EXHIBIT 10.24
LICENSE AGREEMENT
BY AND BETWEEN
TRW INC.,
SPACE & ELECTRONICS GROUP
XXX XXXXX XXXX
XXXXXXX XXXXX, XXXXXXXXXX 00000
AND
TRW MILLIWAVE INC.
LICENSE AGREEMENT
THIS LICENSE AGREEMENT, made and entered into as of the 28th day of
February, 2000 (the "Effective Date") by and between the Space & Electronics
Group of TRW Inc., an Ohio corporation, having offices at Xxx Xxxxx Xxxx,
Xxxxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter "TRW") and TRW Milliwave inc., a
California corporation, having offices at 0000 Xxxxxxx Xxx,, Xxxxxxx Xxxxxxx, XX
00000 (hereinafter "MILLIWAVE").
WHEREAS, TRW has developed, designed and manufactured certain kinds of
microwave and millimeter wave modules, computer software and technical
information for use in telecommunications services, and possesses certain
proprietary rights, including without limitation patents, copyrights, trade
secrets and know-how relating thereto; and
WHEREAS, MILLIWAVE has been assisting TRW to develop, design, and
manufacture certain kinds of microwave and millimeter wave modules; and
WHEREAS, MILLIWAVE desires to obtain from TRW a license under TRW's patent
rights, copyrights, trade secrets and know-how relating to such microwave and
millimeter wave modules, computer software and technical information for
specified fields of use; and
WHEREAS, TRW is willing to grant such licenses for specified fields of use.
THEREFORE, in consideration of the mutual premises herein contained and the
mutual benefits to be derived therefrom, TRW and MILLIWAVE agree as follows:
ARTICLE 1
DEFINITIONS
The following words and phrases shall have the meanings set forth below
unless the context requires a different meaning:
1.1 AGREEMENT: This License Agreement.
-2-
1.2 COMMERCIAL: Any item or event involving the transfer or sale of
products where the transaction does not require qualification of the product to
relevant specifications in, for example, Mil-M-38510, Xxx-xxx-000, Xxx-x-00000,
Xxx-X-00000 or similar specifications and subsequent versions issued by any
agency of the United States government.
1.3 LICENSED COMPUTER SOFTWARE: Computer Programs (a set of instructions,
rules, or routines, recorded in a form that is capable of causing a computer to
perform a specific operation or series of operations, which includes the source
code, source code listings, object code, object code listings and flow charts)
that are included within the Licensed Products or used in the testing of
Licensed Products.
1.4 INTELLECTUAL PROPERTY RIGHTS: The Licensed Patent Rights and all
present and future worldwide copyrights, trademarks, trade secrets, industrial
rights, moral rights and contract rights.
1.5 LICENSED PATENT RIGHTS: (a) TRW's presently existing patents and filed
patent applications, and any patent and patent applications filed by TRW after
the Effective Date to protect inventions relating to Licensed Products conceived
or first actually reduced to practice prior to the Effective Date, and any
United States and foreign patents which issue from any continuations,
continuations-in-part, divisionals or substitutions thereof, and all extensions,
reexaminations, renewals and reissues therefrom, and all rights to bring an
action against any person to recover damages or profits resulting from
infringement of the foregoing (collectively, the "Licensed Existing Patent
Rights"); and (b) TRW's United States and foreign patents and patent
applications filed by TRW to protect inventions relating to Licensed Products
conceived subsequent to the Effective Date but prior to the date one (1) year
after the Effective Date, and any United States and foreign patents which issue
from any continuations, continuations-in-part, divisionals or substitutions
thereof, and all extensions, reexaminations, renewals and reissues therefrom,
and all rights to bring an action against any person to recover damages or
profits resulting from infringement of the foregoing (collectively, the
"Licensed Future Patent Rights").
1.6 LICENSED TECHNOLOGY: Licensed Products, Licensed Computer Software and
Licensed Technical Information.
