EXHIBIT 2.2
TECHNOLOGY TRANSFER AGREEMENT
Effective September 30, 1997
between
LUCENT TECHNOLOGIES INC.
and
ELCOTEL, INC.
Relating to Public Terminals
TECHNOLOGY TRANSFER AGREEMENT
This Agreement (hereinafter sometimes referred to as the
"TTA") is made and entered into as of September 30, 1997
(the "Effective Date"), by and between LUCENT TECHNOLOGIES
INC., ("LUCENT"), a Delaware corporation with offices at 000
Xxxxxxxx Xxxxxx, Xxxxxx Xxxx, XX 00000-0000, and ELCOTEL,
INC. ("ELCOTEL"), a Delaware corporation with offices at
0000 Xxxxxxxx Xxxxx, Xxxxxxxx, XX 00000.
WHEREAS, the parties have entered into an Agreement for
Purchase and Sale of Assets (the "Purchase and Sale of
Assets Agreement"), dated as of September 30, 1997 and
closing concurrently with the Effective Date, pursuant to
which LUCENT is selling and ELCOTEL is acquiring certain
Assets; and
WHEREAS, under the Purchase and Sale of Assets
Agreement ELCOTEL is to acquire certain rights to LUCENT
technology used to operate the BUSINESS and the Purchased
Assets.
NOW THEREFORE, in consideration of the foregoing and
the terms hereinafter set forth, the parties agree as
follows:
ARTICLE I
DEFINITIONS
1.01 Any term in capital letters which is defined in
Schedule 1 shall have the meaning specified therein. Other
terms used herein with initial capitals which are not
specifically defined shall, unless otherwise expressly
indicated, have the meanings ascribed to them in the
Purchase and Sale of Assets Agreement.
ARTICLE II
INFORMATION FURNISHED
2.01(a) LUCENT will, concurrently with the Effective
Date, furnish or make available to ELCOTEL the documents
and other information listed in Schedule 2 ("GENERAL
TECHNOLOGY"), or such portions thereof requested, or advise
ELCOTEL of such additional reasonable period within which
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LUCENT shall furnish such items to ELCOTEL. With such
furnishing, LUCENT shall also provide, to ELCOTEL when
feasible, a list which identifies the documents and other
information delivered.
(b) LUCENT and ELCOTEL shall promptly notify each other of
any inaccuracies believed present in the list. All
information specified on said list shall be deemed to be a
part of the GENERAL TECHNOLOGY with the following
qualification: if, within thirty (30) days after receipt of
the list, ELCOTEL shall give LUCENT written notice
specifying particular information identified therein which
was not actually received, such specified information shall
be deemed deleted from the list until such information is
actually received by ELCOTEL.
(c) All technical information with respect to the GENERAL
TECHNOLOGY previously furnished by LUCENT or any of its
ASSOCIATED COMPANIES to ELCOTEL in contemplation of this TTA
shall be deemed to be a part of all information with respect
to the GENERAL TECHNOLOGY.
(d) LUCENT may maintain archive copies of all documentation
furnished to ELCOTEL hereunder.
ARTICLE III
SERVICES TO BE PROVIDED
3.01 LUCENT, at ELCOTEL's request and upon reasonable
notice, and to the extent it does not unreasonably interfere
with LUCENT's business, shall furnish to ELCOTEL technical
assistance service by employees of LUCENT or its
SUBSIDIARIES at locations agreed to by both parties
sufficient to reasonably enable ELCOTEL to understand the
technical information furnished. Such services when
rendered shall be paid for by ELCOTEL as provided in
Schedule 4 plus reasonable travel and living expenses.
LUCENT shall invoice ELCOTEL at the end of each calendar
month for the services performed during that month and
ELCOTEL shall pay the invoiced amount within thirty (30)
days after the receipt of such invoice.
3.02 LUCENT and ELCOTEL shall at all times retain the
administrative supervision of their respective personnel.
3.03 Each parties' personnel shall, while on any location
of another party or its SUBSIDIARIES, comply with that party
or its SUBSIDIARIES' rules and regulations with regard to
safety and security. Each party shall have full control
over its personnel and shall be entirely responsible for
their complying with the other party's or its SUBSIDIARIES'
rules and regulations. Each party agrees to indemnify and
save the other party and its SUBSIDIARIES harmless from any
claims or demands, including the costs, expenses and
reasonable attorney's fees incurred on account thereof, that
may be made by (i) anyone for injuries to persons or damage
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to property to the extent they result from acts or omissions
of another party's personnel; or (ii) another party's
personnel under Workers' Compensation or similar laws. Each
party agrees to defend the other party and its SUBSIDIARIES
against any such claim or demand.
