MASTER TECHNOLOGY DEVELOPMENT AGREEMENT
This Master Technology Development Agreement is entered into as of the 14
day of October, 1997, by and between fonix corporation, a corporation of the
State of Delaware having its principal place of business located at 0000 Xxxxx
Xxxx Tower, 00 Xxxx Xxxxx Xxxxxx Xxxxxx, Xxxx Xxxx Xxxx, Xxxx 00000 ("fonix"),
and Oregon Graduate Institute of Science and Technology, a non-profit
corporation and educational institution duly organized and existing under the
laws of the State of Oregon, with its principal place of business located at
00000 X.X. Xxxxxx Xxxx, Xxxxxxxxx, Xxxxxx 00000-0000 ("OGI"), acting through
its Oregon Graduate Institute of Science and Technology, Center for Spoken
Language Understanding ("CSLU").
1. Purpose and Scope of Agreement
fonix is engaged in research and development of automatic speech
recognition technologies, which technologies employ a proprietary phonetic
speech modeling engine and a linguistic and contextual process based on a
proprietary neural network system. CSLU is a center at OGI which has a
professional staff and graduate students with special training and research
skills in spoken language disciplines and which is also engaged in research and
development of automatic speech recognition technologies. fonix desires OGI to
perform certain development activities in order to develop and improve advanced
technologies in key areas of spoken language systems, which may include: (a)
robust speech recognition; (b) natural language understanding; (c) dialog
modeling; (d) text-to-speech synthesis; (e) multi-modal input/output; and (f)
advanced neural net architectures.
Therefore, from time to time fonix agrees to sponsor OGI, acting through
its CSLU, to perform work regarding certain concepts concerning the design and
implementation of spoken language computer systems and OGI agrees to provide the
results to fonix in accordance with the terms and conditions of this Agreement.
2. Organization
This Agreement contains terms and conditions for all work transactions
between fonix and OGI involving OGI's CSLU that are within the scope of this
Agreement. fonix and OGI intend that all individual work transactions that are
within the scope of this Agreement will be implemented through the individual
Statements of Work to be attached hereto as Exhibit X-0, X-0, X-0 and so on, as
they are mutually agreed to by the parties. As the parties identify future
development projects, they will execute Statements of Work, consecutively
numbered and attached to this Agreement.
Each of the parties agrees to appoint one individual to coordinate
development activities under this Agreement. fonix and OGI designate the
following individuals as their initial Coordinators under this Agreement. Each
party will advise the other in writing of any changes regarding its Coordinator.
The OGI Coordinator is: The fonix Coordinator is:
Xx. Xxxxxx X. Xxxx Xxxx Xxxxxxxx
Oregon Graduate Institute 0000 Xxxxx Xxxx Tower
of Science & Technology 00 Xxxx Xxxxx Xxxxxx Xxxxxx
00000 X.X. Xxxxxx Xxxx Xxxx Xxxx Xxxx, Xxxx 00000
Xxxxxxxxx, Xxxxxx 00000-0000 tel #: 000-000-0000
tel #: 000-000-0000 fax #: 000-000-0000
fax #: 000-000-0000
3. Control of Work
Control of the work will rest jointly with fonix and OGI. However, it is
agreed that fonix through its Coordinator, will have principal responsibility
and will maintain continuing communication with the OGI Coordinator. The
frequency and nature of these communications will be mutually defined by the
fonix and OGI Coordinators. Unless otherwise expressly agreed to in a Statement
of Work, the fonix Coordinator and/or fonix Project Manager shall have day-to-
day management responsibility for all fonix employees, contractors and agents
performing work under said Statement of Work. Similarly, the OGI Coordinator
and/or OGI Project Manager shall have day-to-day management responsibility for
all OGI staff members performing work under a Statement of Work.
4. Administration of a Statement of Work
Each Statement of Work shall be deemed to incorporate by reference all of
the provisions of this Agreement and, in the case of any inconsistency, this
Agreement shall be the controlling document.
4.1 Procedure for Entering into a Statement of Work. An individual
Statement of Work shall only become effective upon execution by
authorized representatives of both parties, duly authorized according
to institutional policy and procedure.
4.2 Identification of an Individual Statement of Work. Each individual
Statement of Work will be identified by a numerical or alphanumerical
sequence, as determined by the parties, its title and effective date,
such as, for example, "Statement of Work No. A-1 for ABC Research
Effective on 1/1/98".
