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EXHIBIT 10.2
DEVELOPMENT AND LICENSE AGREEMENT
THIS DEVELOPMENT AND LICENSE AGREEMENT is made and entered into as of
June 16, 1996, by and between BAY NETWORKS, INC., a corporation existing under
the laws of Delaware, which has offices at 0000 Xxxxx Xxxxxxx Xxxxxxx, Xxxxx
Xxxxx, Xxxxxxxxxx 00000 ("Licensor"), and PENRIL DATACOMM NETWORKS, INC., a
corporation existing under the laws of Delaware, which has offices at 0000
Xxxxxx Xxxxxxx Xxxxxxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000, on behalf of Access
Beyond, Inc., a company in formation ("Licensee").
WHEREAS, Licensor is engaged, among other things, in designing and
developing digital modem cards;
WHEREAS, Licensor is willing to develop a certain digital modem card
for Licensee and Licensee desires to obtain from Licensor a license for
commercialization of such digital modem card.
NOW, THEREFORE, in consideration of the premises and mutual promises,
terms and conditions hereinafter set forth, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties do hereby agree as follows:
1. DEFINITIONS.
As used herein, the following terms shall have the following
definitions.
1.1 AFFILIATES. "Affiliates" of a party hereto shall mean (i) companies
the majority of whose voting shares are now or hereafter owned or controlled
directly or indirectly by such party; (ii) companies which now or hereafter own
or control directly or indirectly a majority of the voting shares of such party;
and (iii) companies a majority of whose voting shares are now or hereafter owned
or controlled directly or indirectly by any company mentioned in (i) or (ii) of
this definition. A company shall be considered an "Affiliate" for only so long
as such ownership or control exists. For the purposes of this definition,
partnerships or similar entities where a majority-in-interest of its partners or
owners are a party hereto and/or Affiliates of such party shall also be deemed
to be Affiliates of such party.
1.2 CONFIDENTIAL INFORMATION. "Confidential Information" shall mean
that part of the Technical Information, whether written or oral, which is (i)
not publicly known and (ii) annotated as "confidential" or "proprietary." Any
information which is not annotated as "confidential" or "proprietary" shall be
deemed to be in the public domain. In addition, "Confidential Information"
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shall include information disclosed by either party to the other party in
accordance with Section 3.5 (Modifications and/or Improvements of Products)
hereof.
1.3 DEVELOPMENT PLAN. "Development Plan" means the Plan and Schedule of
Development attached hereto as EXHIBIT A.
1.4 EFFECTIVE DATE. "Effective Date" shall mean the date of acceptance
of prototypes as defined in EXHIBIT A.
1.5 LICENSED TECHNOLOGY. "Licensed Technology" shall mean the Rights,
Products and Technical Information.
1.6 PRODUCT. "Product" shall mean the digital modem card and any and
all products, software, equipment, components, parts, tools and test equipment
listed in EXHIBIT B attached hereto.
1.7 PROJECT. "Project" shall mean the services, advice and assistance
provided by Licensor to Licensee pursuant to the Development Plan.
1.8 RIGHTS. "Rights" shall mean:
(a) the patents and patent applications listed on EXHIBIT C-1
attached hereto, and any and all continuations, divisions, reissues, extensions
and other filings that Licensor may file with the U.S. Patent and Trademark
Office with respect to such patents and patent applications described in this
Section 1.8 above (and corresponding applications and patents in countries and
jurisdictions other than the United States);
(b) the copyrights listed as EXHIBIT C-2 attached hereto;
(c) the mask work rights listed on EXHIBIT C-3 attached hereto; and
(d) any and all patents, patent applications, copyrights, mask work
rights and other intellectual property rights with respect to any inventions
pertaining to the Licensed Technology, which patents, patent applications,
copyrights, mask work rights and other rights (i) are granted or to be granted
to Licensor (either directly or through its Affiliates, successors, assigns,
agents or employees) (ii) with respect to which Licensor (either directly or
through its Affiliates, successors, assigns, agents or employees) shall have the
right to grant licenses, sublicenses and rights of the type described in Article
3 below; and PROVIDED, HOWEVER, that with respect to this Section 1.8 if any
patents, copyrights, mask work rights or other intellectual property rights have
been or are in the future issued, granted or registered to Licensor (either
directly or through its Affiliates, successors, assigns, agents or employees) by
or with any government based on or as embodied in any Product or any part of the
Technical Information, such patents, copyrights, mask work rights and other
rights shall be deemed included in this definition.
