Exhibit 10.8
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
CSM 6800 SOFTWARE AGREEMENT
This CSM 6800 Software Agreement (the "Agreement") is entered into as of April
20, 2004 (the "Effective Date"), by and between XXXXXXXX Xxxxxxxxxxxx, a
Delaware corporation ("QUALCOMM") and Airvana, Inc., a Delaware corporation
("LICENSEE").
RECITALS
WHEREAS, QUALCOMM and LICENSEE have entered into that certain HDR Infrastructure
Equipment License Agreement dated September 18, 2000, pursuant to which QUALCOMM
granted LICENSEE a license under certain QUALCOMM intellectual property to
develop, manufacture and sell certain Code Division Multiple Access ("CDMA")
infrastructure equipment; and
WHEREAS, in accordance with the terms and conditions of this Agreement, QUALCOMM
is willing to deliver a copy of the Software (as defined below) to LICENSEE; and
WHEREAS, LICENSEE desires to receive a copy of the Software for its use in
accordance with the terms and conditions of this Agreement.
AGREEMENT
NOW, THEREFORE, the parties, in consideration of the mutual promises set forth
herein, agree as follows:
1. DEFINITIONS. The following capitalized terms shall have the meanings set
forth below:
"Affiliate" has the meaning given to it in the License Agreement.
"CSM 6800 ASIC" means QUALCOMM's CSM 6800 version of cell site modem application
specific integrated circuit.
"License Agreement" means that certain HDR Infrastructure Equipment License
Agreement dated September 18, 2000 between QUALCOMM and LICENSEE.
"Licensed HDR Products" has the meaning given to it in the License Agreement.
"LICENSEE" means Airvana, Inc., a Delaware corporation.
"Party" means QUALCOMM or LICENSEE and "Parties" means QUALCOMM and LICENSEE.
"QUALCOMM" means XXXXXXXX Xxxxxxxxxxxx.
"Software" means QUALCOMM's CSM 6800 Software which in QUALCOMM's sole
discretion, may be in either source code and/or object code form, designed for
use with QUALCOMM's CSM 6800 ASIC, as more fully described in Exhibit A to this
Agreement.
2. SOFTWARE.
2.1 DELIVERY OF SOFTWARE. QUALCOMM shall make commercially reasonable
efforts to deliver the Software in accordance with the schedule set forth in
Exhibit A. However, QUALCOMM shall have the right, at its sole discretion, to
reschedule the releases as required, change the number of releases of the
Software, and/or modify the functionality contained in each such phase and/or
release. For a period ending one year after the final release described in
Exhibit A, (the "Standard Support Period"), QUALCOMM shall deliver bug fixes and
other upgrades to the Software that it generally makes available to other
Software licensees. At
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LICENSEE's request and upon its payment of an additional support fee to QUALCOMM
in an amount to be mutually agreed upon by the Parties, QUALCOMM shall provide
Software support for the 12-month period immediately following the expiration of
Standard Support Period.
2.2 PAYMENT BY LICENSEE. In consideration for the delivery of the Software
and the rights granted to LICENSEE under Section 3 to use the Software in the
development of its Licensed HDR Products, no later than thirty (30) days after
the Effective Date LICENSEE shall pay to QUALCOMM a non-refundable payment (the
"Up-Front Fee") in the amount of [**] Dollars (US$[**]).
3. RIGHT TO USE. LICENSEE may use the Software solely to develop, manufacture,
sell, upgrade and repair Licensed HDR Products which incorporate QUALCOMM's CSM
6800 ASIC in accordance with and subject to the terms and conditions of the
License Agreement, including the payment of royalties on Licensed HDR Products.
As reasonably necessary to develop, manufacture, sell, upgrade and repair
Licensed HDR Products in accordance with and subject to the terms and conditions
of the License Agreement, LICENSEE shall have the right to (i) except as
provided below, alter, modify, translate or adapt the Software or create
derivative works based thereon; (ii) use or copy the Software for archival
purposes, and (iii) sublicense the object code only of the Software or
derivative works solely when embedded in Licensed HDR Products which incorporate
QUALCOMM's CSM 6800 ASIC in conjunction with the sale of such Licensed HDR
Products in accordance with and subject to the terms and conditions of the
License Agreement. LICENSEE shall have no right to (a) sublicense, transfer or
otherwise disclose the Software in source code form to any third party (other
than Affiliates of LICENSEE in accordance with Section 10), or (b) reverse
engineer, reverse assemble or reverse compile that portion of the code provided
in object code form. Except as expressly permitted above, LICENSEE shall not use
the Software for any other purpose. QUALCOMM retains all ownership rights in and
to the Software and derivative works and nothing herein shall be deemed to grant
any right to LICENSEE under any of QUALCOMM's patents (such rights, if any,
being granted only under the terms of the License Agreement).