4.3 OGI Key Personnel. During the Term, OGI shall make available and
assign Xxxxxx X. Xxxx and Xxxxxxxx Xxx, as its primary professional
staff members for work on Statements of Work. OGI shall also assign
such additional professional staff members and graduate students as
are reasonably necessary to complete each Statement of Work pursuant
to its terms. The Coordinators at fonix and OGI shall advise
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individual staff members and graduate students at fonix and OGI of
their respective assignments and provide them with copies of the
proposed Statement of Work, as appropriate.
4.4 Required Contents of Each Statement of Work. Each Statement of Work
shall contain (or incorporate as attachments or by reference):
4.4.1 A reference to this Agreement by name and date of execution.
This reference shall act to incorporate the terms of this
Agreement into the Statement of Work unless the Statement of
Work explicitly states otherwise.
4.4.2 A title identifying the Statement of Work, an effective date
upon which the Statement of Work becomes effective between the
parties, dates for completion of "milestones" and the date of
completion and transfer of Deliverables.
4.4.3 A brief description of the scope of work of the Statement of
Work.
4.4.4 A list of all Intellectual Property Rights of fonix and/or OGI
which may be the subject of the development or other work to be
performed pursuant to the Statement of Work.
4.4.5 Description of fonix's responsibilities, including work or
services to be performed, staff members assigned and schedules
for any development or delivery.
4.4.6 Description of OGI's responsibilities, including work or
services to be performed, staff members assigned and schedules
for any development or delivery.
4.4.7 Description or specification of any Deliverables.
4.5 Optional Contents of Each Statement of Work. In addition, a Statement
of Work may contain (or incorporate as attachments or by reference):
4.5.1 Provision for progress reports by the Project Manager(s).
4.5.2 Additional specifications, such as acceptance criteria,
documentation specifications and standards, quality standards,
performance specifications, or usability and architecture
requirements.
4.5.3 Resource requirements, such as training or assignment of key
personnel.
4.5.4 Special term or termination provisions.
4.5.5 A list of some or all of the Confidential Information to be
disclosed by fonix and/or OGI in connection with the Statement
of Work.
4.5.6 Other appropriate terms.
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4.6 Project Managers. Unless otherwise specified in a Statement of Work,
each party's Project Manager shall be responsible for managing that
party's performance under the Statement of Work and for all necessary
coordination with the other party's Project Manager. Each party's
Project Manager will provide periodic progress reports to the other
party's Project Manager and will promptly respond to reasonable
requests of the other party for reports. Each party will advise the
other in writing of any change regarding its Project Manager.
5. Definitions
As used in this Agreement, the following terms shall have the following
respective meanings:
5.1 "Affiliate" shall mean a party that controls, is controlled by, or is
under common control with a party, including but not limited to
subsidiaries, parents and sister corporations.
5.2 "Code" shall mean computer programming code. Unless specifically
agreed otherwise, Code shall include Executable Code, Object Code and
Source Code.
5.3 "Source Code" shall mean the human-readable form of the Code and
related system documentation, including all comments and any
procedural language.
5.4 "Object Code" shall mean the Code that results when Source Code is
processed by a software compiler, but is not Executable Code.
5.5 "Executable Code" shall mean Code that loads and executes without
further processing by a software compiler or linker.
5.6 "Confidential Information" shall mean that information which a
disclosing party desires to protect against unrestricted disclosure or
use by the receiving party (the "Recipient"). Confidential Information
shall not include any information that is (i) already in the
possession of the Recipient without obligation of confidence; or (ii)
independently developed by the Recipient, as evidenced by written
records; or (iii) becomes available to the general public without
breach of this agreement; or (iv) rightfully received by the Recipient
from a third party without obligation of confidence; or (v) released
for disclosure by the disclosing party with its prior written consent.
5.7 "Deliverables" shall mean any work product or material procured or
prepared by OGI and required to be delivered to fonix by virtue of
their description or specification as a Deliverable in a Statement of
Work. Whether or not actually delivered, Deliverables shall in all
cases include all programming, documentation, media and other objects
identified as Deliverables in the Statement of Work.
5.8 "Derivative Work" shall mean a work which is based on one or more pre-
existing works (such as a revision, enhancement, modification,
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translation, abridgement, condensation, expansion, or any other form
in which such pre-existing work may be recast, transformed, or
adapted) and which, if prepared without authorization of the copyright
owner of such pre-existing work, would constitute copyright
infringement under U.S. law.
