[LOGO OF EXTRICITY] [LOGO OF IBM]
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT 10.14
SOFTWARE OEM LICENSING AGREEMENT
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BETWEEN
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INTERNATIONAL BUSINESS MACHINES CORPORATION
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AND
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EXTRICITY, INC.
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Number 4900 UK 1064
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 1 of 32
LIST OF CONTENTS
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1. DEFINITIONS
2. EXTRICITY'S RESPONSIBILITIES
3. IBM'S RESPONSIBILITIES
4. SALES
5. MARKETING
6. DELIVERABLES AND SERVICES
7. OWNERSHIP AND LICENSE GRANTS
8. SOURCE CODE ESCROW
9. TEST AND ACCEPTANCE CRITERIA
10. JOINT DESIGN COUNCILS
11. SCHEDULE
12. ROYALTIES AND PAYMENTS
13. TRADEMARKS
14. BLANK
15. COMMUNICATIONS
16. TERMINATION AND EXPIRATION
17. WARRANTIES
18. INTELLECTUAL PROPERTY
19. INDEMNIFICATION
20. LIMITATION OF LIABILITY
21. PERSONNEL
22. INSURANCE
23. GENERAL
ATTACHMENTS
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1: DESCRIPTION OF LICENSED WORK
2: CERTIFICATE OF ORIGINALITY
3: DESCRIPTION OF DEVELOPED WORKS
4: SUPPORT AND MAINTENANCE FOR DELIVERABLES
5: TEST AND ACCEPTANCE CRITERIA
6: CONFIRMATION OF COPYRIGHT ASSIGNMENT
7: DESCRIPTION OF IBM MATERIALS & PRODUCT INTEGRATION AREAS
8: ACCEPTANCE CRITERIA FOR ESCROWED SOURCE CODE
9: BLANK
10: BLANK
11: KNOWLEDGE TRANSFER FOR IBM LOGO'D PRODUCTS
12: EXTRICITY-OWNED & IBM-OWNED DEVELOPED WORKS
13: AGREED MILESTONES
14: TOOLS
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 2 of 32
Whereas:
International Business Machines Corporation ("IBM") and Extricity, Inc.
("Extricity") are entering this Software OEM Licensing Agreement (4900 UK 1064)
(this "LA") to reflect their forthcoming relationship.
IBM and Extricity are parties to that certain Software Remarketing Agreement
(#T99035-00) signed by IBM on November 4, 1999 (the "Reseller Agreement").
Extricity is a leading platform provider of business-to-business relationship
management software wherein Extricity's software enables companies to
dramatically improve both their efficiencies and competitiveness by leveraging
the Internet to automate the flow of information and manage collaborative
business processes among partners, customers and suppliers.
Extricity provides a software platform, Extricity B2B, which supports a process-
based flow of mission-critical information that enables organizations to achieve
operational efficiencies and to collaborate without having to change their
internal processes or information technology infrastructure or applications.
IBM provides the IBM WebSphere software platform for e-business which includes
Web application servers, development and deployment tools. This WebSphere
software platform includes a business-to-business offering known as IBM
WebSphere B2B Integrator (WebSphere B2BI).
Under the terms of this LA, IBM will be licensing a subset of Extricity's
software to IBM for inclusion as IBM Logo'd Products in IBM's WebSphere B2BI and
other offerings to be determined. The Extricity software will provide IBM with
a business-process-oriented B2B application solution which addresses inter-
enterprise transactions and web based collaboration using industry standard open
data exchange protocols. IBM will be providing global distribution to Extricity
through inclusion of its technology in IBM's B2B offerings.
Now therefore the parties agree as follows:
This LA, with an effective date of August 18, 2000 (the "Effective Date"), is
made by and between IBM (with an address identified in the signature section of
this LA) and Extricity (with an address identified in the signature section of
this LA) for the purposes of establishing the basis for the performance of
services, the supply of deliverables and the licensing of intellectual property
rights of both parties for the IBM Logo'd Products (as defined below) hereunder.
1.0 DEFINITIONS
1.1 References
For the purposes of this LA, unless the context otherwise requires:
(i) All references to IBM will be deemed to be a reference to IBM and/or
its Affiliates; and
(ii) Each reference to an Attachment hereto will be deemed to be a
reference to the then current version of such Attachment.
1.2 Definitions
In this LA and its Attachments, the terms defined will bear the following
meanings:
"Affiliate" means any entity that Controls, is Controlled by, or is under common
Control with a party to this LA.
"B2B Specialists" means Sales and Pre-Sales and IBM IGS consultants who are
designated by IBM as specialists in the IBM Logo'd Products.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 3 of 32
"Code" means computer programming code and includes both Source Code and Object
Code.
"Control" means, with reference to the relevant party, the ability to control
more than fifty percent (50%) of the party's shareholder voting rights, or to
determine the composition of the party's board of directors.
"Customer(s)" means any person or entity which enters into an agreement to
license Products from IBM.
"Deliverable" means any item that one party is to prepare for or provide to the
other as described in or under this LA.
"Derivative Work" means a work that is based on an underlying work and that
would be a copyright infringement if prepared without the authorization of the
copyright owner of the underlying work.
"Developed Works" means the materials developed by Extricity as described in
Attachment 3. Developed Works also includes any "Developed Works for Subsequent
IBM Logo'd Products."
"Developed Works for Subsequent IBM Logo'd Products" means such new items as the
parties' Design Council may add in a formal contract amendment to Attachment 3.
"Documentation" means all available technical information, training materials
and those instructions in printed or electronic media, manuals and diagrams
pertaining to the IBM Logo'd Products, but not including any Source Code.
"Enhancements" means Major Enhancements and Minor Enhancements.
"Error" means a malfunction in the IBM Logo'd Products that causes it to
materially fail to perform whether because of design flaws, failure to conform
to the Documentation, improper coding and/or implementation, lack of quality
control and testing, or any other reason.
"Error Correction" means a revision that corrects an Error.
"Escrow Agreement" means a separate written agreement to be entered into between
IBM, Extricity and a recognized third-party escrow agent, as provided for in
Clause 8 below.
"IBM Materials" means the materials being provided by IBM hereunder as described
in Attachment 7.
"IBM Logo'd Products" means the integration of the Licensed Work set forth on
Attachment 1 and the Developed Works for IBM set forth on Attachment 3, all as
tested and accepted by IBM per the terms of Attachment 5. IBM Logo'd Products
also includes any "Subsequent Logo'd Products."
"Intellectual Property Right" means any patent right, rights under patent
applications, copyright right, trademarks, and any other such right recognized
by the law of each applicable jurisdiction.
"Invention" means any idea, design, concept, technique, invention, discovery or
improvement, whether or not patentable, which is conceived or reduced to
practice by either party's Personnel in performance of this LA.
"Joint Invention" means any idea, design, concept, technique, apparatus, method,
discovery or improvement, whether or not patentable, that is first conceived or
reduced to practice by one or more of Extricity's Personnel with one or more of
IBM's Personnel; provided however, that in the case of a patentable invention
that a party's contribution in such will meet the requirements for joint
invention under United States law. The term "Joint Invention" does not include
any Licensed Works, Extricity-owned Developed Works, IBM Materials or IBM-owned
Developed Works that exist or are defined as of the Effective Date.
"Licensed Work" means the materials described in Attachment 1 hereto.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 4 of 32
"Major Enhancement" means any new revision of the Licensed Work and/or Extricity
-owned Developed Works made generally available to Extricity's licensees that
includes significant enhancements which add new features to the Licensed Work
and/or Extricity-owned Developed Works and which Extricity designates by a new
version number, to the left of the decimal point (e.g., V 2.3 to V 3.0).
"Minor Enhancement" means any new revision of the Licensed Work and/or Extricity
-owned Developed Works made generally available to Extricity's licensees that
includes corrections and minor modifications to existing features and which will
be designated by a new version number which has changed from the prior number
one place to the right of the decimal point (e.g., V 2.2 to V 2.3).
"National Language Support" (or "NLS") will have the meaning set forth in
Attachment 3.
"Object Code" means Code substantially in binary form that is directly
executable by a computer after processing, but without compilation or assembly.
"Passport Advantage Software Subscription Offering" means an IBM offering (or
any modification or replacement thereof) under which a Customer may install the
most current versions, releases and updates, when available, of the Products.
"Passport Advantage Support Offering" means an IBM offering (or any modification
or replacement thereof) under which a Customer receives telephone and electronic
software support for the Products.
"Personnel" means any agent, employee or contractor engaged or appointed by the
relevant party.
"Product" means a software offering branded by IBM, its Affiliates or its or
their OEM distribution channels, which is or includes IBM Logo'd Products or any
Derivative Work thereof.
"Sales and Pre-Sales" means IBM sales and pre-sales personnel in the AIM,
NETGEN, XXX, ISU and IGS organizations.
"Services" means work that one party is to perform for the other hereunder.
"Source Code" means Code that may be displayed in a form readable and
understandable by a programmer of ordinary skill, excluding Object Code.
"Source Code Usage License" means the license terms stated at Clauses 8.3.1 and
8.3.2 below.
"Subsequent IBM Logo'd Product" means the fully tested and accepted result of
the integration of any additional Developed Work agreed by the parties' Design
Council and recorded as such in a formal amendment of this LA.
"Support and Maintenance" means the obligations of Extricity set forth in
Attachment 4.
"Tool" means any not commercially available software required for the
development, maintenance or implementation of a software Deliverable to be
supplied by Extricity, including any item listed in Attachment 14 hereto, except
any such software which Extricity does not have the right to supply to IBM.
"Trademark" means any trade mark, trade name, service mark or logo, whether or
not registered under applicable law, which is now owned or hereinafter acquired
by either party or any of its Affiliates.
"WEBSPHERE B2BI" means Websphere Business-to-Business Integration software.
2.0 EXTRICITY'S RESPONSIBILITIES
Extricity's general obligations are as follows; provided however, that to the
extent that any such obligation is restated below, the relevant subsequent
provision or Attachment will prevail.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 5 of 32
2.1 Delivery
Extricity is responsible for delivery on schedule to IBM of the IBM Logo'd
Products, Tools and Certificates of Originality per the terms of Attachment 13.
2.2 Skills and Resources
Extricity will provide and maintain an adequate level of skills and resource to
its activities hereunder, will manage them to ensure that the schedules defined
hereunder are met, and will ensure that IBM has access to its Technical Co-
ordinator at mutually agreed times for meetings and telephone consultations.
2.3 Escrow Agreement
Extricity will enter into the Escrow Agreement in accordance with the provisions
of Clause 8 below.
2.4 Participation in Review Meetings and Design Councils
Extricity will participate in regular review meetings and Design Councils as
described elsewhere in this LA.
2.5 Maintenance of Records
Extricity will maintain appropriate records to verify the authorship of the IBM
Logo'd Products for four (4) years after the termination or expiration of this
LA. On IBM's reasonable request, Extricity will deliver or otherwise make
available this information in a form specified by IBM.
3.0 IBM'S RESPONSIBILITIES
IBM's general obligations are as follows; provided however, that to the extent
that any such obligation is restated below, the relevant subsequent provision or
Attachment will prevail.
3.1 Provision of IBM Materials
IBM is responsible for the provision of the IBM Materials defined in Attachment
7.
3.2 Escrow Agreement
IBM will enter into the Escrow Agreement in accordance with the provisions of
Clause 8 below.
3.3 Participation in Review Meetings and Design Councils
IBM will participate in regular review meetings and Design Councils as described
elsewhere in this LA.
3.4 Payments
IBM will make payments to Extricity in accordance with the provisions of Clause
12.
4.0 SALES
4.1 Relationship Manager
During the Term, each party agrees to have one employee designated as a
"Relationship Manager" per the table below. Each party's Relationship Manager
will be skilled in the areas of sales, marketing and business development and
will be involved in the day-to-day execution of their company's Business-to-
Business strategy. The Relationship Managers for each party will be responsible
for, at a minimum, the following:
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 6 of 32
(i) Coordinating the quarterly Relationship Council meetings (see Clause
4.3);
(ii) Coordinating the co-marketing activities (see Clause 4.3); and
(iii) Coordinating the parties relationship within the IBM organization
and with IBM's other strategic relationships, partners, developers,
etc.
Relationship Managers
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FOR EXTRICITY FOR IBM
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Name Name Xxxxxxx Xxxxx
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Title Title MQ Series Channel
Planning Manager
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Address 555 Twin Dolphin Drive Address 00 Xxxxxxx Xxxxxx
Xxxxxxx Xxxxxx, XX Xxxxxxxxxx, XX 00000
94065
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Phone Phone 000.000.0000
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Fax Fax 412.667.6977
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E-mail E-mail xxxxxx@xx.xxx.xxx
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4.2 Sales and Pre-Sales Training
4.2.1 IBM will train its Sales and Pre-Sales and related services personnel in
how to position, demonstrate, sell and implement the IBM Logo'd Products.
As IBM builds and implements its training and go-to-market programs for
WEBSPHERE B2BI and related offerings, the training for the IBM Logo'd
Products will be an integral part of this training. IBM will also provide
additional training (the 5-day Extricity B2B Implementation training
session) to an appropriate number of designated B2B Specialists.
4.2.2 As soon as possible after the Effective Date, IBM and Extricity will hold
at least four (4) joint sales training seminars ("Seminars"), in mutually
agreed upon geographies on mutually agreed upon dates. The Seminars will
be two-day courses attended by Sales and Pre-Sales and B2B Specialists.
