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Exhibit 10.11.1
TECHNOLOGY AGREEMENT
This Technology Agreement ("Agreement") is made and entered into on the 7th day
of December, 1998 ("Effective Date"), by and between Cisco Systems, Inc.
("Cisco"), a California corporation, located at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and ▇▇▇▇▇ Corporation ("Netro"), a California corporation,
located at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
WHEREAS, contemporaneously with the execution of this Agreement Cisco and Netro
entered into an OEM Agreement (the "OEM Agreement") pursuant to which Cisco
agreed to sell to ▇▇▇▇▇ Cisco's MGX 8220 shelves for a fifteen month time
period; and
WHEREAS, Cisco desires to license ▇▇▇▇▇ the design of the MGX 8220 shelves to
enable ▇▇▇▇▇ to develop, distribute and sell its own version of MGX 8220
shelves.
NOW THEREFORE, in consideration of the mutual promises set forth below, the
parties agree as follows:
1.0 DEFINITIONS
1.1 "Cisco's Product" means that portion of Cisco's MGX 8220 shelf
product as more fully described in Exhibit A attached hereto.
1.2 "Design Documentation" means any schematics of Cisco's Product or
other technical information provided by Cisco to ▇▇▇▇▇ in order for ▇▇▇▇▇ to
develop ▇▇▇▇▇'▇ Derivative Products. "Design Documentation" is more fully
described on Exhibit A attached hereto.
1.3 "▇▇▇▇▇'▇ Board Products" means ▇▇▇▇▇'▇ Board Products which ▇▇▇▇▇
will integrate and distribute with ▇▇▇▇▇'▇ Derivative Products. "▇▇▇▇▇'▇ Board
Products" are more fully described in Exhibit A attached hereto.
1.4 "▇▇▇▇▇'▇ Derivative Products" means the shelf products developed by
▇▇▇▇▇ based on Cisco's Product's design. ▇▇▇▇▇ will develop ▇▇▇▇▇'▇ Derivative
Products using the Design Documentation provided by Cisco.
1.5 "▇▇▇▇▇'▇ Integrated Products" means the combination of ▇▇▇▇▇'▇
Derivative Products, ▇▇▇▇▇'▇ Board Products and any other required components or
software.
2.0 DERIVATIVE PRODUCT DEVELOPMENT
2.1 Cisco's Obligations. Within ten (10) days of Effective Date, Cisco
will provide the Design Documentation to ▇▇▇▇▇. Further, Cisco will identify its
vendors of Cisco's Product and provide an introduction for ▇▇▇▇▇ to such
suppliers so that ▇▇▇▇▇ may make arrangements for the manufacture and supply of
▇▇▇▇▇'▇ Derivative Products.
2.2 ▇▇▇▇▇'▇ Obligations. ▇▇▇▇▇ will perform all work required for the
development of ▇▇▇▇▇'▇ Derivative Products, ▇▇▇▇▇'▇ Board Products and ▇▇▇▇▇'▇
Integrated Products. ▇▇▇▇▇ will
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be responsible for entering into all necessary manufacturing and supply
arrangements for ▇▇▇▇▇'▇ Derivative Products, ▇▇▇▇▇'▇ Board Products and ▇▇▇▇▇'▇
Integrated Products. ▇▇▇▇▇ will be responsible for the development of all
software required for use with ▇▇▇▇▇'▇ Derivative Products, ▇▇▇▇▇'▇ Board
Products and ▇▇▇▇▇'▇ Integrated Products. ▇▇▇▇▇ shall not distribute any
software provided to it by Cisco (e.g., software provided under the OEM
Agreement or otherwise) with ▇▇▇▇▇'▇ Derivative Product or ▇▇▇▇▇'▇ Integrated
Products. ▇▇▇▇▇ must brand, promote, market and sell the Products as ▇▇▇▇▇'▇ own
products using ▇▇▇▇▇'▇ own trademarks, trade names and trade dress. ▇▇▇▇▇ may
not use any of Cisco's trademarks, trade names or trade dress in connection with
the marketing, sale or distribution of ▇▇▇▇▇'▇ Derivative Products or ▇▇▇▇▇'▇
Integrated Products.