5.9 "Intellectual Property Rights" shall mean (i) all rights, title and
interests in all letters of patent and application for letters of
patent including any reissue, division, continuation or continuation-
in-part applications throughout the world now or hereafter, (ii) all
rights, title and interest in all trade secrets, and all trade secret
rights and equivalent rights arising under the common law, state law,
federal law and laws of the foreign countries; (iii) all rights, title
and interests in all mask works, copyrights and copyrighted interests,
and all mask work, rights, copyright rights and other literary
property or authors rights, whether or not protectable by copyright or
as a mask work; and (iv) all rights, title and interests in any and
all know-how and show-how, whether or not patentable, copyrightable or
protectable by trade secret.
5.10 "Invention" shall mean any idea, design, concept, technique,
invention, discovery or improvement whether or not patentable, that is
conceived and reduced to practice by one or more of the inventing
party's employees.
5.11 "Joint Invention" shall mean any idea, design, concept, technique,
invention, discovery or improvement, whether or not patentable, that
is conceived and reduced to practice by employees, independent
contractors or agents of both parties and which arises out of the
performance of a Statement of Work under this Agreement.
5.12 "Residuals" means generalized information which may be retained in
non-tangible form by persons who have worked on a Statement of Work or
have had access to Confidential Information, including without
limitation general ideas, concepts, know-how or techniques contained
therein.
5.13 "Technology" shall mean the Intellectual Property Rights pertaining to
Deliverables. "Technology" shall not include any fonix Confidential
Information, and shall not incorporate fonix Confidential Information
in either an explicit or inherent manner.
6. Term and Termination
Each Statement of Work shall be deemed to incorporate by reference this
Section 6 unless the Statement of Work explicitly states otherwise.
6.1 Term of Agreement. This Agreement shall be effective upon the date
specified at the beginning of this Agreement, and shall remain in
force for a period of twelve (12) months, unless otherwise terminated
as provided in Section 6.3. Such term may be extended upon written
agreement of both parties.
6.2 Statement of Work.
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6.2.1 Term of a Statement of Work. Each Statement of Work shall
become effective upon its full execution and shall continue in
effect for the term specified in the Statement of Work unless
earlier extended, terminated by mutual written agreement of the
parties, terminated in accordance with its provisions, or
terminated for cause in accordance with Section 6.3 below. In
the event that a Statement of Work fails to contain a term, the
Statement of Work shall be deemed to have a term of one (1)
year.
6.2.2 Earlier Termination of the Agreement. A termination of the
Agreement shall have no effect upon a Statement of Work that is
itself still in effect.
6.3 Termination for Cause. Either party may terminate this Agreement or a
Statement of Work for the substantial breach by the other party of a
material term. The terminating party shall first give the other party
written notice of the alleged breach and a period of sixty (60) days
in which to cure the alleged breach.
6.4 Survival of Terms. In the event of a termination of the Agreement or a
Statement of Work, all obligations of confidentiality (including those
specified in Section 7) shall continue in effect in accordance with
their terms. In addition, the terms of Section 8 (Ownership and
Licensing), Section 10 (Warranty), Section 11 (Limitation of
Liability) and Section 12 (Product Liability and General
Indemnification) shall continue in effect in accordance with their
terms.
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7. Confidentiality and Information Exchange
It is the intention of OGI and fonix to transfer and/or exchange
information, including Confidential Information, as may be necessary under the
Statements of Work. Such information may be disclosed in oral, visual, or
written form (including magnetic media).
7.1 The Recipient of Confidential Information under a Statement of Work
shall make use of the Confidential Information only for the purposes
of that Statement of Work and for no other purpose.
7.2 The Recipient shall protect the disclosed Confidential Information by
using the same degree of care, but no less than a reasonable degree of
care, to prevent the unauthorized use, dissemination, or publication
of the Confidential Information as the Recipient uses to protect its
own Confidential Information of a like nature. Such protection shall
include, at a minimum, that all fonix and OGI individuals working on
any Statement of Work shall execute and deliver to the other party a
blanket non-disclosure agreement in the form attached hereto as
Exhibit B. Such non-disclosure agreement shall require OGI and fonix
personnel not to disclose information relating to, concerning or in
any fashion resulting from the Statement of Work to a third party
without the prior written approval of fonix.