4. WARRANTIES. QUALCOMM MAKES NO WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO
THE SOFTWARE OR ANY OTHER INFORMATION OR DOCUMENTATION PROVIDED UNDER THIS
AGREEMENT, INCLUDING BUT NOT LIMITED TO ANY WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR AGAINST INFRINGEMENT, OR ANY EXPRESS OR
IMPLIED WARRANTY ARISING OUT OF TRADE USAGE OR OUT OF A COURSE OF DEALING OR
COURSE OF PERFORMANCE. NOTHING CONTAINED IN THIS AGREEMENT SHALL BE CONSTRUED AS
(i) A WARRANTY OR REPRESENTATION BY QUALCOMM AS TO THE VALIDITY OR SCOPE OF ANY
PATENT, COPYRIGHT OR OTHER INTELLECTUAL PROPERTY RIGHT OR (ii) A WARRANTY OR
REPRESENTATION BY QUALCOMM THAT ANY MANUFACTURE OR USE WILL BE FREE FROM
INFRINGEMENT OF PATENTS, COPYRIGHTS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF
OTHERS, AND IT SHALL BE THE SOLE RESPONSIBILITY OF LICENSEE TO MAKE SUCH
DETERMINATION AS IS NECESSARY WITH RESPECT TO THE ACQUISITION OF LICENSES UNDER
PATENTS AND OTHER INTELLECTUAL PROPERTY OF THIRD PARTIES.
5. INTELLECTUAL PROPERTY. Except as expressly provided in Section 3, this
Agreement does not convey to LICENSEE any intellectual property rights in the
Software, including but not limited to any rights under any patent, trademark,
copyright, or trade secret. Except as expressly provided in this Agreement,
LICENSEE may not use or sublicense Software, alone or in combination with other
software or products, without a separate license from QUALCOMM under all
applicable patents, copyrights and trademarks. LICENSEE's use and sale of any
Reportable Product incorporating QUALCOMM's CSM 6800 ASIC and all or any part of
the Software shall be solely in accordance with the terms and conditions of the
License Agreement. This Agreement shall not modify or abrogate LICENSEE's
obligations under the License Agreement, including but not limited to LICENSEE's
obligation to pay all royalties
2
specified thereunder for use of any licensed QUALCOMM intellectual property
(including the Software), and shall not expand or alter LICENSEE's rights
thereunder. Neither the delivery of the Software, nor any provision of this
Agreement shall be construed to grant to LICENSEE either expressly, by
implication or by way of estoppel, any license under any patents or other
intellectual property rights of QUALCOMM covering or relating to any other
product or invention or any combination of the Software with any other product.
6. REPRESENTATION REGARDING USE. LICENSEE hereby represents and warrants to
QUALCOMM that the Software will be used by LICENSEE solely to develop Licensed
HDR Products which incorporate QUALCOMM's CSM 6800 ASIC for manufacture and sale
subject to and in accordance with the License Agreement, including the payment
of the royalty contained therein.
7. TERM AND TERMINATION.
7.1 TERMINATION OF LICENSE AGREEMENT. This Agreement shall commence on the
Effective Date and shall, unless earlier terminated, continue until any
termination of the License Agreement.
7.2 TERMINATION BY EITHER PARTY. This Agreement may be terminated by a
party which is not in material breach hereunder, by written notice to the other
party, following the occurrence of any material breach by such other Party of
any material provision of this Agreement, which material breach is (if capable
of being cured) not cured within [**] days after receipt of such notice.