4.2.3 Extricity will help IBM build and deploy the training for the IBM Logo'd
Products. Extricity will provide training resources to work with
appropriate IBM training resources to convert existing generic sales
training materials into IBM specific sales content which IBM will have
the right to use. Extricity will provide instructors for the initial
training Seminars and IBM will be responsible for instructing additional
sessions. To provide the necessary skills transfer, a train-the-trainer
program will be implemented where IBM instructors first attend and then
co-teach during the initial Seminars. IBM and Extricity will also work
together to define a training program for IBM partners including OEMs
(Original Equipment Manufacturers), Resellers, ISV (Independent Software
Vendors) and Systems Integrators.
4.2.4 IBM will provide all required infrastructure for the sales training
programs, including but not limited to the facilities, food, and training
materials. IBM will also be responsible for the identification and
registration of IBM attendee. The detailed training plan, including costs
and agenda for training seminars, will be developed as part of the
Marketing Plan.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 7 of 32
4.3 Relationship Council
IBM agrees to host, chair and run a quarterly Relationship Council, at which
both parties will provide appropriate representation. For the first year,
Extricity's CEO and a senior executive from the IBM AIM Division will attend the
quarterly meetings. The Relationship Council is intended to be meetings at
which IBM and Extricity will:
(i) review any key issues and problems that have arisen since the
previous Relationship Council meeting, with actions to address them;
(ii) address and review strategic issues affecting the parties' overall
relationship;
(iii) subject to protection under confidential disclosure terms and
provided they are free to do so, disclose to each other their
current mutual plans relevant to strategic B2B activities;
(iv) share understanding of anticipated product requirements to address
future functional and market needs;
(v) review sales trends, including any need for large-scale promotional
offerings; and
(vi) discuss possible co-operative B2B-related marketing activities.
5.0 MARKETING
5.1 Branding
IBM will display Extricity ingredient branding on marketing promotional
materials including, but not limited to, collateral and descriptions of
Extricity value-add products, as approved by both parties.
5.2 Marketing Plan
The parties will jointly prepare a marketing plan within sixty (60) days of the
Effective Date and such plan will contain at a minimum the following:
(i) marketing promotional and demand generation activities;
(ii) marketing deliverables and branding requirements, including
collateral, demonstration materials and training tools;
(iii) marketing campaigns including, but not limited to, appropriate
conferences and roadshows;
(iv) marketing events including IBM e-Business Universities, Fast Track
and sales kick-off meetings; and
(v) training requirements and detailed plans.
5.3 Media Relations
5.3.1 IBM agrees to announce this LA within thirty (30) days of the
Effective Date. IBM and Extricity will work together on positioning
related to this announcement. Each party will provide an identified
spokesperson and quote in the press release from an appropriate
executive.
5.3.2 The parties agree to work together and agree upon the positioning of
IBM, Extricity and the Product prior to an IBM Product announcement. IBM
will promote the IBM Logo'd Products to both trade press and consultants.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 8 of 32
5.3.3 Neither party will issue any press release or similar communication
relating to the Products or any Deliverable or Services and referencing
the other party by name unless the content has first been agreed and/or
developed jointly between the parties before being issued.
5.4 Customer Registration
Within six (6) months of the Effective Date, IBM will create the means to
collect information about Customers who license the Products and will provide
Extricity with access to this information for those Customers which give IBM
their permission, for the sole purposes of Extricity to provide these Customers
with: (i) access to Extricity's business-to-business enabled customers; (ii)
with information on value-add products and services that function with the IBM
Logo'd Products; and (iii) an option of registering as a business-to-business
enabled customer through an Extricity or other registry. Additionally, if an
IBM initiative or an IBM supported industry standard emerges that provides
Customers with the option to register as business-to-business enabled entities,
then IBM will offer such option to Customers of the IBM Logo'd Products.
6.0 DELIVERABLES AND SERVICES
6.1 IBM Logo'd Products Deliverables
Extricity will deliver to IBM in accordance with the milestones set forth in
Attachment 13:
(i) The IBM Logo'd Products;
(ii) A completed Certificate of Originality (in the form specified in
Attachment 2) with each IBM Logo'd Product and each Enhancement to
any IBM Logo'd Product;
(iii) Complete copies of all Tools, including any update to Tools already
supplied during the Term, as soon as practicable; and
(iv) A complete list of all commercially available software required for
the development, maintenance or implementation of each Extricity
software Deliverable, including updates to any such list already
supplied, as soon as practicable.
6.2 Identification of Tools
Tools for the IBM Logo'd Products are identified in Attachment 14. Attachment
14 also contains a list of any non-commercially available tools which Extricity
does not have the right to supply to IBM, and the source for obtaining such
tools. Extricity will update Attachment 14 for all changes as soon as
practicable after the change is identified.
6.3 Provision by Extricity of Beta Code and Enhancements
During the Term, Extricity will provide IBM, at no charge, with early access to
Enhancements to the Licensed Work and Developed Works (including any "Beta
level" Code comprising such Enhancements, commensurate with any deliveries of
such Code to participants in Extricity's beta programs). In any event,
Enhancements to the Licensed Work and Developed Works will be supplied to IBM no
later than when they become generally available to licensees of Extricity.
Should IBM desire not to implement any particular Enhancement to an IBM Logo'd
Product ("Non-Enhanced Product"), then IBM must first discuss the issue with the
Design Council, and the parties will agree at the Design Council what provisions
will be implemented for providing Support and Maintenance for and further
Enhancements to the Non-Enhanced Product, including, but not limited to,
additional compensation to Extricity. ANY BETA LEVEL CODE AND RELATED
DOCUMENTATION WILL BE PROVIDED ON AN "AS IS" BASIS AND WITHOUT WARRANTIES OF ANY
KIND, EXPRESS OR IMPLIED, AND EXTRICITY DISCLAIMS AND NEGATES ALL OTHER
WARRANTIES AND ALL REPRESENTATIONS, CONDITIONS AND OTHER TERMS (WHETHER EXPRESS
OR IMPLIED, BY STATUTE, COMMON LAW COLLATERALLY OR OTHERWISE HOWSOEVER),
INCLUDING BUT NOT LIMITED TO ANY WARRANTIES, CONDITIONS OR
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 9 of 32
OTHER TERMS OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. Extricity
does not represent or warrant that the Beta-level Code will achieve any specific
results, operate without interruption, or be error free. IBM assumes all risk in
using the Beta-level Code in any production environment.
6.4 Provision by IBM of Beta Code
During the Term, IBM will provide Extricity, at no charge, with early access to
"Beta level" Code relating to the IBM Materials (including appropriate updates
and enhancements thereto), commensurate with any deliveries of such Code to
participants in IBM's beta programs, and (if applicable) no later than when such
Code is made generally available to IBM's other licensees. ANY BETA LEVEL CODE
AND RELATED DOCUMENTATION WILL BE PROVIDED ON AN "AS IS" BASIS AND WITHOUT
WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, AND IBM DISCLAIMS AND NEGATES ALL
OTHER WARRANTIES AND ALL REPRESENTATIONS, CONDITIONS AND OTHER TERMS (WHETHER
EXPRESS OR IMPLIED, BY STATUTE, COMMON LAW COLLATERALLY OR OTHERWISE HOWSOEVER),
INCLUDING BUT NOT LIMITED TO ANY WARRANTIES, CONDITIONS OR OTHER TERMS OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. IBM does not represent or
warrant that the Beta-level Code will achieve any specific results, operate
without interruption, or be error free. Extricity assumes all risk in using the
Beta-level Code in any production environment.
6.5 Support and Maintenance and Error Corrections during the Term
During the Term and as otherwise provided for in this LA, Extricity will provide
IBM Support and Maintenance and Error Corrections for the IBM Logo'd Products
for [***] per calendar quarter.
7.0 OWNERSHIP AND LICENSE GRANTS
7.1 License for Extricity to use the IBM Materials
IBM hereby grants Extricity a nonexclusive, worldwide, fully paid-up license to
use and to prepare Derivative Works of the IBM Materials, in so far only as such
use is necessary for Extricity to fulfill its obligations hereunder.
7.2 License for IBM to exploit IBM Logo'd Products
During the Term or otherwise as provided for in this LA, and in consideration of
the royalty payments to be made by IBM hereunder, Extricity hereby grants IBM a
nonexclusive, worldwide, irrevocable and fully paid-up license to prepare and
have prepared Derivative Works of the IBM Logo'd Products, and to use, have
used, execute, reproduce, transmit, display, perform, transfer, distribute
and/or sublicense the IBM Logo'd Products and such Derivative Works in Object
Code form only, and Documentation, in any medium or distribution technology, and
to grant others the rights granted herein; provided however, that any such use,
execution, reproduction, transmission, display, performance, transfer,
distribution, and sublicensing is made in conjunction with a Product.
7.3 License for IBM to use Tools
During the Term or otherwise as provided for in this LA, and in consideration of
the royalty payments to be made by IBM hereunder, Extricity hereby grants IBM a
nonexclusive, worldwide, irrevocable, fully paid-up, license to prepare and have
prepared Derivative Works of Tools, and to use, have used, execute, reproduce,
transmit, display and/or perform Tools or their Derivative Works; provided
however, that IBM may not transfer, distribute and/or sublicense Tools or their
Derivative Works.
7.4 Reverse Engineering and Reservation of Rights
For the avoidance of doubt, and save to the extent permitted by law without the
possibility of contractual waiver, neither party grants any right hereunder to
the other to reverse compile, reverse engineer, disassemble or
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 10 of 32
translate any Deliverables which it provides to the other under this LA. Subject
to the rights herein granted to the other party, all right, title and interest
in and to each party's copyright material are, and at all times will remain, the
sole and exclusive property of the owning party. No right to use, print, copy,
distribute, integrate or display any such copyright material, in whole or in
part, is granted hereby by either party to the other, except as provided in this
LA.
7.5 End User and Distributor Licenses
As a condition of the license grant set forth in Clauses 7.2 and 7.3, IBM will
not distribute to any of its distributors, OEMs, resellers, end users or
Customers any Products incorporating the IBM Logo'd Products without such party
having executed and/or accepted binding software license terms covering such
Product that prohibit reverse compilation, reverse engineering, disassembly and
translation, substantially similar to those contained in Clause 7.4 above.
7.6 Interoperability
7.6.1 Extricity hereby grants IBM a nonexclusive, world-wide, irrevocable and
fully paid-up license to prepare and have prepared Derivative Works of
Product Content, and to use, have used, execute, reproduce, transmit,
display, perform, transfer, distribute and/or sublicense Product
Content; provided however, that such license grant is only in connection
with software products which will developed and licensed by the IBM AIM
division or successor organisation under the IBM logo. Such license
grant will only become effective one (1) month prior to the end of the
Initial Term or within thirty (30) days after any Release Event. In
addition, Extricity will provide IBM with a means to export such Product
Content. For purposes of this Clause 7.6, "Product Content" will mean
definitions and definition structure for "Public Processes," "Private
Processes," "Business Objects," "Partner" profile information and
"Channel" configuration information ("Information"), as those terms are
defined in the then-current Extricity Alliance Manager version and which
are necessary for the operation of IBM Logo'd Products, including those
described in number 3 of Attachment 14 but excludes any Information that
is licensed by Extricity to Extricity licensees for a fee (for example,
Process Paks).
7.6.2 At any time after one (1) month from Milestone Number 25 in Attachment
13, if it is reasonably expected by the Design Council that an
internationally accepted standard which has modelling elements
substantially similar to the Product Content will be ratified within the
next six (6) months, then IBM may in writing require that Extricity,
within six (6) months of receipt of such request, make an exportable
representation of the Product Content conform to such standard; provided
however, that Extricity will not be required to license any Code,
Intellectual Property Right or trade secrets to any standards board or
similar entity nor will IBM be permitted to sublicense any item licensed
to IBM under this LA to such standards board.
7.6.3 At the end of twenty-four (24) months from Milestone Number 7 in
Attachment 13, Extricity will ensure that its adapters will be usable
with a software product specified by IBM; provided however, that IBM
identifies such software product at least eighteen (18) months from
Milestone Number 7 in Attachment 13. This requirement will be met either
by compliance of the Extricity adapter to the J2EE Connector Framework
specification or by provision of sufficient documentation of the
Extricity adapters to enable their use with specified IBM software
product.
7.7 Ownership
7.7.1 All Licensed Works in Attachment 1 and Extricity-owned Developed Works
in Attachment 12 will belong exclusively to Extricity. However,
Extricity agrees it will not license the IBM Logo'd Products to any
third party without IBM's express written agreement.
7.7.2 Any IBM-owned Developed Works shown in Attachment 12 will belong
exclusively to IBM and are works made for hire. To the extent that any
IBM-owned Developed Works are not considered works made for hire owned
by IBM by operation of law, Extricity hereby assigns ownership of the
copyright in such works to IBM.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 11 of 32
7.7.3 Unless explicitly granted in this LA, neither party grants the other
any right in or under any of its Intellectual Property Rights or trade
secrets, by implication, estoppel or otherwise.
7.8 Adapter and Channel Development Environments
7.8.1 During the Term or otherwise as provided for in this LA, and in
consideration of the royalty payments to be made by IBM hereunder,
Extricity hereby grants IBM a nonexclusive, worldwide, irrevocable,
fully paid-up, license to create and sublicense adapters and/or
channels from the adapter and channel development environments
contained in the Licensed Works or from the Tool listed as number 1 on
Attachment 14; provided however, that:
(i) IBM notifies the Design Council in writing, at any time, its
intent and development plan to produce adapters and/or channels
that are proposed to be generally available world-wide by the
IBM AIM division or successor organization; and
(ii) Extricity will then have the right to decide whether it would
like to create the adapter and/or channel as an Extricity Work,
Subsequent Developed Work or an IBM-owned Developed Work, where
"Extricity Work" means a software product owned by Extricity
and not part of the Licensed Work, Developed Work or Subsequent
Developed Works and then the terms contained in Clauses 7.8.2
through 7.8.5 will also apply.