7.3 Except as set forth in Section 7.4 below, the Recipient's obligations
shall only extend to Confidential Information that is marked as
confidential at or before the time of disclosure or that is unmarked
(e.g., orally disclosed) but is treated as confidential at the time of
disclosure and is designated as confidential in a written memorandum
sent to the Recipient's Project Manager within thirty (30) days of
disclosure, summarizing the Confidential Information sufficiently for
identification.
7.4 Without written notice of confidentiality at any time subsequent
hereto, OGI agrees to treat all Code and related system documentation
received under a Statement of Work (or developed from Source Code
received under a Statement of Work) as confidential information for
the purposes of this Section 7. OGI agrees not to reverse engineer the
binary code of fonix to discover the Source Code.
7.5 The parties hereby acknowledge that a party's unauthorized disclosure
or use of Confidential Information belonging to the other party will
cause substantial and irreparable injury to the other party, and that
each party is therefore entitled to, in addition to any other
available remedies, injunctive and other equitable relief for any
actual or threatened improper disclosure or use of its Confidential
Information.
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8. Ownership and Licensing
8.1 Ownership. Subject to this Section 8, all rights, title and interests
in Intellectual Property Rights in the Technology and any Joint
Inventions, Inventions and patents arising from the development and
other work (including any research) conducted under this Agreement,
are and shall remain jointly owned by OGI and fonix. Each party shall
have full and unrestricted rights (i) with respect to Deliverables in
the form of Code, to use, execute, perform, reproduce, prepare or have
prepared Derivative Works based upon, display, market and distribute
copies by sale, license or lease, or otherwise transfer possession or
ownership of copies of such Deliverables and Derivative Works of such
Deliverables, and distribute internally and/or externally, sell,
license, lease, or otherwise transfer any such Deliverables of
Derivative Works thereof; and (ii) with respect to Deliverables not in
the form of Code, to reproduce, modify, market, distribute and use
such Deliverables as such party's product or service, or in the
development, duplication, distribution and/or marketing of any product
or service, whether such product or service is made available directly
or indirectly. The foregoing includes, without limitation, copyrights
in and to pictorial, graphic or audio/visual works, including icons,
screens, music and characters created as a result of execution of Code
or any Derivative Works thereof; and all Inventions, patents and
patent applications arising out of the Technology. Each party may
retain all proceeds and profits arising out of its activities
described above, with no duty to account for such proceeds or to share
them with the other party.
8.2 Derivative Works of OGI. Notwithstanding any other provision of this
Agreement, if any Invention or other Intellectual Property Right
developed pursuant to this Agreement is a Derivative Work of software
programs, technology, Confidential Information or other materials
owned by OGI, OGI shall have sole ownership of such Derivative Work
and all patent, copyright and other intellectual property rights with
respect thereto. fonix shall assign to OGI all of its right, title and
interest in and to such Derivative Works and shall execute any
documents reasonably requested by OGI to evidence or perfect such
assignment. OGI grants to fonix a nonexclusive, worldwide, royalty-
free, fully-paid and irrevocable license under copyrights and patents
arising out of such Derivative Works to use internally and/or
externally, sell, license, lease or otherwise transfer such Derivative
Works. OGI shall also solely own all right, title and interest in and
to all Derivative Works of the Technology prepared, developed or
created by OGI or pursuant to its direction, without substantial
participation of fonix.
8.3 Derivative Works of fonix. Notwithstanding any other provision of this
Agreement, if any Invention or other Intellectual Property Right
developed pursuant to this Agreement is a Derivative Work of software
programs, technology, Confidential Information or other materials
owned by fonix, fonix shall have sole ownership of such Derivative
Work and all patent, copyright and other intellectual property rights
with respect thereto. OGI shall assign to fonix all of its right,
title and interest in and to such Derivative Works and
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shall execute any documents reasonably requested by fonix to evidence
or perfect such assignment. fonix grants to OGI a nonexclusive,
worldwide, royalty-free, fully-paid, irrevocable and nontransferable
license under copyrights and patents arising out of such Derivative
Works to use such in its Toolkit, as more fully described in Section
8.5. fonix shall also solely own all right, title and interest in and
to all Derivative Works of the Technology prepared, developed or
created by fonix or pursuant to its direction, without substantial
participation of OGI.
8.4 Patent Immunity. Subject to Section 8, each party grants to the other
party, and recipients of Deliverables leased, licensed, sold or
otherwise transferred (either directly or indirectly) by such other
party or any of its sublicenses, an immunity from suit under patents
arising out of the Technology or otherwise out of this Agreement.