2.3 Regulatory Compliance. ▇▇▇▇▇ will be solely responsible for
obtaining all applicable safety or emissions approvals and for network
compliance. Cisco shall have no obligations whatsoever to assist ▇▇▇▇▇ in
achieving compliance to regulations.
2.4 Third Party Licenses. ▇▇▇▇▇ will be solely responsible for obtaining
any third party licenses required to develop, distribute and sell the ▇▇▇▇▇'▇
Board Products and ▇▇▇▇▇'▇ Integrated Products.
3.0 OWNERSHIP AND LICENSE GRANTS
3.1 Cisco's Ownership Rights. Cisco will retain ownership of all right,
title and interest (including all patents, copyrights, trademarks, trade secrets
and other intellectual property rights) in Cisco's Product, ▇▇▇▇▇'▇ Derivative
Products, and Design Documentation,. The parties acknowledge and agree that such
ownership rights includes ownership of any modifications that ▇▇▇▇▇ makes to the
design of Cisco's Product or the Design Documents ("Modifications") required to
create ▇▇▇▇▇'▇ Derivative Products and ▇▇▇▇▇ hereby assigns to Cisco any and all
intellectual property rights ▇▇▇▇▇ may acquire in the Modifications and ▇▇▇▇▇'▇
Derivative Products. ▇▇▇▇▇ will sign all documents necessary to effect such
assignment.
3.2 ▇▇▇▇▇'▇ Ownership Rights. ▇▇▇▇▇ will retain ownership of all right,
title and interest (including all patents, copyrights, trademarks, trade secrets
and other intellectual property rights) in ▇▇▇▇▇'▇ Board Products and ▇▇▇▇▇'▇
Integrated Product (excluding Cisco's rights to Cisco's Product, ▇▇▇▇▇'▇
Derivative Product and the Design Documentation).
3.3 Right to Create, Manufacture and Distribute ▇▇▇▇▇'▇ Derivative
Products and ▇▇▇▇▇'▇ Integrated Products. Subject to the terms and conditions of
this Agreement, Cisco hereby grants ▇▇▇▇▇ a non-exclusive, non-transferable,
non-sublicensable, irrevocable, fully paid up, worldwide, license to (i) use and
modify the Design Documentation solely for purposes of creating ▇▇▇▇▇'▇
Derivative Products from which ▇▇▇▇▇ can build ▇▇▇▇▇'▇ Integrated Products, (ii)
manufacture or have manufactured ▇▇▇▇▇'▇ Derivative Products, (iii) sell and
distribute ▇▇▇▇▇'▇ Derivative Products solely as integrated into ▇▇▇▇▇'▇
Integrated Products, through multiple tiers of distribution, (iv) purchase
▇▇▇▇▇'▇ Derivative Products from Cisco's suppliers solely for use in ▇▇▇▇▇'▇
manufacturing ▇▇▇▇▇'▇ Integrated Products pursuant to this Agreement, and (v)
use Modifications (but not the underlying design of Cisco's Product) for any
purpose. Cisco grants and ▇▇▇▇▇ receives no rights to purchase ▇▇▇▇▇'▇
Derivative Products, components for ▇▇▇▇▇'▇
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Derivative Products or any other products from Cisco's suppliers under any
purchase arrangement that Cisco has with such suppliers.
3.4 No Other Rights or Licenses. Except as expressly set forth in this
Agreement, Cisco grants and ▇▇▇▇▇ receives no other rights or licenses,
including, without limitation, any rights to use Cisco's trademarks, service
marks, trade names or trade dress. ▇▇▇▇▇ is strictly prohibited from using any
of Cisco's trademarks, service marks, trade names or trade dress in connection
with the marketing, sale or distribution of ▇▇▇▇▇'▇ Integrated Products or
▇▇▇▇▇'▇ Derivative Products.
4.0 [***] FEES. ▇▇▇▇▇ will [***] in connection with the rights and licenses
granted under this Agreement.