1.9 TECHNICAL INFORMATION. "Technical Information" shall mean all
trade secrets, know-how, computer programs (including copyrights in said
software), knowledge,
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technology, means, methods, processes, practices, formulas, techniques,
procedures, technical assistance, designs, drawings, apparatus, written and oral
rectifications of data, specifications, assembly procedures, schematics and
other valuable information of whatever nature, whether confidential or not, and
whether proprietary or not, which is now in (or, subject to Section 3.5(b)
below, hereafter during the term of this Agreement comes into) the possession of
Licensor and which is relevant to the manufacture, assembly, sale, distribution,
use, installation, servicing or testing of any Product.
2. THE PROJECT.
2.1 DEVELOPMENT. Under the terms and conditions hereinafter set forth,
Licensor agrees to undertake the Project. Licensor shall undertake the Project
as a high priority, by which it is understood that Licensor will use reasonable
efforts to cause the Project to be completed as provided in Exhibit A.
2.2. REPORTS. Licensor shall keep Licensee informed of the progress of
the Project by sending Licensee at least one progress report per month in which
are specified accomplishments of the preceding month and plans for the following
month, weekly telephone conference calls and other engineering interactions.
2.3 PROJECT MANAGERS. Licensor and Licensee each shall designate a
Project Manager under the Development Plan. Either party may change its Project
Manager upon written notice to the other party. Licensor's and Licensee's
respective Project Managers shall be the principal contacts between Licensor and
Licensee for all purposes of this Agreement.
2.4 COOPERATION AND ACCESS. Licensee agrees to cooperate with Licensor
to the extent necessary for Licensor to perform services hereunder. Such
cooperation shall include, but not be limited to, providing Licensor with all
necessary information and, to the extent required in connection with performance
of the Project, free and full access to, and use of, Licensee's premises and
equipment during normal business hours. If needed, Licensee shall also provide
Licensor with free and full access during normal business hours to such Licensee
personnel as Licensee's Project Manager shall, from time to time, designate.
2.5. DELIVERABLES. Upon completion of the Project, Licensor shall
deliver five prototypes of the Product to Licensee, all as set forth in more
detail in the Development Plan together with all drawings, plans and other
material necessary to allow Licensee to manufacture Products and to enjoy its
other rights granted hereunder.
3. GRANT OF RIGHTS AND LICENSES.
Subject to all of the terms and conditions set forth in this Agreement:
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3.1 USE OF RIGHTS. Licensor hereby grants to Licensee and its
Affiliates a nonexclusive, worldwide, right and license to practice the Rights
in order to make, use, market, sell and distribute the Products. This right and
license includes, without limitation, the rights: (a) to use and duplicate all
of Licensor's binary software included or to be included in the Products; (b) to
manufacture and/or to cause third parties to manufacture Products; (c) to
maintain the Products; and (d)(i) to practice the methods and processes involved
in the use of the Products; (ii) to make and have made, to use and have used,
and to maintain machines, tools, instrumentalities and materials; and (iii) to
use and have used methods and processes, insofar as such machines, tools,
instrumentalities, materials, methods and processes are involved in or
incidental to the development, manufacture, sale, marketing, distribution,
installation, testing or repair of the Products.
3.2 USE OF TECHNICAL INFORMATION. Licensor grants to Licensee and its
Affiliates a nonexclusive, worldwide, right to use the Technical Information in
connection with Licensee's exercise of its rights and licenses granted
hereunder.
3.3 RIGHT TO SUBLICENSE OR ASSIGN. Licensee shall have the right to
sublicense or assign any of the rights or licenses granted hereunder in
connection with the manufacture and wholesale and retail sale solely by Licensee
of the Products.
3.4 SOFTWARE AND COMPUTER PROGRAMS IN RIGHTS, TECHNICAL INFORMATION OR
PRODUCTS.