-3-
1.7 LICENSED FIELD: The design, development, modification,enhancement,
manufacture (or having made), reproduction, use, testing, marketing, public
display, offering to sell, sale, distribution, importing, exporting, service,
and repair of Licensed Products, including the sale of spare parts for or spare
complete Licensed Products by MILLIWAVE, for Commercial customers for use in
terrestrial applications or applications located up to, and including,
Thirty-thousand (30,000) feet above the surface of the earth. The term
specifically excludes the design, development, modification, enhancement,
manufacture (for having made), reproduction, use, testing, marketing, public
display, offering to sell, sale, distribution, importing, exporting, service and
repair of Licensed Products for use in systems located more than Thirty-thousand
(30,000) feet above the surface of the earth.
1.8 LICENSED PRODUCTS: Microwave and millimeter wave modules useful in
telecommunications services, both at a base station and/or at a customer
station, and that were designed and/or developed for the following customers at
the following frequencies, and which were referred to by the associated
pseudonyms:
-------------------------- ---------------------- ----------------------------
PSEUDONYM CUSTOMER FREQUENCY
-------------------------- ---------------------- ----------------------------
RATS Nokia 18 GHz
-------------------------- ---------------------- ----------------------------
RATS Nokia 23 GHz
-------------------------- ---------------------- ----------------------------
RATS Nokia 26 GHz
-------------------------- ---------------------- ----------------------------
RATS Nokia 38 GHz
-------------------------- ---------------------- ----------------------------
Lynx Nokia --
-------------------------- ---------------------- ----------------------------
BTR / CTR Nortel 24 GHz
-------------------------- ---------------------- ----------------------------
BTR / CTR Nortel 26 GHz
-------------------------- ---------------------- ----------------------------
BTR/CTR Nortel 28 GHz
-------------------------- ---------------------- ----------------------------
MICE Nokia 58 GHz
-------------------------- ---------------------- ----------------------------
The term specifically does not include any TRW MMICs.
1.9 LICENSED TECHNICAL INFORMATION: All documentation, trade secrets,
know-how, or other information relating to TRW's Licensed Products and/or
processes for the manufacture of Licensed Products, whether or not it is
considered proprietary or a trade secret by TRW including, without limitation,
data and information contained in reports, documents, drawings and graphs,
schematics, manuals, files and notes in any medium or representation, electronic
or otherwise, The term
-4-
specifically excludes any technical information relating to or concerning TRW's
MMICs.
1.10 MMIC: Monolithic Microwave Integrated Circuit.
1.11 TRANSFER: any mortgage, pledge, transfer, sale, assignment or other
disposition, whether voluntary, by operation of law (including by merger) or
otherwise, of a party's rights hereunder.
ARTICLE 2
LICENSE
2.1 LICENSE: TRW hereby grants to MILLIWAVE, subject to the terms and
conditions of this Agreement, a fully paid up, royalty free worldwide right and
license under all of its Intellectual Property Rights to (a) design, develop,
modify, enhance, reproduce, manufacture (or have made), use, test, sell, offer
to sell, market, publicly display, distribute, import, export, service, and
repair Licensed Products in the Licensed Field and (b) practice any method or
process covered by the Licensed Patent Rights involved in the manufacture or use
of the Licensed Technology.
2.1.1 Except as set forth in Section 2.4 hereof, the license granted
in this Section 2.1 shall be exclusive as to all parties, including TRW,
for Licensed Products in the Licensed Field.
2.1.2 The license granted in this Section 2.1 shall be perpetual,
subject to the termination for default provisions set forth in Section 9.
2.1.3 The license granted in this Section 2.1 is effective as of the
Effective Date.
2.1.4 MILLIWAVE shall have the right to assign the licenses granted in
this Section 2.1 to responsible parties, but only in accordance with the
provisions of Article 13 herein.
2.1.5 MILLIWAVE shall not have the right to grant sublicenses under
the licenses granted in this Section 2.1
-5-
2.1.6 The license granted in this Section 2.1 with respect to the
Licensed Technical Information portion of the Licensed Technology is a
continuing license that extends automatically without any further action on
the part of TRW or MILLIWAVE to (i) any modification, update, change or
other improvement to the Licensed Technical Information that is made by TRW
after the Effective Date and before a date one (1) year after the Effective
Date; and (ii) any discovery, development or other invention made by TRW
after the Effective Date but prior to one (1) year after the Effective Date
that constitutes new Licensed Technical Information.
