TI/IAT
Page 1 of 7
05/21/97
License Agreement #122317
EXHIBIT 10.2
LICENSE AGREEMENT
This Agreement ("Agreement") is entered into by and between the Semiconductor
Group of TEXAS INSTRUMENTS INCORPORATED, a Delaware Corporation with its
offices at 0000 Xxxxxx Xxxx, X/X 0000, Xxxxxx, Xxxxx 00000 ("TI" herein), and
IAT AG with principal offices at IAT AG, Geschaftshaus Wasserschloss,
Xxxxxxxxxxx 00, CH5300 Votgelsang-Turgi, Switzerland ("LICENSEE" herein).
1. PURPOSE AND SCOPE
For the purpose of assisting LICENSEE in its development of products for
use with TI's TMS320C8X product family, TI agrees to deliver to LICENSEE the
software product(s) and related documentation described as Licensed Products
in Schedule 1 (collectively referred to as "Licensed Product"). LICENSEE
wishes to combine the Licensed Product with a video telephony platform that
will run with one or more of TI's 320C8x product family. The aforementioned
platform will be used and will be licensed to OEMs and/or sold to end user
customers. LICENSEE agrees that such Licensed Product shall be used solely in
conjunction with systems designed exclusively for one of TI's 320C8x product
family, and that such use shall be subject to the terms and conditions of
this Agreement.
2. TITLE
TI represents that it has the rights to grant the license to the Licensed
Product. Nothing contained in this Agreement shall be construed as
transferring any right, title, or interest in the Licensed Product to
LICENSEE except as expressly set forth herein.
3. LICENSE AND OBLIGATIONS
3.1 TI grants to LICENSEE, only under TI's copyrights and trade secrets, a
non-transferable, non-assignable, non-exclusive license solely to use,
modify, compile, or otherwise develop as applicable, a software program
("Modified Application Program"), which may be original or derivative with
respect to the Licensed Product, for use solely in conjunction with systems
designed exclusively for TI's 320C8X product family.
3.1.1 LICENSEE may make one copy of the Licensed Product for internal
back-up purposes. LICENSEE agrees that as a condition for obtaining its
rights hereunder, each copy of the Licensed Product, or any portion thereof
or documentation therefor, shall contain a valid copyright notice and any
other proprietary notices, including the copyright notices of TI and/or TI's
suppliers, which appear on or in the Licensed Product and documentation
delivered to LICENSEE hereunder or as TI may require from time to time, in
order to protect TI's copyright and other ownership interests. Presence of a
copyright notice does not constitute an acknowledgment of publication.
LICENSEE shall reproduce on the copy of the Licensed Product, and on all
copies of the Modified Application Program, all copyright notices and any
other proprietary notices exactly as and where they appear on the Licensed
Product delivered, or as closely as possible where a change in media
precludes exact reproduction.
3.1.2 LICENSEE shall maintain any source code of the Licensed Product as
confidential, and shall not disclose, distribute, or disseminate any such
source code to any third parties.
3.2 LICENSEE is expressly prohibited from reverse compiling, reverse
assembling, and reverse engineering any portion of the Licensed Product
provided in object format.
TI/IAT
Page 2 of 7
05/21/97
License Agreement #122317
3.3 TI grants to LICENSEE under only TI's copyrights and trade secrets, a
non-transferable, non-assignable, non-exclusive license solely to copy and
distribute only object code versions of the Modified Application Program for
use solely in conjunction with systems designed exclusively for TI's 320C8X
product family.
3.3.1 LICENSEE shall ensure that all sublicensees must reproduce on every
copy made, all copyright notices and any other proprietary notices exactly as
and where they appear on the Licensed Product delivered, or as closely as
possible where a media change precludes reproduction.
3.3.2 LICENSEE shall ensure that all sublicensees are expressly prohibited
from reverse compiling, reverse assembling, and reverse engineering the
Licensed Product or the Modified Application Program.
3.3.3 LICENSEE shall ensure that all sublicensees restrict their end users
by written agreement from copying, modifying, distributing, reverse
engineering and reverse assembling or reverse compiling the Licensed Product
or the Modified Application Program, except that end users may make one (1)
copy for back-up purposes only.