ARTICLE IV
GRANTS OF RIGHTS TO GENERAL TECHNOLOGY
4.01 (a) Subject to all pre-existing agreements of LUCENT
granting nonexclusive rights with respect to GENERAL
TECHNOLOGY, LUCENT grants to ELCOTEL a personal, exclusive
(or with respect to such GENERAL TECHNOLOGY covered by the
pre-existing agreements referred to at the beginning of this
sentence, nonexclusive), nontransferable, worldwide right to
use GENERAL TECHNOLOGY for manufacture, marketing, testing,
design, maintenance, repair, sale and importing of LISTED
PRODUCTS and ENHANCED PRODUCTS. LUCENT retains the right to
license, use and have used GENERAL TECHNOLOGY in connection
with any and all products and services other than LISTED
PRODUCTS AND ENHANCED PRODUCTS. The rights granted to
ELCOTEL under this Section 4.01(a) do not include any rights
with respect to wireless or clip-on fraud prevention
technology of LUCENT
(b) LUCENT shall have a personal, nonexclusive, non-
transferable, fee-free right (including patent license
rights) for all purposes other than PUBLIC TERMINALS to
reproduce, use, and have used inventions which relate to
LISTED PRODUCTS that were originated or developed during the
BASE PERIOD by ELCOTEL personnel as a result of technical
assistance service provided by LUCENT pursuant to Section
3.01 of this Agreement, as well as products (other than
PUBLIC TERMINALS or PUBLIC TERMINAL COMPONENTS)
incorporating such inventions.
(c) The grant of each license hereunder includes the right of
each party to grant sublicenses within the scope of such license
to their respective SUBSIDIARIES for so long as they remain its
SUBSIDIARIES. Any such sublicense may be made effective
retroactively, but not prior to the effective date hereof, nor
prior to the sublicensee becoming a SUBSIDIARY of such party.
4.02(a) LUCENT grants to ELCOTEL a personal and exclusive
right, as an attribute of the rights granted in Section
4.01, to disclose to any supplier or prospective supplier
only those portions of the GENERAL TECHNOLOGY which are
necessary for the procurement by ELCOTEL of materials, parts
and components, for use in manufacture of LISTED PRODUCTS
and ENHANCED PRODUCTS in accordance with this Agreement.
(b) ELCOTEL agrees that it will not make any part of
the GENERAL TECHNOLOGY available to any such supplier or
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prospective supplier except on the agreement in writing (of
which a copy will be furnished to LUCENT promptly upon its
request) of such supplier or prospective supplier that it
accepts as its own ELCOTEL's commitments under Section 4.03
and the confidentiality obligations of Article IX, that it
will use all information received from ELCOTEL only for the
purpose of supplying to ELCOTEL items of the type to be
procured by ELCOTEL pursuant to this Section 4.02, that it
will promptly return or destroy each and every part of such
information as directed by ELCOTEL, and that it will not
cause or permit the transportation of any such information
outside of the United States except in conformity with all
export regulations.
4.03 The parties acknowledge that any products, software,
and technical information (including, but not limited to,
services and training) provided under this Agreement are
subject to U.S. export laws and regulations and any use or
transfer of such products, software, and technical
information must be authorized under those regulations.
ELCOTEL agrees that it will not use, distribute, transfer,
or transmit the products, software, or technical information
(even if incorporated into other products) except in
compliance with U.S. export regulations. If requested by
LUCENT, ELCOTEL also agrees to sign written assurances and
other export-related documents as may be required for LUCENT
to comply with U.S. export regulations.
ARTICLE V
NO GRANT OF RIGHTS TO PATENTS
5.01 The parties agree that no patent licenses are
granted by LUCENT under this Agreement and that any and all
rights to patents are limited to those in the Patent License
Agreement between the parties of even date.
ARTICLE VI
GRANTS OF RIGHTS TO SOFTWARE
6.01 The provisions of this Article VI shall be applicable
to all Licensed Software. Licensed Software means all
software furnished by LUCENT as GENERAL TECHNOLOGY
hereunder, either in object or source code format or derived
therefrom, and intended for use with LISTED PRODUCTS and
ENHANCED PRODUCTS manufactured by ELCOTEL and also includes
the information in the associated documentation furnished to
ELCOTEL for use therewith.