2.2 FUTURE TECHNOLOGIES: Except with respect to the Licensed Future Patent
Rights, and as otherwise specified in Section 2.1.6, rights and licenses to
future TRW technologies applicable to the Licensed Products are not granted to
MILLIWAVE by this Agreement.
2.3 EXCLUSION: Except as otherwise provided in this Agreement, the licenses
and rights granted hereunder shall not be interpreted as granting or implying
the grant of rights in any other invention or technical information of either
party. Specifically, MILLIWAVE is granted absolutely no license to any TRW
MMICs.
2.4 TRW RESERVATIONS: TRW reserves unto itself the non-exclusive right to
utilize the Intellectual Property Rights associated with the Licensed Technology
to manufacture, have manufactured, use, test, sell, service, and repair Licensed
Products in the Licensed Field; provided, however that this reservation
concerning the Licensed Products in the Licensed Field (i) shall be limited to
servicing Nokia and Nortel in the event that TRW reasonably determines that
MILLIWAVE is unable to fulfill its contractual obligations with respect to one
or both of those customers and (ii) shall not be assignable or sublicensable
except as is necessary to have a third party perform work or produce items for
Nokia and/or Nortel on behalf of TRW.
2.5 MAINTENANCE OF PATENTS: TRW shall retain the right to manage and
control the prosecution and maintenance of patent applications and patents
included in the Licensed Patent Rights, and shall have sole financial
responsibility for patent acquisition or maintenance of the Licensed Patent
Rights to the extent it elects, in its sole discretion, to pursue the same. In
the event TRW determines that it no longer deems it
-6-
necessary or desirable to prosecute a patent application or maintain a patent
included in the Licensed Patent Rights in any country, TRW shall notify
MILLIWAVE not less than forty five (45) days prior to the abandonment of the
patent application or the final due date for the payment of the maintenance fee.
In such event, MILLIWAVE may obtain an assignment of the patent application or
patent promptly upon notifying TRW and providing it with appropriate assignment
documents in a form ready to be executed by it, and thereafter MILLIWAVE shall
own all right, title and interest in the same and shall have the right to (and
the sole financial responsibility for) management and control of the prosecution
and maintenance of such patent applications and patents. Any assignment of any
patent or patent application pursuant to this Section 2.6 shall include a
royalty-free, fully paid up non-exclusive license to TRW under such patent or
application to design, develop, manufacture, have manufactured, use, test, sell,
market, service, and repair any products both within the Licensed Field (but
solely as it pertains to the servicing of Nokia and Nortel only) and outside of
Licensed Field.
2.6 ENFORCEMENT OF PATENT RIGHTS:
2.6.1 If either party hereto learns at any time during the term of
this Agreement of any actual or threatened infringement by any other person
of any enforceable Licensed Patent Rights owned by or licensed to the other
party after the Effective Date, that party shall give notice of that
infringement or threatened infringement to the other party. The parties
shall then consult together as to the best course of action to pursue in
response to such potential infringement, but neither party shall be
obligated to institute legal action at its own expense. A good faith
failure by one party to provide such notice to the other party shall not be
deemed a breach of this Agreement and shall not give rise to a right of
action by other party.
2.6.2 In the event that the parties do not reach an agreement as
contemplated by Section 2.6.1 hereof as to the best course of action to
pursue with respect to a potential infringement (i) TRW shall have the
right, but not the obligation, to institute legal action, through counsel
of its own choosing and at its sole expense, to restrain any infringement
or threatened infringement, or to recover damages therefor, of its
enforceable Licensed Patent Rights, and (ii) MILLIWAVE shall have the
right, but not the obligation, to institute
-7-
legal action, through counsel of its own choosing and at its sole expense,
to restrain any infringement or threatened infringement, or to recover
damages therefor, of its enforceable Licensed Patent Rights in the Licensed
Field. The party that bears the expenses of pursuing legal action against a
third party infringer shall be entitled to any damages, lost profits or
other monies recovered by judgment, decree, settlement, arbitration or
otherwise, resulting from such legal action.
