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EXHIBIT 10.28
AGREEMENT
This Agreement is entered into and made effective as of the 24th day of
December, 1997 (the "Effective Date"), by and between SystemSoft Corporation, a
Delaware corporation having its principal place of business at Xxx Xxxxxxxxxx
Xxxxx, Xxxxxx, XX 00000 ("SystemSoft") and Intel Corporation, a Delaware
corporation having its principal place of business at 0000 Xxxxxxx Xxxxxxx
Xxxx., Xxxxx Xxxxx, XX 00000 ("Intel"). Intel and SystemSoft may be sometimes
hereinafter be referred to as, the "Parties".
RECITALS
WHEREAS, Intel and SystemSoft entered into a Development and License
Agreement having an effective date of December 20th, 1993 and amendments thereto
dated March 30, 1994 and October 30, 1995 (collectively, the "Prior Agreement")
whereby Intel agreed to and did disclose certain technologies to SystemSoft
which were or were anticipated to be developed at Intel and which the parties
agreed that SystemSoft had the technical and market capability to proliferate in
a manner consistent with Intel's business goals, and
WHEREAS, the Parties agreed to memorialize each separate technology
license transaction by identifying the licensed technology, its specific source
and binary files, a specification for a licensed work that SystemSoft might
prepare, specific license terms and conditions applying to such licensed work,
development milestones, market penetration goals, financial terms relating to
development work and any such other terms as the Parties might deem appropriate,
and
WHEREAS, in consideration of SystemSoft's promises to develop,
distribute, pay royalties on and license to Intel certain works under the Prior
Agreement, Intel agreed to and did provide SystemSoft with NRE payments and
royalty credits amounting to Seven Million Six Hundred Thousand Dollars
($7,600,000), and
WHEREAS, SystemSoft and Intel agree and stipulate that the Prior
Agreement was subsequently amended by the parties by the execution of Eight (8)
separate license/development statements which comprise all such amendments to
the Prior Agreement as of the Effective Date of this Agreement and shall be
referred to hereinafter as the "Subsequent Amendments", and
WHEREAS, SystemSoft and Intel would now like to reach an accord with
regard to existing past due royalties amounts and future royalty obligations
owed Intel by SystemSoft under the Prior Agreement and its Subsequent Amendments
and provide satisfaction of such accord through payment to Intel of such
royalties as set forth herein.
NOW, THEREFORE, in consideration of the mutual representations,
covenants, and agreements of the parties hereinafter set forth, the parties do
hereby enter into the following accord, the complete and full satisfaction of
which shall relieve SystemSoft of any further royalty obligations to Intel with
respect to any and all royalties payable to Intel under the Prior Agreement and
its Subsequent Amendments. The Parties expressly agree that this Agreement of
accord and satisfaction shall not apply to any royalty bearing future amendment
entered into between the Parties under the terms and conditions of the Prior
Agreement.
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1. Stipulated Royalty. The Parties agree and stipulate that the total amount of
all royalties due Intel from SystemSoft under the Prior Agreement and Subsequent
Amendments shall be Four Million, Two Hundred Sixty Two Thousand, Eight Hundred
Sixteen Dollars ($4,262,816) in U.S. currency (the "Stipulated Royalty"). Upon
full and complete payment of the entire Stipulated Royalty SystemSoft shall have
no further royalty obligations to Intel of any nature under the Prior Agreement
and Subsequent Amendments, except to the extent that the Parties may enter into
any additional royalty bearing amendment under terms of the Prior Agreement
following the Effective Date of this Agreement.
2. Payment of Stipulated Royalty. SystemSoft agrees to pay Intel the Stipulated
Royalty by making the following installment payments:
On or before December 24, 1997 SystemSoft shall pay Intel $ 1,022,400.*
On or before June 1, 1998 SystemSoft shall pay Intel $ 500,000.
On or before September 1, 1998 SystemSoft shall pay Intel $ 500,000.
On or before December 1, 1998 SystemSoft shall pay Intel $ 500,000.
On or before March 1, 1999 SystemSoft shall pay Intel $ 500,000.
On or before June 1, 1999 SystemSoft shall pay Intel $ 500,000.