(a) Licensor and Licensee agree that any and all software and other
computer programs included in the Rights, or the Technical Information or the
Products are being licensed by Licensor to Licensee in machine readable object
code form on a nonexclusive basis as set forth in Sections 3.1 (Use of Rights)
and 3.2 (Use of Technical Information) above, and are not being sold by Licensor
or purchased by Licensee. Licensor shall retain title to all of such software
and computer programs. Licensee shall have the right to sublicense to third
parties any rights or licenses to use individual copies of such software in the
operation of the Products.
(b) Licensee agrees not to remove any of Licensor's copyright and
proprietary notices which appear on or in any software or computer programs.
3.5 MODIFICATIONS AND/OR IMPROVEMENTS OF PRODUCTS.
(a) Licensee shall have the right to modify and improve the Products
and to apply each such modification or improvement to the Products, without
payment to or the consent of the Licensor. Any such modification or improvement
shall be the property of Licensee.
(b) Licensor agrees to provide Licensee with modifications and
enhancements ("Enhancements") to the Licensed Technology on the following
conditions:
(i) (A) Any such Enhancements shall be limited to ITU approved
changes to existing modem/fax related standards or ITU approved new standards
related to modem/fax devices, (B) Licensor has determined to implement such
changes or new standards and (C) such changes or new standards are supported by
the hardware architecture incorporated
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in Licensor's modem products as of the date of this Agreement; and
(ii) Licensee shall have no right to any Enhancement that is
not an ITU standard.
Licensor agrees to keep Licensee informed as to Licensor's intentions
with respect to support for the Enhancements described above. In connection with
any Enhancement which is implemented by Licensor, Licensor shall provide
Licensee with updated binary software images of the modem capability to be used
in the Product.
3.6 ACQUISITION TRANSACTION. In the event of the sale of all or
substantially all assets of Licensee, any single transaction or a series of
transactions of more than 50% of the capital stock of Licensee, or any merger,
consolidation or reorganization in which Licensee shall not be the surviving
corporation (an "Acquisition Transaction") Licensee shall be prohibited from
developing, manufacturing, marketing or otherwise using any new modem hardware
design which utilizes Licensors binary modem technology, except that minor
changes which may be required from time to time in Licensee's Products as they
existed at the time of such Acquisition Transaction shall not constitute new
modem hardware designs. The provisions of this Section 3.6 shall not be
effective until after the assignment by Nomad, Inc. to Access Beyond, Inc. of
all rights as Licensee hereunder pursuant to Section 10.1 hereof.
4. OBLIGATIONS OF LICENSOR.
4.1 TRAINING AND TECHNICAL ASSISTANCE. To assist Licensee in exercising
its rights hereunder, Licensor agrees to provide appropriate training and
technical assistance to Licensee, its employees and its permitted sublicensees,
so that Licensee will be able to practice the Patents and use the Licensed
Technology to its full potential. Such training and assistance shall be
rendered by Licensor at no expense to Licensee; PROVIDED, HOWEVER, that
Licensor shall not devote more than 80 man-hours during the term of this
Agreement in rendering such training and technical assistance to Licensee. The
parties hereto shall from time to time determine whether particular training
and assistance shall be rendered at Licensor's facilities or at Licensee's
facilities. Travel costs, lodging and all related expenses incurred by one
party in connection with sending its employees or permitted sublicensees to the
other party's location shall be paid in full by the party sending such
individuals.
4.2 INQUIRIES. Licensor shall, at no additional cost to Licensee,
answer all reasonable telephonic and written inquiries from Licensee directly
concerning the manufacture, assembly, installation, testing, use and servicing
of the Products.
4.3 AB COMPATIBLE TECHNOLOGY. Licensor acknowledges and agrees that
during the term of this Agreement and at all times thereafter, it will not, and
will not authorize any third party, to develop, manufacture or market Licensee's
AB compatible cards.
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5. COMPENSATION PAYABLE TO LICENSOR.
5.1 DEVELOPMENT FEE.
On the Effective Date, Licensee shall pay Licensor a Development
Fee of $100,000 (the "Development Fee") in immediately available funds.
