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EXHIBIT 10.36
SETTLEMENT AGREEMENT AND MUTUAL RELEASE
BETWEEN
INTERNET TELEMETRY CORP. AND WORLD WIRELESS COMMUNICATIONS, INC.
This Agreement is made and entered into as of this 7th day of August, 2000, by
and between Internet Telemetry Corp. an Oklahoma corporation with offices at ▇▇▇
▇. ▇▇▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("ITC") and World Wireless Communication,
Inc., a Nevada Corporation with offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇., ▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("WWC") for the benefit of the parties and their
respective parents and subsidiaries, all of whom shall be deemed to be direct or
(unless and to the extent specifically and clearly stated otherwise) express
third-party beneficiaries of this Agreement.
RECITALS
▇. ▇▇▇▇▇▇▇▇ Wireless, Inc., dba ▇▇▇▇▇▇▇▇ Telemetry (WT), a wholly-owned
subsidiary of ▇▇▇▇▇▇▇▇ Communications, Inc. and WWC heretofore entered into and
were parties to various agreements, including but not limited to: a "Technical
Development and Marketing Alliance Agreement" ("TDMA") dated September 26, 1997,
and as thereafter amended and restated, and various, separate, "Commercial
Services Agreements" ("CSAs") for engineering and/or manufacturing services,
under which each party had or maintained certain rights or obligations relative
to the other, in connection with WWC's development and manufacture of certain
product or products for WT , and WT agreement to purchase said products and
other WWC products and services. Such agreements contained certain provisions
barring or restricting competitive activities between the parties.
B. On March 8, 2000, ITC acquired substantially all of the assets and business
of WT and as part of the transaction the TDMA and the CSA's between WT and WWC
were assigned and transferred to ITC.
C. ITC believes and has claimed that WWC, directly or through its subsidiary,
X-tra Web, Inc., is promoting or marketing technology, products or services in
areas or telemetry markets in which ITC claims that WWC and its subsidiaries are
restricted by prior agreements from conducting business or otherwise competing
with ITC, which claims are denied by WWC and are thus disputed.
D. The parties find it to be in their mutual best interest to resolve the
disagreements and disputes between them and to dissolve all prior contractual
relationships and for that reason have entered into this Settlement Agreement
and Mutual Release.
NOW, THEREFORE, for good and valuable consideration, including the covenants and
undertakings herein, the sufficiency of which is expressly acknowledged, the
parties agree as follows:
1. GRANT OF LICENSE. WWC grants to ITC, and ITC accepts from WWC, a perpetual,
non-exclusive, irrevocable and non-cancellable, royalty-free, world wide license
to manufacture, directly or through others, and to use and/or sell, as a
component of ITC's telemetry systems or products, WWC's MicroHopper radio, as
presently configured ("Licensed Product"), described as follows: a spread
spectrum based packet data radio that performs two tasks, (a) it takes data
input through a serial port and immediately, with no storage or processing,
transmits the data, and (b) it receives radio packet data and outputs it to the
serial port, with no storage or processing taking place. In connection
therewith, WWC shall furnish to ITC all design and manufacturing data for the
Licensed Product, as of the date of this agreement, necessary and adequate for
ITC to use and to modify the Licensed Product as described herein. Design and
manufacturing data includes, but is not limited to, schematics, bills of
materials, software source code, firmware source code and other design documents
and engineering documents, parts lists, assembly instructions, test data and
users guides. The license granted hereunder is subject to the following
limitations and restrictions:
a. ITC shall have rights to manufacture, contract for the manufacture,
use and sell the Licensed Product to third-party customers, directly or through
ITC's distribution system, only with and incorporated into ITC's telemetry
systems or products.
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b. ITC shall have no rights to use or sell (by sublicense or otherwise)
the Licensed Product as a stand-alone radio module or product or to manufacture
or contract for the manufacture of the Licensed Product for such purposes.
c. ITC shall have rights to modify, enhance, supplement or redesign the
Licensed Product as it may wish or find necessary or appropriate for its
telemetry systems business. In exercising its rights herein to modify, improve,
enhance, supplement, redesign or change the Licensed Product, ITC may create one
or more "substantial modifications" to the Licensed Products. A"substantial
modification" shall be deemed to mean, among other things, the addition of
electronic components and/or software to add data storage and processing
capability to the Licensed Product such that the resulting substantially
modified product is capable of performing functions beyond the nature of WWC's
unmodified Licensed Product. Any ITC product resulting from or based on these
substantial modifications to the unmodified Licensed Product shall thereafter no
longer be deemed the Licensed Product and will be owned solely by ITC for their
exclusive use and shall not be subject to this Agreement. Any modifications,
enhancements and redesigns that do not result in substantial modifications will
continue to be deemed the Licensed Product and shall be subject to the license
granted hereunder.