2.6.3 In the event that one party elects to institute legal action
against a third party infringer, the other party shall fully cooperate in
the prosecution of such action including joining as a party in suit when
necessary to acquire standing to institute legal action pursuant to this
Section 2.6; provided, however, that such other party shall be reimbursed
for all reasonable out-of-packet expenses incurred in providing such
cooperation including its reasonable legal fees and expenses. The electing
party shall reimburse the other party for all such expenses within thirty
(30) days after its receipt of an invoice from the other party that
describes such expenses in reasonable detail, with supporting documentation
as appropriate.
ARTICLE 3
LICENSED TECHNICAL INFORMATION
3.1 LICENSED TECHNICAL INFORMATION: Except as set forth in Sections 3.5,
TRW shall not be obligated to reduce to a tangible medium of expression any
Licensed Technical Information.
3.2 DELIVERY OF LICENSED TECHNICAL INFORMATION: The Licensed Technical
Information has previously been delivered to MILLIWAVE. In addition, TRW shall
furnish to MILLIWAVE, as requested by MILLIWAVE, copies of such existing
documents and other information as are reasonably necessary for MILLIWAVE to
understand the design and/or manufacturing processes for the manufacture of the
Licensed Products, and once delivered, such documents and other information
shall be included within Licensed Technical Information. TRW shall deliver to
MILLIWAVE one legible copy of each issued patent and all patent applications
included in the Licensed Patent Rights promptly following the Effective Date.
TRW shall also promptly furnish MILLIWAVE a copy of all patent applications
-8-
filed and patents issued after the Effective Date that are included in the
Licensed Patent Rights.
3.3 USE AND NONDISCLOSURE: MILLIWAVE shall not use or permit the use of
Licensed Technical Information for any purpose not authorized by this Agreement,
MILLIWAVE shall hold in confidence, and shall not disclose or communicate or
permit to be disclosed or communicated to any third person, any Licensed
Technical Information which is furnished to MILLIWAVE hereunder, except to third
parties who have executed an agreement with MILLIWAVE with confidentiality
obligations no less protective than those set forth herein, MILLIWAVE shall take
or cause to be taken all necessary precautions to the same extent that it would
with its own technical information, but in no event less than a reasonable
standard of care, to prevent the disclosure or communication of Licensed
Technical Information to unauthorized third parties.
3.4 UPDATES OF LICENSED TECHNICAL INFORMATION: TRW shall be under no
obligation to deliver to MILLIWAVE any modifications or additions to Licensed
Technical Information unless such modifications or additions occur within one
(1) year of the Effective Date; in such case, such modifications or additions
shall be delivered in writing to MILLIWAVE in a reasonable time after the
applicable documents have been generated, and shall be included within Licensed
Technical Information.
3.5 RESTRICTIONS: The rights granted MILLIWAVE herein cover only Licensed
Technology for use as licensed hereunder, and MILLIWAVE agrees that it shall
not, during the term of this Agreement, manufacture, sell, lease or otherwise
dispose of any Licensed Technology or parts thereof embodying any of the
Licensed Patent Rights except insofar as the application thereof is expressly
provided for under this Agreement.
ARTICLE 4
IMPROVEMENTS
For the period from the Effective Date until the date one year after the
Effective Date, MILLIWAVE agrees that any modifications or improvements in the
Licensed Products, or the Licensed Technology made
-9-
by MILLIWAVE, including any inventions, shall, to the extent applicable to the
design, manufacture or sale of Licensed Products to either Nokia or Nortel, be
made known to TRW in the form of drawings, written descriptions, or other data,
and TRW shall have a royalty free, non-exclusive right to use such modifications
or improvements, including any inventions for (i) the limited purposes described
in Section 2.4 hereof and (ii) any use outside of the Licensed Field. Such
disclosures of modifications and improvements will be made to TRW in writing on
a quarterly basis. MILLIWAVE further agrees to inform TRW on a quarterly basis
in writing of any of MILLIWAVE's patents and patent applications relating to
such modifications, improvements or inventions. If, in countries selected by
TRW, MILLIWAVE decides it shall not file applications for, or maintain patents
upon, MILLIWAVE's modifications, improvements or inventions, then TRW shall have
the right to do so at its expense and such applications and patents shall be and
become its property, provided MILLIWAVE shall continue to have the right to make
use thereof on a non-exclusive basis in the Licensed Field. MILLIWAVE shall use
its best efforts to have executed such application papers and assignments as TRW
may request in connection with such patents, The provisions of this Article 4
shall survive termination or expiration of this Agreement insofar as the rights
of the parties to use such improvements, modifications, inventions and patents
are concerned.