5.2 ROYALTIES. In addition to the Development Fee, Licensee agrees to
pay Licensor for the Rights granted with respect to the Licensed Technology and
for the services to be rendered pursuant to Sections 2 and 4, a royalty in the
amount of $5.00 per modem/per Product for each and every digital modem on
Products manufactured and sold, leased, licensed or otherwise transferred for
value by or on behalf of Licensee or any Affiliate of Licensee or any of their
respective permitted sublicensees or assigns.
5.3 REPORTS; PAYMENT. Licensee shall deliver to Licensor no later than
forty five (45) days after the end of each calendar quarter during the term of
this Agreement, a written report describing: (i) the number of Products sold,
licensed, leased or otherwise transferred in accordance with Section 5.2 above
during such calendar quarter, and (ii) the amount of the royalty payable to
Licensor for such calendar quarter. Each report shall be accompanied by payment
of the amount of royalties payable under Section 5.2 with respect to such
calendar quarter. All payments shall be made in U.S. dollars. No part of any
amount payable to Licensor hereunder may be reduced due to any counterclaim,
set-off, adjustment or other right which Licensee might have against Licensor,
any other party or otherwise. Notwithstanding the foregoing, if Licensee issues
a credit for any returned Product, then no 5.2 royalty shall be payable in
respect thereof and if a royalty was previously paid, then Licensee shall be
entitled to an equal credit against the next royalty payment.
5.4 LICENSEE'S BOOKS AND RECORDS. Licensee agrees to make and keep full
and accurate books and records in sufficient detail to enable royalties payable
hereunder to be determined.
5.5 LICENSOR'S RIGHT TO AUDIT. Licensor and its certified public
accountants and other auditors shall have full access during normal business
hours and on reasonable notice to the books and records of Licensee pertaining
to activities under this Agreement and shall have the right to make copies
therefrom. Prompt adjustment shall be made by the proper party to compensate for
any errors or omissions disclosed by such audit. The cost of any such audit
shall be borne by Licensor unless such audit reveals a discrepancy of more than
10% with respect to any calendar quarter in the amount of royalties paid to
Licensor and the amount shown by such audit to be due, in which event the cost
of such audit shall be borne by Licensee.
5.6 AUDIT INFORMATION CONFIDENTIAL. Licensor agrees to hold
confidential all information learned in the course of any examination of
Licensee's books and records hereunder, except when it is necessary for Licensor
to reveal such information in order to enforce its rights under this Agreement
in court, or similar dispute resolution or enforcement proceeding or action,
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or except when compelled by law.
6. WARRANTY.
6.1 GENERAL. Licensor warrants solely to Licensee that the Products,
when manufactured by Licensee as directed by Licensor shall perform in
accordance with the specifications set forth in Exhibits A and B and be free
from significant protocol and operational errors, when given normal, proper and
intended usage, for one year from the Effective Date. Licensor does not warrant
that the operation of the Products will be uninterrupted or error-free.
6.2 WARRANTY PROCEDURES. Licensee shall notify Licensor of any Products
which it believes do not conform with the warranty set forth in Section 6.1.
Licensor shall promptly take such action as is appropriate to correct such
nonconformance in accordance with industry standards and customs, including
without limitation, response times based upon the severity of the
nonconformance. Upon correction, Licensor shall promptly provide to Licensee
corrected software or hardware together with appropriate hardware documentation
sufficient to allow Licensee to correctly manufacture future Products.
6.3 LIMITATION. THE PROVISIONS OF THE FOREGOING WARRANTIES ARE IN LIEU
OF ANY OTHER WARRANTY, WHETHER EXPRESS OR IMPLIED, WRITTEN OR ORAL (INCLUDING
ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE). LICENSOR'S
LIABILITY ARISING OUT OF THIS AGREEMENT, THE LICENSE OF THE LICENSED TECHNOLOGY
OR THE MANUFACTURE, LICENSING, SALE OR SUPPLYING OF THE PRODUCTS OR THEIR USE OR
DISPOSITION, WHETHER BASED UPON WARRANTY, CONTRACT, TORT OR OTHERWISE, SHALL NOT
EXCEED THE AMOUNT OF THE DEVELOPMENT FEE PLUS ROYALTIES PAID. IN NO EVENT SHALL
LICENSOR BE LIABLE TO LICENSEE OR ANY OTHER PERSON OR ENTITY FOR SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, LOSS OF
PROFITS, LOSS OF DATA OR LOSS OF USE DAMAGES) ARISING OUT OF THIS AGREEMENT, THE
LICENSE OF THE LICENSED TECHNOLOGY OR THE MANUFACTURE, LICENSING, SALE OR
SUPPLYING OF THE PRODUCTS. THE FOREGOING WARRANTY EXTENDS TO LICENSEE ONLY AND
SHALL NOT BE APPLICABLE TO ANY OTHER PERSON OR ENTITY INCLUDING, WITHOUT
LIMITATION, CUSTOMERS OF LICENSEE.