3.4 LICENSEE shall ensure that all of its end users are restricted by
written notice from copying, modifying, distributing, reverse engineering and
reverse assembling or reverse compiling the Licensed Product or the Modified
Application Program.
3.6 LICENSEE agrees that it will not disclose any portion, or all of the
Licensed Product or the accompanying documentation in any form to any
employees, with the exception of employees (i) who require access thereto for
a purpose authorized by this Agreement and (ii) who have signed an
appropriate employee agreement committing them to abide by the obligations
and restrictions in this Agreement or who are otherwise required to maintain
confidentiality of information hereunder pursuant to an enforceable written
agreement that requires such employee to use the same degree of care, but no
less than a reasonable degree of care, as the LICENSEE uses to protect its
own similiar confidential information, and to prevent any use not authorized
herein, dissemination to any employee of LICENSEE without a need to know,
communication to any third party or publication of the confidential
information.
3.7 LICENSEE shall ensure that the same degree of care is used to prevent
the unauthorized use, dissemination, or publication of the Licensed Product
as Licensee uses to protect its own confidential information, but in no event
shall the safeguards for protecting such Licensed Product be less than a
reasonably prudent business would exercise. Such safeguards, shall include at
a minimum, storage of Licensed Product in a secure, locked area when not in
use, LICENSEE shall prevent unauthorized use or disclosure of Licensed
product by its employees, including those who have access to the Licensed
Product.
3.7.1 LICENSEE's employees who have access to the Licensed Product shall
be instructed to copy Licensed Product only as permitted under this Agreement
and to disclose Licensed Product only to other employees of LICENSEE that
LICENSEE has authorized to have access to the Licensed Product.
TI/IAT
Page 3 of 7
05/21/97
License Agreement #122317
3.7.2 Source code of Licensed Product shall be handled, used, and stored
under appropriately controlled passwords and shall be used solely at the
LICENSEE's site(s) listed below Agreement, and only on the following
designated CPU: Serial Number:_____________, Make: Sun Spark Server, Model:
1000E. LICENSEE may change this designated CPU by providing written notice to
TI at the address below, within thirty (30) days of such change:
Texas Instruments Incorporated
X.X. Xxx 0000, X/X 000
Xxxxxxx, XX 00000
3.8 LICENSEE recognizes and acknowledges all TI's claim(s) to techniques,
algorithms, and processes contained in the Licensed Product which have been
developed, acquired, or licensed by TI, or any modification or extraction
thereof, constitute trade secrets of TI and/or its suppliers, and will be
used by LICENSEE only in accordance with the terms of this Agreement.
LICENSEE will take all measures reasonably required to protect the
proprietary rights of TI and its suppliers in the Licensed Product and will
promptly notify TI of any lost or missing items and take all reasonable steps
to recover such items.
3.9 If LICENSEE engages in a Clone Product development or marketing of a
LICENSEE created product having capabilities that are similar to those
provided by the Licensed Product or TI's 320C8X product family ("Clone
Product" herein), during the term of this Agreement, LICENSEE shall ensure
that there is no sharing with the Clone Product development of (i) the
Licensed Product or (ii) any laboratory, office or research facilities
containing Licensed Product. LICENSEE shall not use any TI trademarks in
association with any Clone Product. The provisions of this Paragraph 3.10
shall survive the termination, cancellation or expiration of this Agreement
for a period of twelve (12) months after the Licensed Product is returned to
TI or destroyed.
3.10 LICENSEE shall maintain reasonable documentation sufficient to
identify all employees, Contractors, all employees of such Contractors, or
other third parties who are proposed to have access to the source code of
Licensed Product.
3.11 During the term of this Agreement and for a period of eighteen (18)
month thereafter, TI or its authorized representatives, upon advance written
notice, shall have access to such portion of LICENSEE's records as is
necessary to allow TI to determine whether LICENSEE is substantially in
compliance with this Agreement. In no event shall audits be made hereunder
more frequently than every six (6) months. Such access shall be (a) during
LICENSEE's regular business hours, (b) arranged so that, to the extent
possible, LICENSEE'S regular business activities are minimally disrupted and
(c) under the terms of an appropriate confidentiality agreement executed by
the individual(s) conducting such audit. If TI determines, after conducting
such audit, that LICENSEE is not substantially in compliance with this
agreement, LICENSEE shall pay the costs of such audit. Otherwise, TI shall
pay the costs of such audit. Such payment will not preclude TI from
exercising any right which it may have under this Agreement. LICENSEE shall
immediately correct any deficiencies discovered during the course of the
audit.
