIC purchased by LICENSEE from QUALCOMM.
"Selling Price" means the gross selling price and/or value of other
consideration charged by the LICENSEE or its final vendee Related Buyer for each
Licensed Product in the form in which it is Sold (whether or not assembled and
without excluding therefrom any Components or subassemblies thereof which are
included with such Licensed Product) [**].
-5-
"Sold," "Sale," "Sell" means put into use, sold, leased or otherwise transferred
and a sale shall be deemed to have occurred upon putting into use, shipment or
invoicing, whichever shall first occur.
"Subscriber Unit" means a CDMA telephone, including but not limited to mobile,
transportable and portable telephones, which can be used to initiate and receive
Wireless CDMA telecommunications transmissions.
"System Switch" means the telephone switching equipment that provides the
interface between a Wireless system and the PSTN and/or may provide the
interface between BTS's and/or BSC's.
"Technically Necessary IPR" means all claims of any patents (foreign and
domestic) issued on, before or after the Effective Date which (i) the Party or
its Affiliates has the right to license to the other Party without payment of
royalties or any other consideration to any third party (except for payments to
the Party or its Affiliates and payments to third persons for the invention or
creation made by such third persons while employed by any of the Party or its
Affiliates) and (ii) is essential to the manufacture, use or sale of a usable
Licensed Product and/or Components which complies with the specifications of the
CAI (i.e., must be infringed upon in order to comply with the CAI); but the term
Technically Necessary IPR does not include (a) manufacturing process, (b)
semiconductor structure not specific to Components and (c) any trade name,
trademark, service xxxx, or similar symbols, abbreviation, contractions or
simulations identifying the Party and its Affiliates.
"Wireless" and "Wireless Applications" means terrestrial-based, land mobile,
wireless telecommunications applications, including but not limited to cellular,
personal communications services (PCS), wireless local loop and wireless PABX
applications which are based upon and compliant with the CAI. Notwithstanding
the foregoing, the terms "Wireless" and/or "Wireless Applications" shall not
include (i) satellite applications (defined as any application which utilizes a
direct connection between the Subscriber Unit and any satellite), and/or (ii)
Cordless Telephone Applications (defined as applications not dependent on use of
a switch, including but not limited to a PABX switch, for interface to the
public network).
-6-
2. TERM OF AGREEMENT.
This Agreement shall commence upon the Effective Date and, unless otherwise
terminated or canceled as provided herein, shall continue in full force and
effect thereafter.
3. UP-FRONT LICENSE FEE TO QUALCOMM.
In partial consideration of the rights granted to LICENSEE under this
Agreement, LICENSEE shall pay an up-front license fee to QUALCOMM in the amount
of [**] dollars (US$[**]) (the "Up-Front License Fee"). LICENSEE shall pay the
Up-Front License Fee no later than [**] days after the Effective Date.
4. DOCUMENTATION AND OTHER DELIVERABLES; TECHNICAL ASSISTANCE.
4.1 Documentation. In full satisfaction of its obligations to deliver
documentation to LICENSEE, QUALCOMM shall promptly deliver to LICENSEE within
[**] business days after the Effective Date the documentation specified in
Exhibit A.
4.2 Limitation on Deliverables. Nothing in this Agreement shall require the
delivery of any documentation or product designs not otherwise specified in
Exhibit A, including but not limited to: [**].
4.3 Representations and Limitations on Furnished Information. QUALCOMM
shall use reasonable commercial efforts to verify the accuracy of the
information furnished by it hereunder, but QUALCOMM shall not be liable for
damages arising out of or resulting from anything made available hereunder or
the use thereof nor be liable to LICENSEE for consequential, special or
incidental damages under any circumstances. The sole obligation of QUALCOMM with
respect to such information shall, subject to the other provisions herein or in
other written agreements between the Parties, be to furnish it to LICENSEE.
QUALCOMM shall have no responsibility for the ability of LICENSEE to use such
information, the quality or performance of the products produced therefrom by
LICENSEE, or the claims of third parties arising from the use of such products
or information. QUALCOMM does not warrant and shall not be responsible for any
design, specification, drawing, blueprint, reproduced tracing, or other data or
information furnished by it to LICENSEE, except that it shall furnish such in
good faith to the best of QUALCOMM's knowledge and ability.
4.4 Technical Meetings and Assistance. During the [**] after the Effective
Date of this Agreement, upon written request from LICENSEE with reasonable
advance written notice, QUALCOMM shall provide LICENSEE (a) up to an aggregate
of [**] man-hours of technical assistance at QUALCOMM's facilities in San Diego
to respond to LICENSEE's reasonable questions or comments to respond to
LICENSEE's reasonable questions or comments, with no more than [**] meeting days
in any [**] day period. After such [**] man-hours of technical assistance have
been used or the [**] has expired, QUALCOMM shall provide reasonable amounts of
technical assistance to LICENSEE on an as available basis and at QUALCOMM's then
standard rates for providing such technical assistance. In such event, QUALCOMM
shall be permitted to invoice LICENSEE for such charges on a [**] basis. Payment
by LICENSEE with respect to such invoices shall be on a "[**]" basis after the
date of the invoice. QUALCOMM may terminate such additional technical assistance
at any time upon written
-7-
notice to Licensee. This Agreement shall not require QUALCOMM to provide any
technical assistance relating to the design of Components or any technical
assistance not related to Licensed Products.
5. QUALCOMM LICENSE.
5.1 Grant of License From QUALCOMM. Subject to the terms and conditions of
this Agreement, including but not limited to timely payment of the license fees
and royalties set forth herein, QUALCOMM hereby grants to LICENSEE a worldwide,
personal, nontransferable and non-exclusive license (without the right to
sublicense, except to Affiliates of LICENSEE as permitted in Section 5.3) to use
QUALCOMM's Intellectual Property solely for Wireless Applications (a) to make
(and have made) and import, use, sell, lease or otherwise dispose of Licensed
Products and (b) to make (and have made) Components that have been exclusively
designed by or for LICENSEE (which design is owned and used exclusively by
LICENSEE) and import, use, sell, lease or otherwise dispose of Components;
provided, however that such Components may only be used, sold, leased or
otherwise disposed of by LICENSEE if they are included and used, sold, leased or
otherwise disposed of by LICENSEE as part of and within complete Licensed
Products of LICENSEE (or as replacement parts for Licensed Products previously
sold by LICENSEE). No other, further or different license is hereby granted or
implied.