7.8.2 If Extricity decides, and notifies IBM in writing within thirty (30)
days from IBM's notice, to create the adapter and/or channel as an
Extricity Work, then such Extricity Work will be added to the items
available for resell under the ReSeller Agreement, or IBM may request
that such adapter and/or channel be added as a Subsequent Developed
Work.
7.8.3 If Extricity decides, and notifies IBM in writing within thirty (30)
days from IBM's notice, to create the adapters and/or channels as an
IBM-owned Developed Works, then IBM will pay Extricity for the
development costs associated with such adapters and/or channels at
Extricity's then-current standard development rates. Extricity and IBM
will agree on the development schedule. If Extricity wishes to resell
the IBM-owned Developed Work, it may obtain any such IBM product from
IBM's normal third party distribution method, i.e. distributors or
provided however, for any channel developed with number 1 on
Attachment 14, IBM will grant Extricity the right, pursuant to a
formal agreement with royalty payment due to IBM, to sub-license and
re-logo such channels.
7.8.4 If Extricity decides, and notifies IBM in writing within thirty (30)
days from IBM's notice, not to create the adapters and/or channels and
such adapters and/or channels are not on an Extricity twelve (12)
month development plan (i.e. to be delivered within 12 months), then
IBM may distribute and sublicense such adapters and/or channels IBM
creates subject to the licenses granted in Clause 7.2, except such use
by IBM will be royalty-free. If Extricity wishes to resell any IBM
adapters and/or channels, it may obtain any such IBM product from
IBM's normal third party distribution model, i.e. distributors;
provided however, for any channel developed with number 1 on
Attachment 14, IBM will grant Extricity the right, pursuant to a
formal agreement with no royalty payment due to IBM, to sub-license
and re-logo such channels.
7.8.5 If such adapters and/or channels are on an Extricity twelve (12) month
development plan (i.e., to be delivered within 12 months) or it is
already an Extricity Work, then IBM may create such adapters and/or
channels and will pay Extricity royalties in an amount set forth in
Clause 12.1 and pursuant to the terms of Clause 12.5. Such adapters
and/or channels will be subject to the licenses granted in Clause 7.2.
7.8.6 Notwithstanding the above, during the Term or otherwise as provided
for in this LA, and in consideration of the royalty payments to be
made by IBM hereunder, Extricity hereby grants IBM a nonexclusive,
worldwide, irrevocable, fully paid-up, royalty free license to create
and sublicense adapters and/or channels from the adapter and channel
development environments contained in the
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 12 of 32
Licensed Works or from the Tool listed as number 1 on Attachment 14
for individual customers of IBM, not for generally available IBM
software products.
8.0 SOURCE CODE ESCROW
8.1 Separate Agreement
Within six (6) weeks of the execution of this LA, the parties will, at IBM's
expense, enter into the Escrow Agreement with a recognised third-party escrow
agent in order to maintain at least one (1) copy of the IBM Logo'd Products,
Error Corrections (and which are compiled by Extricity in a service pack release
made generally available to Extricity licensees) and Enhancements ("Escrowed
Materials"). The initial deposit of Escrowed Materials will be made within
thirty (30) days of execution of the Escrow Agreement and thereafter, Error
Corrections (as service packs) and Enhancements (which have been accepted by
IBM) will be place in escrow within thirty (30) days of general availability to
Extricity's licensees. The following materials are to be kept in escrow:
(i) The IBM Logo'd Products in a machine-readable format, including
both Source Code and Object Code (provided that where the IBM
Logo'd Products contain third party components for which Source
Code is not permitted to be placed in escrow by Extricity,
Extricity will include the Code in Object Code form only, and
will provide IBM with a written statement certifying as to the
applicable restriction and describing the affected materials);
(ii) A complete set of Extricity's existing user and development
documentation for the IBM Logo'd Products in both hard copy and
machine-readable (as available) formats (including design
specifications, flowcharts, etc.);
(iii) A complete list of all items and software required for the
development, maintenance or implementation of the IBM Logo'd
Products;
(iv) The Tools in a machine-readable format, including both Source
Code and Object Code;
(v) To the extent permitted by any applicable agreement, any other
not commercially available tools, instructions or material used
by Extricity in the development of the IBM Logo'd Products;
(vi) To the extent that any applicable agreement restricts
Extricity's freedom to deliver any such item to be kept in
escrow, Extricity will provide IBM with a written statement
certifying as to the applicable restriction and describing the
affected materials; and
(vii) A detailed, comprehensive list of all items and Source Code
(indicating module names and dates) of the IBM Logo'd Products.
A copy of each such list will be supplied by Extricity directly
to IBM at the same time as the list is delivered into escrow.
8.2 Release Events
The terms of the Escrow Agreement will be mutually agreed to and will provide
for escrow agent's reasonable inspection of the Escrowed Materials and for
delivery of the Escrowed Materials to IBM, subject to the payment of any agreed
to fees to the escrow agent and the release procedures specified in the Escrow
Agreement, within thirty (30) days of IBM's notice to the escrow agent that any
of the following events entitling IBM to the release of the Escrowed Materials
("Release Events") has occurred:
(i) IBM has terminated this LA for Cause (as defined in Clause
16.2);
(ii) Extricity ceases to exist and no entity survives which
continues with all or substantially all of Extricity's then-
current business relating to this LA (including all of the
obligations of this LA); or
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 13 of 32
(iii) A Control Change (as defined in Clause 16.4.1(iii)) takes place
affecting Extricity and IBM has terminated this LA on the basis
of such Control Change, as permitted under Clause 16.4.3.
8.3 Source Code Usage Licenses
8.3.1 If a Release Event occurs pursuant to the terms of Clauses 8.2(i) or
8.2(ii), then IBM will automatically, on the date of such Release
Event, be granted a nonexclusive, non-transferrable, world-wide,
perpetual, irrevocable license to prepare and have prepared Derivative
Works of the Escrowed Materials and to use, have used, execute,
reproduce, transmit, display, perform, transfer, distribute and
sublicense the Escrowed Materials and such Derivative Works, in any
medium or distribution technology, and to grant others the rights
granted herein. Such grant of license includes a nonexclusive, world-
wide, perpetual, irrevocable, fully paid-up license under any patents
and patent applications that are owned or licensable by Extricity now
or in the future which may be: (i) required to make, have made, use or
have used the Escrowed Materials or its Derivative Works; or (ii)
required to license or transfer the Escrowed Materials or its
Derivative Works. This license applies to the Escrowed Materials and
any Derivative Works operating alone or in combination with equipment
or Code. The license scope is to make, have made, use, have used,
sell, license or transfer items, and to practice and have practised
methods, to the extent required to exercise the rights to the Escrowed
Materials and its Derivative Works granted hereunder.
8.3.2 If a Release Event occurs pursuant to the terms of Clause 8.2(iii),
then IBM will automatically, on the date of such Release Event, be
granted a nonexclusive, non-transferrable, world-wide license to use
the Escrowed Material, for a period of (at IBM's discretion) up to
twenty-four (24) months from the date of such release (the "Release
Period"), to the extent necessary to allow IBM to continue to license
the IBM Logo'd Products to Customers and provide related support in
accordance with the terms of this LA for the Release Period. During
the Release Period, IBM will be required to fulfil all of its
obligations under this LA, including but not limited to, the
obligations to protect the Confidential Information of Extricity, use
the License Work and any Extricity-owned Developed Works only for the
purposes specified in this LA and to pay the applicable Royalty
Amounts and Minimum Amounts (as defined in Clause 12.1) under this LA.
8.5 Confidentiality
IBM and Extricity will treat the release of the Escrowed Materials as a
disclosure of Confidential Information under the parties' existing Confidential
Disclosure Agreement, or if none, under IBM's then standard Confidential
Information Agreement.
9.0 TEST AND ACCEPTANCE CRITERIA
9.1 Written Notice
IBM will notify Extricity in writing of IBM's acceptance of Deliverables to be
supplied hereunder by Extricity through the Technical Co-ordinators once the
Test and Acceptance Criteria in Attachment 5 have been successfully achieved by
Extricity. IBM's failure to so notify Extricity whether the Deliverables are
accepted or rejected within thirty (30) days of the date of delivery will be
deemed acceptance of the Deliverable. In any event, a Deliverable will be
deemed accepted by IBM if and when such Deliverable is incorporated by IBM into
a Product which IBM makes generally available.
9.2 Subsequent Rejection
After acceptance of any Extricity Deliverable in accordance with Clause 9.1, IBM
may not subsequently claim that such Extricity Deliverable was not in
conformance with any contractual and/or other requirement applicable under this
LA. However, this will not negate any of Extricity's obligations as described
in Clause 6.5 and Clause 17 herein or Extricity's obligations for Support and
Maintenance as described in Attachment 4.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 14 of 32
9.3 Remedy for Rejection
Should IBM reject in writing any Extricity Deliverables or Services that do not
comply with the agreed Test and Acceptance Criteria, then IBM may require
Extricity to repair or replace such Deliverables or reperform such Services,
without additional charge and in a timely manner.
10.0 JOINT DESIGN COUNCILS
10.1 Meeting
IBM agrees to host, chair and run a quarterly Design Council, which may be
subsumed into the Relationship and Business Co-ordinators meetings, at which
both parties will provide appropriate development representation.
10.2 Purpose
The Design Council is intended to be a meeting at which IBM and Extricity will:
(i) Review any key issues and problems that have arisen since the
previous Design Council meeting, with actions to address them;
(ii) Address and review issues affecting the parties' relationship
and activities under this LA framework;
(iii) Review relevant output from the parties' Relationship Council
relating to possible new development activities to be included
under this LA;
(iv) Subject to protection under confidential disclosure terms and
provided they are free to do so, disclose each party's current
respective organisation's development plans relating to
(possible) integrated products with the other party; and
(v) Seek to prioritise and agree future requirements for new
products and features.
10.3 Topics for First Meeting
The parties agree that the following issues will be discussed as being additions
to IBM Logo'd Product 2 (as defined in Attachment 1) or Subsequent IBM Logo'd
Products, at the first meeting of the Design Council:
(i) [***];
(ii) [***];
(iii) [***];
(iv) [***];
(v) [***];
(vi) [***];
(vii) [***];
(viii) [***];
(ix) [***]; and
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 15 of 32
(x) [***].
In no event will this impact the acceptance of IBM Logo'd Product 2 as set forth
in Attachment 5, unless any of the above items are added to Attachments 1 or 3.
11.0 SCHEDULE
11.1 Initial Schedule
The initial relevant milestones and completion dates associated with this LA are
shown in Attachment 13.
11.2 Communication of Schedule Adjustments
The parties agree to keep each other informed in writing via their respective
Contract and Technical Co-ordinators of any identified slippage in agreed
project schedules.
11.3 Changes to Initial Schedule
Project schedule dates agreed hereunder or stated in any Attachment may not be
varied by either party without the consent of the other party through the
Technical Co-ordinators. Such consent will not be withheld to the extent that
the party whose approval is required has contributed to the delay and/or the
notifying party has used commercially reasonable efforts to recover from the
delay.
12.0 ROYALTIES AND PAYMENTS
12.1 Royalties
In consideration of the licenses hereby granted by Extricity, IBM will pay
Extricity royalties (each of the below, the "Royalty Amounts") in accordance
with Clause 12.5 below, other than on transactions described in Clause 12.7
below, as follows:
(i) When IBM Logo'd Products are not combined with other products
or services, IBM will pay Extricity [***] of all net revenue
recorded by IBM for each authorised copy of the Product, and
for any Passport Advantage Software Subscription Offering for
the Product;
(ii) When the Product is combined with other products or services
for a single price ("Bundle"), IBM will pay Extricity [***] of
all net revenue recorded by IBM for each authorised copy of the
Product, and for any Passport Advantage Software Subscription
Offering for the Product, which net revenue will be based on
the proportionate value of the IBM Logo'd Product to the
Bundle, as determined by IBM; provided however, that if it is a
bundle of software products of the IBM AIM division or
successor organisation, then net revenue will be based on the
proportionate value of the IBM Logo'd Products IBM United
States suggested retail price compared to the IBM United States
suggested retail price for the other components that make up
the bundle;
(iii) If the Passport Advantage Software Subscription Offering is
included in combination with software license revenue recorded
for the Product and/or a Passport Advantage Support Offering
for a single price ("Bundled Offering"), IBM will pay Extricity
[***] of the net revenue for the Passport Advantage Software
Subscription Offering, which net revenue will be based upon the
proportion of the value of the Passport Advantage Software
Subscription Offering to the Bundled Offering, as determined by
IBM; and
(iv) In the case of any internal sale by IBM for production use
within IBM and its Affiliates, IBM will pay Extricity a royalty
equivalent to [***] of IBM's United States suggested retail
price for the relevant Product. In the case of production use
of any Product for outsourcing purposes by IBM or its
Affiliates, IBM will pay Extricity a royalty equivalent to
[***] of
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 16 of 32
IBM's United States suggested retail price for each license of
the relevant Product required to provide the outsourcing
services to each Customer.
12.2 Annual Comparison of Volumes with Revenue (Minimum Royalty Commitment)
and Adjustments Due to Market Conditions
12.2.1 For the purposes of this Clause 12.2, "Minimum Royalty" will mean an
amount equal to [***] times the IBM United States suggested retail
price for a Product. Annually, no later than three (3) months
following the end of each calendar year, IBM will calculate (based on
its records of world-wide activity) the cumulative amount of all
royalties that would have been payable to Extricity if the Minimum
Royalty per Product license had been used to calculate quarterly
payments ("Cumulative Minimum Royalty") on sales of Product licenses
other than any transaction described in Clause 12.3 below, instead of
the applicable percent of IBM revenue used. If the cumulative amount
of royalties paid to Extricity for the relevant annual period was less
than would have been paid using the Minimum Royalty, IBM will pay
Extricity the amount of the difference, as an annual minimum royalty
adjustment, with the next scheduled royalty payment.