6.02 All Licensed Software (whether or not part of
firmware), and all copies thereof made by ELCOTEL, are and
shall remain the property of LUCENT; provided, however, that
all Licensed Software furnished as an integral part of or
comprising a LISTED PRODUCT, including software contained in
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a PUBLIC TERMINAL comprising a LISTED PRODUCT , and all
Licensed Software owned by LUCENT used in the manufacturing
or testing of LISTED PRODUCTS or contained in engineering,
test or qualification fixtures comprising a Purchased Asset
acquired by ELCOTEL pursuant to the Purchase and Sale of
Assets Agreement shall be the property of ELCOTEL (the
"Owned Software").
6.03(a) Other than with respect to Owned Software, ELCOTEL
shall not make any copies of any Licensed Software except as
necessary in connection with the rights granted hereunder,
and shall reproduce and include any copyright and
proprietary notice of LUCENT on all such necessary copies of
the Licensed Software and xxxx all media containing such
copies with a warning that such Licensed Software is subject
to restrictions contained in a license agreement between
LUCENT and ELCOTEL and that such Licensed Software is the
property of LUCENT. ELCOTEL agrees that it shall not, and
shall forbid its customers, agents and suppliers to
disassemble, reverse assemble or reverse compile the
Licensed Software.
(b) Other than with respect to LUCENT owned software or
Owned Software, no right is granted for the use of Licensed
Software directly for any third person, or for any use by
any third person of Licensed Software.
6.04 ELCOTEL shall take appropriate action, by instruction,
agreement or otherwise, legally obligating all persons
permitted access, consistent with these provisions, to any
Licensed Software so as to enable ELCOTEL to satisfy its
confidentiality and other obligations under this Agreement.
ARTICLE VII
FEES
7.01 ELCOTEL shall pay to LUCENT, within thirty (30) days
after LUCENT renders an invoice therefor, LUCENT's costs for
gathering and reproducing the TECHNICAL INFORMATION. Such
payment shall not be creditable with respect to any other
fees payable pursuant to this agreement nor shall such sum
or any portion thereof be refunded to ELCOTEL; provided,
however, the total sum payable by ELCOTEL pursuant to this
Section 7.01 shall not exceed fifty thousand dollars ($U.S.
50,000.00).
7.02 In part payment for the rights granted under Section
4.01 by LUCENT to ELCOTEL, ELCOTEL shall pay to LUCENT on
the Closing Date, the sum of six hundred thousand United
States dollars (U.S. $ 600,000.00) Such payment shall not
be creditable with respect to any other fees payable
pursuant to this agreement nor shall such sum or any portion
thereof be refunded to ELCOTEL.
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(b) In further payment for the rights granted under
Section 4.01 by LUCENT, ELCOTEL shall pay to LUCENT a fee on
each ITEM SUBJECT TO FEE, prior to the expiration of the
BASE PERIOD. Such fee shall be determined by applying to
the COST OF GOODS of such ITEM SUBJECT TO FEE the applicable
percentage rate as follows:
ITEM SUBJECT TO FEE APPLICABLE FEE
(in %)
PUBLIC TERMINALS [*]
PUBLIC TERMINAL COMPONENTS (not part of a
substantially complete PUBLIC TERMINAL) [*]
ARTICLE VIII
RECORDS AND PAYMENTS
8.01 ELCOTEL shall keep full, clear and accurate records
with respect to ITEMS SUBJECT TO FEE sold, leased, or put
into use. ELCOTEL shall retain such records with respect to
each ITEM SUBJECT TO FEE for at least seven (7) years from
the sale, lease or putting into use of such ITEM SUBJECT TO
FEE. LUCENT shall have the right through its accredited
auditing representatives, and at its expense, to make an
examination and audit, during normal business hours and in a
reasonable manner, not more frequently than annually, of all
such records and such other records and accounts as may
under recognized accounting practices contain information
bearing upon the amounts of fees payable to it under this
agreement. Prompt adjustment shall be made by the proper
party to compensate for any errors or omissions disclosed by
such examination or audit. Neither such right to examine
and audit nor the right to receive such adjustment shall be
affected by any statement to the contrary, appearing on
checks or otherwise, unless such statement appears in a
letter, signed by the party having such right and delivered
to the other party, expressly waiving such right.