5.1.1 [**] Patents. As part of QUALCOMM's Intellectual Property being
licensed under Section 5.1 above, QUALCOMM is granting rights to LICENSEE under
the [**] Patents. Notwithstanding anything to the contrary contained in this
Agreement, the license to LICENSEE under the [**] Patents granted in Section 5.1
may terminate in accordance with the provisions set forth below:
5.1.1.1 On or before November 2, 1996. If, at any time on or
before November 2, 1996, LICENSEE or its Affiliates initiates a CDMA patent
infringement lawsuit against [**] or its affiliates (or their customers)
asserting that any product manufactured or sold by [**] or its affiliates for
use in non-IS-95 based wireless applications infringes any of LICENSEE's (or its
Affiliates') patents, then the license granted by QUALCOMM to LICENSEE under
this Agreement with respect to the [**] Patents only shall immediately
terminate.
5.1.1.2 After November 2, 1996. If, at any time after November 2,
1996, LICENSEE or its Affiliates initiates a CDMA patent infringement lawsuit
against [**] or its affiliates (or their customers) asserting that any product
manufactured and sold by [**] for use in non-IS-95 based wireless applications
infringes any of LICENSEE's (or its Affiliates') patents and LICENSEE (or its
Affiliates) does not prevail in such lawsuit, then the license granted by
QUALCOMM to LICENSEE under this Agreement only with respect to the [**] Patents
shall immediately terminate.
5.1.1.3 Licensed Products that Contain QUALCOMM's CDMA ASICs.
Notwithstanding if the license under this Agreement as to the [**] Patents
terminates under Sections 5.1.1.1 or 5.1.1.2 above, Licensed Products
manufactured by LICENSEE for IS-95
-8-
based Wireless Applications, which Licensed Products incorporate QUALCOMM's CDMA
ASICs purchased from QUALCOMM, will be free from infringement from the [**]
Patents.
5.2 Royalties. In partial consideration of the rights granted to Licensee
under the License Agreement, Licensee shall pay to QUALCOMM, no later than [**]
days after the end of each [**] during the term of the License Agreement, an
amount equal to the percentages of the Net Selling Price for the Licensed
Products set forth below that are sold during such [**] by Licensee and its
Affiliates, whether such Licensed Products are manufactured by Licensee or by
third parties or QUALCOMM for Licensee:
(a) [**] ; and
(b) [**]
-9-
5.3 Right To Sublicense Affiliates. LICENSEE shall have the right to grant
sublicenses only to Affiliates of LICENSEE with respect to any rights conferred
upon LICENSEE under this Agreement; provided, however, that any such sublicense
shall be subject in all respects to the restrictions, exceptions, royalty and
other payment obligations, reports, termination provisions, and other provisions
contained in this Agreement; provided, however that no additional up-front
license fee shall be required to be paid with respect to any such sublicense.
LICENSEE shall also pay or cause its sublicensed Affiliates to pay the same
royalties on all Licensed Products Sold by its sublicensed Affiliates as if
LICENSEE had Sold such Licensed Products. LICENSEE shall report to QUALCOMM the
Net Selling Price for all Licensed Products Sold by each such Affiliate.
LICENSEE shall be responsible and liable to QUALCOMM in the event that any of
its sublicensed Affiliates fails under any such sublicense to honor and comply
with all obligations of LICENSEE as though said obligations were made expressly
applicable to the sublicensed Affiliate. Except as set forth above, LICENSEE
shall have no right to sublicense any of QUALCOMM's Intellectual Property. Any
sublicense by LICENSEE to an Affiliate of LICENSEE shall terminate immediately
if such Affiliate ceases to be an Affiliate of LICENSEE.
5.4 [**]
5.5 Invalid or Expired Patents. The obligation for LICENSEE to pay
royalties to QUALCOMM under Section 5.2 shall be [**] in the event all patents
which are licensed hereunder by QUALCOMM and used by LICENSEE have expired or
are held to be unenforceable against LICENSEE.
5.6 Taxes. Any taxes, duties or imposts other than income or profits taxes
assessed or imposed upon the sums due hereunder in the United States, shall be
borne and discharged by LICENSEE and no part thereof shall be deducted from the
amounts payable to QUALCOMM under any clause of this Agreement, said amounts to
be net to QUALCOMM, free of any and all deductions. Notwithstanding the
foregoing, in the event sums payable under this Agreement become subject to
income or profits taxes under the tax laws of any country and applicable
treaties between the United States and such country, LICENSEE may, if and to the
extent required by law, withhold from each payment the amount of said income or
profits taxes due and
-10-
required to be withheld [**] of each payment. LICENSEE will furnish and make
available to QUALCOMM relevant receipts regarding the payment of any country
taxes paid over to any country's government on behalf of QUALCOMM. Such tax
receipts will clearly indicate the amounts that have been withheld from the
gross amounts due to QUALCOMM. Any and all other taxes, levies, charges or fees
will be paid by LICENSEE for its own account.
5.7 Conversion to U.S. Dollars. Royalties shall be paid in U.S. dollars. To
the extent that the Net Selling Price for Licensed Products Sold by LICENSEE
outside of the United States is paid to LICENSEE other than in U.S. dollars,
LICENSEE shall convert the portion of the royalty payable to QUALCOMM from such
Net Selling Price into U.S. dollars at the official rate of exchange of the
currency of the country from which the Net Selling Price was paid, as quoted by
the U.S. Wall Street Journal (or the Chase Manhattan Bank or another agreed-upon
source if not quoted in the Wall Street Journal) for the last business day of
the calendar quarter in which such Licensed Products were Sold. If the transfer
of or the conversion into U.S. dollars is not lawful or possible, the payment of
such part of the royalties as is necessary shall be made by the deposit thereof,
in the currency of the country where the sale was made on which the royalty was
based to the credit and account of QUALCOMM or its nominee in any commercial
bank or trust company of QUALCOMM's choice located in that country, prompt
notice of which shall be given by LICENSEE to QUALCOMM.