12.2.2 If at any time during the Term IBM's then current United States
suggested retail price for any Product or standard discounts, or
Extricity's then current United States suggested retail price for the
corresponding part or parts of the relevant Licensed Work or standard
discounts, changes by a factor greater than [***], the parties'
Business Co-ordinators will enter into discussions with a view to
formulating proposals for the future amendment of the Minimum Royalty
stated above at Clause 12.2.1. Failing agreement between the parties'
Business Co-ordinators, then the provisions of Clause 23.5 below may
be invoked by either party; provided however, that the Minimum Royalty
amount in effect at the time will prevail until resolution of the
issue pursuant to Clause 23.5.
12.3 Exclusions from the Cumulative Minimum Royalty
The following will be excluded from all aspects of the calculations for the
Cumulative Minimum Royalty (where "OEM agreement" means an agreement whereby a
Product is embedded into, or restricted to be sold only in conjunction with, a
third party's software):
(i) Special bids (including OEM agreements executed by IBM's
current AIM Division or successor organisation that are not
discounted pursuant to the IBM OEM discount grid) agreed to
between IBM and Extricity where a Customer (or OEM referenced
above) has demanded a significant discount, as documented by
the parties in a letter or other writing through the Business
Co-ordinators specifying the licensing transaction;
(ii) Royalties received from OEM agreements discounted pursuant to
the IBM OEM discount grid or other OEM agreements entered into
by a non-AIM Division or successor; and
(iii) Royalties received from federal, state, local and foreign
governments.
12.4 Royalty Advances
IBM will pay Extricity the following prepaid amounts (the "Prepaid Amounts").
The Prepaid Amounts will be fully earned and non-refundable when paid and will
constitute a pre-payment by IBM of royalties, to be credited against royalties
due under Clause 12.1 above:
(i) One Million US Dollars (US $1,000,000) in the same calendar
quarter of Milestone Number 7 in Attachment 13;
(ii) Three Million US Dollars (US $3,000,000) in the following
calendar quarter; and thereafter
(iii) Two Million US Dollars (US $2,000,000) per calendar quarter in
each of the subsequent ten (10) calendar quarters.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 17 of 32
12.5 Royalty Payments
12.5.1 Royalties Amounts, if any, are to be paid to Extricity against revenue
recorded by IBM during a calendar quarter. The Royalty Amounts due in
any calendar quarter will, until total amounts paid under this Clause
12.5.1 equal Twenty-four Million US Dollars (US $24,000,000), be equal
to the greater of:
(i) The Prepaid Amounts per quarter as set forth in Clause 12.4; or
(ii) Total Royalty Amounts earned to date less actual Royalty Amounts
paid to date.
Regardless of when during the Term that the total amounts paid under
this Clause 12.5.1 equal Twenty-four Million US Dollars (US
$24,000,000), then IBM will pay Extricity the Royalty Amounts due in
any calendar quarter and will not be obligated to pay any Prepaid
Amounts; provided however, that in the event that IBM would otherwise
be obligated to pay Extricity the amount due in Clause 12.5.1(i), but
payment of that amount would exceed Twenty-four Million US Dollars (US
$24,000,000), then IBM will only be obligated to pay that amount which
would bring the total to Twenty-four Million US Dollars (US
$24,000,000) if the Royalty Amounts do not exceed the Prepaid Amount
for that quarter. This Clause 12.5.1 does not alter the terms of
Clauses 12.1 and 12.2.
12.5.2 Royalty Amount and Prepaid Amount payments (collectively "Payments")
will be made by the sixtieth-fifth (65th) calendar day following the
end of the calendar quarter in which the Payments accrue; provided
however, that the Prepaid Amount in Clause 12.4(i) will be paid on or
before December 31, 2000. All Payments will be made in U.S. dollars.
Payments based on foreign revenue will be converted to U.S. dollars on
a monthly basis at the rate of exchange published by Reuters Financial
Service on approximately the same day each month. IBM will provide a
statement summarising the royalty calculations with each Payment.
12.5.3 All amounts payable under this LA are exclusive of all sales, use,
value-added, withholding, and other taxes and duties. Provided IBM can
provide a valid tax exemption certificate, Extricity will not charge
IBM sales tax. IBM is solely responsible for and will pay all taxes
and duties assessed in connection with this LA (including but not
limited to withholding taxes) and its performance by any authority
within or outside of the United States, except for taxes payable on
Extricity's net income. IBM will promptly reimburse Extricity for any
and all taxes or duties that Extricity may be required to pay in
connection with this LA or its performance. Upon reasonable request in
writing, IBM will make available to Extricity written documentation,
including but not limited to copies of receipts, evidencing any such
taxes paid by IBM in connection with this LA.
12.5.4 IBM will receive a discount in an amount equal to [***] of the Pre-
Paid Amount for each quarter; provided however, that the amounts due
under this Clause 12 are received by Extricity on or before the
sixtieth (60th) calendar day following the end of the calendar quarter
in which Payments accrue.
12.6 Reports and Audit Rights
12.6.1 Within sixty (60) business days after the last day of each calendar
quarter, IBM will present to Extricity a payment due statement,
indicating the royalties due hereunder for such quarter.
12.6.2 IBM will maintain, for a period of two (2) years after the end of the
year to which they pertain, complete sales and royalty records of the
Products licensed by IBM in order to calculate and confirm IBM's
royalty obligations hereunder. Upon sixty (60) days prior written
notice, Extricity will have the right to appoint an independent
accounting firm or other agent (remunerated otherwise than on a
contingency or success fee basis) reasonably acceptable to IBM to
examine such financial books, records and accounts during IBM's normal
business hours to verify the royalties due by IBM to Extricity herein,
subject to execution of IBM's standard confidentiality agreement by
the accounting firm or agent; provided, however, that execution of
such agreement will not preclude such firm from reporting its results
to Extricity. In the event such audit discloses an underpayment of
royalties due to
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 18 of 32
Extricity hereunder of ten percent (10%) or more, IBM will bear all
costs associated with any such audit. In no event will IBM be subject
to more than one (1) audit per year unless the prior audit in such
year disclosed an underpayment of royalties due Extricity hereunder of
ten percent (10%) or more. Any Royalty Amount underpaid or overpaid
will be paid to the appropriate party within thirty (30) business days
of the completion of the audit.
12.7 Exceptions to Royalty Payment Obligations
IBM will have no obligation to make any royalty payment in respect of:
(i) The IBM Logo'd Products (or any Derivative Work thereof) used
for: (a) non-production internal use by IBM including, but not
limited to, any development, maintenance or support activities
conducted by IBM, or any third party under contract with IBM
for the above; (b) any marketing demonstration, Customer
testing or trial period (including no-charge copies provided to
resellers and developers under the terms of IBM's partner
programs, early support, pre-release, encrypted or locked
sampler distributions not resulting in a license for full
productive use, or other similar programs), Product training or
education; or (c) copies made for disaster recovery, backup and
archival purposes;
(ii) Any copy of the Product installed by a licensed end user on an
alternate work station (e.g., home terminal or laptop),
provided that such end user has not been licensed to use the
Product on both work stations at the same time;
(iii) The IBM Logo'd Products (or a functionally equivalent work), to
the extent that it becomes generally available from or through
Extricity to third parties for use in production without a
payment obligation;
(iv) Sales by IBM of any Passport Advantage Support Offering;
(v) Documentation provided with, contained in, or derived from the
IBM Logo'd Products;
(vi) Error Correction or Minor Enhancements; and
(vii) Warranty replacement copies of the Product.
12.8 Acceptance
Payment of royalties or invoices by IBM will not be deemed to constitute
acceptance of any Extricity Deliverables or Services. Extricity Deliverables
and Services will be subject to inspection, test, acceptance or rejection in
accordance with the Test and Acceptance Criteria specified in Attachment 5
("Test and Acceptance Criteria").
12.9 Certificates of Originality
12.9.1 IBM may suspend payments to Extricity for a IBM Logo'd Products if
Extricity fails to provide any Certificate of Originality when due.
Payment will resume upon IBM's receipt of an acceptable Certificate.
12.9.2 Upon delivery by Extricity of a Certificate of Originality, IBM will
be entitled within ten (10) business days of its receipt to notify
Extricity of any material error or omission apparent on the face of
the Certificate. In such event, Extricity will be allowed a period not
exceeding ten (10) business days following receipt of IBM's
notification in order to correct any errors and/or omissions in the
Certificate. IBM may suspend payments to Extricity for IBM Logo'd
Products if any Certificate continues to contain one or more material
errors or omissions following the expiration of such period. Payment
will resume upon IBM's receipt of an acceptable Certificate.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 19 of 32
12.9.3 If Extricity fails to perform any of its obligations relating to a
Certificate of Originality, IBM may reduce any amounts due Extricity
by an amount equal to the value not received, or elect to have
Extricity reimburse IBM for the value not received.
12.10 Outsourcing License
In the event that IBM provides outsourcing services to an existing Customer of a
Product, it is hereby agreed that IBM will not owe Extricity any fee for access
to or assignment of any existing license to such Product or for transfer of the
applicable Product to an IBM computer system of like configuration as that for
which the Product was licensed. The foregoing is subject to IBM providing
Extricity written notice that such Product is to be managed by IBM, and provided
that the licensed Product will continue only to be used on behalf of the
Customer. Upon expiration or termination of the agreement to provide
outsourcing services to the Customer, IBM's right to use that copy of the
Product will end, and the original Customer's rights will continue unamended.
13.0 TRADEMARKS
13.1 Extricity's Trademark
Subject to the terms and conditions of this LA (excluding those of Clause 13.2),
Extricity hereby grants IBM a nonexclusive, non-transferrable right (at IBM's
option) to use those of Extricity's Trademarks provided by Extricity hereunder
and relating to the applicable IBM Logo'd Products solely on the Product and its
packaging, on related documentation and in marketing collateral in connection
with IBM's and its distributors' and resellers' marketing and distribution of
the Product; provided however, that IBM uses Extricity's Trademarks in a manner
that is equivalent to IBM's treatment of its own Trademarks. Except as provided
above, prior to either party's using any of the other's Trademarks, such party
will obtain prior written approval to use the other Trademark, which approval
will not be unreasonably withheld or delayed. Such use must clearly reference
the other party as the owner of such Trademark. All goodwill arising from use
of either party's Trademarks will inure to the benefit of the party owning such
Trademark.
13.2 No Additional Rights
Subject to the provisions of Clause 13.1, and other than for the use of any
Trademark required in connection with any activity forming part of the other
party's obligations hereunder, neither party grants the other any right to use
any of its Trademarks in connection with any product, service, promotional or
advertising materials.
13.3 Objections
If either party fails to conform to the foregoing usage requirements, the other
party may upon written notice of not less than thirty (30) days, require the
party using the relevant Trademark to use reasonable steps to resolve such non-
conformance.
14.0 BLANK
15.0 COMMUNICATIONS
15.1 Co-ordinators
All communications between the parties will be carried out through the following
designated co-ordinators and Relationship Managers:
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 20 of 32
Business Co-ordinators
----------------------------------------------------------------------------------------------
FOR EXTRICITY FOR IBM
----------------------------------------------------------------------------------------------
Name Xxxxxx Xxxxx Name Xxxx Xxxxxxx
----------------------------------------------------------------------------------------------
Title VP of Business Title Business Development
Development Manager
----------------------------------------------------------------------------------------------
Address 555 Twin Dolphin Drive Address Hursley Park, Winchester,
Redwood Shores, CA SO21 2JN, United Kingdom
94065
----------------------------------------------------------------------------------------------
Phone 650.596.4522 Phone 00 0000 000000
----------------------------------------------------------------------------------------------
Fax 650.596.1310 Fax
----------------------------------------------------------------------------------------------
E-mail xxxxxx@xxxxxxxxx.xxx E-mail
--------------------
----------------------------------------------------------------------------------------------
Contract Co-ordinators
----------------------------------------------------------------------------------------------
FOR EXTRICITY FOR IBM
----------------------------------------------------------------------------------------------
Name Xxxxx X. Xxxxxxx, Esq. Name Xxxx Xxxx
----------------------------------------------------------------------------------------------
Title General Counsel Title Senior Counsel
----------------------------------------------------------------------------------------------
Address 555 Twin Dolphin Drive Address Hursley Park, Winchester,
Redwood Shores, CA SO21 2JN, United Kingdom
94065
----------------------------------------------------------------------------------------------
Phone 650.596.4586 Phone 00 0000 000000
----------------------------------------------------------------------------------------------
Fax 650.618.1668 Fax
----------------------------------------------------------------------------------------------
E-mail xxxxxxxx@xxxxxxxxx.xxx E-mail
----------------------
----------------------------------------------------------------------------------------------
Technical Co-ordinators
----------------------------------------------------------------------------------------------
FOR EXTRICITY FOR IBM
----------------------------------------------------------------------------------------------
Name Xxxxx Xxxxxxx Name Xxxx Xxxxxxx
----------------------------------------------------------------------------------------------
Title VP of Engineering Title
----------------------------------------------------------------------------------------------
Address 555 Twin Dolphin Drive Address Hursley Park, Winchester,
Redwood Shores, CA SO21 2JN, United Kingdom
94065
----------------------------------------------------------------------------------------------
Phone 650.596.4506 Phone
----------------------------------------------------------------------------------------------
Fax 650.618.1668 Fax
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* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 21 of 32
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E-mail xxxxxxxx@xxxxxxxxx.xxx E-mail
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15.2 Regular review meetings
Review meetings will be held at a minimum on a quarterly basis by the parties'
Relationship Managers and the parties Business Co-ordinators will attend the
quarterly review meetings.