3.12 The obligations of this section 3 shall survive termination or
expiration of this Agreement.
TI/IAT
Page 4 of 7
05/21/97
License Agreement #122317
4. LICENSE FEES
4.1 All applicable License fees and/or royalties payable hereunder shall
be as indicated in Section 2 of Schedule 1, (incorporated herein by this
reference), and shall be exclusive of all governmental taxes, fees or tariffs
which shall be paid by LICENSEE.
4.2 The License Fee will include an upfront payment in the amount
indicated in Section 2 of Schedule 1. The License Fee shall be payable within
thirty (30) days of delivery of the Licensed Products to LICENSEE.
4.3 Per copy royalty fees apply to items specified in Section 2 of
Schedule 1, and to Modified Applications Programs derived from the items
specified, and are charged for each copy made and distributed or placed into
service, except that no additional royalty will be charged or updates to
copies provided to end users for which the appropriate royalty has previously
been paid.
4.4 If royalties are payable hereunder, TI shall have the right once each
calendar year to inspect the books and records of LICENSEE and any authorized
sublicensees of LICENSEE in order to verify the royalty reports provided by
LICENSEE to TI. LICENSEE shall make available to TI the books and records of
LICENSEE and sublicensees at their respective places of business during
regular hours. TI will give reasonable notices of its intent to perform an
audit. LICENSEE shall promptly pay any understated sums disclosed by the
audit. In the event royalty reports prove to be understated by 10% or more,
LICENSEE shall pay all costs of TI conducting the audit. TI shall have the
right to conduct a final audit upon expiration or termination of this
License.
4.5 All payment notices and checks shall be sent by registered mail to:
ASP Controller
Texas Instruments Incorporated
Semiconductor Group
X.X. Xxx 0000, X/X 000
Xxxxxxx, Xxxxx 00000-0000
If not otherwise specified by this Agreement, any notice relating to this
Agreement shall be deemed given when sent by registered mail, with proof of
delivery to the carrier, to the other party at the address listed below:
TI:
Texas Instruments Incorporated
X.X. Xxx 000000
Xxxxxx, Xxxxx 00000
Xxxxxx, Xxxxx 00000-0000
Attention: Manager, Business Services
LICENSEE:
IAT AG, Geschaftshaus Wasserschloss
Xxxxxxxxxxx 00, CH5300 Votgelsang-Turgi
Switzerland
4.6 Royalty Payments charged for each copy made of the Licensed Product or
the Modified Application Program shall be payable within thirty (30) days of
each calendar quarter, detailing the number of copies made by LICENSEE or
with LICENSEE'S authorization.
TI/IAT
Page 5 of 7
05/21/97
License Agreement #122317
4.7 Royalty reports shall be made quarterly within thirty (30) days of
each calendar quarter, detailing the number of copies made by LICENSEE, or
with LICENSEE'S authorization, providing a list of the entities who made
copies, and stating the amount of royalties paid. Royalty reports shall be
maintained for a period of two (2) years from the date of each report. A
final report shall be made on expiration or termination of this License.
4.8 LICENSEE shall ensure that a valid and enforceable sublicense
agreement is entered into with all sublicensees containing all of the
restrictions of the license grant set forth in this Section.
5. TERMS AND TERMINATION
5.1 the term of this Agreement shall be for a period of five (5) years
from the date of execution of this Agreement.
5.2 TI may, in its sole discretion, terminate this License in the event of
breach by LICENSEE, with forty-five (45) days prior written notice from TI,
and failure to cure by LICENSEE within that forty-five (45) day period.
5.3 Upon termination of this License, LICENSEE will return and/or certify
destruction of all copies of the Licensed Products in its possession.