8.02(a) Within sixty (60) days after the end of each
semiannual period ending on June 30th or December 31st,
commencing with the semiannual period during which this
agreement first becomes effective, ELCOTEL shall furnish to
LUCENT a statement, in form reasonably acceptable to LUCENT,
certified by a responsible official of ELCOTEL, showing all
ITEMS SUBJECT TO FEE which were sold, leased or put into use
during such semiannual period and the amounts of fees
payable thereon (if no such ITEM SUBJECT TO FEE has been so
sold, leased or put into use, that fact shall be shown on
such statement).
-----------
* The text within the brackets has been omitted and separately filed with the
Securities and Exchange Commission pursuant to a Rule 24b-2 request for
confidential treatment.
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(b) Within such sixty (60) days ELCOTEL shall,
irrespective of its own business and accounting methods, pay
to LUCENT the fees payable for such semiannual period as
shown in the statement required by Section 8.02(a). ELCOTEL
shall furnish whatever additional information LUCENT may
reasonably prescribe from time to time to enable LUCENT to
ascertain the fees payable hereunder.
8.03 ELCOTEL shall pay for services actually performed
pursuant to Article III in accordance with Schedule 4.
8.04 LUCENT shall render invoices for all payments for
services referred to in Section 8.03 after such services
have been rendered hereunder, and ELCOTEL shall make payment
of all amounts so billed within sixty (60) days after
receipt of such invoices.
8.05 ELCOTEL shall be solely responsible for its
personnel's remuneration and their travel, living and other
expenses, including those incurred in visiting any locations
of LUCENT or its SUBSIDIARIES. ELCOTEL shall also be solely
responsible for any tax or other governmental charge,
however designated, which is imposed on ELCOTEL or its
personnel by the United States or by any agency or political
subdivision thereof as a result of the existence or
operation of this Agreement or as the result of the
activities of ELCOTEL's personnel.
8.06(a) ELCOTEL shall pay any tax, duty, levy, customs fee,
or similar charge ("taxes"), including interest and
penalties thereon, however designated, imposed as a result
of the operation or existence of this agreement, including
taxes which ELCOTEL is required to withhold or deduct from
payments to LUCENT, except (i) income taxes imposed upon
LUCENT by any governmental entity within the United States
(the fifty (50) states and the District of Columbia), and
(ii) income taxes imposed upon LUCENT by jurisdictions
outside the United States which are allowed as a credit
against the United States Federal income tax of LUCENT. In
order for the exception in (ii) to be effective, ELCOTEL
must furnish to LUCENT evidence sufficient to satisfy the
United States taxing authorities that such taxes have been
paid. Such evidence must be furnished to LUCENT within a
reasonable period following issuance by the local taxing
authority.
(b) If Buyer is required to bear a tax pursuant to Section
8.06(a) above, ELCOTEL shall pay such taxes and other
charges and any additional amounts as are necessary to
ensure that the net amounts received by LUCENT after all
such payments or withholdings equal the amounts to which
LUCENT is otherwise entitled under this Agreement as if such
taxes, or other charges, did not exist.
8.07(a) Any notice or other communication hereunder shall
be sufficiently given to ELCOTEL when sent by certified mail
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addressed to ELCOTEL's office above specified), or to LUCENT when
sent by certified mail addressed to Contract Administrator,
Intellectual Property Division, Lucent Technologies Inc., 0000
Xxxxx xx Xxxx Xxxxxxxxx - Xxxxx 000, Coral Gables, Florida 33134,
United States of America. Changes in such addresses may be
specified by written notice.
(b) Payments by ELCOTEL shall be made to Lucent Technologies
Inc. at Sun Trust, X.X.Xxx 000000, Xxxxxxx, Xxxxxxx, 00000-
0000, Xxxxxx Xxxxxx of America. Alternatively, payments to
LUCENT may be made by bank wire transfers to LUCENT's
account: Lucent Technologies Licensing, Account No. 910-2-
568475, at Chase Manhattan Bank, N.A., 00 Xxxxx Xxxxxx, Xxx
Xxxx, XX 00000, Xxxxxx Xxxxxx of America. Swift code:
XXXXXX00; ABA code 000000000., United States of America.