5.0 NO SUPPORT. Cisco will not be required to provide any transfer, consulting
or engineering support to ▇▇▇▇▇ during ▇▇▇▇▇'▇ development of ▇▇▇▇▇'▇ Derivative
Products. Cisco will not be required to provide any training under this
Agreement. Further, Cisco will not be required to provide any type of customer
support whatsoever under this Agreement, including, without limitation, support
for ▇▇▇▇▇'▇ Integrated Products, or the ▇▇▇▇▇'▇ Derivative Products. ▇▇▇▇▇
acknowledges and agrees that it shall be solely responsible for all support for
▇▇▇▇▇'▇ Integrated Products and ▇▇▇▇▇'▇ Derivative Products.
6.0 EXPORT CONTROLS. ▇▇▇▇▇ hereby acknowledges that the Design Documentation or
derivatives thereof supplied by Cisco hereunder and ▇▇▇▇▇'▇ Integrated Products
created by ▇▇▇▇▇ (hereafter referred to as "Products and Technology") are
subject to export controls under the laws and regulations of the United States
(U.S.). ▇▇▇▇▇ shall comply with such laws and regulations and agrees not to
export, re-export or transfer Products and Technology without first obtaining
all required U.S. Government authorizations or licenses. ▇▇▇▇▇ shall be solely
responsible for securing such authorizations or licenses.
7.0 CONFIDENTIALITY, PROPRIETARY NOTICES AND LEGENDS
7.1 Confidential Information. ▇▇▇▇▇ acknowledges that, in connection
with this Agreement it may obtain information relating to Cisco or Cisco's which
is of a confidential and proprietary nature ("Confidential Information"). Such
Confidential Information may include, but is not limited to, trade secrets, know
how, inventions, techniques, processes, programs, schematics, software source
documents, data, customer lists, financial information, and sales and marketing
plans or information which ▇▇▇▇▇ knows or has reason to know is confidential,
proprietary or trade secret information of Cisco. ▇▇▇▇▇ shall at all times, both
during the term of this Agreement and for a period of at least three (3) years
after its termination, keep in trust and confidence all such Confidential
Information, and shall not use such Confidential Information other than as
expressly authorized by Cisco under this Agreement, nor shall ▇▇▇▇▇ disclose any
such Confidential Information to third parties without Cisco's written consent.
▇▇▇▇▇ further agrees to immediately return to Cisco all Confidential Information
(including copies thereof) in ▇▇▇▇▇'▇ possession, custody, or control upon
termination of this Agreement at any time and for any reason. The obligations of
confidentiality shall not apply to information which (a) has entered the public
domain except where such entry is the result of ▇▇▇▇▇'▇ breach of this
Agreement; (b)
[***] CONFIDENTIAL TREATMENT REQUESTED
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prior to disclosure hereunder was already rightfully in ▇▇▇▇▇'▇ possession; or
(c) subsequent to disclosure hereunder is obtained by ▇▇▇▇▇ on a nonconfidential
basis from a third party who has the right to disclose such information to the
▇▇▇▇▇.
7.2 Publicity. Neither party shall disclose, advertise, or publish the
terms and conditions of this Agreement without the prior written consent of the
other party. Any press release or publication regarding this Agreement is
subject to prior review and written approval of the parties.
8.0 WARRANTY DISCLAIMER. ALL MATERIALS PROVIDED BY CISCO HEREUNDER ARE PROVIDED
ON AN AS-IS BASIS WITHOUT WARRANTY OF ANY KIND BY CISCO OR ITS SUPPLIERS. CISCO
DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING THE IMPLIED WARRANTIES OF
NON-INFRINGEMENT, MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
9.0 ▇▇▇▇▇'▇ INDEMNITY. ▇▇▇▇▇ will indemnify, defend and hold Cisco harmless for
any loss or damage arising out of ▇▇▇▇▇'▇ use of the Design Documentation or it
use or distribution of ▇▇▇▇▇'▇ Derivative Products or ▇▇▇▇▇'▇ Integrated
Products.