8.5 CSLU Toolkit. CSLU has developed a software program known as the "CSLU
Toolkit" which it has and does make available to its members for use
in designing and developing spoken language products. In addition to
use of Intellectual Property Rights in the Technology and Joint
Inventions (which may be freely used by either party, as stated in
Section 8.1 above), CSLU may incorporate Derivative Works of fonix (as
described in the first sentence of Section 8.3 hereof) into its
Toolkit only for non-commercial use and application. In that regard,
CSLU shall take such steps as are necessary and to the reasonable
satisfaction of fonix to prevent any CSLU member from gaining access
to or otherwise using any Derivative Works of fonix for commercial
purposes.
8.6 Freedom of Use. Notwithstanding anything to the contrary set forth in
this Agreement (but expressly excluding the limitations and
restrictions set forth in Section 8.3 hereof), either party shall be
free to use for any purposes the Residuals resulting from access to or
work with Confidential Information. However, the foregoing does not
give either party the right to disclose the financial, statistical, or
personnel information or the business plans of the other party, and
the foregoing shall not be deemed to grant to either party a license
under the other party's copyrights or patents. Neither party shall
have any obligation to limit or restrict the assignment or
reassignment of personnel.
8.7 Survival. This Section 8 and related definitions shall survive the
termination of this Agreement for any reason whatsoever.
9. Consideration.
In consideration of the services provided by OGI to fonix under the initial
Statements of Work, fonix agrees to pay to OGI the amount of one hundred
thousand dollars ($100,000). Such amount shall be payable in quarterly
increments of twenty-five thousand dollars ($25,000), with the initial payment
due within one (1) week of the execution of this Agreement, and each subsequent
payment due and payable three (3) months thereafter. Payments are to be made
and delivered to: Oregon Graduate Institute of Science & Technology, Center for
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Spoken Language Understanding, 00000 X.X. Xxxxxx Xxxx, Xxxxxxxxx, Xxxxxx 97291-
1000.
10. Limited Warranty
10.1 OGI represents and warrants that it either is the owner of all rights,
title and interests, including Intellectual Property Rights, in the
Technology, or that it has the right to use and sublicense the use of
the Technology in accordance with the terms and conditions set forth
in this Agreement. OGI makes no representation that the duplication,
use, lease, sale, license or sublicense of the Technology by fonix
will not infringe a copyright or patent granted to others. However,
OGI does represent and warrant that it shall take reasonable and
necessary steps to avoid contamination of the Technology with the
intellectual property rights of third parties by requiring each
participating Project Manger to complete in good faith an Intellectual
Property Rights Questionnaire in the form attached hereto as Exhibit
C, for delivery to fonix at the completion of the research identified
in the Statements of Work.
10.2 fonix represents and warrants that, to the best of its knowledge, it
either is the owner of all rights, title and interests including
Intellectual Property Rights in any technology which it may provide to
OGI under this Agreement, or that it has the right to use and
sublicense the use of such technology in accordance with the terms and
conditions set forth in this Agreement. fonix makes no representation
that the duplication, use, lease, sale, license or sublicense of the
Technology by OGI will not infringe a copyright or patent granted to
others.
10.3 THE WARRANTIES AND REPRESENTATIONS SET FORTH IN SECTION 10 AND 11 OF
THIS AGREEMENT ARE EXPRESSLY IN LIEU OF ALL OTHER UNDERSTANDINGS,
AGREEMENTS, REPRESENTATIONS OR WARRANTIES NOT EXPRESSLY SET FORTH IN
THIS AGREEMENT, WHETHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED
TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
11. Limitation of Liability
Under no circumstances shall either party be liable to the other for any
indirect or consequential damages whatsoever, including, but not limited to,
loss of profits or for any claim or demand made by a third party against either
party arising out of the performance of this Agreement, except as specifically
set forth in Section 12. No action, regardless of form, arising out of the
performance of this Agreement, may be brought by either party more than four (4)
years after the cause of action is discovered.