5.8 [**] Covenant Not to Assert. QUALCOMM hereby represents and warrants
that [**], on behalf of itself and its Affiliates, covenants that [**] and its
Affiliates will not assert any of the [**]' CDMA Technically Necessary Patents
against LICENSEE's (or, if sublicensed in accordance with Section 5.3 of this
Agreement, LICENSEE's Affiliates') manufacture, use, sale, or importation of
Qualifying Licensed Products solely for Wireless Applications; provided,
however, that [**] and/or its Affiliates may assert the [**]' CDMA Technically
Necessary Patents against LICENSEE if LICENSEE asserts any of its patents
against [**] or its Affiliates and any of their telephone products or if
LICENSEE initiates a declaratory judgment action, reexamination proceedings or
opposition proceedings challenging the validity of any of the [**]' CDMA
Technically Necessary Patents. Nothing in this Section 5.8 shall prohibit, limit
or covenant against [**]' rights to assert any of its patents against LICENSEE
or its Affiliates for infringement relating to any time division multiple access
(TDMA) equipment or system (including, without limitation, [**]).
5.9 [**] Patents.
5.9.1 [**] Patents Sublicensed. The term "[**] Patents" means all of
the following patents which are owned or sublicenseable by [**] without payment
of any royalty or other consideration to a third party: (a) [**] patents which,
but for the sublicenses granted under Section 5.9.2 below, would be infringed by
the use of QUALCOMM's CDMA ASICs for their intended purposes (the "[**] ASIC
Patents"), and (b) [**] Essential Patents which are, or are claimed by [**] to
be, essential to IS-95 Rev A or Rev B, whether or not such Essential Patents are
infringed by the use of QUALCOMM's CDMA ASICs (the "Other [**] Patents"). For
example, by incorporating QUALCOMM's existing (as of the Effective Date) CDMA
ASIC into a Licensed Product Sold by LICENSEE, the [**] Patents sublicensed to
LICENSEE would include, but not necessarily be limited to all of the following
patents that [**] asserted against
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QUALCOMM in litigation: U.S. Patent Nos. [**], and their foreign counterparts,
reissuances, divisionals, continuations and continuations in part.
The term "Essential Patents" means those patents (in any country of the
world) as to which it is, or is claimed by the patent owner to be, not possible
on technical (but not commercial) grounds, taking into account normal technical
practice and the state of the art generally available at the time of adoption or
publication of the relevant standard for CDMA Applications, to make, sell,
lease, otherwise dispose of, repair, use or operate equipment or methods which
comply with such standard without infringing such patent.
5.9.2 Sublicense Under [**] Patents. The following sublicense is
granted subject to the terms and conditions of this Agreement (including but not
limited to the payment of royalties hereunder in accordance with Section 5.2)
and Section 5.9.3 below: With respect only to those Licensed Products Sold by
LICENSEE and its Affiliates that contain QUALCOMM's CDMA ASIC, QUALCOMM hereby
grants to LICENSEE a sublicense under all of the [**] ASIC Patents solely for
CDMA Applications and under all of the Other [**] Patents solely for IS-95
Related Systems to make (and Have Made), use, sell, offer for sale, lease or
otherwise dispose of, and import Licensed Products into which QUALCOMM's CDMA
ASIC is incorporated. Notwithstanding the foregoing, no right or sublicense is
being granted for or may be extended under patents that apply to the portion of
any product that implements an air interface other than CDMA or analog (e.g., no
rights and sublicenses are granted for or may be extended under patents that
apply to the GSM part of any product).
5.9.3 Non-Assertion Against [**]. The sublicense granted to LICENSEE
under Section 5.9.2 above shall continue only so long as LICENSEE and its
Affiliates do not assert, either in litigation or by a direct communication, any
Essential Patents for CDMA Applications against [**] CDMA subscriber,
infrastructure or test equipment products and LICENSEE does not dismiss such
litigation or withdraw such assertion or offer a royalty-free license under such
patents within [**] days after QUALCOMM's receipt of notice from [**] of such
litigation or communication.
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6. LICENSE BY LICENSEE
6.1 Grant of License from LICENSEE. Subject to the terms and conditions of
this Agreement, LICENSEE hereby grants to QUALCOMM a worldwide, personal,
nontransferable, non-exclusive, fully-paid, irrevocable and royalty free license
(without the right to sublicense, except to Affiliates of QUALCOMM as permitted
in Section 6.2) to use LICENSEE's Intellectual Property to (a) make (and have
made) and import, use, sell, lease or otherwise dispose of Licensed Products and
(b) to make (and have made), import, use, sell, lease or otherwise dispose of
Components. No other, further or different license is hereby granted or implied.
Notwithstanding anything to the contrary in this Agreement, QUALCOMM may assign
the licenses from LICENSEE under this Section 6.1 as to Components to any
successor (by purchase, divestiture, merger or otherwise) to all or
substantially all of QUALCOMM's Components business. QUALCOMM shall give prompt
written notice to LICENSEE of any such assignment.
6.2 Right To Sublicense Affiliates. QUALCOMM shall have the right to grant
sublicenses only to Affiliates of QUALCOMM with respect to any rights conferred
upon QUALCOMM under this Agreement; provided, however, that any such sublicense
shall be subject in all respects to the restrictions, exceptions, termination
provisions, and other provisions contained in this Agreement. QUALCOMM, in
addition to its sublicensed Affiliates, shall be responsible and liable to
LICENSEE in the event that any of its sublicensed Affiliates fails under any
such sublicense to honor and comply with all obligations of QUALCOMM as though
said obligations were made expressly applicable to the sublicensed Affiliate.