Changes in such address or account may be specified by
written notice. Any conversion to United States dollars
shall be at the prevailing rate for bank cable transfers on
New York City as quoted for the last day of such semiannual
period by leading banks dealing in the New York City foreign
exchange market.
(c) Payments to ELCOTEL or LUCENT or one of its
SUBSIDIARIES provided for in this agreement shall, when
overdue, be subject to a late payment charge calculated at
an annual rate of three percent (3%) over the prime rate or
successive prime rates in effect in New York City during
delinquency; provided, however, that if the amount of such
late payment charge exceeds the maximum permitted by law for
such late payment charge, such late payment charge shall be
reduced to such maximum amount.
ARTICLE IX
TERMINATION
9.01(a) If ELCOTEL defaults in any material respect in its
obligations under this Agreement, the Patent License
Agreement, Section 5.3(b) of the Purchase and Sale of Assets
Agreement or becomes insolvent, invokes as a debtor any law
relating to the relief of debtors' or creditors' rights, or
has any such law invoked against it, becomes involved in any
liquidation or termination of its PUBLIC TERMINAL and PUBLIC
TERMINAL COMPONENTS business, is adjudicated bankrupt, or is
involved in any assignment for the benefit of its creditors,
LUCENT may upon its election and in addition to any other
remedies that it may have, at any time terminate all of
LUCENT's obligations hereunder and all of the rights granted
by LUCENT hereunder, by not less than two (2) months'
written notice to ELCOTEL specifying any such default or
event, unless within such two (2) month period such defaults
or events specified therein for termination pursuant to this
Section 9.01(a) shall have been remedied. Any termination
of licenses and rights of a party shall not affect the other
party's licenses and rights hereunder.
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(b) Each party's obligations under Sections 4.01, 4.03,
10.04, and 10.05 and any other of its continuing obligations
hereunder, shall survive and continue after such
termination.
(c) In the event that LUCENT terminates ELCOTEL's rights
pursuant to Section 9.01(a), ELCOTEL shall continue to have
a nonexclusive right, for reasonable fees to be negotiated,
to use GENERAL TECHNOLOGY to maintain LISTED PRODUCTS AND
ENHANCED PRODUCTS installed prior to such termination and to
install and maintain then current finished goods inventory
of such products.
ARTICLE X
GENERAL PROVISIONS
10.01 This Agreement shall prevail in the event of any
conflicting terms or legends which may appear on documents
furnished as part of the GENERAL TECHNOLOGY hereunder.
10.02 LUCENT believes the GENERAL TECHNOLOGY to be
true and accurate, but LUCENT and its ASSOCIATED COMPANIES
will not be held to any liability for errors or omissions
therein.
10.03(a) As of the Effective Date, LUCENT is not aware that
LISTED PRODUCTS made using the GENERAL TECHNOLOGY infringes
any patent, copyright, trade secret, know-how, technology or
other intellectual property rights of any third party.
(b) EXCEPT AS PROVIDED IN SECTION 10.02 AND 10.03(a); (i)
LUCENT AND ITS ASSOCIATED COMPANIES MAKE NO REPRESENTATIONS
OR WARRANTIES, EXPRESSLY OR IMPLIEDLY, BY WAY OF EXAMPLE BUT
NOT OF LIMITATION, LUCENT AND ITS ASSOCIATED COMPANIES MAKE
NO REPRESENTATIONS OR WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR ANY PARTICULAR PURPOSE; (ii) LUCENT AND ITS
ASSOCIATED COMPANIES MAKE NO REPRESENTATIONS OR WARRANTIES
THAT THE USE OF THE GENERAL TECHNOLOGY OR ANY OF IT WILL NOT
INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, TRADE SECRET,
KNOW-HOW, TECHNOLOGY OR ANY OTHER INTELLECTUAL PROPERTY
RIGHT OF ANY THIRD PARTY, AND IT SHALL BE THE SOLE
RESPONSIBILITY OF ELCOTEL TO MAKE SUCH DETERMINATION AS IS
NECESSARY WITH RESPECT TO THE ACQUISITION OF LICENSES UNDER
INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES; and (iii)
LUCENT AND ITS ASSOCIATED COMPANIES SHALL NOT BE HELD TO ANY
LIABILITY WITH RESPECT TO ANY PATENT INFRINGEMENT OR ANY
OTHER CLAIM MADE BY ELCOTEL OR ANY THIRD PARTY ON ACCOUNT
OF, OR ARISING FROM, THE USE OF THE GENERAL TECHNOLOGY OR
ANY OF IT.