12. Product Liability and General Indemnification.
12.1 OGI does not warrant the Technology and the parties to this Agreement
agree and understand that OGI shall have no liability to an end user
or otherwise. fonix, therefore, agrees to hold OGI harmless and
indemnify OGI, its trustees, officers, employees and agents from and
against any and all litigation, claims, damages or actions (including
reasonable attorney's fees) that may be
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instituted against OGI arising out of fonix's marketing, distribution,
sale, production, manufacture, lease, consumption or advertisement of
the Technology including, but not limited to, claims resulting from
any alleged type of defect in the Technology or damages allegedly
caused by any breach of contract by fonix and its affiliates or the
use or misuse of the Technology, notwithstanding any third-party
allegation that their claims, injuries or damages were proximately
caused in part or wholly by OGI's negligence. In such event, fonix
agrees to defend OGI at fonix's sole expense in such action. Should
any award or decree be made against OGI, it shall be the obligation of
fonix to (a) appeal the decision and pay if the appeal is lost or (b)
pay such award or make any settlement as may be warranted before or
after the decision on appeal. OGI may, at its own option, conduct its
own defense in such actions at its own expense.
12.2 fonix does not warrant the technology, services or materials provided
to OGI pursuant to this Agreement. OGI, therefore, agrees to hold
fonix harmless and indemnify fonix, its trustees, officers, employees
and agents from and against any and all litigation, claims, damages or
actions (including reasonable attorney's fees) that may be instituted
against fonix arising out of OGI's use, marketing, distribution, sale,
production or licensing (non-commercial or otherwise) of the
Technology including, but not limited to, claims resulting from any
alleged type of defect in the Technology or damages allegedly caused
by any breach of contract by OGI or the use or misuse of the
Technology, notwithstanding any third-party allegation that their
claims, injuries or damages were proximately caused in part or wholly
by fonix's negligence. In such event, OGI agrees to defend fonix at
OGI's sole expense in such action. Should any award or decree be made
against fonix, it shall be the obligation of OGI to (a) appeal the
decision and pay if the appeal is lost or (b) pay such award or make
any settlement as may be warranted before or after the decision on
appeal. fonix may, at its option, conduct its own defense in such
actions at its own expense.
12.3 Each party's indemnification obligations are subject to (a) receipt of
prompt notice such that the indemnifying party will not be unduly
prejudiced by any delay, and (b) the good faith cooperation of the
party to be indemnified. Each party shall immediately notify the other
of any litigation in which it, its officers or its directors, agents
or employees may be involved if there is a reasonable possibility that
this Agreement or the other party will be affected. The parties agree
to cooperate with each other and keep each other fully informed with
respect to all proceedings.
13. Delivery of Technology
OGI shall fully disclose and deliver to fonix all Technology arising out of
the work, development, research and experimentation conducted by OGI under this
Agreement, as implemented in Statements of Work. The Technology delivered to
fonix under this Agreement shall be in such forms as shall be necessary for
fonix to make, install, operate, modify, correct, enhance and extend the
Technology.
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14. Disclosure of this Agreement
Neither party shall refer to or use the name of the other party in any
publication, news release or promotion without the prior consent of the other
party. Each party shall use best efforts not to disclose to any third party the
terms and conditions of this Agreement during its Term, except as required by
law, or by order of a court of competent jurisdiction, or as may be required to
establish or assert its rights hereunder. Notwithstanding the above, fonix
hereby grants the right and encourages OGI to refer to fonix in OGI's
publications as a sponsor of the work conducted under this Agreement.
15. Independent Development
Nothing contained in this Agreement shall prevent fonix from entering into
research projects with third parties which are similar to the development or
other work which is the subject of this Agreement, or from independently
developing (either through third parties or through the use of its own
personnel), or from acquiring from third parties, technologies or products which
are similar to and competitive with Technology. Nothing herein shall be
construed to xxxxx XXX any rights in any such technologies or products so
developed or acquired, or any rights to the revenues or any portion thereof
derived by fonix from the use, sale, lease, license or other disposal of any
such technologies or products. Furthermore, nothing herein shall preclude fonix
from transferring any such technologies or product to others.
Neither OGI nor any person working on the Statement of Work as an employee,
contractor or agent of OGI shall enter into any projects with any third
parties, excepting federal, state or local governmental units or agencies, the
results of which may reasonably be anticipated to have a material harmful effect
upon the Inventions, Intellectual Property Rights and/or business prospects of
fonix, during the term hereof or for eighteen (18) months thereafter. In the
event that OGI desires to engage in a project which may violate the covenant set
forth in the previous sentence, OGI shall promptly give notice thereof to fonix
in detail sufficient for fonix to analyze the basis whereby OGI believes that
said research project may have a material harmful effect upon fonix. fonix
shall promptly review the notice and all accompanying material supplied by OGI.