6.4 SERVICE AGREEMENT. Licensor shall continue to be bound by the above
provisions of this Article 6 (subject to the foregoing procedures and
limitations) for successive one-year periods, provided that Licensee pays,
within thirty (30) days of receipt of invoice, a $25,000 annual warranty
extension fee.
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7. PROPRIETARY RIGHTS.
Licensor is and shall remain the owner of the Licensed Technology.
Without the prior written consent of Licensor, Licensee shall not alter any
copyright, trade secret, patent, proprietary and/or other legal notices
contained on or in any Product or on documentation or other tangible
manifestation of the Licensed Technology.
8. CONFIDENTIAL INFORMATION.
8.1 CONFIDENTIALITY MAINTAINED. Each party agrees that the other party
hereto has a proprietary interest in its Confidential Information. During the
term of this Agreement and for a period of three years thereafter, all
disclosures of Confidential Information to the receiving party, its agents and
employees shall be held in strict confidence by such receiving party, its agents
and employees, and such receiving party shall disclose the Confidential
Information only to those of its agents and employees to whom it is necessary in
order properly to carry out their duties as limited by the terms and conditions
hereof. During the term of this Agreement and for a period of three years
thereafter the receiving party shall not use the Confidential Information except
for the purposes of exercising its rights and carrying out its duties hereunder.
The provisions of this Section 8.1 shall also apply to any consultants or
subcontractors during the term of this Agreement and for three years thereafter
that the receiving party may engage in connection with its obligations under
this Agreement. Before providing Confidential Information to any such consultant
or subcontractor, the receiving party shall obtain a signed undertaking whereby
such consultant or subcontractor agrees to be bound by and comply with terms
substantially equivalent to and to the same effect as this Article 8.
8.2 LIABILITY FOR DISCLOSURE. Notwithstanding anything contained in
this Agreement to the contrary, neither party shall be liable for a disclosure
of the other party's Confidential Information if the information so disclosed:
(a) was in the public domain at the time it was disclosed by the
disclosing party to the receiving party; or
(b) was known to or contained in the records of the receiving
party from a source other than the disclosing party at the time of disclosure by
the disclosing party to the receiving party and can be so demonstrated; or
(c) was independently developed by the receiving party and is so
demonstrated promptly upon receipt of the documentation and technology by the
receiving party; or
(d) becomes known to the receiving party from a source other than
the disclosing party without breach of this Agreement by the receiving party and
can be so demonstrated; or
(e) if in writing, was not identified as Confidential Information
in accordance
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with Section 1.2 (Definition of Confidential Information) hereof; or
(f) must be disclosed pursuant to a contract or subcontract with a
governmental agency in order to obtain/retain a procurement contract; or
(g) was disclosed pursuant to court order or as otherwise compelled
by law.
9. TERMINATION OR EXPIRATION.
9.1 TERMINATION. This Agreement shall continue until terminated by
either party as a result of a breach by the other party of any material
agreement or covenant contained herein which is not cured with thirty (30) days
following written notice thereof. If such termination is by Licensee, then such
termination shall not affect Licensee's rights to continue to use the rights and
licenses granted herein and such continuation shall not adversely affect
Licensee's right to recover damages resulting from such breach. If such
termination is by Licensor, then Licensor's right to recover all royalties
properly due to Licensor shall not be adversely affected thereby.
9.2 SURVIVAL. The obligations of the parties pursuant to Article 8 and
Section 4.3 of this Agreement shall survive any termination or expiration of
this Agreement.