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(c) ELCOTEL agrees to indemnify and save LUCENT and
its SUBSIDIARIES harmless from any claims or demand for
personal injury or property damage (including reasonable
expense of litigation and settlement of such claims) by
third persons to the extent that such claims arise out of
or in connection with the furnishing or use of any GENERAL
TECHNOLOGY hereunder.
10.04 ELCOTEL agrees:
(i) that ELCOTEL will not use the GENERAL TECHNOLOGY other
than for the purposes authorized herein;
(ii) that subject to any pre-existing agreements relating
to GENERAL TECHNOLOGY, ELCOTEL and LUCENT shall hold all of
the GENERAL TECHNOLOGY in confidence and shall not make any
disclosure of any or all of such GENERAL TECHNOLOGY to
anyone, except to employees of ELCOTEL and LUCENT who have a
need to know and to any others to whom such disclosure may
be expressly authorized hereunder and is necessary to
implement the use for which rights are granted hereunder,
and that ELCOTEL and LUCENT shall appropriately notify each
person to whom any such disclosure is made that such
disclosure is made in confidence and shall be kept in
confidence by such person; provided that ELCOTEL and LUCENT
shall not be required so to do in respect of portions of the
GENERAL TECHNOLOGY, if any, (a) which were previously known
to ELCOTEL free of any obligations to keep confidential, or
(b) which have become generally known to the public,
provided that such public knowledge was not the result of
any act attributable to ELCOTEL or LUCENT, or (c) which
ELCOTEL or LUCENT otherwise explicitly agrees in writing
need not be kept confidential;
(iii) that ELCOTEL will not, without LUCENT's express
written permission, make or have made, or permit to be made,
more copies of any of the GENERAL TECHNOLOGY than are
reasonably needed for or are incidental to its use
hereunder, and that each such copy shall contain the same
proprietary notices or legends which appear on the GENERAL
TECHNOLOGY;
(iv) that except as set out in the Purchase and Sale of
Assets Agreement, ELCOTEL will not, without LUCENT's express
written permission, (a) use in advertising, publicity,
packaging, labeling, or otherwise any identification (such
as but not limited to trade names, trademarks, trade
devices, service marks, symbols or any other identification
or any abbreviation, contraction or simulation thereof)
owned or used by LUCENT or any of its ASSOCIATED COMPANIES
to identify its products or services, or (b) represent,
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directly or indirectly, that any product or service produced
in whole or in part with the use of any of the GENERAL
TECHNOLOGY is a product or service of LUCENT or any of its
ASSOCIATED COMPANIES or is made in accordance with or
utilizes any information or documentation of LUCENT or any
of its ASSOCIATED COMPANIES; and
(v) that subject to the provisions of Articles IV and VI,
the GENERAL TECHNOLOGY, any software contained in any
software-containing medium and all documents furnished
hereunder are deemed to be and shall remain the property of
LUCENT, and that upon any termination of this Agreement,
ELCOTEL shall upon request deliver to LUCENT all documents
containing any of the GENERAL TECHNOLOGY and all copies
thereof, and render unusable any software furnished
hereunder and all copies thereof contained in any software-
containing medium, then under ELCOTEL's or its suppliers'
control.
10.05 It is recognized that prior to or during the
performance of this Agreement, one party's personnel may
unavoidably receive or have access to private or
confidential information of the other party which relates to
the BUSINESS, the Purchased Assets, the LISTED PRODUCTS AND
ENHANCED PRODUCTS or to any other product, service or
business of the other party and which is not GENERAL
TECHNOLOGY. Both parties agree that all such information
shall be subject to the provisions of this Article IX and
that its personnel will comply with reasonable requirements
of the other party, including identification badges and
sign-in procedures for any locations, in connection
therewith.
10.06 Nothing contained herein shall be construed
as conferring by implication, estoppel or otherwise any
license or right under any patent, whether or not the
exercise of any right herein granted necessarily employs an
invention of any existing or later issued patent, except as
provided in the Patent License Agreement between the parties
of even date.
10.07(a) Neither LUCENT nor ELCOTEL shall be liable for any
loss, damage, delay or failure of performance resulting
directly or indirectly from any cause which is beyond its
reasonable control, including but not limited to acts of
God, extraordinary traffic conditions, riots, civil
disturbances, wars, states of belligerency or acts of the
public enemy, strikes, work stoppages or the laws,
regulations, acts or failure to act of any governmental
authority.