15.3 Notices
Any notice required or permitted under this LA will be sent to the Contract Co-
ordinator named above, and will be effective upon receipt as demonstrated by
reliable written confirmation (for example, certified mail receipt, courier
receipt, facsimile receipt confirmation sheet). Each party will notify the
other if its representative changes.
16.0 TERMINATION AND EXPIRATION
16.1 The "Term" of this LA, unless earlier terminated in accordance with
this Clause 16, will be determined as follows:
(i) The initial term of this LA will begin on the Effective Date
and will end thirty seven (37) months after the date of
Milestone Number 7 in Attachment 13 (the "Initial Term");
(ii) This LA cannot be terminated for convenience prior to the end
of the Initial Term; and
(iii) This LA can be terminated for convenience as follows: (a) one
party may give written notice of termination to the other
party, at least ninety (90) days prior to the end of the
Initial Term. If such notice of termination for convenience is
not provided, this LA will continue for one more year (i.e.
"Subsequent Term") from the end of the Initial Term; and (b) if
notice of termination for convenience is not provided at least
ninety (90) days prior to the end of the then current
Subsequent Term, then on each anniversary of the end of the
Initial Term thereafter, this LA will continue for one more
year.
16.2 Termination of this LA for Cause by IBM
After completely exercising the dispute resolution process as specified in
Clause 23.5 below (which will occur prior to the termination notice period
specified below), and to the extent permitted by law, IBM may terminate this LA,
without thereby incurring any liability to pay any compensation or cancellation
charge, for "Cause", i.e. for: (i) any material breach of the provisions of
this LA by Extricity that is either incapable of being cured, or is not cured
within sixty (60) days after Extricity receives written notice fully
particularising the material breach from IBM; or (ii) if Extricity becomes
insolvent or files (or has filed against it) a petition in bankruptcy which
remains undischarged after sixty (60) days. Any such termination will be
effective at the end of thirty (30) days from a written termination notice sent
at the end of the sixty (60) day periods mentioned in Clauses 16.2(i) and (ii)
if the Cause is either not curable or remains uncured.
16.3 Termination of this LA for Cause by Extricity
After completely exercising the dispute resolution process as specified in
Clause 23.5 below (which will occur prior to the termination notice period
specified below), and to the extent permitted by law, Extricity may terminate
this LA, without thereby incurring any liability to pay any compensation or
cancellation charge, for "Cause", i.e.:
(i) For any material breach of the provisions of this LA by IBM
that is either incapable of being cured, or is not cured within
sixty (60) days after IBM receives written notice fully
particularising the material breach from Extricity;
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 22 of 32
(ii) If IBM becomes insolvent or files (or has filed against it) a
petition in bankruptcy which remains undischarged after sixty
(60) days;
(iii) If IBM replaces the IBM Logo'd Products as a component of the
IBM AIM Division or successor organisation's Products with
functionally equivalent software obtained from or produced by a
competitor of Extricity's, excluding IBM;
(iv) If IBM ceases to sell the IBM Logo'd Products.
Any such termination will be effective at the end of thirty (30) days from a
written termination notice sent at the end of the sixty (60) day periods
mentioned in Clauses 16.3(i) and (ii) or from the date Extricity learns of the
events set forth in Clauses 16.3(iii) and (iv) if the Cause is either not
curable or remains uncured.
16.4 Termination of this LA by IBM upon a Control Change affecting
Extricity
16.4.1 For the purposes of this Clause 16:
(i) "Actual Voting Power" means the total number of votes that may
be cast in the election of directors of Extricity at any
meeting of stockholders assuming all shares of common stock and
other securities entitled to vote generally in the election of
directors were present and voted at such meeting, other than
votes that may be cast only by one class or series of stock
(other than common stock) or upon the happening of a
contingency. In determining the percentage of Actual Voting
Power beneficially owned by any person or entity, shares of
common stock and such other securities issuable upon conversion
or exercise of any securities beneficially owned by such person
or entity that are subject to any rights of conversion of any
options, warrants or rights beneficially owned by such person
or entity will be deemed to be outstanding, but will not be
deemed to be outstanding for the purpose of computing the
percentage of Actual Voting Power owned by any other person or
entity;
(ii) "Equity Securities" mean any securities of Extricity entitled
to vote generally in the election of directors, and any other
securities (including rights, warrants and options) convertible
into, exchangeable for or exercisable for any such securities,
whether or not presently convertible, exchangeable or
exercisable; and
(iii) A "Control Change" will be deemed to have occurred with respect
to Extricity for the purposes of this LA:
(a) If any of the following transactions will be consummated
following submission of such transaction to, and approval of
such transaction by, the stockholders of Extricity (or, if
such transaction were not submitted to the stockholders of
Extricity, it would have been required to be submitted for
approval of the stockholders if Extricity were subject to
the rules of the applicable stock Exchange):
(1) A merger or consolidation with any other person or
entity in which all Equity Securities of Extricity
outstanding immediately prior thereto represent (either
by remaining outstanding or being converted into equity
Securities of the surviving corporation) less than
fifty percent (50%) of the Actual Voting Power of
Extricity or the surviving entity outstanding
immediately after such merger or consolidation; or
(2) The sale or disposition by Extricity (in one
transaction or a series of transactions) of all or
substantially all of Extricity's assets;
(b) If the sale or disposition by Extricity (in one transaction
or a series of transactions) of its software business
relating to the Licensed Work or IBM Logo'd Products ; or
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 23 of 32
(c) If in any share exchange, extraordinary dividend,
acquisition, disposition or recapitalization (or series of
related transactions of such nature, other than a merger or
consolidation), the beneficial holders of Equity Securities
of Extricity immediately prior thereto continue to own
beneficially Equity Securities representing less than fifty
percent (50%) of the Actual Voting Power of Extricity (or
any successor entity) immediately thereafter.
16.4.2 In the event that Extricity receives an offer which if accepted would
represent a Control Change, then it will, as soon as practicable but
in any event prior to the consummation of such Control Change, give
IBM notice of Extricity's intention to proceed with such a
transaction. Within forty-eight (48) hours of the receipt of such
notice, IBM may submit a proposal of its own to Extricity, and if such
proposal is rejected by Extricity within forty-eight (48) hours, then
the parties agree within five (5) business days and pursuant to the
terms of Clause 16.4.3, to determine if the Control Change is grounds
for termination and the release of Escrow Materials as set forth in
Clause 8.3.2. If it is determined that a termination will result
either by the party's mutual agreement in Clause 16.4.3(i) or by IBM
because the Control Change meets the terms of 16.4.3(ii), then IBM
will deliver written notice to Extricity that this LA will be
terminated upon the effective date of such Control Change.
16.4.3 The parties agree that, in the event of a Control Change, this LA can
only be terminated if:
(i) The parties mutually agree; or
(ii) The Control Change results in more than fifty percent (50%) of
the Actual Voting Power of Extricity being directly or indirectly
controlled by an entity or person which is (or is owned by
another entity or person which is) a supplier or producer of
Middleware deriving [***] or more of gross revenues in the most
recent four (4) quarters ("Revenue Amount") prior to the Control
Change from Middleware product licenses and the provision of
related support and maintenance services (excluding consulting)
during the last annual reporting period, where such products
consist of or substantially contain middleware technology. For
purposes of this Clause 16.4.3(ii), "Middleware" means runtime
system software (i.e., software positioned between an application
program and lower-level operating system, data management and
networking services) that directly enables transferring business
data and/or information (other than technical housekeeping
information) where the programs or databases are spread across
two (2) or more computers. Extricity will be responsible for
supplying the information necessary to determine the Revenue
Amount.
16.5 Effect of Termination
16.5.1 If this LA is terminated for Cause by IBM and there is a Release Event
under Clause 8.2(i), then Extricity will provide Support and
Maintenance for a six (6) month period following the date of the
Release Event. Except for the terms that survive specified in Clause
23.10 and license grants specified in Clause 7, all other terms will
terminate.
16.5.2 If this LA is terminated for Cause by Extricity (other than in the
case described above at Clause 16.3 (iv)), then all PrePaid Amounts
due under Clause 12.2 will become immediately due and payable within
thirty (30) days of the effective date of termination. Extricity will
provide Support and Maintenance for a six (6) month period following
the date of such termination. Except for the terms that survive
specified in Clause 23.10 all other terms will terminate. However, the
license grants specified in Clause 7 will continue for twelve (12)
months to permit IBM to satisfy outstanding Customer orders and sell
existing inventory of Products. Except as set forth above, Extricity
will not be entitled to any further compensation from IBM for such
termination or the events justifying the termination under Clause 16.3
16.5.3 If this LA is terminated for Cause by Extricity in the case described
above at Clause 16.3(iv), then no further PrePaid Amounts will be
payable after the effective date of the termination. Extricity will
provide Support and Maintenance for a six (6) month period following
the effective date of such
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 24 of 32
termination. Except for the terms that survive specified in Clause
23.10, all other terms will terminate. However, the license grants
specified in Clause 7 will continue for twelve (12) months to permit
IBM to satisfy outstanding Customer orders and sell existing inventory
of Products. Except as set forth above, Extricity will not be entitled
to any further compensation from IBM for such termination or the
events justifying the termination under Clause 16.3.
16.5.4 If this LA is terminated for a Control Change, then the terms of
Clause 8.3.2 will apply.
16.5.5 Termination of this LA does not affect any Customer licenses granted
prior to the effective date of termination.
16.6 Effect of Expiration
When the Term of this LA has ended, then Extricity will provide IBM with Support
and Maintenance and Error Corrections for twelve (12) months for [***] per
quarter.
17.0 WARRANTIES
17.1 Mutual Warranties
Each party makes the following representations and warranties to the other:
(i) That it has the right to enter into this LA and that in its
performance of this LA it will comply, at its own expense, with
the terms of any contract, obligation, law, regulation or
ordinance to which it is or becomes subject (including but not
limited to all applicable export and import laws);
(ii) That no claim, lien, or action exists or is threatened against
it that would interfere with any of the rights which it grants
to the other under this LA;
(iii) That during the Term, all Deliverables which it supplies will:
(a) comply with the relevant material specifications and other
material requirements set out in or under this LA; and (b)
materially operate in accordance with any Documentation which
it publishes in respect of such Deliverable;
(iv) That all Services will be performed using reasonable care and
skill and in accordance with the specifications and other
requirements set out in this LA;
(v) That, to the extent applicable, all Deliverables and Services
which it supplies and which interact in any capacity with date
data are Year 2000 ready such that when used in accordance with
their associated documentation they are capable of correctly
processing, providing, receiving and displaying date data, as
well as exchanging accurate date data with all products with
which the Deliverables or Services are intended to be used
within and between the twentieth and twenty-first centuries;
(vi) That to the extent applicable, all Deliverables and Services
which it supplies and which interact in any capacity with
monetary data are euro ready such that when used in accordance
with their associated documentation they are capable of
correctly processing monetary data in the euro denomination and
respecting the published euro currency formatting conventions
(including the euro sign);
(vii) That all Deliverables which it supplies will be tested for, and
do not contain, harmful code; and
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 25 of 32
(viii) That to the extent permitted by law, all authors have agreed in
writing not to assert their moral rights (personal rights
associated with authorship of a work under applicable law) in
any Deliverable which it supplies.
THE WARRANTIES AND CONDITIONS IN THIS LA ARE IN LIEU OF ALL OTHER WARRANTIES AND
CONDITIONS, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTIES OR CONDITIONS OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR USE OR PURPOSE.
17.2 Extricity Warranty
Extricity hereby warrants to IBM that:
(i) No third party has been granted licensing rights similar to the
rights granted hereunder by Extricity in respect of the Licensed
Work and/or the Developed Works which are more favourable than
the corresponding terms granted hereunder to IBM; and
(ii) In the event that Extricity grants to any third party licensing
rights similar to the rights granted hereunder in respect of the
Licensed Work and/or the Developed Works, on royalty terms which
are more favourable to the licensee than those set out herein,
Extricity will promptly so advise IBM of the fact and the royalty
calculation and payment provisions hereof will be adjusted so
that the terms applicable hereunder are rendered no less
favourable to IBM than the corresponding terms extended to the
third party licensee.
17.3 IBM Warranty
IBM hereby warrants that it is IBM's present intent to make the IBM Logo'd
Products available as part of IBM's "WebSphere" family of products (or any
functionally equivalent successor or replacement thereof marketed under another
name or mark), and to advise Extricity in writing if and when IBM makes a
decision to not make the IBM Logo'd Product available as part of IBM's WebSphere
family.
17.4 Warranty Redemption
If any Deliverable or any of the Services supplied by Extricity does not comply
with the warranties in this LA, Extricity will repair or replace the relevant
Deliverable or re-perform the relevant Services, without additional charge and
in a timely manner.
18.0 INTELLECTUAL PROPERTY
18.1 Joint Invention Rights
Joint Inventions will be the joint property of the parties. Title to Joint
Inventions as well as in and to any patent application and patents issued
thereon will be assigned jointly to IBM and Extricity. IBM and Extricity will
share equally in the expenses of seeking and maintaining patent protection,
except that either party may elect at its own expense to seek and maintain
patent protection for both parties, if the other party declines to share
expenses. Each party will have the right to grant licenses to third parties or
to assign its rights therein without any obligation to account to the other
party or to seek the consent of the other party.