d. ITC shall also have the right to investigate and analyze the design
of the Licensed Product and derive and use, without restriction or cost, any
engineering concept, design or function it uncovers as a result. ITC shall also
have the right, without restriction and cost, to use any software code, concept,
process or algorithm it uncovers in the course of said analysis of the Licensed
Product. Any ITC product that uses any information so derived will be the
exclusive property of ITC and will not be subject to this agreement or to any
other restriction of any form.
e. WWC represents and warrants to ITC the following:
i) WWC owns all rights in and to the Licensed Product and has the
complete power and authority to execute and deliver this
Agreement and grant the license and rights hereunder to ITC.
ii) The execution and delivery of this Agreement and the grant of
the license and other rights hereunder to ITC will not result
in a breach of any agreement to which WWC is a party or which
covers or effects the Licensed Product.
iii) WWC's use and manufacture of the Licensed Product and the
granting of rights under this Agreement to ITC and ITC's use
of the Licensed Product as authorized in this Agreement does
not and will not infringe on or breach the rights of any other
party with respect to the Licensed Product, any part thereof
or otherwise.
iv) Any change in the ownership of or rights in or to the Licensed
product shall provide for the continuing validity of this
License Agreement v) The design of the Licensed Product, its
use as intended hereunder and any technology incorporated into
the Licensed Product does not infringe on the rights of any
party.
f. WWC warrants that the design and manufacturing specifications and
data relating to the Licensed Product and furnished to ITC upon the execution
hereof are and will be complete and current as of the date of this Agreement.
WWC GIVES NO OTHER WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION,
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR FUNCTION.
g. WWC will provide to ITC, over a period of not longer than one year,
up to eight (8) hours of technical instruction and bug fixes in connection with
the Licensed Product. WWC shall not provide, nor shall it be required to
provide, to ITC, any technical support for the Licensed Product beyond that set
forth in this subparagraph.
h. ITC shall hold WWC harmless against and in respect to any and all
claims, damages, losses, costs, expenses, obligations, liabilities, actions,
suits, including interest and penalties, reasonable attorney's fees and costs
and all amounts paid in settlement of any claim, action or suit that may be
asserted against WWC or that WWC may incur or suffer that arise out of, result
from or relate to (a) ITC's breach of any term, condition or restriction of this
paragraph 1 hereunder; (b) any claim of any nature whatsoever brought by any
customer of ITC or any third person or entity who may suffer damages of any sort
as a direct or indirect result of ITC's activities or those of ITC's
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resellers or agents relating to or in connection with the Licensed Product or
(d) any claims of infringement that arise out of, result from or relate to any
modification, redesign, enhancement or misuse of the Licensed Product or its
combination with ITC' products or systems.
i. WWC shall and does hereby indemnify and hold ITC harmless against
and with respect to any and all claims, damages, losses, costs, expenses,
obligations, liabilities, actions, suits, including interest and penalties,
reasonable attorney's fees and costs and all amounts paid in settlement of any
claim, action or suit that may be asserted against ITC or that ITC may incur or
suffer that arise out of, result from or relate to (a) WWC's breach of any term,
condition or restriction of this Agreement; (b) any claim of any nature
whatsoever brought by any party who may suffer damages of any sort as a result
of WWC's execution and delivery of this Agreement; or (c) any claim of
infringement that arises out of or results from WWC's development, use,
manufacture, license or sale of the Licensed Product or any technology that is a
part thereof.
j. The license granted to ITC hereunder is and shall be irrevocable and
non-cancellable. In any judicial, administrative or arbitration action to
enforce the terms of section 1, a or 1,b of this Agreement, or in any other
action whereby WWC or any other party seeks to cancel, revoke, terminate or
restrict the license granted hereunder, the sole and exclusive remedy shall be
injunctive relief to restrict ITC from selling the Licensed Product as a
stand-alone radio module or product.
2. ITC'S RIGHTS TO RESELL WWC'S PRODUCTS. WWC hereby grants ITC the right to
resell the products developed and sold by WWC and its subsidiary X-Tra Web. ITC
agrees to abide by the terms of WWC's standard reseller's agreement which WWC
offers other reseller organizations, such terms to include provisions such as
adequate and timely marketing and product support, appropriate confidentiality,
provisions to guarantee timely product delivery, grants to use copyrights and
trademarks, advanced notification of product releases, escrow of software source
code and hardware engineering documents. Said resellers agreement will grant ITC
the non-exclusive right to resell WWC's or X-traWeb's products worldwide into
any market or application and to any customer ITC desires, providing (1) that
the customer is not actively already buying, or in the buying cycle, the same
products from WWC or X-TraWeb or an authorized WWC or X-TraWeb Reseller; and (2)
that WWC or X-TraWeb have not granted exclusive rights to other qualified
resellers in that market or application prior to the date of this Agreement. All
such exclusions and exceptions shall be identified in the reseller agreement to
be executed between the parties. Said resellers agreement will not include any
provision requiring ITC to order any minimum quantities of WWC's or X-traWeb's
products and will stipulate that ITC is to receive "Most-Favored-Nations"
pricing from WWC or X-Tra Web. Said resellers agreement is to be completed
within 90 days after execution of this agreement.