Except as set forth above, QUALCOMM shall have no right to sublicense any of
LICENSEE's Intellectual Property. Any sublicense by QUALCOMM to an Affiliate of
QUALCOMM shall terminate immediately if such Affiliate ceases to be an Affiliate
of QUALCOMM.
6.3 License Of Future Commercially Necessary IPR. Each Party agrees that,
to the extent it makes licenses of Future Commercially Necessary IPR generally
available to third parties, it will, if requested by the other Party, offer such
licenses to the other Party on commercially reasonable terms and conditions.
7. COMMITMENT BY LICENSEE
7.1 Covenant Not to Assert. LICENSEE hereby covenants that neither it nor
its Affiliates will assert any of LICENSEE's Technically Necessary IPR against
any of QUALCOMM's other Infrastructure Equipment licensees and their Affiliates
(collectively, the "Authorized Licensees") with respect to such Authorized
Licensee's use of any of LICENSEE's Technically Necessary IPR to make, use and
sell Infrastructure Equipment and/or Components solely for Wireless
Applications, provided that such Authorized Licensee has agreed with QUALCOMM to
an equivalent undertaking not to assert claims against LICENSEE and its
Affiliates. LICENSEE does not by this Section 7.1 agree, on behalf of itself or
its Affiliates, to waive its rights to assert any of LICENSEE's Commercially
Necessary IPR against any Authorized Licensee with respect to such Authorized
Licensee's use of any of LICENSEE's Commercially Necessary IPR. Any Authorized
Licensee that has agreed with QUALCOMM to an equivalent undertaking not to
assert claims shall be regarded as a third party beneficiary of
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this Section 7.1. QUALCOMM will promptly notify LICENSEE of any Authorized
Licensees that have agreed to such an equivalent undertaking.
7.2 License to Third Parties. The parties agree that it is in the interest
of each of the Parties and of the Wireless industry to obtain the widest
possible acceptance of the final CAI Accordingly, LICENSEE agrees to negotiate
in good faith to promptly grant to Authorized Licensees which do not meet the
requirements of Section 7.1 a license to use all of LICENSEE's Technically
Necessary IPR to make, use and sell Infrastructure Equipment and Components for
Wireless Applications. Each such license shall be granted at reasonable rates
and otherwise on reasonable terms and conditions consistent with LICENSEE's
licensing policies, which may include that such third party grant a
cross-license to LICENSEE of technically necessary intellectual property rights
owned by such third party.
7.3 Best Efforts. LICENSEE shall use its best efforts to market, promote
and sell Licensed Products throughout the world.
8. MARKING
LICENSEE agrees to affix to the exterior or the interior of all Licensed
Products incorporating any of QUALCOMM's Intellectual Property a legible notice
reading: "Licensed by XXXXXXXX Xxxxxxxxxxxx under one or more of the following
Patents," followed by a list of applicable patent numbers taken from the list of
QUALCOMM's patents or as may otherwise be instructed by QUALCOMM.
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9. QUALITY CONTROL
9.1 General Quality of Licensed Products. Throughout the term of this
Agreement, LICENSEE shall maintain, for the Licensed Products manufactured or
Sold by it, at least the same manufacturing, servicing and quality standards
currently utilized by LICENSEE in connection with its similar analog and, if
applicable, other digital products.
9.2 Standards Compliance Testing. LICENSEE represents and warrants that the
Licensed Products and Components that it makes or has made will adhere with and
conform to, in all respects, the specifications contained in the CAI and that
LICENSEE shall comply with the rules, regulations or other requirements set by
such authorized standards body. LICENSEE shall, at QUALCOMM's reasonable written
request, permit QUALCOMM or entities designated by QUALCOMM and accepted by
LICENSEE, which acceptance shall not be unreasonably withheld or delayed, to
perform tests of LICENSEE's Licensed Products to ensure compliance and
conformity with the CAI. If such tests indicate material noncompliance or
nonconformity therewith, such tests shall be at LICENSEE's cost and LICENSEE
shall reimburse QUALCOMM for any such reasonable tests performed by QUALCOMM at
[**]. If such test does not indicate material noncompliance or nonconformity,
the test shall be at [**]. Nonconforming Licensed Products, if any, shall not be
sold or marketed by LICENSEE until the non-conformity is corrected.
10. INFORMATION
10.1 Restrictions on Disclosure and Use. All documentation and technical
and business information and intellectual property in whatever form recorded
that a Party does not wish to disclose without restriction ("Information") shall
remain the property of the furnishing Party and may be used by the receiving
Party only as follows. Such Information (a) shall not be reproduced or copied,
in whole or part, except for use as expressly authorized in this Agreement; and
(b) shall, together with any full or partial copies thereof, be returned or
destroyed when no longer needed or upon any termination of this Agreement, and
(c) shall be disclosed only to employees or agents of a Party with a need to
know. Moreover, such Information shall be used by the receiving Party only for
the purpose of performing under this Agreement or in the exercise of its rights
it may receive under the provisions of this Agreement. Unless the furnishing
Party consents in this Agreement or otherwise in writing, such Information shall
be held in strict confidence by the receiving Party. The receiving Party may
disclose such Information to other persons, upon the furnishing Party's prior
written authorization, but solely to perform acts which this clause expressly
authorizes the receiving Party to perform itself and further provided such other
person agrees in writing (a copy of which writing will be provided to the
furnishing Party at its request) to the same conditions respecting use of
Information contained in this clause and to any other reasonable conditions
requested by the furnishing Party. These restrictions on the use or disclosure
of Information shall not apply to any Information: (i) which can be proven to be
or have been independently developed by the receiving Party or lawfully received
free of restriction from another source having the right to so furnish such
Information; or (ii) after it has become generally available to the public
without breach of this Agreement by the receiving Party; or (iii) which at the
time of disclosure to the receiving Party was known to such Party free of
restriction and clearly evidenced by documentation in such Party's possession;
or (iv) which the disclosing Party agrees in writing is free of such
restrictions.