ARTICLE 5
REPRESENTATIONS, WARRANTIES AND INDEMNIFICATION
5.1 REPRESENTATIONS AND WARRANTIES of TRW: TRW represents and warrants to
MILLIWAVE as follows:
5.1.1 As of the Effective Date, TRW is the owner of all Patent Rights
and Licensed Technical Information licensed in this Agreement in existence
as of the Effective Date.
5.1.2 As of the Effective Date, TRW has all requisite power and
authority to enter into and execute this Agreement, to grant the licenses
provided herein and to perform its obligations hereunder.
5.1.3 This Agreement constitutes a legal, valid and binding obligation
of TRW, enforceable against TRW in accordance with its terms.
-10-
5.1.4 There are no agreements, assignments or encumbrances that would
conflict with the terms and conditions herein, except for any encumbrances
which would not materially affect MILLIWAVE's ability to prosecute and use
the Licensed Technologies. Neither the execution and delivery of this
Agreement nor the performance by TRW of any of its obligations hereunder
will conflict with or result in a breach of the terms, conditions or
provisions of, or constitute a default under, the Articles of Incorporation
or Regulations of TRW, as amended.
5.1.5 No royalties or fees have been paid by TRW to other persons by
reason of TRW's ownership of the Intellectual Property Rights associated
with the Licensed Technology.
5.1.6 As of the Effective Date there is no pending or, to the actual
knowledge of TRW, threatened claim, litigation or rendered decision,
judgment or holding against TRW concerning: (i) any claims of ownership by
TRW to any of the Intellectual Property Rights associated with the Licensed
Technology; (ii) the validity, registrability or enforceability of any of
the Intellectual Property Rights associated with the Licensed Technology;
(iii) the license of any Intellectual Property Rights associated with the
Licensed Technology to MILLIWAVE; or (iv) the Commercial manufacture, use
or sale of any Licensed Product as a violation of the intellectual property
rights of any other person.
5.2 TRW'S RIGHTS: TRW does not make any representation or warranty as to
the validity of the Patent Rights or that the manufacture, use or sale of
Licensed Products shall not infringe the intellectual property rights of third
parties.
5.3 REPRESENTATIONS AND WARRANTIES OF MILLIWAVE: MILLIWAVE represents and
warrants to TRW as follows:
5.3.1 MILLIWAVE has all requisite power and authority to enter into
and execute this Agreement and to perform its obligations hereunder.
5.3.2 This Agreement constitutes a legal, valid and binding obligation
of MILLIWAVE, enforceable against MILLIWAVE in accordance with its terms.
-11-
5.3.3 MILLIWAVE has not entered into any agreements with third parties
that would conflict with the terms and conditions herein. Neither the
execution and delivery of this Agreement nor the performance by MILLIWAVE
of its obligations hereunder will conflict with or result in a breach of
the terms, conditions or provisions of, or constitute a default, under the
Articles of Incorporation or By-Laws of MILLIWAVE, as amended.
5.4 LIMITATION OF LIABILITY: TRW does not assume any responsibility, nor
does TRW give any warranties to MILLIWAVE, of any nature whatsoever, with
respect to the ability of MILLIWAVE to construct successfully Licensed Products
using the Licensed Technical Information or Patent Rights. TRW'S WARRANTY
OBLIGATIONS AND MILLIWAVE'S REMEDIES THEREUNDER ARE SOLELY AND EXCLUSIVELY AS
STATED HEREIN.