On or before September 1, 1999 SystemSoft shall pay Intel $ 500,000.
On or before December 1, 1999 SystemSoft shall pay Intel $ 262,816
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$ 4,262,816.
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* $22,400 of this amount represents all royalties due for the period
November 1, 1997 through December 31, 1997 on products licensed under the
Prior Agreement and the Subsequent Amendments.
In the event that SystemSoft is more than 60 calendar days late on any of the
installment payments stipulated above Intel will have the option, at its sole
discretion and upon written notice to SystemSoft, to immediately terminate this
Agreement for cause. Upon any such termination, all payments received by Intel
hereunder shall be credited as royalty payments against SystemSoft's actual
royalties due Intel pursuant to the terms and conditions of the Prior Agreement
and the Subsequent Amendments had this Agreement never been executed and the
Parties shall thenceforth abide by the terms and conditions of the Prior
Agreement and Subsequent Amendments for the remaining term thereof. To give
effect to this potential remedy, SystemSoft shall continue to provide Intel with
quarterly royalty reports (within five business days following the end of the
quarter) as set forth under Section 5.5 of the Prior Agreement until such time
that the Stipulated Royalty has been fully paid to Intel.
All payments and reports shall be sent to:
Intel Corporation
0000 XX 00xx Xxx
Xxxxxxxxx, XX 00000
Mailstop: JF3-149
Attn: Post Contracts Management, Xxxxxx Xxxxx
3. Release of Claims upon Satisfaction.
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3.1 Upon full and complete payment to Intel of the Stipulated Royalty,
SystemSoft with the intention of binding its legal representatives,
successors and assigns, expressly releases and discharges Intel,
together with their present or former directors, shareholders,
partners, principals, representatives, officers, employees, agents,
trustees, attorneys, wholly- or partially-owned subsidiary
corporations, joint venturers, partnerships, trusts, affiliates,
divisions, assigns, and predecessor or successor partnerships, trusts,
or corporations, or any person who may be deemed a controlling person
or any of the above or who may be deemed to be controlled by any of the
above (the "Releasees") from all claims, demands, or causes of action
(whether class, derivative, or individual in nature), known or unknown,
foreseen or unforeseen, accrued or unaccrued, which have been, could
have been, or might in the future be asserted by SystemSoft or anyone
claiming through SystemSoft, may have or claim to have, against
Releasees in connection with, arising out of, or in any way relating to
the provision of the Licensed Technology under the Prior Agreement and
Subsequent Amendments through the Effective Date.
3.2 Upon full and complete payment to Intel of the Stipulated Royalty,
Intel with the intention of binding its legal representatives,
successors and assigns, expressly releases and discharges SystemSoft,
together with their present or former directors, shareholders,
partners, principals, representatives, officers, employees, agents,
trustees, attorneys, wholly- or partially-owned subsidiary
corporations, joint venturers, partnerships, trusts, affiliates,
divisions, assigns, and predecessor or successor partnerships, trusts,
or corporations, or any person who may be deemed a controlling person
or any of the above or who may be deemed to be controlled by any of the
above (the "Releasees") from all claims, demands, or causes of action
(whether class, derivative, or individual in nature), known or unknown,
foreseen or unforeseen, accrued or unaccrued, which have been, could
have been, or might in the future be asserted by Intel or anyone
claiming through SystemSoft, may have or claim to have, against
Releasees in connection with, arising out of, or in any way relating to
payment of royalties under the Prior Agreement and Subsequent
Amendments through the Effective Date.
3.3 Until such time as SystemSoft has paid to Intel the entire
Stipulated Royalty amount, thus rendering effective the mutual release
of claims as set forth in Sections 3.1 and 3.2 above, the remedies set
forth in this Agreement are in addition to those available to either
party at law or in equity. All such rights and remedies, legal or
equitable, whether conferred hereunder, or by any other instrument or
law will be cumulative and may be exercised singularly or concurrently.
5. Notices. All notices to a party hereunder shall be in writing and shall be
deemed to have been adequately given if delivered in person, upon facsimile
transmission with receipt acknowledged or by delivery by a recognized courier
for overnight delivery, or three days after having been mailed, certified mail,
return receipt requested, to such party at its address set forth below (or such
other address as it may from time to time designate in writing to the other
parties hereto).