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10.2 Scope of Information. Information is subject to this Section 10
whether delivered orally or in tangible form and without regard to whether it
has been identified or marked as confidential or otherwise subject to this
Section 10. Each Party agrees to use its best efforts to xxxx or otherwise
identify proprietary all Information they desire to be subject to the terms of
this clause before furnishing it to the other Party. And, upon request, a Party
shall promptly identify whether specified information must be held by the
requesting Party subject to this clause. Information which is delivered orally
shall be summarized in writing by the disclosing Party and delivered to the
receiving Party within [**] days after disclosure thereof.
10.3 Furnishing Information to Third Parties. Nothing herein shall be
deemed to bar disclosure of Information by a receiving Party to third party
subcontractors, prospective customers or Affiliates of the receiving Party with
a need to know, without the written consent of the furnishing Party, if such
disclosure is reasonably necessary for enjoyment of the receiving Party's rights
to use Intellectual Property Rights licensed under this Agreement, and provided
that each such third party agrees in writing to protect the Information under
terms and conditions comparable, in all material respects, to the terms
contained in this Section 10 and Section 18 with respect to survivability.
11. DISCLAIMER/ LIMITATION OF LIABILITY.
11.1 EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, QUALCOMM MAKES NO
WARRANTIES IN THIS AGREEMENT AS TO PRODUCTS, TECHNOLOGY, MATERIALS, SERVICES,
INFORMATION OR OTHER ITEMS IT FURNISHES TO LICENSEE, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, OR THAT SUCH ITEMS ARE FREE FROM THE RIGHTFUL CLAIM OF ANY
THIRD PARTY, BY WAY OF INFRINGEMENT OR THE LIKE.
QUALCOMM SHALL NOT BE LIABLE TO LICENSEE FOR ANY INCIDENTAL, CONSEQUENTIAL OR
ANY OTHER INDIRECT LOSS OR DAMAGE ARISING OUT OF THIS AGREEMENT OR ANY RESULTING
OBLIGATION OR THE USE OF ANY INTELLECTUAL PROPERTY RECEIVED HEREUNDER, WHETHER
IN AN ACTION FOR OR ARISING OUT OF BREACH OF CONTRACT, FOR TORT, OR ANY OTHER
CAUSE OF ACTION. QUALCOMM SHALL BE PERMITTED TO ENJOIN THE UNAUTHORIZED USE BY
LICENSEE OR ITS AFFILIATES OF ANY OF QUALCOMM'S INFORMATION.
11.2 Negation of Representation and Warranties. Nothing contained in this
Agreement shall be construed as (a) requiring the filing of any patent
application, the securing of any patent or the maintaining of any patent in
force; (b) a warranty or representation by either Party as to the validity or
scope of any patent, copyright or other intellectual property right; (c) a
warranty or representation that any manufacture, sale, lease, use or importation
will be free from infringement of patents, copyrights or other intellectual
property rights of others, and it shall be the sole responsibility of LICENSEE
to make such determination as is necessary with respect to the acquisition of
licenses under patents and other intellectual property of third parties; (d) an
agreement to bring or prosecute actions or suits against third parties for
infringement; (e) an obligation to furnish any manufacturing assistance; or (f)
conferring any right to use, in
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advertising, publicity or otherwise, any name, trade name or trademark, or any
contraction, abbreviation or simulation thereof (other than as set forth in
Section 8).
12. INDEMNITY FOR DAMAGE TO PERSONS, PROPERTY OR BUSINESS
12.1 Indemnification by LICENSEE. LICENSEE shall indemnify, defend and hold
QUALCOMM harmless from, any and all claims, judgments, liabilities, costs and
expenses (including attorneys' fees) arising out of or related, directly or
indirectly, to any injury, loss or damage to persons, property or business
arising from, relating to, or in any way connected with, any Licensed Products
or Components which LICENSEE or its Affiliates manufactures or has manufactured
and sells to a third party or its Affiliate. LICENSEE agrees to indemnify and
hold harmless QUALCOMM against all liability or responsibility of LICENSEE or of
others for any failure attributable to LICENSEE in production, design, operation
or otherwise of products manufactured by or on behalf of LICENSEE and Sold to
third parties, except if such liability or responsibility is due to infringement
claims with respect to QUALCOMM's Intellectual Property.
12.2 [**]
12.3 Notice, Defense and Cooperation. The party seeking indemnification
under Section 12.1 or 12.2 above shall provide the indemnifying party with
prompt notice of any claim within such provisions, shall give the indemnifying
party the full right to defend any such claim and shall cooperate fully in such
defense.
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13. TERMINATION
13.1 Termination Without Cause by LICENSEE. LICENSEE may for any reason, at
any time when it is not using any of QUALCOMM's Intellectual Property, terminate
this Agreement upon ninety (90) days' prior written notice to QUALCOMM; provided
that all license fees and royalties which have accrued under the terms of the
Agreement shall be due and owing and all such amounts and all previous amounts
paid are and shall remain non-refundable. In the event of any such termination,
the license granted by LICENSEE to QUALCOMM in Section 6.1 and 6.2 shall
survive.
13.2 Termination For Cause by QUALCOMM. QUALCOMM may terminate this
Agreement, by written notice to LICENSEE, if LICENSEE shall at any time default
in the payment hereunder or the making of any report hereunder, or shall commit
any material breach of any covenant, representation, warranty or agreement
herein contained, or shall make any false report to QUALCOMM; provided, however,
that in the case of any such breach which is capable of being cured, QUALCOMM
shall not have a right to terminate this Agreement for cause unless and until
LICENSEE shall have failed to remedy any such default, breach or report within
[**] days after written notice thereof by QUALCOMM. LICENSEE shall be able to
effectuate such cure with respect to a default in the payment of any royalty
hereunder no more than three times during the term of this Agreement. Upon
termination of this Agreement for cause, LICENSEE shall duly account to QUALCOMM
for all royalties and other payments within ten days of such termination.