10. MISCELLANEOUS.
10.1 ASSIGNMENTS. This Agreement shall be binding upon, and inure to
the benefit of, Licensor and Licensee and their respective successors and
permitted assigns. Neither party may assign rights or obligations except as
permitted by Section 3.3. Notwithstanding anything to the contrary contained
herein, the parties agree that at such time after the formation of Access
Beyond, Inc. as Licensee determines, all rights and obligations as Licensee
hereunder shall be transferred to Access Beyond, Inc., without any further
action by Licensor.
10.2 GOVERNING LAW. This Agreement shall be governed, interpreted and
construed in accordance with the laws of the Commonwealth of Massachusetts
applicable to agreements made and to be fully performed therein.
10.3 WAIVER. A waiver of any breach of any provision of this Agreement
shall not be construed as a continuing waiver of other breaches of the same or
other provisions of this Agreement.
10.4 RELATIONSHIP OF THE PARTIES. The parties hereto are independent
contractors. Nothing herein contained shall be deemed to create a joint venture,
agency or partnership relationship between the parties hereto. Neither party
shall have any power to enter into any contracts or commitments in the name of,
or on behalf of, the other party, or to bind the other party in any respect
whatsoever.
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10.5 NOTICES. All notices, requests, demands, claims and other
communications hereunder shall be in writing. Any notice, request, demand, claim
or other communication hereunder shall be deemed duly delivered two business
days after it is sent by registered or certified mail, return receipt requested,
postage prepaid, or one business day after it is sent via a reputable nationwide
overnight courier service, in each case to the intended recipient as set forth
below:
IF TO THE LICENSOR: COPY TO:
Bay Networks, Inc. Bay Networks, Inc.
0000 Xxxxx Xxxxxxx Xxxxxxx 0000 Xxxxx Xxxxxxx Xxxxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000 Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attn.: President Attn.: Xxxxxxxxxx Xxxxxxx, Esq.
Telecopier: (000) 000-0000 Telecopier: (000) 000-0000
IF TO THE LICENSEE: COPY TO:
Penril Datacomm Networks, Inc. Benesch, Friedlander, Xxxxxx &
0000 Xxxxxx Xxxxxxx Xxxxxxxxx Aronoff, P.L.L.
Xxxxxxxxxxxx, Xxxxxxxx 00000 0000 XX Xxxxxxx Xxxxxxxx
Xxxx.: Chairman 000 Xxxxxx Xxxxxx
Telecopier: (000) 000-0000 Xxxxxxxxx, Xxxx 00000-0000
Attn.: Xxx Xxxxxxxx, Esq.
Telecopier: (000) 000-0000
Any party may give any notice, request, demand, claim or other communication
hereunder using any other means (including personal delivery, expedited courier,
messenger service, telecopy, telex, ordinary mail or electronic mail), but no
such notice, request, demand, claim or other communication shall be deemed to
have been duly given unless and until it actually is received by the party for
whom it is intended. Any party may change the address to which notices,
requests, demands, claims and other communications hereunder are to be delivered
by giving the other party notice in the manner set forth in this Agreement.
10.6 ENTIRE UNDERSTANDING. This Agreement embodies the entire
understanding between the parties relating to the subject matter hereof and
there are no prior representations, warranties or agreements between the
parties, whether written or oral, not contained in this Agreement.
10.7 INVALIDITY. If any provision of this Agreement is declared invalid
or unenforceable by a court having competent jurisdiction, it is mutually agreed
that this Agreement shall endure except for the part declared invalid or
unenforceable by order of such court. The parties shall consult and use their
best efforts to agree upon a valid and enforceable provision which shall be a
reasonable substitute for such invalid or unenforceable provision in light of
the intent of this Agreement.
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10.8 FORCE MAJEURE. In the event that either party is prevented from
performing, or is unable to perform, any of its obligations under this Agreement
due to any act of God, fire, casualty, flood, war, strike, lock out, failure of
public utilities, injunction or any act, exercise, assertion or requirement of
governmental authority, epidemic, destruction of production facilities,
insurrection, inability to procure materials, labor, equipment, transportation
or energy sufficient to meet manufacturing needs, or any other cause beyond the
reasonable control of the party invoking this provision, and if such party shall
have used its best efforts to avoid such occurrence and minimize its duration
and has given prompt written notice to the other party, then the affected
party's performance shall be excused and the time for performance shall be
extended for the period of delay or inability to perform due to such occurrence.