(b) LUCENT AND ITS SUBSIDIARIES SHALL NOT BE LIABLE FOR
INCIDENTAL, SPECIAL, INDIRECT OR CONSEQUENTIAL LOSS OR
DAMAGES OF ANY NATURE, HOWEVER CAUSED.
10.08 This Agreement, the Purchase and Sale of Assets
Agreement and the Collateral Agreements set forth the entire
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agreement and understanding between the parties as to the
subject matter hereof and merges all prior discussions
between them. Neither of the parties shall be bound by any
conditions, definitions, warranties, understandings or
representations with respect to such subject matter other
than as expressly provided herein, or in any prior or
referenced existing written agreement between the parties,
or as duly set forth on or subsequent to the Effective Date
in writing and signed by a proper and duly authorized
representative of the party to be bound thereby.
10.09(a) Neither this Agreement nor any right hereunder, in
whole or in part, shall be assignable or otherwise
transferable by either party without the prior written
consent of the other; provided, however, that LUCENT shall
have the right to assign this Agreement to any successor of
any portion of its business and to delegate any of its
obligations hereunder to any of its ASSOCIATED COMPANIES and
ELCOTEL shall be obligated to act in respect of such
ASSOCIATED COMPANIES as it would be obligated to act
hereunder in respect of LUCENT; provided that LUCENT and
such delegate shall be jointly and severally responsible
hereunder with respect to the performance of such delegated
obligations.
(b) Any notice or other communication hereunder shall
be sufficiently given to ELCOTEL or LUCENT when sent by
certified mail addressed to their respective office above
specified. Changes in such addresses may be specified by
written notice.
10.10 The parties are familiar with the principles
of New York State commercial law, and desire and agree that
the law of the State of New York shall apply in any dispute
arising with respect to this Agreement.
10.11(a) If a dispute arises out of or relates to this
Agreement, or the breach, termination or validity thereof,
the parties agree to submit the dispute to a sole mediator
selected by the parties or, at any time at the option of a
party, to mediation by the American Arbitration Association
("AAA"). If not thus resolved, it shall be referred to a
sole arbitrator selected by the parties within thirty (30)
days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United
States Arbitration Act.
(b) Any award made (i) shall be a bare award limited
to a holding for or against a party and affording such
remedy as is deemed equitable, just and within the scope of
the Agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or
infringement) or a statement of the reasoning on which the
award rests; (iii) may in appropriate circumstances (other
than patent disputes) include injunctive relief; (iv) shall
be made within four (4) months of the appointment of the
arbitrator; and (v) may be entered in any court of competent
jurisdiction.
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(c) The requirement for mediation and arbitration
shall not be deemed a waiver of any right of termination
under this Agreement and the arbitrator is not empowered to
act or make any award other than based solely on the rights
and obligations of the parties prior to any such
termination.
(d) The arbitrator shall be knowledgeable in the legal
and technical aspects of this agreement and shall determine
issues of arbitrability but may not limit, expand or
otherwise modify the terms of the agreement.
(e) The Agreement shall be interpreted in accordance
with the laws of the State of New York exclusive of its
conflict of laws provisions and the place of mediation and
arbitration shall be New York City.
(f) Each party shall bear its own expenses but those
related to the compensation and expenses of the mediator and
arbitrator shall be borne equally.
(g) A request by a party to a court for interim
measures shall not be deemed a waiver of the obligation to
mediate and arbitrate.
(h) The arbitrator shall not have authority to award
punitive or other damages in excess of compensatory damages
and each party irrevocably waives any claim thereto.
(i) Except as required by law, the parties, their
representatives, other participants and the mediator and
arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
(j) The parties shall be entitled to exchange in discovery of
documents which shall be limited to those documents which are
relevant and for which a requesting party has a substantial
demonstrable need.
4.09 Except as required by law, the parties agree that the
existence and content of this Agreement shall be treated as
confidential.
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IN WITNESS WHEREOF, each of the parties has caused this agreement
to be executed in duplicate originals by its duly authorized
representatives on the respective dates entered below.
LUCENT TECHNOLOGIES INC.
By: /s/ X. X. Xxxxxx
------------------------------
X. X. Xxxxxx
Vice President - Law
Date: 9/30/97
------------------------------
ELCOTEL, INC.