10.0 LIMITATION OF LIABILITY. NOTWITHSTANDING ANYTHING ELSE HEREIN, ALL
LIABILITY OF CISCO AND ITS SUPPLIERS UNDER THIS AGREEMENT OR OTHERWISE SHALL BE
LIMITED TO $5,000. THIS LIMITATION OF LIABILITY IS CUMULATIVE AND NOT PER
INCIDENT.
11.0 CONSEQUENTIAL DAMAGES WAIVER. IN NO EVENT SHALL CISCO OR ITS SUPPLIERS BE
LIABLE FOR ANY INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES, LOST PROFITS, OR
LOST DATA, OR ANY OTHER INDIRECT DAMAGES, WHETHER ARISING IN CONTRACT, TORT
(INCLUDING NEGLIGENCE) OR OTHERWISE, EVEN IF CISCO OR ITS SUPPLIERS HAVE BEEN
INFORMED OF THE POSSIBILITY THEREOF.
12.0 TERMINATION OF CISCO'S OBLIGATIONS
12.1 Termination. All of Cisco's obligations under this Agreement shall
terminate upon the earlier to occur of:
(a) One (1) year from the Effective Date,
(b) Upon delivery of the Design Documentation and identification and
introduction of Cisco's suppliers to ▇▇▇▇▇ both as set forth in Section 2.1,
(c) Either party ceases to carry on business as a going concern, either
party becomes the object of the institution of voluntary or involuntary
proceedings in bankruptcy or liquidation, or a receiver is appointed with
respect to a substantial part of its assets,
(d) ▇▇▇▇▇ breaches any of the material provisions of this Agreement and
fails to remedy such breach within thirty (30) days after written notification
by Cisco, or
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(e) Cisco terminates the OEM Agreement due to a breach by ▇▇▇▇▇.
12.3 Effect of Termination. Sections 2.2 through 2.4, Sections 3 through
II and Section 13 shall survive any termination of this Agreement.
13.0 GENERAL
13.1 Governing Law and Venue. The validity, interpretation, and
performance of this Agreement shall be controlled by and construed under the
laws of the State of California, United States of America, as if performed
wholly within the state and without giving effect to the principles of conflict
of law. The parties specifically disclaim the UN Convention on Contracts for the
International Sale of Goods. The exclusive jurisdiction and venue of any action
with respect to the subject matter of this agreement shall be the state courts
for the State of California for the County of Santa ▇▇▇▇▇ or the United States
District Court for the Northern District of California and each party submits
itself to the exclusive jurisdiction and venue of such courts for the purpose of
any such action.
13.2 Assignment. Neither this Agreement nor any rights under this
Agreement, other than monies due or to become due, shall be assigned or
otherwise transferred by either without the prior written consent of the other.
This Agreement shall bind and inure to the benefit of the successors and
permitted assigns of the parties.
13.3 Notices. All notices required or permitted under this Agreement
will be in writing and will be deemed given: (a) when delivered personally; (b)
when sent by confirmed facsimile (followed by the actual document in air
mail/air courier); (c) three (3) days after having been sent by registered or
certified mail, return receipt requested, postage prepaid (or six (6) days for
international mail); or (d) one (1) day after deposit with a commercial express
courier specifying next day delivery (or two (2) days for international courier
packages specifying 2-day delivery), with written verification of receipt. All
communications will be sent to the addresses set forth on the cover sheet of
this Agreement or such other address as may be designated by a party by giving
written notice to the other party pursuant to this paragraph.
13.4 No Agency. This Agreement does not create any agency, partnership,
joint venture or franchise relationship. Neither party has the right or
authority to, and shall not, assume or create any obligation of any nature
whatsoever on behalf of the other party or bind the other party in any respect
whatsoever.
13.5 Force Majeure. Except for the obligation to pay monies due and
owing, neither party shall be liable for any delay or failure in performance due
to events outside the defaulting party's reasonable control, including without
limitation acts of God, earthquake, labor disputes, shortages or supplies,
riots, war, fire, epidemics, or delays of common carriers or other circumstances
beyond its reasonable control. The obligations and rights of the excused party
shall be extended on a day to day basis for the time period equal to the period
of the excusable delay.