18.2 Perfection of Copyrights
Extricity will provide to IBM a "Certificate of Originality" or equivalent
documentation to verify authorship of its Deliverables as defined elsewhere in
this LA. Extricity will confirm assignment of copyright for IBM-owned
Developed Works using the "Confirmation of Assignment of Copyright" form (as
shown in Attachment 6 hereto) and will assist IBM in perfecting such copyrights.
Extricity will be responsible for registration, maintenance and enforcement of
copyrights for Licensed Work and any Extricity-owned Developed Works.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 26 of 32
18.3 Patent License
Extricity hereby grants to IBM a nonexclusive, world-wide, and fully paid-up
license under any patents or patent applications licensable by Extricity during
the Term to make, have made, use, have used, import, export, sell, and otherwise
transfer the Deliverables which it supplies, to the extent authorised in this LA
and solely for the purpose of exercising IBM's rights to the IBM Logo'd
Products.
19.0 INDEMNIFICATION
19.1 General Indemnification
Each party will defend, hold harmless and indemnify, including legal fees, the
other against claims that arise or are alleged to have arisen as a result of its
negligent or intentional acts or omissions or those of its Personnel, including
any claim for death, personal injury and damage to real or tangible personal
property.
19.2 Intellectual Property Indemnification
Extricity will defend, or (at IBM's option) will co-operate in the defense of,
hold harmless and indemnify, including legal fees, IBM and IBM Personnel from
any claim that any of the Deliverables or Services supplied or performed by
Extricity infringes the copyright, patent or other intellectual property rights
of a third party. If such a claim is (or is likely to be) made, Extricity will,
at its own expense, exercise the first of the following remedies that is
practicable: (i) obtain for IBM the right to continue to use, sell and license
the Deliverables and Services consistent with this LA; (ii) modify Deliverables
and Services so they are non-infringing and in compliance with this LA; or (iii)
replace the Deliverables and Services, or other affected Deliverables or
Services, with non-infringing ones that comply with this LA.
19.3 Exceptions to Indemnification Obligation
Extricity will have no obligation to indemnify IBM or IBM Personnel for any
claim that any of Extricity's Deliverables or Services infringes the
intellectual property rights of a third party, to the extent that such claim
arises as a result of:
(i) Extricity's compliance to written specifications provided by
IBM and the alleged infringement is described in such written
specifications;
(ii) IBM's modification of the Deliverables; or
(iii) Combination, operation or use of the Deliverables with any
software not supplied by Extricity, except for software
necessary to use the Deliverables for their intended purpose,
such as an operating system.
The exceptions above only apply where such claim would have been avoided or
without merit in the absence of the conditions described in the exceptions.
20.0 LIMITATION OF LIABILITY
20.1 No Liability
Regardless of the type of claim, in no event will either party be liable to the
other party for any indirect, incidental, special or consequential damages,
including but not limited to, lost profits or revenues, under any part of this
LA, whether in an action for contract negligence or other tort or otherwise,
even if informed in advance that they may occur.
20.2 Total Liability
The total aggregate liability of each party under this LA for direct damages is
limited to the sum of [***].
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 27 of 32
20.3 Exclusions
The exclusions and limitations stated at Clause 20.1 and 20.2 above do not apply
to:
(i) Extricity's liabilities for the indemnity set out at Clause
19.2 above;
(ii) Any obligation of either party to make any payment which is
properly due under this LA, including those set forth in Clause
16.5.2;
(iii) In the event of IBM breaching its obligations under Clause 7.4
in respect of the reverse engineering of Extricity's Object
Code, or its obligations under Clause 8.3.2 in respect of
Extricity's Source Code.
21.0 PERSONNEL
21.1 Independent Contractors
Each party hereto is an independent contractor and this LA does not for any
purpose whatsoever create an agency relationship between either party and the
other or the other's Personnel.
21.2 No Joint Venture
Nothing contained in this LA will constitute the parties as entering upon a
joint venture or partnership.
21.3 No Liability
Neither party assumes any liability or responsibility for the other party's
Personnel.
21.4 Compliance
Each party will:
(i) Ensure it and its own Personnel are in compliance with all
laws, regulations, ordinances, and licensing requirements; and
(ii) Be responsible for the supervision, control, compensation,
withholdings, health and safety of its own Personnel.
22.0 INSURANCE
22.1 Amounts
Extricity will at its expense maintain:
(i) Comprehensive general or public liability insurance with a
minimum limit per occurrence or accident of One Million US
Dollars (US $1,000,000) (or local currency equivalent);
(ii) Workers' compensation or employer's liability as required by
local law, such policies waiving any subrogation rights against
IBM; and
(iii) Automobile liability insurance as required by local statute but
not less then One Million US Dollars (US $1,000,000) (or local
currency equivalent) if any vehicle will be used in the
performance of this LA.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 28 of 32
22.2 Type
Insurance required under this Clause will name IBM as an additional insured with
respect to IBM's insurable interest, will be primary or non-contributory
regarding insured damages or expenses, and will be purchased from insurers of
sound internationally recognised financial standing.
23.0 GENERAL
23.1 Amendments
This LA may only be amended by a writing specifically referencing this LA which
has been signed by authorised representatives of the parties.
23.2 Assignment
Neither party may assign this LA, or its rights and obligations under it without
the prior written consent of the other party except: (i) to an Affiliate; (ii)
in connection with the sale of all or a substantial portion of that party's
business or relevant business unit; or (iii) any right to receive payment
hereunder. No assignment will be effective unless and until written notice of
the assignment has been provided to the other party. Any unauthorised
assignment is void.
23.3 Choice of Law and Forum; Waiver of Jury Trial; Limitation of Action
This LA and the performance of transactions under this LA will be governed by
the laws of the State of New York. The parties expressly waive any right to a
jury trial regarding disputes related to this LA. Unless otherwise provided by
local law without the possibility of contractual waiver or limitation, any legal
or other action related to this LA must be commenced no later than two (2) years
from the date on which the cause of action first arose.
23.4 Counterparts
This LA may be signed in one or more counterparts, each of which will be deemed
to be an original and all of which when taken together will constitute the same
agreement. Any copy of this LA made by reliable means (for example, photocopy
or facsimile) is considered an original.
23.5 Dispute Resolution
In the event that a dispute arises between the parties relating to any matters
under this LA that cannot be resolved in the course of normal business
discussions, the following escalation procedure will apply:
(i) The Technical or Contract Co-ordinators will make good faith efforts
to resolve the dispute in their respective areas as soon as possible;
(ii) In the event that such Co-ordinators cannot resolve any dispute within
five (5) business days, the matter will be submitted to the Business
Co-ordinators;
(iii) In the event that the Business Co-ordinators cannot resolve the
dispute within fifteen (15) business days the matter will, at the
option of either party, be submitted to nominated senior executives of
each party. Such senior executive, in the case of IBM, will be the
Controller of the AIM Division of IBM's Software Group (or his/her
designee), and in the case of Extricity, will be the Chief Financial
Officer (or his/her designee);
(iv) Submission of a dispute to all levels of management as described in
this Dispute Resolution provision will be a pre-requisite to giving
notice of termination for breach; and
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 29 of 32
(v) Each party agrees that any litigation arising under or related to this
LA will only be commenced after good faith attempts to resolve the
subject dispute pursuant to this section will have taken place.
Notwithstanding the above, each party will remain free to seek injunctive relief
before the applicable competent tribunal in order to seek to stop (or to
restrain) any infringement of its patents, copyrights, or rights in its own
confidential information.
23.6 Exchange of Information
Unless required otherwise by law without the possibility of contractual waiver
or limitation, all information exchanged by the parties will be considered non-
confidential. If either party requires the communication of any confidential
information, such communication will be made under Confidential Disclosure
Agreement number 4900 UK 0707, through the use of a Supplement. The parties
will not disclose the financial terms of this LA without the prior written
consent of the other party, except as may be required by law, and (in such
event) provided the disclosing party first obtains the benefit of any
confidentiality treatment available.
23.7 Freedom of Action
This LA is nonexclusive and each party remains free to design, develop,
manufacture, acquire or market and distribute competitive products or services,
provided that in so doing such party does not infringe or misappropriate any of
the other party's patents, copyrights, Trademarks or Confidential Information
(as defined in Clause in 23.6). The parties will independently establish prices
for their products and services. IBM is not obligated to announce or market any
Products and does not guarantee the success of its marketing efforts, if any.
23.8 Force Majeure
Neither party will be in default or liable for any delay or failure to comply
with this LA to the extent that such delay or failure is due to any act beyond
the control of the affected party, excluding its own labour disputes, provided
such party immediately notifies the other.
23.9 Severability
If any term in this LA is found by competent judicial authority to be
unenforceable in any respect, the validity of the remainder of this LA will be
unaffected, provided that such unenforceability does not materially affect the
parties' rights under this LA.
23.10 Survival
The obligations and provisions set forth in the following Clauses of this LA
will survive after termination or expiration of this LA and will remain in
effect until fulfilled: "Ownership," "Warranties," "Intellectual Property,"
"Royalties and Payments," "Indemnification," "Limitation of Liability," "Choice
of Law and Forum; Waiver of Jury Trial; Limitation of Action," and "Exchange of
Information."
23.11 Waiver
To be effective, any waiver under this LA must be in writing signed by the party
waiving its right. No waiver by either party of any instance of the other
party's non-compliance with any obligation or responsibility under this LA will
be deemed to constitute a waiver of any subsequent instance.
23.12 Headings
The various Clause headings in this LA are included solely for reference
purposes and will not affect the interpretation hereof.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 30 of 32
23.13 Attachments
The provisions of the following Attachments are hereby incorporated by
reference:
ATTACHMENT 1: DESCRIPTION OF LICENSED WORK
ATTACHMENT 2: CERTIFICATE OF ORIGINALITY
ATTACHMENT 3: DESCRIPTION OF DEVELOPED WORKS
ATTACHMENT 4: SUPPORT AND MAINTENANCE FOR DELIVERABLES
ATTACHMENT 5: TEST AND ACCEPTANCE CRITERIA
ATTACHMENT 6: CONFIRMATION OF COPYRIGHT ASSIGNMENT
ATTACHMENT 7: DESCRIPTION OF IBM MATERIALS & PRODUCT INTEGRATION AREAS
ATTACHMENT 8: ACCEPTANCE CRITERIA FOR ESCROWED SOURCE CODE
ATTACHMENT 9: BLANK
ATTACHMENT 10: BLANK
ATTACHMENT 11: KNOWLEDGE FOR IBM LOGO'D PRODUCTS
ATTACHMENT 12: EXTRICITY-OWNED & IBM-OWNED DEVELOPED WORKS
ATTACHMENT 13: AGREED MILESTONES
ATTACHMENT 14: TOOLS
23.14 Expenses
Except as may be expressly provided in this LA, each party will bear its own
expenses in connection with this LA and the activities under it.
23.15 ReSeller Agreement
Section 1.2 of Term and Termination in the Reseller Agreement is hereby amended.
Neither party may terminate the Reseller Agreement for convenience until the end
of the Initial Term. Thereafter, the Reseller Agreement may be terminated for
convenience by following the same process as defined in Clause 16.1(iii).
23.16 Entire Agreement
The provisions of this LA, including Attachments, the ReSeller Agreement and the
Confidential Disclosure Agreement number 4900 UK 0707 constitute the entire
agreement between the parties and supersede all prior agreements, oral or
written, and all other communications between the parties relating to the
subject matter hereof. Any oral terms or terms contained in invoices, purchase
orders, acknowledgements, or other documents that are inconsistent with or
different from the terms of this LA will be void and of no effect.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 31 of 32
ACCEPTED AND AGREED TO BY ACCEPTED AND AGREED TO BY
INTERNATIONAL BUSINESS MACHINES EXTRICITY, INC.:
CORPORATION:
By: By:
----------------------------- --------------------------------
IBM Signature Extricity Signature
Name: X.X. Xxxxx Name: Xxxxx X. Xxxxx
Date: 8/18/00 Date: 8/18/00
Title: VP, Business Development Title: Chairman and CEO
IBM Address: Extricity Address:
Xxxxx 000 000 Xxxx Xxxxxxx Xxxxx, Xxxxx 000
Xxxxxx Xxxxxxx Xxxxxx
XX 00000 XX 00000
XXX XXX
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Page 32 of 32
ATTACHMENT 1
------------
DESCRIPTION OF LICENSED WORK
----------------------------
DESCRIPTION OF LICENSED WORK FOR IBM LOGO'D PRODUCT 1:
-----------------------------------------------------
1. Extricity Alliance Manager
Extricity Alliance Manager includes the following subcomponents:
Integration Server
Process execution engine
Communications Manager
Alliance proxy (firewall proxy)
Alliance Channel
Utility Adapters (FTP, Email)
2. Extricity Integration Adapter for IBM MQSeries
Includes: Adapter for IBM MQSeries Pub/Sub Component
3. Extricity Integration Adapter for IBM MQSeries Workflow
4. Extricity Integration Adapter for IBM MQSeries Integrator
5. Extricity WebApp Channel
Includes: Alliance Web Proxy (firewall proxy)
Extricity will deliver to IBM license keys and delivery instructions to
enable IBM to: (i) restrict use of the Products to the number of partners
licensed/paid for by Customer; and (ii) restrict the use of Alliance
Channel by partners of Customers to connection with only the Customer from
whom they received the Alliance Manager license.
Items 1 - 5 will be delivered with separate installation programs and/or
installation instructions.