By: /s/ Xxxxxx X. Xxxx
------------------------------
Title: President - C.O.O.
------------------------------
Date: 9/30/97
------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY
IN ANY MANNER UNLESS DULY EXECUTED BY AUTHORIZED
REPRESENTATIVES OF BOTH PARTIES.
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SCHEDULE 1
DEFINITIONS APPENDIX
ASSOCIATED COMPANIES of LUCENT means any SUBSIDIARIES of
LUCENT.
ASSOCIATED COMPANIES of ELCOTEL means any SUBSIDIARIES of
ELCOTEL.
BASE PERIOD means for PUBLIC TERMINALS and PUBLIC TERMINAL
COMPONENTS ,the two (2) year period commencing on the Effective
Date of this Agreement; provided, however, that if in one or more
periods of twelve (12) or more consecutive calendar months during
such two (2) year period there shall be no sale of at least [
* ] PUBLIC TERMINALS and sale of at
least [ * ] dollars ($US [ * ]) of PUBLIC TERMINAL
COMPONENTS which are ITEMS SUBJECT TO FEE , such period(s) of no
sales shall not be taken into account in determining the
expiration of the BASE PERIOD.
BUSINESS means the Public Terminal business as carried on by
LUCENT immediately prior to the date of this Agreement.
COST OF GOODS means for PUBLIC TERMINAL COMPONENTS [*]% of
the FAIR MARKET VALUE and [*]% of the FAIR MARKET VALUE for
PUBLIC TERMINALS.
ENHANCED PRODUCT means any PUBLIC TERMINAL or PUBLIC TERMINAL
COMPONENT product which results from a redesign or modification
of LISTED PRODUCTS.
FAIR MARKET VALUE means, with respect to any ITEM SUBJECT TO
FEE sold, leased or put into use, the greater of (i) the
selling price which a seller would realize from an
unaffiliated buyer in an arm's length sale of an identical
product in the same quantity and at the same time and place
as such sale, lease or putting into use; or (ii) the selling
price actually obtained for such ITEM SUBJECT TO FEE in the
form in which it is sold, whether or not assembled (and
without excluding therefrom any components or subassemblies
thereof which are included in such selling price).
In determining "selling price" the following shall be
excluded:
(a) usual trade discounts actually allowed to
unaffiliated persons or entities;
(b) packing costs;
(c) costs of insurance and transportation;
-----------
* The text within the brackets has been omitted and separately filed with the
Securities and Exchange Commission pursuant to a Rule 24b-2 request for
confidential treatment.
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(d) import, export, excise, sales and value added
taxes, and customs duties, and
(e) sales returns.
GENERAL TECHNOLOGY means that LUCENT technology including,
without limitation, manuals, instructions, directories,
tangible know-how, schematics and firmware, relating to the
LISTED PRODUCTS that is identified or described in Schedule
2, attached hereto and such other technology as may be
identified pursuant to the Transition Plan which, subject to
LUCENT's concurrence, shall be deemed added to schedule 2
ITEM SUBJECT TO FEE means any PUBLIC TERMINAL or PUBLIC
TERMINAL COMPONENT which is manufactured during the BASE
PERIOD by LICENSEE with the use of any of the GENERAL
TECHNOLOGY.
LISTED PRODUCTS means products of the type listed in
Schedule 3 as developed or manufactured by LUCENT in the
BUSINESS prior to the Effective Date and such other products
as may be identified pursuant to the Transition Plan which
shall, subject to LUCENT'S concurrence, be deemed added to
Schedule 3
PUBLIC TERMINAL means a telephone station unit in a publicly
accessible location for performing the functions of (i) producing
electrical signals representative of voice and data signals or
(ii) producing voice and data signals representative of
electrical signals or (iii) performing any combination of the
functions (i) and (ii).
PUBLIC TERMINAL COMPONENT means any part, component or
subassembly of a PUBLIC TERMINAL.
SUBSIDIARY of a company means a corporation or other legal
entity (i) the majority of whose shares or other securities
entitled to vote for election of directors (or other
managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does
not have outstanding shares or securities but the majority
of whose ownership interest representing the right to manage
such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or
indirectly; but any such corporation or other legal entity
shall be deemed to be a SUBSIDIARY of such company only as
long as such control or ownership and control exists.
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