13.6 Waiver. No waiver of rights under this Agreement by either party
shall constitute a subsequent waiver of such right or any other right under this
Agreement.
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13.7 Compliance with Laws. ▇▇▇▇▇ shall obtain all licenses, permits and
approvals required by any government and shall comply with all applicable laws,
rules, policies and procedures of any government where the ▇▇▇▇▇ Products are to
be sold, used or deployed (collectively "Applicable Laws"). ▇▇▇▇▇ will indemnify
and hold harmless Cisco for any violation or alleged violation of any Applicable
Laws. ▇▇▇▇▇ hereby represents and warrants that: (a) it shall comply with all
Applicable Laws; (b) this Agreement and each of its terms are in full
conformance and in compliance with such laws; and (c) it shall not act in any
fashion or take any action which will render Cisco liable for a violation of the
U.S. Foreign Corrupt Practices Act, which prohibits the offering, giving or
promising to offer or give, directly or indirectly, money or anything of value
to any official of a government, political party or instrumentality thereof in
order to assist it or Cisco in obtaining or retaining business. ▇▇▇▇▇ shall use
its best efforts to regularly and continuously inform Cisco of any requirements
of laws, statutes, ordinances, governmental authorities directly or indirectly
affecting this Agreement, the sale, use and distribution of ▇▇▇▇▇ Products, or
Cisco's trade name, trademarks or other commercial, industrial or intellectual
property interests, including, but not limited to, certification of the ▇▇▇▇▇
Products from the proper authorities in the Territory.
13.8 Severability. In the event that any of the terms of this Agreement
become or are declared to be illegal or otherwise unenforceable by any Court of
competent jurisdiction, such term(s) shall be null and void and shall be deemed
deleted from this Agreement. All remaining terms of this Agreement shall remain
in full force and effect. Notwithstanding the foregoing, if this paragraph
becomes applicable and, as a result, the value of this Agreement is materially
impaired for either party, as determined by such party in its sole discretion,
then the affected party may terminate this Agreement by written notice to the
other.
13.9 Attorneys' Fees. In any suit or proceeding relating to this
Agreement, the prevailing party will have the right to recover from the other
its costs and reasonable fees and expenses of attorneys, accountants, and other
professionals incurred in connection with the suit of proceeding, including
costs, fees and expenses upon appeal, separately from and in addition to any
other amount included in such judgment. This provision is intended to be
severable from the other provisions of this Agreement, and shall survive and not
be merged into any such judgment.
13.10 Entire Agreement. This Agreement, the OEM Agreement, and the
Exhibits hereto constitute the entire agreement between the parties hereto with
respect to the subject matter of this Agreement and replaces any prior oral or
written communications between the parties. There are no conditions,
understandings, agreements, representations, or warranties, expressed or
implied, which are not specified herein. This Agreement may only be modified by
a written document executed by the parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed. Each party warrants and represents that its respective
signatories whose signatures appear below have been and are on the date of
signature duly authorized to execute this Agreement.
Cisco Systems, Inc. ▇▇▇▇▇ Corporation
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Signature: Signature:
By: By:
(Typed or Printed Name) (Typed or Printed Name)
Title: Title:
Date: Date:
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Exhibit A
1. CISCO PRODUCT
AXIS multiservice concentrator, 16-slot, rack mount, ASC, ASC-BC,
specifically:
Card cage
Fan tray/intake plenum
Exhaust plenum
Blank front card assemblies
DC entry
AC power supply
All cables: fan tray, power, BNM (coax and fiber, 1:1 and
"Y"), RS-232 CLI, etc.
2. DESIGN DOCUMENTATION
Cisco's ▇▇▇▇ of material for Cisco's Product and Cisco's schematics,
drawings and other design documentation required for the manufacture of Cisco's
Product.
3. ▇▇▇▇▇'▇ BOARDS
▇▇▇-▇-▇▇▇▇-▇▇
▇▇▇▇ in Cisco Terminology