7.3 REMEDIES ON TERMINATION. In the event of any termination of this
Agreement, LICENSEE shall immediately (i) return to QUALCOMM the Software, and
any copies or updates thereof and (ii) cease using, or permitting to be used,
the Software and any adaptation, modification, derivation or translation
thereof, except that no termination hereof shall cause the termination of any
existing sublicense to any purchaser of LICENSEE's Licensed HDR Products
incorporating the Software or any adaptation, modification, derivation or
translation thereof. Any termination or expiration of this Agreement under this
Section 7 shall not relieve LICENSEE from its liability for payment any amounts
due hereunder and shall not prejudice the right to recover any sums due or
accrued at the time of such termination or expiration (including the full amount
of the Up-Front Fee) and shall not prejudice any cause of action or claim
accrued or to accrue on account of any breach or default. No termination
hereunder shall limit the rights of LICENSEE to sell those Licensed HDR Products
in inventory or in process at the time of termination, subject to payment of the
royalty applicable to the sale of such Licensed HDR Products under the License
Agreement, payment of the full amount of the Up-Front Fee due hereunder, and
continued compliance with the other provisions of this Agreement and the License
Agreement.
8. TAXES. All amounts stated herein and/or required to be paid hereunder are
stated in, and shall be paid in, U.S. Dollars. The prices do not include any
applicable sales, use, excise and/or withholding taxes (except as indicated
below with regard to withholding of income or profits taxes); customs duties;
fees; freight, insurance and delivery charges; or any other taxes, fees, or
charges. All taxes, fees and other charges imposed in conjunction with the
Deliverables shall be paid directly by LICENSEE. In the event QUALCOMM pays any
such fees, taxes, or charges, LICENSEE shall promptly reimburse QUALCOMM
therefor. Notwithstanding the foregoing, in the event sums payable under this
Agreement become subject to income or profits taxes under the tax laws of any
country and applicable treaties between the United States and such country,
LICENSEE may, if and to the extent required by law, withhold from each payment
the amount of said income or profits taxes due and required to be withheld of
each payment. LICENSEE will furnish and make available to QUALCOMM relevant
receipts regarding the payment of any country taxes paid over to any country's
government on behalf of QUALCOMM. Such tax receipts will clearly indicate the
amounts that have been withheld from the gross amounts due to QUALCOMM.
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9. LIMITATION OF LIABILITY
9.1 EXCEPT IN THE EVENT OF A BREACH BY QUALCOMM OF SECTION 10 OF THIS
AGREEMENT, IN NO EVENT SHALL QUALCOMM BE LIABLE TO LICENSEE AND ITS AFFILIATES
FOR ANY INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, INCLUDING BUT NOT LIMITED
TO ANY LOST PROFITS, LOST SAVINGS, OR OTHER INCIDENTAL DAMAGES, ARISING OUT OF
THE USE OR INABILITY TO USE, OR THE DELIVERY OR FAILURE TO DELIVER, ANY OF THE
SOFTWARE, EVEN IF QUALCOMM HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
THE FOREGOING LIMITATION OF LIABILITY SHALL REMAIN IN FULL FORCE AND EFFECT
REGARDLESS OF WHETHER LICENSEE'S REMEDIES HEREUNDER ARE DETERMINED TO HAVE
FAILED OF THEIR ESSENTIAL PURPOSE.
9.2 EXCEPT IN THE EVENT OF A BREACH BY QUALCOMM OF SECTION 10 OF THIS
AGREEMENT, IN ADDITION TO SECTION 9.1, THE ENTIRE LIABILITY OF QUALCOMM, AND THE
SOLE AND EXCLUSIVE REMEDY OF LICENSEE, FOR ANY CLAIM OR CAUSE OF ACTION ARISING
HEREUNDER (WHETHER IN CONTRACT, TORT, OR OTHERWISE) SHALL NOT EXCEED THE
UP-FRONT FEE PAID FOR THE SOFTWARE WHICH IS THE SUBJECT OF SUCH CLAIM OR CAUSE
OF ACTION.
9.3 EXCEPT IN THE EVENT OF A BREACH BY LICENSEE OF SECTION 3, SECTION 6 OR
SECTION 10 OF THIS AGREEMENT, LICENSEE SHALL NOT BE LIABLE TO QUALCOMM AND ITS
AFFILIATES FOR ANY INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, INCLUDING BUT
NOT LIMITED TO ANY LOST PROFITS, LOST SAVINGS, OR OTHER INCIDENTAL DAMAGES,
ARISING OUT OF THE USE OR INABILITY TO USE, OR THE DELIVERY OR FAILURE TO
DELIVER, ANY OF THE SOFTWARE, EVEN IF LICENSEE HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. THE FOREGOING LIMITATION OF LIABILITY SHALL REMAIN
IN FULL FORCE AND EFFECT REGARDLESS OF WHETHER QUALCOMM'S REMEDIES HEREUNDER ARE
DETERMINED TO HAVE FAILED OF THEIR ESSENTIAL PURPOSE.