13.3 Termination For Cause by LICENSEE. LICENSEE may terminate this
Agreement, by written notice to QUALCOMM, if QUALCOMM shall at any time commit
any material breach of any material covenant, representation, warranty or
agreement herein contained; provided, however, that in the case of any such
breach which is capable of being cured, LICENSEE shall not have a right to
terminate this Agreement for cause unless and until QUALCOMM shall have failed
to remedy any such material breach within [**] days after receipt by QUALCOMM of
written notice thereof by LICENSEE.
13.4 Bankruptcy, Dissolution or Liquidation. A Party shall provide written
notice (the "Notice") to the other Party immediately upon the occurrence of any
of the following events (the "Events"): (a) insolvency, bankruptcy or
liquidation or filing of any application therefor, or other commitment of an
affirmative act of insolvency; (b) attachment, execution or seizure of
substantially all of the assets or filing of any application therefor; (c)
assignment or transfer of that portion of the business to which this Agreement
pertains to a trustee for the benefit of creditors; (d) disposition, by sale or
assignment of all of its rights, of that portion of the business or the material
assets to which this Agreement pertains; or (e) termination of its business or
dissolution. Either Party shall also have the right to terminate this Agreement
with immediate effect by giving written notice of termination to the other Party
at any time upon or before the later of (1) sixty (60) days after the occurrence
of any of the Events with respect to such other Party (unless such event ceases
within such period), or (ii) sixty (60) days after receipt of the Notice (unless
such event ceases within such period).
13.5 Termination of Agreement in the Event of Litigation. The license from
QUALCOMM to Licensee shall terminate in the event that LICENSEE initiates any
litigation
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against QUALCOMM or its Affiliates which includes any claim for intellectual
property infringement and LICENSEE does not prevail on all such intellectual
property infringement claims.
13.6 Rights Upon Termination. Upon any expiration or termination of this
Agreement, whether for cause or not, all licenses granted hereunder shall also
terminate (except as expressly stated in Section 13.1), and each Party shall
immediately (i) cease using any of the other Party's Intellectual Property
Rights and (ii) return or destroy all information and documentation furnished by
the other Party to such Party. Any termination or expiration of this Agreement
under this Section 13 shall not relieve LICENSEE from its obligation under
Section 14 hereof to make a report or from its liability for payment of
royalties on Licensed Products Sold on or prior to the date of such termination
or expiration and shall not prejudice the right to recover any royalties or
other sums due or accrued at the time of such termination or expiration and
shall not prejudice any cause of action or claim accrued or to accrue on account
of any breach or default. Furthermore, any termination or expiration of this
Agreement under this Section shall not prejudice the right of QUALCOMM to
conduct a final audit of the records of the LICENSEE in accordance with the
provisions of Section 14 hereof. No termination hereunder shall limit the rights
of a Party to sell those Licensed Products in inventory or in process at the
time of termination, subject to payment of the royalty applicable to the sale of
such Licensed Products and continued compliance with the other provisions of
this Agreement.
14. RECORDS AND AUDITS.
14.1 Records. LICENSEE shall keep accurate and complete books and records
concerning any Licensed Products it may sell under this Agreement. As
applicable, such books and records shall include the date of transaction
involving sales of Licensed Products, including the number of items Sold.
LICENSEE shall require in its agreements with sublicensees that each sublicensee
agree to record keeping and audits substantially the same as described in this
Section 14. LICENSEE hereby agrees to cause its sublicensees to provide to
LICENSEE the records and supporting information sufficient to evidence the
accuracy of the royalty report to be submitted to QUALCOMM. Such records
(together with all supporting information) shall be included in the records
described herein and subject to audit by QUALCOMM as provided in this Section.
LICENSEE's agreements with its sublicensees shall expressly state that QUALCOMM
shall be able to enforce rights under Section 14.2 below directly against any
such sublicensee. LICENSEE shall furnish QUALCOMM within [**] days after the end
of each [**] a certificate, in the form attached hereto as Exhibit B, signed by
a responsible official of LICENSEE showing the transactions and corresponding
amounts during said [**] and any other information as may be reasonably
requested by QUALCOMM.
14.2 Audits. QUALCOMM may, no more than once each calendar year, cause its
independent public accounting firm to conduct an audit on reasonable notice of
LICENSEE's applicable books and records and sublicensee's records and its
supporting information obtained under Section 14.1 above to confirm the royalty
paid or to be paid to QUALCOMM in accordance with the terms and conditions set
forth in Section 5.2 above. The cost of such audit shall be borne by QUALCOMM,
unless such audit determines that the LICENSEE has underpaid the royalties due
hereunder by the lesser of (a) more than five percent (5%) or (b) [**]; in which
case, LICENSEE shall, in addition to paying the deficiency plus late payment
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charges, pay the cost of such audit. LICENSEE shall preserve and maintain all
such books and records required for audit for a period of [**] years after the
[**] for which the books and records apply (but not more than [**] years after
any termination of this Agreement). All information acquired by QUALCOMM from
such audit shall be considered Information subject to the terms and conditions
of Section 10.
15. ASSIGNMENT.
Except as provided in this clause, LICENSEE shall not assign this Agreement
or any right or interest under this Agreement, nor delegate any work or
obligation to be performed under this Agreement (an "assignment"), without
QUALCOMM's prior written consent, which consent shall be at QUALCOMM's sole
discretion. Any attempted assignment in contravention of this Section 15 shall
be void and ineffective.