3. WWC'S RIGHTS TO RESELL ITC'S PRODUCTS. ITC hereby grants WWC the right to
resell its standard product line in accordance with ITC's standard resellers
agreement as offered to other resellers. Once WWC and ITC sign ITC's resellers
agreement, WWC's rights and obligations as a reseller will be governed by the
terms of said agreement. WWC's right to resell ITCs products can be terminated
in accordance to the terms of ITC's standard resellers agreement. Said resellers
agreement is to be completed within 90 days after execution of this agreement.
4. MUTUAL TERMINATION OF AGREEMENTS. The parties agree that all agreements
between them, prior to the date hereof, including all agreements that limit,
restrict or may be deemed in any way to limit or restrict the parties'
respective rights to compete or sell their respective products or services in
any market, shall be deemed to be fully satisfied and mutually terminated.
5. WWC WAIVER AND RELEASE. WWC waives and releases ITC, its stockholders, parent
company and all subsidiaries and affiliate companies and their respective
officers, directors, employees, agents and attorneys from any and all claims,
rights, actions, causes of action which exists or might exist under any facts as
of the date hereof, whether or not known or discovered, and other than those
rights that arise specifically under this Agreement.
6. ITC WAIVER AND RELEASE. ITC waives and releases WWC and all subsidiaries,
including but not limited to X-tra Web, Inc., their officers, directors,
employees, agents and attorneys from any and all claims, rights, actions,
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causes of action which exists or might exist under any facts as of the date
hereof, whether or not known or discovered, and other than those rights that
arise specifically under this Agreement.
7. JURISDICTION AND APPLICABLE LAW. This Agreement will governed by the laws of
the State of Oklahoma, and any lawsuit hereunder shall be brought only in a
federal or state court of competent jurisdiction in the State of Oklahoma,
whichever state is the domicile of the party against whom action is first
brought. Both parties hereby submit to the personal jurisdiction of said courts
for said purpose.
8. ALTERNATIVE DISPUTE RESOLUTION. The parties will attempt in good faith to
resolve any controversy or claim arising out of or relating to this Agreement
within sixty (60) days by negotiations between senior executives of the parties
who have settlement authority and who do not have direct responsibility for the
administration of this Agreement.
The disputing party shall give the other party written notice of the dispute in
accordance with the notice provision of this Agreement. The other party shall
submit a response within twenty (20) days after receiving said notice. The
notice and response shall include (a) a summary of the partys position and a
summary of the evidence and arguments supporting its position, and (b) the name
of the executive who will represent the party. The executives shall meet at a
mutually acceptable time and place within thirty (30) days of the disputing
partys notice and thereafter as often as they deem reasonably necessary to
resolve the dispute.
If the matter has not been resolved within sixty (60) days of the disputing
partys notice, either party may initiate other means of alternative dispute
resolution of the controversy in accordance with the appropriate rules and
procedures of the Center for Public Resources or American Arbitration
Association or pursue its rights and remedies within a court of competent
jurisdiction.
9. This Agreement shall bind and inure to the benefit of each of the parties
hereto and their respective successors and assigns. Either party may assign this
Agreement and the rights and obligations hereunder at any time without the
consent of the other party hereto.
10. ENTIRE AGREEMENT. This Agreement constitutes the entire agreement between
the parties pertaining to the subject matter herein and supersedes all prior
proposals, written or oral, and may not be supplemented or modified by any
course of dealing or usage of trade. This Agreement may be amended or modified
only by a writing signed by each party.
11. SEVERABILITY. If any term, provision, covenant or condition of this
Agreement is held invalid or unenforceable for any reason, the remainder of the
provisions will continue in full force and effect as if this Agreement had been
executed with the invalid portion eliminated. The parties further agree to
substitute for the invalid provision a valid provision that most closely
approximates the intent and economic effect of the invalid provision.
12. RELATIONSHIP OF PARTIES. Each party is an independent contractor and this
Agreement shall not be construed to create a relationship of partners, brokers,
employees, servants or agents between the parties. The relationship between WWC
and ITC relative to the Licensed Product and any use of that product by ITC is
that of Licensor and Licensee.
13. HEADINGS. The headings provided in this Agreement are for convenience only
and will not be used in interpreting or construing this Agreement.
14. SCOPE OF AGREEMENT. Each of the parties hereto acknowledges that it has read
this Agreement, understands it and agrees to be bound by its terms. The parties
further agree that this Agreement is the complete and exclusive statement of
agreement regarding the subject matter and supersedes all proposals (oral or
written), understandings, representations, conditions, warranties, covenants and
all other communications between the parties relating thereto. This Agreement
may be amended only by a writing that refers specifically to this Agreement and
is signed by both parties.
WHEREFORE, the parties have entered into this Agreement as of the date first set
forth above.
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INTERNET TELEMETRY CORP. WORLD WIRELESS COMMUNICATIONS, INC
By: By:
Name: ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: President Title: Executive Vice President
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