9.4 EXCEPT IN THE EVENT OF A BREACH BY LICENSEE OF SECTION 3, SECTION 6, OR
SECTION 10 OF THIS AGREEMENT, IN ADDITION TO SECTION 9.3, THE ENTIRE LIABILITY
OF LICENSEE, AND THE SOLE AND EXCLUSIVE REMEDY OF QUALCOMM, FOR ANY CLAIM OR
CAUSE OF ACTION ARISING HEREUNDER (WHETHER IN CONTRACT, TORT, OR OTHERWISE)
SHALL NOT EXCEED THE UP-FRONT FEE PAID FOR THE SOFTWARE WHICH IS THE SUBJECT OF
SUCH CLAIM OR CAUSE OF ACTION.
10. RESTRICTIONS ON DISCLOSURE AND USE. All documentation and technical and
business information and intellectual property in whatever form recorded that a
Party does not wish to disclose without restriction ("Information") shall remain
the property of the furnishing Party and may be used by the receiving Party only
as follows. Such Information (a) shall not be reproduced or copied, in whole or
part, except for use as expressly authorized in this Agreement; (b) shall,
together with any full or partial copies thereof, be returned or destroyed when
no longer needed or upon any termination of this Agreement; and (c) shall be
disclosed only to employees or agents of a Party and Affiliates of a Party, all
with a need to know. Such Affiliates or agents shall enter into a nondisclosure
agreement with the receiving Party setting forth the obligations substantially
equal to those herein prior to the disclosure of Information by receiving Party
to such Affiliates or agents. Moreover, such Information shall be used by the
receiving Party only for the purposes contemplated under this Agreement or in
the exercise of its rights it may receive expressly under the provisions of this
Agreement. Unless the furnishing Party consents in this Agreement or otherwise
in writing, such Information shall be held in strict confidence by the receiving
Party. The receiving Party may disclose such Information to other persons, upon
the furnishing Party's prior written authorization, but solely to perform acts
which this clause
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expressly authorizes the receiving Party to perform itself and further provided
such other person agrees in writing (a copy of which writing will be provided to
the furnishing Party at its request) to the same conditions respecting use of
Information contained in this clause and to any other reasonable conditions
requested by the furnishing Party. These restrictions on the use or disclosure
of Information shall not apply to any Information: (i) which can be proven to be
or have been independently developed by the receiving Party or lawfully received
free of restriction from another source having the right to so furnish such
Information; or (ii) after it has become generally available to the public
without breach of this Agreement by the receiving Party; or (iii) which at the
time of disclosure to the receiving Party was known to such Party free of
restriction and clearly evidenced by documentation in such Party's possession;
or (iv) which the disclosing Party agrees in writing is free of such
restrictions.
11. SCOPE OF INFORMATION. Information is subject to Section 10 whether delivered
orally or in tangible form and without regard to whether it has been identified
or marked as confidential or otherwise subject to Section 10. Each Party agrees
to use its best efforts to xxxx or otherwise identify proprietary all
Information they desire to be subject to the terms of these provisions before
furnishing it to the other Party. And, upon request, a Party shall promptly
identify whether specified information must be held by the requesting Party
subject to Section 10. Information which is delivered orally may be summarized
in writing by the disclosing Party and delivered to the receiving Party within
[**] days after disclosure thereof.
12. ASSIGNMENT. LICENSEE shall not assign this Agreement or any right or
interest under this Agreement, nor delegate any obligation to be performed under
this Agreement to any third party unless it has also assigned the License
Agreement to such third party in accordance with the assignment provisions
thereof. Any attempted assignment in contravention of this Section 12 shall be
void.
13. APPLICABLE LAW. This Agreement is made and entered into in the State of
California and shall be governed by and construed and enforced in accordance
with the laws of the State of California, excluding the U.N. Convention on
International Sale of Goods, without regard to conflict of laws principles. Any
dispute, claim or controversy arising out of or relating to this Agreement, or
the breach or validity hereof, shall be adjudicated only by a court of competent
jurisdiction in the county of San Diego, State of California, and each Party
hereby consents to the personal jurisdiction of such courts for that purpose. In
the event of any proceeding to enforce the provisions of this Agreement, the
prevailing Party (as determined by the court) shall be entitled to reasonable
attorneys' fees as fixed by the court.