5.5 EXCLUSION: THE WARRANTIES PROVIDED IN THIS ARTICLE 5 ARE IN LIEU OF ALL
OTHER WARRANTIES, WHETHER STATUTORY, EXPRESS OR IMPLIED, AT LAW OR IN EQUITY,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, ALL OF WHICH ARE EXPRESSLY EXCLUDED. EACH PARTY'S WARRANTY
OBLIGATIONS AND REMEDIES ARE SOLELY AND EXCLUSIVELY AS STATED IN THIS ARTICLE 5.
IN NO CASE SHALL TRW OR MILLIWAVE BE LIABLE FOR ANY SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES, WHETHER ARISING IN CONTRACT, WARRANTY,
TORT, INCLUDING NEGLIGENCE, STRICT LIABILITY, OR OTHER LEGAL OR EQUITABLE
THEORY. TRW DOES NOT MAKE ANY WARRANTY AS TO THE VALIDITY OR ENFORCEABILITY OF
THE LICENSED PATENT RIGHTS.
5.6 INDEMNITY:
5.6.1 TRW agrees to defend, indemnify and hold harmless MILLIWAVE and
its directors, officers, agents and employees for any and all losses,
costs, liabilities or expenses (including without limitation reasonable
attorneys' and expert witnesses' fees) incurred or arising from any third
party claim based upon any breach of TRW's representations or warranties
made in Section 5.1.
-12-
5.6.2 MILLIWAVE agrees to defend, indemnify and hold harmless TRW and
its directors, officers, agents and employees for any and all losses,
costs, liabilities or expenses (including without limitation reasonable
attorneys' and expert witnesses' fees) incurred or arising from any third
party claim based upon any breach of the representations or warranties made
in Section 5.2.
5.6.3 All defense and indemnity obligations arising under this
Agreement will be contingent upon the indemnified party: (a) providing to
the indemnifying party prompt notice of any claim, action or proceeding
giving rise to an indemnifiable event; (b) granting to the indemnifying
party sole control of the defense and/or settlement negotiations (except
that the indemnified party's prior written consent will be required for any
settlement that reasonably can be expected to require a material
affirmative obligation of, or result in any ongoing material liability to,
the indemnified party); and (c) providing reasonable cooperation and, at
the expense of the indemnifying party, assistance in the defense or
settlement.
ARTICLE 6
TERM AND TERMINATION
This Agreement shall commence on the Effective Date, and shall remain in
effect unless and until this Agreement is terminated for default in accordance
with Section 9.2.
ARTICLE 7
EXCUSABLE DELAY
7.1 NOTICE: If either TRW or MILLIWAVE is unable to perform any of their
respective obligations as herein provided then the party whose performance is
prevented or delayed shall give the other party notice thereof as soon as
reasonably possible under the circumstances and information regarding the cause
or reason therefor.
7.2 EXCUSABLE DELAY: If either TRW or MILLIWAVE is unable to perform any of
their respective obligations as herein provided due to any circumstances beyond
its reasonable control, but not due to its negligence (including but not limited
to strikes, war, an act of God, a public enemy, interference by any civil or
military authority, inability to secure governmental approval, materials or
services or similar cause) and gives
-13-
notice to the other as provided in Section 8.1, then the time of performance of
any such obligation shall be extended for a period equal to the number of days
during which performance thereof was delayed due to such circumstances, and
during such period such party shall not be deemed in default of this Agreement.
ARTICLE 8
NOTICES AND LEGAL ADDRESSES
All notices required or permitted under this Agreement shall be made by
fax, confirmed by letter, to the appropriate party at the fax numbers and
addresses specified below (or at such other address as a party will specify in
writing):
MILLIWAVE: TRW Milliwave Inc.