Adapter Upgrades
----------------
Extricity will develop and provide the following:
. [***]
. [***]
Platform Support
----------------
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
DESCRIPTION OF LICENSED WORK FOR IBM LOGO'D PRODUCT 2:
-----------------------------------------------------
1. Extricity Alliance Manager
Extricity Alliance Manager includes the following subcomponents:
Integration Server
Process execution engine
Communications Manager
Alliance proxy (firewall proxy)
Alliance Channel
Utility Adapters (FTP, Email, JDBC)
2. Extricity Integration Adapter for IBM MQSeries
Includes: Adapter for IBM MQSeries Pub/Sub Component
3. Extricity Integration Adapter for IBM MQSeries Workflow
4. Extricity Integration Adapter for IBM MQSeries Integrator
5. Extricity WebApp Channel
Includes: Alliance web proxy (firewall proxy)
6. Channel Development Environment
Extricity will deliver to IBM license keys and delivery instructions to
enable IBM to: (i) restrict use of the Products to the number of partners
licensed/paid for by Customer; and (ii) restrict the use of Alliance
Channel by partners of Customers to connection with only the Customer from
whom they received the Alliance Manager license.
[***]
-----
. [***]
[***]
-----
. [***]
. [***]
[***]
-----
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
[***]
-----
. [***]
. [***]
[***]
-----
. [***]
[***]
-----
[***]
. [***]
. [***]
1) [***]
OR
2) [***]
. [***]
. [***]
[***]
-----
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
. [***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
Exhibit 1 to Attachment 1
-------------------------
Unicode Support Requirements
--------------------------------------------------------------------------------
Item Function Character Set Data Format
--------------------------------------------------------------------------------
[***] [***] [***] [***]
--------------------------------------------------------------------------------
[***] [***] [***] [***]
--------------------------------------------------------------------------------
[***] [***] [***] [***]
--------------------------------------------------------------------------------
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 2
------------
CERTIFICATE OF ORIGINALITY
--------------------------
The Certificate of Originality questionnaire may be used to cover one complete
Licensed Work or Developed Works, even if that Licensed Work or Developed Works
includes multiple modules. Write "not applicable" or "N/A" if a question is not
relevant to the furnished software material.
1. The following Certificate of Originality applies to the following Licensed
Work and/or Developed Works:
2. Was any portion of the software material written by anyone other than you
or your employees within the scope of their employment?
YES _____ NO _____
If YES, identify the author and the circumstances:
3. Indicate if the whole software material or only a portion thereof was
written by such party, and identify such portion:
4. Specify for each involved party the name, address, and citizenship:
5. If the party is a company, how did it acquire title to the software
material (e.g., software material was written by company's employees within
the scope of their employment)?
6. If the party is an individual, did he/she create the software material
while employed by or under contractual relationship with another party?
YES _____ NO ______
If YES, provide name and address of the other party and explain the nature
of the contractual relationship:
7. How did you acquire title to the software material written by the other
party?
8. Are any copyright, confidentiality, or proprietary notice(s) present on the
software material(s)?
YES _____ NO ______
If YES, please describe such notice(s).
9. Was any portion of the software material (e.g., Code or associated
documentation) derived from pre-existing works (either yours or a third
party's), including any code from freeware, shareware, electronic bulletin
boards, or the Internet?
YES _____ NO ______
If YES, please identify the material, author, owner and copyright notice,
if any, for each of the pre-existing materials.
10. Does any of the software materials (e.g., Code or associated documentation)
include recognizable voices, pictures or other likenesses?
YES ____ NO ______
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
If YES, how did you acquire rights to use such recognizable voices,
pictures or other likenesses?
11. Provide an explanation of any other circumstance which might affect IBM's
ability to reproduce, distribute and market this software material,
including whether your software material was prepared from any pre-existing
materials which have any: (a) confidentiality or trade secret restrictions
to others; (b) known or possible royalty obligations to others; and (c)
used other pre-existing materials developed for another party or customer
(including government) where you may not have retained full rights to such
other pre-existing materials.
Authorized Signature: ________________________
Name: ________________________
Title: ________________________
Date: ________________________
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 3
------------
DESCRIPTION OF DEVELOPED WORKS
------------------------------
DESCRIPTION OF DEVELOPED WORKS FOR IBM LOGO'D PRODUCT 1
-------------------------------------------------------
IBM logo requirements
----------------------
Extricity will complete the following activities to meet IBM logo requirements:
. Replace user-visible product name or company references in the software
. Replace user-visible product name and company references in the
documentation
. Deliver documentation in PDF and HTML form - no hard copy
. Replace the license agreement text visible in the Installer with IBM-
supplied text
. Produce the "gold master" CD with labeling as specified by IBM
. NLS assumption for this delivery: English language version only
DESCRIPTION OF DEVELOPED WORKS FOR IBM LOGO'D PRODUCT 2
--------------------------------------------------------
IBM logo requirements
---------------------
Extricity will complete the following activities to meet IBM logo requirements.
. Replace user-visible product name or company references in the software
. Replace user-visible product name and company references in the
documentation
. Deliver documentation source in form to be mutually agreed with IBM for
conversion by IBM to the IBM house style and publishing system format
. Replace the license agreement text visible in the Installer with IBM-
supplied text
. Produce the "gold master" CD with labeling as specified by IBM
. NLS assumption for this delivery: enable NLS translation and DBCS
support
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 4
------------
SUPPORT AND MAINTENANCE
-----------------------
1.0 Definitions
1.1 "APAR" means the completed form entitled "Authorized Program Analysis
Report" that is used to report suspected Code or documentation errors, and
to request their correction.
1.2 "APAR Closing Codes" means the established set of codes used to denote the
final resolution of an APAR. IBM will identify APAR Closing Codes prior to
the date of acceptance for the applicable Deliverable.
1.3 "APAR Correction Times" means the objectives that Extricity must achieve
for resolution of Errors and distribution of the correction to IBM.
(i) "Severity 1" requires maximum effort support until an emergency fix or
bypass is developed and available for shipment to IBM. Critical
situations may require Customer, IBM and Extricity personnel to be at
their respective work locations or available on an around-the-clock
basis. The objective will be to provide relief to the Customer within
twenty-four (24) hours and provide a final solution or fix within
seven (7) calendar days;
(ii) "Severity 2" must be resolved within fourteen (14) calendar days;
(iii) "Severity 3" must be resolved within twenty-one (21) calendar days;
and
(iv) "Severity 4" must be resolved within twenty-eight (28) calendar days.
The calendar days begin when Extricity receives the APAR and supporting
documentation and end when the Error Correction or other resolution is shipped
to IBM. IBM will consider exceptions from these objectives when warranted by
technical or business considerations.
1.4 "APAR Severity Levels" means designations assigned by IBM to Errors to
indicate the seriousness of the Error based on the impact that the Error
has on the Customer's operation:
(i) Severity 1 is a critical problem. The Customer cannot use the Product
or there is a critical impact on the Customer's operations which
requires an immediate solution;
(ii) Severity 2 is a major problem. The Customer can use the Product, but
an important function is not available or the Customer's operations
are severely impacted;
(iii) Severity 3 is a minor problem. The Customer can use the Product
with some functional restrictions, but it does not have a severe or
critical impact on the Customer's operations; and
(iv) Severity 4 is a minor problem that is not significant to the
Customer's operations. The Customer may be able to circumvent the
problem.
1.5 "Developer Test Systems" means an appropriate configuration of installed
hardware and software that Extricity maintains which is representative of
typical Customer installations for the IBM Logo'd Products. These
Developer Test Systems will contain, at a minimum, the following:
(i) the current and current minus 1 level of the IBM Logo'd Products;
(ii) the current and current minus 1 level of prerequisite/co-requisite
hardware and software that IBM specifies to Extricity; and
(iii) specific fix-packs as required.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
The Developer Test Systems will consist of the appropriate configured
workstations only unless IBM specifies and provides Extricity other equipment at
no charge.
1.6 "IBM Test Systems" means an appropriate configuration of installed hardware
and software that IBM maintains which is representative of typical IBM
Customer installations using the Product. These test systems will contain,
at a minimum, a level of prerequisite/co-requisite hardware and software
that is correspondent with that of the Developer Test Systems.
1.7 "Maintenance Level Service" means the service provided when a Customer
identifies an Error:
(i) Level 1 is the service provided in response to the Customer's initial
phone call identifying an Error;
(ii) Level 2 is the service provided to reproduce and attempt to correct
the Error or to find that the service provider cannot reproduce the
Error; and
(iii) Level 3 is the service provided to isolate the Error at the
component level of the Code. The service provider distributes the
Error Correction or circumvention or gives notice if no Error
Correction or circumvention is found.
1.8 "Problem Determination" means the process of determining whether a problem
is being caused by hardware, software or documentation.
1.9 "Problem Management Record" ("PMR") means a record created when a Customer
makes the initial support request. This record becomes a part of the
Problem Management System database and records the essential information
about the Customer question or problem.
1.10 "Problem Management System" ("PMS") means an internal IBM developed
software system used to record Customer demographic information and encode
data about the reported question or problem. The PMS will handle the
dispatching of the call record. The PMS will provide management reports of
the call activity, and the recording and tracking of all questions and
problems to final resolution. The PMS will verify that each Customer is
"entitled" to program support.
1.11 "Problem Source Identification" means the process of determining which
software or documentation component is failing or attributing the failure
to some external cause such as a Customer error or no trouble found.
1.12 "Reader Comment Form" ("RCF") means the form which is used to record
Errors and comments on the documentation. The RCF is generally the last
page of a manual or brochure. The Customer completes it and mails it to
the address specified.
2.0 Maintenance and Support Responsibilities
2.1 The parties will agree to the specific details of the process flow each
will follow to resolve Customer calls for requests for support thirty (30)
days prior to the general availability of IBM Logo'd Products; provided
however, that IBM gives Extricity reasonable notice of the date of general
availability.
2.2 Extricity will provide IBM electronic (soft copy) information on any known
problems in the IBM Logo'd Product 1 and IBM Logo'd Product 2 and the work
arounds and solutions, if available, within thirty (30) days of the
Milestone Delivery date set forth in Attachment 13.
2.3 Product Customers will initiate requests for support by contacting IBM.
IBM will perform the following maintenance Level 1 support
responsibilities, as described below. IBM will:
(i) create the PMR;
(ii) obtain from the Customer a description of the problem, and verify its
severity;
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
(iii) search the IBM data base for known problems;
(iv) provide the available resolution if the problem is known;
(v) recommend local IBM assistance as required;
(vi) if no resolution, pass the PMR to Level 2; and
(vii) update the PMR documenting Level 1 actions.
IBM will be the primary Customer contact point for questions, problems and
assistance concerning the Product. IBM may use a third party to perform
its obligations.
2.4 Thirty (30) days prior to general availability of the Product, Extricity
will establish a process to check incoming electronic requests from IBM for
Level 2 and Level 3 support at least twice daily; provided however, that
IBM gives Extricity reasonable notice of the date of general availability.
2.5 IBM will perform the following Level 2 support responsibilities for IBM
Logo'd Products.
(i) IBM will retain overall responsibility for ensuring that the
Customer's problem is resolved and for communication with the Customer
about the status and conclusions of problem investigation work; and
(ii) IBM's Level 2 team will carry out an initial problem diagnosis to
exclude problems which are obviously due to user error or failures in
IBM products before passing the PMR to Extricity.
2.6 Extricity will then have full responsibility for diagnosing and resolving
problems passed to Extricity from IBM Level 2 support for IBM Logo'd
Products. If Extricity's conclusion is that the problem is not in the IBM
Logo'd Products, Extricity must demonstrate this to the satisfaction of the
IBM Level 2 support function, which will then take back responsibility for
finding the real cause of the problem. In any such situation, Extricity
will be required to provide assistance to the IBM Level 2/3 support team
until the problem is resolved:
(i) Level 2. Extricity will:
(1) receive the PMR/APAR from the IBM Level 2 team;
(2) analyze problem symptoms and gather additional data from the
Customer as required;
(3) recreate the problem on the Developer Test System;
(4) determine if the Error is due to improper installation of IBM
Logo'd Products by the Customer;
(5) determine if the suspected Error is due to prerequisite or
operationally related equipment or software at the Customer
location;
(6) attempt a bypass or circumvention for high impact problems, i.e.,
Severity 1 and 2;
(7) if no resolution and the problem appears to be a newly discovered
Code or documentation error, create an APAR record;
(8) if Extricity requests, IBM will assist Extricity in obtaining
additional information or materials from the Customer to support
Level 3 Problem Determination, Problem Source Identification and
problem resolution; and
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
(9) update the PMR, documenting Level 2 actions.
(ii) Level 3. Extricity will:
(1) receive the APAR/PMR and supporting documentation and materials;
(2) analyze the problem symptoms and diagnose the suspected Error;
(3) notify Level 2 if additional information, materials or
documentation are required;
(4) attempt to recreate the problem on the Developer Test System, if
required;
(5) assist Level 2 in attempting to develop a bypass or circumvention
for high impact problems, i.e., Severity 1 and 2;
(6) determine if Error Corrections are required to the IBM Logo'd
Products;
(7) if Error Corrections are required to the IBM Logo'd Products,
provide Error Corrections to IBM in a format mutually acceptable
to both Extricity and IBM;
(8) return all APARs to IBM with one of the defined APAR Closing
Codes assigned, including text describing the resolution of the
Error. In the event a Code Error was found, provide the
rationale for the closing of the APAR;
(9) provide resolution to APARs according to the assigned APAR
Severity Level and within the defined APAR Correction Time. The
APAR Correction Times include building, testing, certifying
successful tests of Error Corrections, and packaging for shipment
to IBM any applicable Error Corrections in a format mutually
acceptable to both Extricity and IBM;
(10) receive technical questions, and supporting documentation and
materials;
(11) analyze the technical questions and provide answers to IBM; and
(12) provide technical backup support to IBM on IBM Logo'd Products as
provided above. In addition, Extricity will provide assistance
in answering questions that may arise concerning the operation
and use of the IBM Logo'd Products that cannot be resolved by
IBM.