SystemSoft: SystemSoft Corporation
Xxx Xxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: Xxxx Xxxxxxxxxxx, Chief Financial Officer
Intel Corp: Intel Corporation
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0000 Xxxxxxx Xxxxxxx Xxxx.
Xxxxx Xxxxx, XX 00000
Attn: General Counsel
6. Waiver. Failure by either Party to enforce any term of this Agreement shall
not be deemed a waiver of future enforcement of that or any other term in this
Agreement or any other agreement that may be in place between the parties.
7. Dispute Resolution. All disputes arising directly under the express terms of
this Agreement or the grounds for termination thereof shall be resolved as
follows:
The senior management of both parties shall meet to attempt to resolve such
disputes. If the disputes cannot be resolved by the senior management, either
party may make a written demand for formal dispute resolution and specify
therein the scope of the dispute. Within thirty days after such written
notification, the parties agree to meet for one day with an impartial mediator
and consider dispute resolution alternatives other than litigation. If an
alternative method of dispute resolution is not agreed upon within thirty days
after the one day mediation, either party may begin litigation proceedings.
8. Governing Law. Any claim arising under or relating to this Agreement shall be
governed by the internal substantive laws of the State of Delaware or federal
courts located in Delaware, without regard to principles of conflict of laws.
9. Jurisdiction. Each party hereby agrees to jurisdiction and venue in the
courts of the State of Delaware for all disputes and litigation arising under or
relating to this Agreement. This provision is meant to comply with 6 Del. C.
Section 2708(a).
10. Assignment. Other than Intel's right to assign its right to receive payments
due from SystemSoft hereunder, neither party may assign its rights or delegate
its obligations, or any part thereof under this Agreement without the prior
written consent of the other party. Any attempt by either party to assign or
delegate any other rights, duties or obligations set forth in this Agreement
without the other Party's prior written consent shall be deemed a material
breach of this Agreement and shall be null and void. Except as provided above,
the terms and conditions of this Agreement shall bind and enure to each party's
successors and assigns.
11. Entire Agreement. The terms and conditions of this Agreement constitutes the
entire agreement between the parties with respect to the subject matter hereof,
and merges and supersedes all prior and contemporaneous agreements,
understandings, negotiations and discussions with respect thereto. Neither of
the parties shall be bound by any conditions, definitions, warranties,
understandings, or representations with respect to the subject matter hereof
other than as expressly provided herein. The section headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. No oral explanation or oral
information by either party hereto shall alter the meaning or interpretation of
this Agreement. No amendments or modifications shall be effective unless in a
writing signed by authorized representatives of both parties. These terms and
conditions will prevail notwithstanding any different, conflicting or additional
terms and conditions which may appear on any writing not expressly incorporated
into this Agreement. This Agreement may be executed in two (2) or more
counterparts, all of which, taken together, shall be regarded as one and the
same instrument.
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12. No Expansion of License or Ownership Rights. The parties expressly agree
that nothing in this Agreement shall be read or otherwise implied or construed
to grant or otherwise provide any license or additional intellectual property
rights other than those set forth in the Prior Agreement and Subsequent
Amendments and ownership of the Parties' respective intellectual property shall
remain as set forth therein.
13. Non-applicability to Radish Agreement. It is expressly agreed by the Parties
that full and complete satisfaction of the accord set forth in this Agreement
does not include any royalties or other payments due Intel from SystemSoft under
the Radish agreement dated 4/1/96. All payments under the aforementioned Radish
agreement shall continue to be due and payable per the respective terms and
conditions set forth therein.
Agreed:
INTEL CORPORATION SYSTEMSOFT CORPORATION
/s/ Xxxxx X. Xxxxxxxxxxxx /s/ Xxxx X. Xxxxxxxxxxx
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Signature Signature
/s/ Xxxxx X. Xxxxxxxxxxxx /s/ Xxxx X. Xxxxxxxxxxx
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Printed Name Printed Name
SMD - Business Unit Manager CFO
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Title Title
12/22/97 12/23/97
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Date Date
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