0000 Xxxxxxx Xxx.
Xxxxxxx Xxxxxxx, XX 00000
Telecopy: 000-000-0000
Attention: General Manager
TRW: TRW Inc,
Space & Electronics Group
Xxx Xxxxx Xxxx
Xxxxxxx Xxxxx, Xxxxxxxxxx 00000
Telecopy: 000-000-0000
Attention: Vice President and General Manager
Telecommunication Programs Division
ARTICLE 9
TERMINATION FOR DEFAULT
9.1 TERMINATION:
9.1.1 Either party may terminate this Agreement upon thirty (30) days
written notice to the other party if the other party fails to pay any sum
due and payable hereunder within ten (10) days after same has become due
and payable and such failure continues for fifteen (15) days after written
notice from the payee;
-14-
9.1.2 MILLIWAVE may terminate this Agreement if TRW is unable to
fulfill its obligations under this Agreement as a result of: (a) liens,
claims, charges or encumbrances in existence as of the Effective Date or
arising as a result of TRW's execution or performance of this Agreement;
(b) TRW's failure to obtain all consents, approvals or authorizations of
other persons necessary as of the Effective Date in order to grant the
licenses provided for herein; (c) TRW's failure to make all filings,
notifications and registrations with all governmental authorities, if any,
necessary as of the Effective Date in order to grant the licenses provided
for herein; or (d) any federal, state or local judgment, writ, decree,
order, statute, rule or regulation applicable as of the Effective Date to
TRW or the Licensed Technology, and such inability continues for a period
of thirty (30) days after written notice from MILLIWAVE specifying such
failure, provided that if the failure be such that it cannot with due
diligence be cured within such thirty (30) day period, then TRW shall have
such longer period, not to exceed thirty (30) additional days, as shall be
reasonably necessary to cure such failure so long as TRW is acting in good
faith and with due diligence;
9.1.3 Either party may terminate this Agreement upon thirty (30) days
written notice if the other party fails to perform any other material
covenant or obligation required to be performed by such party hereunder and
such failure continues for a period of thirty (30) days after written
notice from the nondefaulting party specifying such failure, provided that
if the failure be such that it cannot be cured solely by the payment of
money and cannot with due diligence be cured within such thirty (30) day
period, then the notified party shall have such longer period, not to
exceed ninety (90) additional days, as shall be reasonably necessary to
cure such failure so long as such party is acting in good faith and with
due diligence;
9.1.4 Either party may terminate this Agreement upon written notice to
the other party if the other party (i) shall commence a voluntary case or
other proceeding seeking dissolution, liquidation or other relief with
respect to itself or its debts under any bankruptcy, insolvency or other
similar law now or hereafter in effect or seeking the appointment of a
receiver, trustee, liquidator, custodian or other similar official, or (ii)
shall consent to any such relief or to the
-15-
appointment of, or taking possession by, such official in any voluntary
case or other proceeding commenced against it; or
9.1.5 Either party may terminate this Agreement upon written notice to
the other party if any involuntary case or other proceeding shall be
commenced against the other party seeking dissolution, liquidation or other
relief with respect to it or its debts under any bankruptcy, insolvency or
other similar law now or hereafter in effect or seeking the appointment of
a receiver, trustee, liquidator, custodian or other similar official of it
or any substantial part of its property, if such involuntary case or other
proceeding shall remain undismissed and unstayed for a period of sixty (60)
days.
9.2 COMPENSATION: Each party hereby expressly agrees and acknowledges that
termination of this Agreement by either party for default shall not entitle the
other party to any termination compensation or to any payment in respect of any
goodwill established during the term of this Agreement or render the party
liable for damages on account of any loss of prospective profits or on account
of any expenditure, investment or obligation incurred or made by the parties, or
otherwise.
9.4 EFFECTS OF TERMINATION: If this Agreement is terminated by TRW for
MILLIWAVE's default in accordance with Sections 9.1.1, 9.1.3, 9.1.4 or 9.1.5,
then MILLIWAVE shall discontinue the use of the Licensed Technology and shall
return to TRW all Licensed Technology furnished to or otherwise made available
to MILLIWAVE hereunder. If this Agreement is terminated by MILLIWAVE for TRW's
default in accordance with Section 9.1, then the term of all licenses granted to
MILLIWAVE herein will become perpetual and irrevocable.
ARTICLE 10
SURVIVAL OF OBLIGATIONS
Section 9.3 and Articles 5, 10 and 12 shall survive the termination and
expiration of this Agreement.