OGI covenants and agrees that it will not enter into the proposed research
project if fonix determines that the proposed research project would violate the
covenant set forth in the first sentence of this section. fonix shall not
unreasonably withhold its approval of any proposed third party project.
16. Taxes
OGI shall pay all taxes, if any, arising from the consideration paid by
fonix to OGI. Each party shall otherwise be responsible for and shall pay all
other taxes arising solely from its performance under this Agreement.
17. Personal Services
17.1 By OGI Coordinator. During the Term, OGI shall cause the OGI
Coordinator to render personal services (a) in various industry
programs, seminars and similar events annually to be scheduled
mutually with fonix. The OGI Coordinator will appear as a
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representative of CSLU and/or fonix, as mutually agreed by OGI and
fonix, for the purpose of promoting, discussing and/or endorsing the
Technology; and (b) at various presentations of papers or articles
concerning the Technology prepared by (either individually or with
others) the OGI Coordinator, as mutually agreed by the OGI Coordinator
and fonix. In each case, the presentation, paper or article to be
delivered shall be approved by fonix in advance. For such appearances,
OGI shall be paid $500.00 per day by fonix.
17.2 By OGI Professional Staff. During the Term, OGI shall cause members of
its professional staff to be available to fonix pursuant to the terms
of individual consulting agreements. Messrs. Xxxx and Yan shall be
available at least two (2) days per month on terms mutually agreeable
to those parties.
18. DARPA Competition. CSLU is preparing an entry for the November, 1997 "HUB4
Broadcast News" Evaluation sponsored by the Defense Advanced Research Project
Agency ("DARPA Competition"). CSLU will use its best efforts to complete its
entry for and actively participate in the DARPA Competition. At the option of
fonix, the entry of CSLU in the DARPA Competition shall be credited jointly to
CSLU and fonix.
19. fonix Center Membership to CSLU. fonix or an Affiliate shall make a
supplemental Center Membership payment of $200,000 corresponding to the fonix
annual membership period May 16, 1997 through May 15, 1998. The supplemental
payment shall be paid in two (2) equal installments of $100,000, with the first
payment due on the last day of the calendar quarter after the date of execution
of this Agreement and the second payment due six (6) months thereafter.
20. Construction.
20.1 Order of Precedence. In the event of any conflict between this
Agreement and a Statement of Work, the terms of the Agreement shall
control. In the event of any conflict between this Agreement or a
Statement of Work and any purchase order or acknowledgment, this
Agreement or the Statement of Work shall take precedence over any
written or typed instructions in an written or electronic purchase
order or acknowledgment.
20.2 Headings & Gender. The headings in this Agreement and in a Statement
of Work are provided for reference only and shall not be used as a
guide to interpretation. When used in this Agreement or in a Statement
of Work, the singular includes the plural and the plural includes the
singular, and gender related pronouns include the feminine, masculine
and neuter.
20.3 References. References to a specific Section of this Agreement or in a
Statement of Work shall be deemed to include within the scope of the
reference all subsections depending therefrom. By way of example, a
reference to Section 5 shall be deemed to include a reference to
Section 5.1.
20.4 Severability. If any provision of this Agreement or a Statement of
Work is held in arbitration or by a court of competent jurisdiction to
be invalid, illegal or unenforceable, the remaining provisions
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shall remain in full force and effect and shall be interpreted, to the
extent possible, to achieve the purpose of this Agreement and any
affected Statements of Work as originally expressed.
20.5 Conflict Resolution. The parties agree that with respect to any
controversy or claim arising out of or relating to this Agreement or
the breach of this Agreement they shall attempt in good faith to
resolve such claim or controversy by negotiations between the parties.
In the event that either party believes that the negotiation
discussions are not likely to lead to settlement, the parties must
participate in good faith in at least one mediation session with a
professional mediator knowledgeable in the industry mutually selected
by the parties, the expense of which shall be paid fifty percent (50%)
by each party. With respect to disputes concerning ownership issues or
improper disclosure or use of Confidential Information which are not
resolved in mediation, the dispute will be resolved in a court of
appropriate jurisdiction. After one or more mediation sessions
involving any other issue, either party may elect to resolve the
dispute through final and binding arbitration in Salt Lake City, Utah.