LICENSEE may keep one copy of the object code of the Licensed Product for
archival purposes. LICENSEE may not keep any copies of Licensed Product
source code for any purposes, and must return and/or certify destruction of
all source code copies of the Licensed Product. Termination shall not affect
the royalty obligations of LICENSEE.
6. WARRANTY
6.1 Nothing contained herein shall constitute a warranty or
representation by TI to maintain production of the hardware with which the
Licensed Product is to be used.
6.2 The media on which the Licensed Product is supplied shall be warranted
against defects in material and workmanship under normal use for a period of
(90) days from the date shipped. TI will replace defective media returned to
TI within the ninety (90) day warranty period.
6.3 TI does not warrant that the functions contained in the Licensed
Product will be free from error or will meet LICENSEE'S specific
requirements. TI shall have no responsibility or liability for errors or
product malfunction resulting from LICENSEE'S use, modification, copying, or
distribution of the Licensed Product. LICENSEE assumes complete
responsibility for decisions made or actions taken based on information
obtained using the Licensed Product. Any statements concerning the utility of
the Licensed Products are not to be construed as expressed or impled
warranties.
6.4 THE FOREGOING WARRANTY IS IN LIEU OF ALL OTHER WARRANTIES, EXPRESS OR
IMPLIED INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
7. LIMITATION OF DAMAGES
IN NO EVENT WILL EITHER PARTY BE LIABLE FOR SPECIAL, COLLATERAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES IN CONNECTION WITH OR ARISING OUT OF THIS
AGREEMENT OR USE OF THE LICENSED PRODUCTS. THESE EXCLUDED DAMAGES INCLUDE,
BUT ARE NOT LIMITED TO, COST OF REMOVAL OR REINSTALLATION, OUTSIDE COMPUTER
TIME, LABOR
TI/IAT
Page 6 of 7
05/21/97
License Agreement #122317
COSTS, LOSS OF GOODWILL, LOSS OF PROFITS, LOSS OF SAVINGS, OR LOSS OF USE OR
INTERRUPTION OF BUSINESS. THE SOLE AND EXCLUSIVE LIABILITY OF EITHER PARTY,
REGARDLESS OF THE FORM OF ACTION, WILL NOT EXCEED THE PAYMENTS MADE FOR THIS
LICENSE BY LICENSEE UNDER THIS AGREEMENT.
8. EXPORT
The re-export of United States original software is subject to United
States laws under Export Administration Act of 1969 as Amended. Any further
sale or distribution of the Licensed Product shall be done in compliance with
the United States Department of Commerce Administration Regulations.
Compliance with such regulations is the responsibility of LICENSEE and not
the responsibility of TI.
9. CONSTRUCTION
THE AGREEMENT SHALL BE CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE
OF TEXAS FOR CONTRACTS MADE TO BE PERFORMED IN THE STATE OF TEXAS.
10. INTEGRATION
This Agreement shall constitute the entire agreement between the parties,
and shall supersede all previous agreements, whether oral or written,
concerning Licensed Products. Any amendments to this Agreement shall be in
writing and executed by authorized representatives of both parties.
11. NO PUBLICITY
Neither party will publicly announce this Agreement or release any
information pertaining hereto publicly, without the prior written consent of
the other party.
IN WITNESS WHEREOF, this Agreement is hereby executed by the undersigned who
are respectively duly authorized representatives of TI and LICENSEE, and
shall become effective on the date of the last signature below.
TEXAS INSTRUMENTS INCORPORATED
Semiconductor Group
0000 Xxxxxx Xxxx, X/X 0000
Xxxxxx, Xxxxx 00000
By: /s/ Xxxxxxx X. Xxxxx
------------------------------------
Name: Xxxxxxx X. Xxxxx
Title: Vice President, Semiconductor Group
------------------------------------
Date: 6/2/97
------------------------------------
LICENSEE
IAT AG, Geschaftshaus Wasserschloss
Xxxxxxxxxxx 00, CH5300 Votgelsang-Turgi
Switzerland
By: /s/ Xx. Xxxx
------------------------------------
Name: Xx. Xxxx
----------------------------------
Title: Chief Executive Officer
-----------------------------------
Date: 5/5/97
----------------------------------