-16-
ARTICLE 11
SUBLICENSES, ASSIGNMENTS AND TRANSFERS
11.1 COMPLIANCE WITH ASSIGNMENT RESTRICTIONS: Neither party may Transfer
any of its rights or obligations under this Agreement in whole or in part or
delegate any of its obligations or duties hereunder to any person except in
accordance with the terms of this Agreement.
11.2 MILLIWAVE TRANSFER OF LICENSE: MILLIWAVE may Transfer all license
rights granted to it herein to any person or entity but only in connection with
the sale or Transfer of all or substantially all of the assets of MILLIWAVE that
pertain to the use of Licensed Products in the Licensed Field. Upon Transferring
the license rights granted to MILLIWAVE herein in accordance with this Section
11.2, MILLIWAVE shall notify TRW by delivering to TRW a written undertaking
executed by the transferee under which such transferee acknowledges that the
rights it is acquiring from MILLIWAVE are limited to the Licensed Field in
accordance with this Agreement.
11.3 EFFECT OF NON-COMPLIANCE: Any purported sublicense or Transfer in
contravention of this Agreement shall be null and void and of no force or
effect.
ARTICLE 12
MISCELLANEOUS
12.1 HEADINGS: The headings and titles to the Articles and Sections of this
Agreement are inserted for convenience only and shall not be deemed a part
hereof or affect the construction or interpretation of any provision hereof.
12.2 REMEDIES: Unless otherwise expressly provided herein, the rights and
remedies hereunder are in addition to, and not in limitation of, other rights
and remedies under the Agreement, and exercise of one right or remedy shall not
be deemed a waiver of any other right or remedy.
12.3 MODIFICATION - WAIVER: No cancellation, modification, amendment,
deletion, addition or other change in this Agreement or any provision hereof, or
waiver of any right or remedy herein provided, shall be effective for any
purpose unless specifically Set forth in a writing signed by
-17-
the party to be bound thereby and specifically referencing this Agreement. No
waiver of any right or remedy in respect of any occurrence or event on one
occasion shall be deemed a waiver of such right or remedy in respect of such
occurrence or event on any other occasion.
12.4 ENTIRE AGREEMENT: This Agreement supersedes all other agreements, oral
or written, heretofore made with respect to the subject hereof and the
transactions contemplated hereby and contains the entire agreement of the
parties.
12.5 CONTROLLING LAW: All questions concerning the validity and operation
of this Agreement and the performance of the obligations imposed upon the
parties hereunder shall be governed by and construed in accordance with the laws
of the State of California, United States of America applicable to contracts
entered into and wholly to be performed in the State of California.
12.6 SUCCESSORS AND ASSIGNS: The provisions of this Agreement shall be
binding upon and inure to the benefit of TRW and MILLIWAVE and their respective
successors and assigns, but this provision shall not be deemed to expand or
otherwise affect the limitations on assignment and sublicensing set forth in
Article 11.
12.7 COUNTERPARTS: This Agreement has been executed in several
counterparts, each of which shall be deemed to be an original copy hereof.
12.8 GOVERNMENT REGULATIONS: This Agreement is subject to all the laws and
regulations, and other administrative acts, now or hereinafter in effect, of the
United States Government and its departments and agencies. Licensed Technical
Information, any Licensed Product, component, or spare part, are not authorized
to be directly or indirectly sold, leased, released, assigned, transferred,
conveyed, or in any manner disposed of in or to any country where such sale,
lease, assignment, transferal, conveyance or use, is regulated by the United
States Government without first obtaining any necessary approvals of the United
States Government.
12.9 INDEPENDENT CONTRACTORS: The relationship established between the
parties by this Agreement is that of independent contractors. Nothing in this
Agreement shall be construed to constitute the parties as partners, joint
-18-
venturers, co-owners, franchisers or otherwise as participants in a joint or
common undertaking for any purpose whatsoever.
12.10 SEVERABILITY: If any provision or provisions of this Agreement shall
be held to be invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not be in any way affected or
impaired thereby.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
and year first set forth above.
TRW Inc.
Space & Electronics Group
By:
----------------------------------------------------------
TRW Milliwave Inc.
By:
----------------------------------------------------------
-19-