2.7 At least once every three (3) months, Extricity will provide a corrected
version of the IBM Logo'd Products that includes all Error Corrections to
the IBM Logo'd Products. Additional corrected versions of the IBM Logo'd
Products will be provided as determined and mutually agreed to by IBM and
Extricity in the event they become necessary due to the frequency or
severity of newly discovered defects. In order to provide Error
Corrections, Extricity will maintain a current copy of IBM Logo'd Products.
2.8 Extricity will maintain procedures to ensure that new Error Corrections are
compatible with previous Error Corrections.
2.9 Packaging of Error Corrections and migration Code will be done as mutually
agreed to by IBM and Extricity.
3.0 APAR Origination and Correction
3.1 Generally APARs will originate from IBM and Customers reporting problems or
sending in Reader Comment Forms. Extricity will also report to IBM as
APARs all valid Errors discovered by Extricity
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
or Extricity's customers. After receiving an APAR, IBM will assign an APAR
number and Severity Level, and forward the APAR to Extricity for actions.
3.2 For verified APARs for the IBM Logo'd Products, Extricity will provide
Error Corrections as set out below within the applicable APAR Correction
Times:
(i) the fix to the Object Code in machine-readable form including a hard
copy description of the Error Corrections (which may include a paper
submission of the Error Corrections);
(ii) the Error Corrections to the Source Code in machine-readable form that
corresponds to the Object Code Error Corrections; and
(iii) for a procedural work-around, the corrected procedure in machine-
readable form.
3.3 Reader Comment Forms received by IBM that do not form the basis of an APAR
will be forwarded to Extricity to be handled in accordance with a mutually
agreed severity and action plan.
4.0 General (the terms of this Clause 4 only apply to Error Corrections)
4.1 Extricity will provide to IBM the documented off-hours escalation procedure
to be used when high priority problems are encountered outside of normal
working hours that require immediate assistance. Extricity's normal
working hours are defined as 8:30 AM to 5:00 PM, Monday through Friday,
Pacific Standard Time.
4.2 Extricity will provide to IBM, on request, information regarding the status
of reported APARs related to the IBM Logo'd Products.
4.3 It is desirable that IBM report APARs and status requests to Extricity via
an electronic interface and that Extricity send APAR Error Corrections
status updates and requests for additional documentation to IBM via the
same interface. IBM and Extricity will jointly plan the electronic system.
Each party is responsible for funding the costs of this interface at its
location.
4.4 Critical situations may require the parties to use the telephone for
immediate communications. The parties will follow such communications via
the electronic interface for tracking and recording purposes. Each party
is responsible for funding the costs of this communication at its location.
4.5 In circumstances where materials have to be exchanged using facsimile or
courier services, each party is responsible for funding the costs of these
exchanges via facsimile or courier services at it location.
4.6 If necessary, Extricity will participate in monthly telephone conference
calls with IBM to review the status and performance of the parties'
obligations. These calls may be scheduled more or less frequently as
agreed to by the Technical Coordinators. Each party is responsible for
funding the costs of these conference calls at its location.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 5
------------
TEST AND ACCEPTANCE CRITERIA
----------------------------
IBM Logo'd Product 1
--------------------
Test
----
Extricity will plan and complete testing of IBM Logo'd Product 1 and will share
results with IBM according to a mutually agreed upon schedule.
Acceptance
----------
At an IBM site (to be identified) Extricity personnel will:
Demonstrate installation of IBM Logo'd Product 1 from the gold master CD
without the aid of any other software
Demonstrate that the IBM Logo Requirements have been met as defined in
Attachment 3, Description of Developed Works for IBM Logo'd Product 1.
Demonstrate that the publications are all on the gold master CD and are
available in both PDF and HTML format.
Execute simple test scenarios to demonstrate that the technical
requirements specified in Attachment 3, Description of Developed Works for
IBM Logo'd Product 1 have been met. Extricity and IBM will agree in
advance to the test scenarios to be demonstrated.
IBM Logo'd Product 2
--------------------
Test
----
Extricity will define a test plan, "Extricity Test Plan", (including a summary
and detail of test cases) and agree with IBM to the Extricity Test Plan at least
eight (8) weeks prior to Milestone 17 on Attachment 13. The Extricity Test Plan
will have the objective of proving that the technical requirements specified in
Attachment 3 have been met.
Extricity will demonstrate that IBM Logo'd Product 2 is of acceptable quality by
tracking weekly (whilst maintaining historical records in numerical and
graphical form) the following test metrics for review by IBM:
Number of test cases executed/successful/failed;
Number of defects raised/open/being worked/closed;
Defects by severity.
IBM will define a product integration test plan that will have the objective,
among others, of proving that the IBM Logo'd Product 2 integrates as expected
and required with other IBM products and components that are part of the
Product. IBM will give Extricity a copy of the product integration test plan no
later than 1 month prior to Extricity delivery to IBM of the pre-Golden master
CD for IBM Logo'd Product 2.
Acceptance
----------
Extricity will demonstrate completion of the Extricity Test Plan by showing
that:
All planned test cases have been executed successfully;
Number of new severity 1 and 2 defects raised each week declining to zero,
with a period of at least 2 weeks at the end of the system test where no or
very few new defects were raised;
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
No severity 1 and 2 defects open.
At an IBM site (to be identified) IBM personnel will:
Successfully install IBM Logo'd Product 2 from the Pre-Golden Master CD
without the aid of any other software.
Verify that the IBM Logo Requirements have been met as defined in
Attachment 3, Description of Developed Works for IBM Logo'd Product 2.
Successfully complete IBM's product integration test. The test will be
deemed complete when all planned test cases for the Product which
incorporates IBM Logo'd Product 2 have been executed; all defects found in
IBM Logo'd Product 2 have been reported to Extricity; and, fixes to all
defects in IBM Logo'd Product 2 which IBM and Extricity agree will be fixed
before Product shipment have been received by IBM; provided however, that
failure of any component of the Product other than an IBM Logo'd Product 2
(including the lack of any required component) will not delay or impact the
acceptance of IBM Logo'd Product 2 if it functions as set forth in the
Extricity Test Plan.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 6
------------
CONFIRMATION OF COPYRIGHT ASSIGNMENT
------------------------------------
Confirmation of Assignment of Copyright for all copyrightable material which
Extricity is assigning to IBM and its Affiliates. The Assignment must be
notarized.
Extricity grants and assigns to IBM and its Affiliates all rights, title and
interest throughout the world in the copyright on the IBM-owned Developed
Work(s) described in Attachment 12 of this LA, such grant and assignment to IBM
and its Affiliates, its successors and assigns for the duration of all such
rights, title and interest and any renewals or extensions thereof.
Authorized Signature: ________________________
Name: ________________________
Title: ________________________
Date: ________________________
Notary:
Before me this _____ day of ___________________, 2000 personally appeared:
_______________________, to me known to be the person who is described in and
who executed the forgoing assignment instrument and acknowledged to me that
he/she executed the same of his/her own free will for the purpose therein
expressed and on behalf of Extricity, Inc. as ( Title of Signer )
thereof.
-------------------------------------
Notary Seal
-------------------------------------
________________________________________________
Notary Public or Consular Office of the United States of America
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 7
------------
DESCRIPTION OF IBM MATERIALS & PRODUCT INTEGRATION AREAS
--------------------------------------------------------
DESCRIPTION OF IBM MATERIALS
----------------------------
Performance by Extricity of its obligations under this LA is dependent on IBM
delivery of the following according to the scheduled milestone dates defined in
Attachment 13:
Receipt of complete IBM logo instructions and materials for IBM Logo'd
Products as clarified and amended per any reasonable request by Extricity
Working redirector to the tomcat servlet engine from IBM HTTP web server
MQSeries Integrator version 2.0 in general release status
MQSeries Workflow version 3.2.2 in general release status
WebSphere version 3.5
Redistribution license agreement and development license for IBM JVM 1.2.2
PRODUCT INTEGRATION AREAS
-------------------------
IBM will be responsible for managing and resourcing the following projects.
Extricity will assist with the following up to [***] of Extricity Personnel.
Thereafter, Extricity will be entitled to charge IBM for any assistance pursuant
to the terms of IBM's standard contracting agreement. Nothing in this
Attachment 7 will impact or have any bearing on the acceptance criteria in
Attachment 5.
Associated with IBM Logo'd Product 1
------------------------------------
[***]:
[***]
[***]
[***]
Associated with IBM Logo'd Product 2
------------------------------------
[***]
[***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 8
------------
ACCEPTANCE CRITERIA FOR ESCROWED SOURCE CODE
--------------------------------------------
Deliverables
Extricity will provide a source code package containing the Escrowed Materials
set forth in Clause 8.1.
In the event of source code transfer from escrow to IBM, Extricity will provide
training to help IBM understand the source code. This training will consist of:
1. high level documentation describing the structure of the source code
and the purpose of each module;
2. an education class for IBM software engineers (5 - 10) on the
internals of the IBM Logo'd Products; and
3. consultancy via telephone and occasional meetings for up to 90 days
after the transfer of the source code to IBM.
Acceptance Criteria
The transfer of the source code from escrow to IBM will be deemed to be complete
when:
1. the deliverables listed above have been made available to IBM;
2. the education class has been completed;
3. an IBM software engineer has successfully compiled and built a Golden
Master CD image from the source code package; and
4. the 90 day consultancy period has ended.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 9
------------
BLANK
-----
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 10
-------------
BLANK
-----
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 11
-------------
KNOWLEDGE TRANSFER FOR LICENSED WORK AND DEVELOPED WORKS
--------------------------------------------------------
Extricity and IBM agree to a "train-the-trainer" model for training delivery.
The IBM resources who receive the training will have responsibility for training
other IBM resources as scheduled and managed by IBM. Extricity will provide
training at its expense, and at the scope and level of effort described below:
For IBM Logo'd Product 1:
-------------------------
Extricity will deliver for IBM informal training, carried out on Extricity's
premises or at a mutually agreed upon setting, as follows:
1. problem diagnosis training for IBM's Level 2 support team sufficient
to enable them to diagnose Customer problems reported for IBM Logo'd
Product 1.
For IBM Logo'd Product 2:
-------------------------
Extricity will deliver formal education classes, carried out on IBM's premises,
as follows:
1. problem diagnosis training for IBM's Level 2 support team sufficient
to enable them to diagnose Customer problems reported for IBM Logo'd
Product 2
For each of the above, the training will consist of a class of a minimum of two
(2) business days in length. Extricity will provide IBM, for its review and
concurrence, a detailed course description including course objectives, a
specific outline, required advance study assignments and course completion
criteria.
IBM will provide appropriate training facilities and equipment, the requirement
for which will be mutually agreed between IBM and Extricity.
Extricity will provide refresher and update training courses according to a
mutually agreed upon schedule tied to updgrade releases or, in the absence of
such releases, on an annual basis at the request of IBM. Such training will be
in a format similar to the initial course.
Technical Training
------------------
Extricity will deliver to IBM training for IBM's development team to assist them
with the integration of the Developed Works into IBM's products per the terms of
Attachment 7. This will focus on the programming interfaces, including those
which may not be published, but which IBM may need to use to achieve
integration;
1. training for IBM's development team on the interfaces of the Developed
Works
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 12
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EXTRICITY-OWNED AND IBM-OWNED DEVELOPED WORKS
---------------------------------------------
IBM-OWNED DEVELOPED WORKS
-------------------------
NONE
EXTRICITY-OWNED DEVELOPED WORKS
-------------------------------
All Developed Works (see Attachment 3), will be Extricity-owned Developed Works.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 13
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AGREED MILESTONES
-----------------
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Scheduled Date:
Reference to Milestones means
the actual date, regardless of
the Scheduled Date, that the
Milestone is achieved
Milestone:
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1. Blank
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2. Receipt by Extricity of complete logo [***]
instructions and materials for IBM Logo'd
Product 1 (per the terms of Attachment 7)
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3. [***] [***]
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4. [***] [***]
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5. [***] [***]
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6. Blank
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7. Acceptance of 5 above [***]
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8. [***] [***]
--------------------------------------------------------------------------------
9. [***] [***]
--------------------------------------------------------------------------------
10. [***] [***]
--------------------------------------------------------------------------------
11. Blank
--------------------------------------------------------------------------------
12. Acceptance of 10 above [***]
--------------------------------------------------------------------------------
13. [***] [***]
--------------------------------------------------------------------------------
14. Blank
--------------------------------------------------------------------------------
15. [***] [***]
--------------------------------------------------------------------------------
16. [***] [***]
--------------------------------------------------------------------------------
17. [***] [***]
--------------------------------------------------------------------------------
18. [***] [***]
--------------------------------------------------------------------------------
19. [***] [***]
--------------------------------------------------------------------------------
20. [***] [***]
--------------------------------------------------------------------------------
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
--------------------------------------------------------------------------------
Scheduled Date:
Reference to Milestones means
the actual date, regardless of
the Scheduled Date, that the
Milestone: Milestone is achieved
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
21. [***] [***]
--------------------------------------------------------------------------------
22. [***] [***]
--------------------------------------------------------------------------------
23. [***] [***]
--------------------------------------------------------------------------------
24. Blank
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25. [***] [***]
--------------------------------------------------------------------------------
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
ATTACHMENT 14
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TOOLS
-----
Following Tools are to be supplied to IBM by Extricity:
1. [***]
[***]
[***]
2. [***]
3. [***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