In such case, each party shall appoint an arbitrator and a third
arbitrator shall be appointed by mutual agreement of the two chosen
arbitrators. All arbitrators must be knowledgeable in the software
industry. Otherwise, the procedure governing the arbitration process
shall be in accordance with the Rules of the American Arbitration
Association or such other process as is mutually agreeable to the
parties and reduced to writing. This Agreement shall be enforceable by
law and the judgment or any award made by the arbitrators may be
entered in any court having appropriate jurisdiction. The prevailing
party in any arbitration or judicial action shall be entitled to its
reasonable costs and attorneys' fees from the non-prevailing party.
20.6 Entire Agreement. This Agreement, including the Statements of Work
agreed to by both parties, sets forth the entire agreement and
understanding between the parties as to its specific subject matter
and merges all prior discussions between them with regard to such
specific subject matter. Neither of the parties shall be bound by any
conditions, definitions, warranties, understandings, agreements, or
representations, whether written or oral, with respect to such
specific subject matter other than as expressly provided herein or in
a Statement of Work or as duly set forth on or subsequent to its
effective date, in a written document that is signed by a duly
authorized representative of each party.
20.7 Governing Law. The validity, construction, and performance of this
Agreement and the Statements of Work will be governed by the
substantive law of the State of Utah without regard to any choice of
law provisions. Each party shall, at its own expense, comply with any
governmental law, statute, ordinance, administrative order, rule or
regulation relating to its duties, obligations or performance under
this Agreement and the Statements of Work.
21. Independent Contractors
Each party is and shall remain an independent contractor with respect to
all performance under this Agreement and the Statements of Work. No employee of
either party shall be considered an employee or agent of the other party for any
purpose. Each party assumes sole responsibility for the supervision, daily
14
direction and control, payment of salary (including withholding of income taxes
and social security), worker's compensation, disability benefits and the like of
its employees or agents.
22. Export of Technical Data
Neither party will knowingly export or re-export or cause to be exported or
re-exported, directly or indirectly, any materials or any items licensed or
developed under a Statement of Work or technical information or direct product
thereof received from the other party to any country for which the United States
government, or any agency thereof, requires an export license or other
government approval at the time of such export without first obtaining any
required license or approval. Each party will reasonably cooperate with the
other party in obtaining such licenses or approvals.
23. Notices
All notices to a party under this Agreement or a Statement of Work shall be
delivered to that party's Coordinator at the address stated in Section 2 above.
All notices required or permitted to be given under this Agreement or a
Statement of Work shall be in writing. A notice shall be validly given upon the
earlier of confirmed receipt by the recipient's Coordinator or seven (7) days
after deposit, postage prepaid, with the U.S. Postal Service as first class
mail. Notices may be delivered by telefax or by courier and shall be validly
given upon confirmed receipt by the recipient's Coordinator or Project Manager,
as stated above.
A copy of all notices shall be sent to the following or their designees:
15
OGI: fonix corporation:
Xx. Xxxxxx X. Xxxx Xxxxxx X. Xxxxxxx, President
Professor and Center Director fonix corporation
Oregon Graduate Institute 0000 Xxxxx Xxxx Tower
of Science & Technology 00 Xxxx Xxxxx Xxxxxx Xxxxxx
00000 X.X. Xxxxxx Xxxx Xxxx Xxxx Xxxx, Xxxx 00000
Xxxxxxxxx, Xxxxxx 00000-0000 tel #: 000-000-0000
tel #: 000 000-0000 fax #: 000-000-0000
fax #: 000 000-0000
With A Copy To:
Durham, Evans, Xxxxx & Xxxxxxx
00 Xxxxx Xxxx Xxxxxx, Xxxxx 000
Xxxx Xxxx Xxxx, Xxxx 00000
Attn: Xxxxxxx X. Xxxxx
tel #: 000-000-0000
fax #: 000-000-0000
IN WITNESS WHEREOF, the parties hereto have as of the effective date first
above written duly executed this Master Technology Development Agreement in
duplicate by their respective duly authorized representatives.
Oregon Graduate Institute of Science fonix corporation
and Technology
Signature /s/ Xxxxxx X. Xxxxxxx Signature /s/ Xxxxx Xxxxxx
Print Name Xxxxxx X. Xxxxxxx Print Name Xxxxx Xxxxxx
Title Executive Vice President Title Executive Vice President
Date 10/22/97 Date 14 October 1997
16