16. COMPLIANCE WITH U.S. REGULATIONS.
Nothing contained in this Agreement shall require or permit LICENSEE or
QUALCOMM to do any act inconsistent with the requirements of (a) the regulations
of the United States Department of Commerce, or (b) the foreign assets controls
or foreign transactions controls regulations of the United States Treasury
Department, or (c) of any similar United States law, regulation or executive
order as the same may be in effect from time to time. To enable QUALCOMM to
export QUALCOMM's Intellectual Property or technical data to LICENSEE in
compliance with the requirements of the Export Administration Regulations (EAR),
LICENSEE hereby gives its assurance to QUALCOMM that LICENSEE will not re-export
or otherwise disclose, directly or indirectly, any of QUALCOMM's Intellectual
Property or "technical data" received from QUALCOMM, nor allow the direct
product thereof to be shipped directly or indirectly to any of the following
countries, unless permitted by U.S. law in effect at the time of such export:
Albania
Afghanistan
Armenia
Azerbaijan
Belarus
Bulgaria
Cambodia
Cuba
Estonia
Federal Republic of Yugoslavia
(Serbia Only)
Georgia
Iran
Iraq
Kazakhstan
Kyrgystan
Laos
Latvia
Libya
Lithuania
Macau
Moldova
Mongolia
North Korea
People's Republic of China
Romania
Russia
Sudan
Syria
Tajikistan
Turkmenistan
Ukraine
Uzbekistan
Vietnam
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LICENSEE agrees that no products, proprietary data, know-how, software, or other
information received from QUALCOMM will be directly employed in missile
technology, sensitive nuclear, or chemical biological weapons end uses or by
such end users. The foregoing obligations are U.S. legal requirements, and
therefore, such obligations shall survive any termination of this Agreement.
17. PUBLICITY.
LICENSEE shall submit to QUALCOMM proposed copy of all advertising wherein
the name, trademark, code, specification or service xxxx of QUALCOMM is
mentioned; and LICENSEE shall not publish or use such advertising without
QUALCOMM's prior written approval. Such approval shall be granted or withheld as
promptly as possible (usually within [**] days), and may be withheld only for
good cause. No license is granted by LICENSEE to QUALCOMM hereunder with respect
to LICENSEE's or its Affiliates' trade name, trademark, code, specification or
service xxxx. No license is granted by QUALCOMM to LICENSEE hereunder with
respect to QUALCOMM's or its Affiliates' trade name, trademark, code,
specification or service xxxx.
18. SURVIVAL OF OBLIGATIONS.
The Parties' rights and obligations which, by their nature, would continue
beyond the termination, cancellation, or expiration of this Agreement, including
but not limited to those rights and obligations of the parties set forth in
Section 10 entitled "INFORMATION," shall survive such termination, cancellation,
or expiration.
19. SEVERABILITY.
If any provision in this Agreement shall be held to be invalid or
unenforceable, the remaining portions shall remain in effect. In the event such
invalid or unenforceable provision is considered an essential element of this
Agreement, the Parties shall promptly negotiate a replacement provision.
20. NON-WAIVER.
No waiver of the terms and conditions of this Agreement, or the failure of
either Party strictly to enforce any such term or condition on one or more
occasions shall be construed as a waiver of the same or of any other term or
condition of this Agreement on any other occasion.
21. NOTICES.
All notices, requests, demands, consents, agreements and other
communications required or permitted to be given under this Agreement shall be
in writing and shall be mailed to the Party to whom notice is to be given, by
facsimile, and confirmed by first class mail, postage prepaid, and properly
addressed as follow (in which case such notice shall be deemed to have been duly
given on the day the notice is first received by the Party):
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XXXXXXXX Xxxxxxxxxxxx LICENSEE
0000 Xxxxxxxxx Xxxxx ________________________________________
Xxx Xxxxx, XX 00000-0000 ________________________________________
________________________________________
Facsimile No.: (000) 000-0000 Facsimile No.: _________________________
Telephone No.: (000) 000-0000 Telephone No.: _________________________
Attn: President Attn: __________________________________
with a copy to: with a copy to:
General Counsel ________________________________________
The above addresses can be changed by providing notice to the other Party in
accordance with this Section.
22. PUBLICATION OF AGREEMENT.
Except as may otherwise be required by law or as reasonably necessary for
performance hereunder, each Party shall keep this Agreement and its provisions
confidential and shall not disclose this Agreement or its provisions without
first obtaining the written consent of the other Party, which consent shall not
be unreasonably withheld. The confidentiality obligations hereunder do not apply
to the existence of this Agreement or the fact that QUALCOMM and LICENSEE has
executed this Agreement, but do apply to the terms and conditions of this
Agreement. Any press release or other announcement by either Party concerning
the entering into of this Agreement shall be subject to the prior written
approval of other Party, which approval shall not be unreasonably withheld. In
case a press release or other public announcement to the effect of the Parties'
entering into of this Agreement is issued by either Party pursuant to the
preceding sentence, (i) QUALCOMM may thereafter make a press release or other
public announcement to the effect that LICENSEE is one of QUALCOMM's licensees
for Licensed Products without prior written approval of LICENSEE and (ii)
LICENSEE may thereafter make a press release or other public announcement to the
effect that LICENSEE is licensed by QUALCOMM for Licensed Products without prior
written approval of QUALCOMM.
23. APPLICABLE LAW; VENUE.
This Agreement is made and entered into in the State of California and
shall be governed by and construed and enforced in accordance with the laws of
the State of California without regard to conflict of laws principles. Any
dispute, claim or controversy arising out of or relating to this Agreement, or
the breach or validity hereof, except for those disputes expressly addressed in
Section 24 hereof, shall be adjudicated only by a court of competent
jurisdiction in the county of San Diego, State of California.
24. DISPUTES RELATING TO FOREIGN PATENTS.
Any controversy, claim or dispute (separately or collectively, the
"Dispute") as to whether a product manufactured and/or sold by LICENSEE outside
the United States would, but for the license granted hereunder, infringe any
foreign patent of QUALCOMM licensed
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hereunder and therefore is subject to royalties hereunder, shall be resolved in
accordance with the procedures specified in this Section 24 which shall be the
sole and exclusive procedures for the resolution of any such Dispute.
The Parties will attempt in good faith to resolve promptly any Dispute by
negotiations between senior executives of the Parties who have the authority to
settle the Dispute. If the Dispute is not resolved within [**] days of a party's
written request for negotiation, either party may initiate arbitration as
hereinafter provided.