10.9 AMENDMENTS. Any amendment or modification of any provision of this
Agreement must be in writing, dated and signed by both parties hereto.
10.10 FEES PAYABLE. Licensor and Licensee acknowledge that there are no
broker's commissions, finder's fees or other amounts payable with regard to this
transaction, and Licensor and Licensee agree to indemnify and hold the other
harmless from and against all liabilities, claims, demands, damages or costs of
any kind arising from or connected with any broker's or finder's commission, fee
or other amount claimed to be due any person arising from the indemnitor's
conduct with respect to this Agreement and the transactions contemplated herein.
10.11 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
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10.12 EXHIBITS. All exhibits referred to in this Agreement are attached
hereto and incorporated herein by this reference.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
created on the day and year first above written.
BAY NETWORKS, INC., as
Licensor
By /s/
-------------------------------
Name:
Title:
PENRIL DATACOMM NETWORKS, INC., as
Licensee
By /s/
-------------------------------
Name:
Title:
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EXHIBITS
--------
A DEVELOPMENT PLAN
B PRODUCTS
C-1 PATENTS AND PATENT APPLICATIONS
C-2 COPYRIGHTS
C-3 MASK WORK RIGHTS
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EXHIBIT A
Development Plan
--------------------------------
The 24 Digital Modem card, defined in EXHIBIT B, shall be developed by Licensor
as a high priority project progressing at no less speed than the speed with
which Licensor executes its own digital modem development project(s).
Licensor agrees to deliver five (5) hardware prototypes of the 24 Digital Modem
Card to Licensee. To the extent that the hardware for such card is completed
prior to the availability of fully functioning digital modem software, and
assuming that limited function software is available at that time, Licensor
shall deliver such prototypes to Licensee with limited function software at such
earliest time so as to allow Licensee to complete dependent related work within
its own products. From time to time, Licensor shall supply Licensee with updated
software that adds further functionality until the full required functionality
has been achieved.
From delivery by Licensor of the required prototypes to Licensee together with
fully functioning software, Licensee shall have thirty (30) days to accept such
prototypes (the "Acceptance Period"). Any nonconformances discovered by Licensee
during the Acceptance Period shall be reported to Licensor for verification and
appropriate action will be taken promptly, during which time the Acceptance
Period shall be extended.
Xxxx Xxxxxxxxx is hereby designated the Project Manager for Licensee.
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EXHIBIT B
---------
PRODUCTS
------------------------------------
Licensor will develop for Licensee a 24 Digital Modem Card compatible with and
capable of operating together within Licensee's AB product family. Such modem
architecture shall be compatible with and deliver the functions and capabilities
contained within Licensor's Digital Modem Developer's kit, which is attached
herein as part of this EXHIBIT B. Licensor shall deliver to Licensee prototype
cards as defined in Exhibit A demonstrating partial and subsequently full
conformance to such functionality when used with Access Beyond, Inc.'s
equipment.
The hardware design of the card will be implemented so as to allow Licensee,
independently from Licensor, to subsequently design and manufacture hardware
variations of the card based on Licensor's initial design that utilize differing
numbers of modems per card. The software utilized on the card will automatically
sense the number of modems available and adjust appropriately, minimizing
support work for Licensor and manufacturing complexity for Licensee.
Licensor has advised Licensee that it believes that 24 digital modems will fit
on one of Licensee's AB cards based on development strategies that Licensor
expects to develop and utilize. If it is subsequently determined, factoring in
the projected cost per modem and/or time to market considerations of the
proposed implementation strategy, that such high density card implementation is
not feasible or is too costly to Licensee then Licensee may alter the
specification and request that Licensor instead implement a 16 digital modem
card in place of the 24 digital modem card.
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EXHIBIT C-1, C-2, C-3
---------------------
C1: PATENTS AND PATENT APPLICATIONS
None
C2: COPYRIGHT RIGHTS
None
C3: MASK WORK RIGHTS
None