A Party desiring to commence arbitration shall provide written notice to
the other Party setting forth the Dispute(s) to be arbitrated. Within [**] days
of receipt of such written notice, the Parties will attempt in good faith to
reach agreement on an impartial arbitrator having as nearly as practicable the
following qualifications in order of importance: (1) at least ten years
experience in patent litigation, including substantial participation in at least
two patent trials, and/or ten years experience in patent prosecution in the
telecommunications field and/or at least three years experience as a Federal
Court of Appeals or District Court Judge, (2) expertise in the field of digital
spread spectrum communications as applied to the telecommunications industry,
and (3) some familiarity with the patent laws of the country or countries at
issue in the Dispute. In the event the Parties are unable to agree upon an
arbitrator within [**] days of the above written notice, the arbitrator shall be
selected by Judicial Arbitration and Mediation Service/Endispute, Inc. (or some
similar company if the judicial Arbitration and Mediation Service/Endispute,
Inc. is not available). The selected arbitrator shall be impartial and shall
have, as nearly as practicable, the qualifications set forth above. The Parties
will share equally the fees and expenses of the arbitrator.
The arbitration hearing shall commence in San Diego within [**] days of the
appointment of the arbitrator. The Parties shall be entitled to conduct
discovery prior to the arbitration hearing in accordance with Federal Rules of
Civil Procedure, subject to any limitations ordered by the arbitrator.
The arbitration hearing shall be conducted in accordance with the Federal
Rules of Civil Procedure and the Federal Rules of Evidence or such other
procedures and rules set by the arbitrator. The arbitrator shall be authorized
and empowered only to rule as to whether products manufactured and/or Sold by
LICENSEE in a foreign country or countries would, but for the license granted
hereunder, infringe any claim of the applicable foreign patent(s) of QUALCOMM,
and if so, the amount of the royalties owed by LICENSEE as to such product(s)
under Section 5.2 of this Agreement. The arbitrator shall award attorneys' fees
and costs to the prevailing Party. The arbitrator shall have no authority to
determine whether or not any product(s) of LICENSEE imported into or
manufactured and/or Sold in the United States is subject to the payment of
royalties under this Agreement or to determine any other issue except those
expressly set forth above. The arbitrator shall have no authority to make any
finding or award as to the validity or enforceability of any patent.
The final award of the arbitrator shall be rendered in writing and signed
by the arbitrator. The final award shall be entered within [**] days of the
commencement of the arbitration hearing. Each Party agrees to abide by the
arbitration award, and to the enforcement of the
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arbitration award in the United States. Each Party further agrees that judgment
may be entered upon the award in any court of competent jurisdiction in the
United States.
25. LATE CHARGE.
[**]
26. ATTORNEYS' FEES.
In the event of any proceeding to enforce the provisions of this Agreement,
the prevailing Party (as determined by the court) shall be entitled to
reasonable attorneys' fees as fixed by the court.
27. ENTIRE AGREEMENT.
The terms and conditions contained in this Agreement supersede all prior
and contemporaneous oral or written understandings between the Parties with
respect to the subject matter thereof and constitute the entire agreement of the
Parties with respect to such subject matter, except as set forth in the Supply
Agreement between the Parties of even date herewith. Such terms and conditions
shall not be modified or amended except by a writing signed by authorized
representatives of both Parties.
28. INDEPENDENT CONTRACTORS.
The relationship between QUALCOMM and LICENSEE is that of independent
contractors. QUALCOMM and LICENSEE are not joint venturers, partners, principal
and agent, master and servant, employer or employee, and have no other
relationship other than independent contracting parties.
29. U.S. DOLLARS.
All payments to be made hereunder shall be made in dollars of the United
States of America by wire-transfer and at a bank to be designated by the payee.
30. FORCE MAJEURE.
Neither Party shall be in default or liable for any loss or damage
resulting from delays in performance or from failure to perform or comply with
terms of this Agreement (other than the obligation to make payments, which shall
not be affected by this provision) due to any causes beyond its reasonable
control, which causes include but are not limited to Acts of God or the public
enemy; riots and insurrections; war; fire; strikes and other labor difficulties
(whether or not the Party is in a position to concede to such demands);
embargoes; judicial action; lack of or inability to obtain export permits or
approvals; and acts of civil or military authorities.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed as of the Effective Date. This Agreement may be signed in counterpart.
XXXXXXXX Xxxxxxxxxxxx LICENSEE
BY: BY:
--------------------------------- ------------------------------------
TITLE: TITLE:
----------------------------- ---------------------------------
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AMENDMENT TO HDR INFRASTRUCTURE EQUIPMENT LICENSE AGREEMENT (THE
"AMENDMENT")
Effective as of December 5, 2001 (the "Amendment Effective Date"), XXXXXXXX
Xxxxxxxxxxxx ("QUALCOMM"), a Delaware corporation, and Airvana, Inc., a Delaware
corporation ("LICENSEE"), hereby agree to amend that certain HDR Infrastructure
Equipment License Agreement dated September 18, 2000 (the "License Agreement")
as follows:
1. Definitions. Unless otherwise specified in this Amendment, capitalized terms
shall have the meaning set forth in the Agreement.
2. Extension of Option to Obtain Infrastructure Equipment License. Section 4.8
of the License Agreement is hereby modified by replacing the words "No later
than [**] months after the Effective Date" therein with the words "No later than
December 27, 2002".
3. No Other Amendment or Modification. Except as expressly set forth in this
Amendment, the License Agreement shall remain in full force and effect without
modification. The terms and conditions of this Amendment and the License
Agreement shall not be modified or amended except by a writing signed by
authorized representatives of both parties.
IN WITNESS WHEREOF, the Parties hereto have caused this Amendment to be executed
by their duly authorized representatives as of the Amendment Effective Date.
XXXXXXXX XXXXXXXXXXXX AIRVANA, INC.
By: /s/ Xxxx X. Xxxx By: /s/ Xxxxxxx X. Xxxxxx
--------------------------------- ------------------------------------
Title: V.P. Business Development Title: President & CEO
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