14. FORCE MAJEURE. Neither Party shall be in default or liable for any loss or
damage resulting from delays in performance or from failure to perform or comply
with terms of this Agreement (other than the obligation to make payments, which
shall not be affected by this provision) due to any causes beyond its reasonable
control, which causes include but are not limited to Acts of God or the public
enemy; riots and insurrections; war; fire; strikes and other labor difficulties
(whether or not the Party is in a position to concede to such demands);
embargoes; judicial action; lack of or inability to obtain export permits or
approvals, necessary labor, materials, energy, components or machinery; and acts
of civil or military authorities.
15. LATE CHARGE. Each Party may charge the other a late charge, with respect to
any amounts that the other owes hereunder and fails to pay on or before the due
date, in an amount equal to the lesser of [**] percent ([**]%) per month,
pro-rated, or the maximum amount permitted by law.
16. MISCELLANEOUS PROVISIONS. No addition or modification of the Agreement shall
be effective unless made in writing and signed by the respective representatives
of QUALCOMM and LICENSEE. Any delay or failure to enforce at any time any
provision of the Agreement shall not constitute a waiver of the right thereafter
to enforce each and every provision thereof. If any of the provisions of the
Agreement is determined to be invalid, illegal, or otherwise unenforceable,
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the remaining provisions shall remain in full force and effect. The Parties'
rights and obligations which by their sense and context are intended to survive
any termination or expiration of this Agreement shall so survive, including but
not limited to Sections 4, 5, 6, 9, 10, 11, 13 and 16 hereof.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
as of the date first set forth above.
XXXXXXXX XXXXXXXXXXXX AIRVANA, INC.
By: /s/ Xxxxx X. Xxxxxxx By: /s/ Xxxxx Xxxxxxxx
--------------------------------- ------------------------------------
Title: Vice President, Finance Title: Chief Technical Officer
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EXHIBIT A
CSM 6800 SOFTWARE
CELL SITE MODEM (CSM) 6800 SOFTWARE: The CSM 6800 Software will contain the
following features and be designed to operate generally in accordance with the
Telecommunications Industry Association per the published 3rd Generation
Partnership Project 2, 3GPP2 C.S0024-A, "cdma2000 High Rate Packet Data Air
Interface Specification":
- SUBTYPE 0, SUBTYPE 1 AND SUBTYPE 2 PHYSICAL LAYER PROTOCOL.
- ENHANCED IDLE STATE PROTOCOL including: Inactive, Sleep, Monitor and
Connection Setup States, utilized when the Access Terminal (AT) has
acquired a network and a connection is not open.
- ENHANCED ACCESS CHANNEL MAC PROTOCOL including Inactive and Active
States which provide procedures and messages for an AT to transmit and
an Access Network (AN) to receive the Access Channel.
- ENHANCED FORWARD TRAFFIC CHANNEL MAC PROTOCOL including: Single User
Simplex, Single User Multiplex and Multi-User MAC layer packets.
- HIGH RATE PACKET DATA BROADCAST-MULTICAST FEATURE: Capability to
configure, open, and close forward link broadcast (one-to-many
multimedia communication stream on the forward link) channels. This
feature will be compliant with the broadcast feature standard as being
defined in 3GPP2, C.SP0054-0.
- QUALITY OF SERVICE FEATURE: Support for multiple transmit queues per
user which can be configured to be Assured Forwarding (AF), Expedited
forwarding (EF) or best effort (BE). AF meets specified rate
guarantees, EF meets specified delay guarantees, and BE has no
associated guarantees.
- BTS PACKING FEATURE: Improves packing efficiency for users and flows
opened on the forward traffic channel, for both Rel. 0 and Rev. A. The
CSM 6800 driver will support connection and MAC layer packing. At the
driver API, RLP payloads of varying sizes will be accepted.
- ENCRYPTION supported per 3GPP2, C.S0039 specification.
The CSM 6800 Software will be delivered in multiple releases as follows:
ALPHA RELEASE 1.0 is scheduled for the fourth calendar quarter of 2004 (or no
later than ten days after the Effective Date, whichever is later). This release
is deemed to be of alpha quality. An alpha release is intended as an early
preview of the new features of the CSM6800 Driver Software and, although
representative of the commercial release, has not undergone complete testing and
may not include all features scheduled for the CSM 6800 Software.
RELEASE 1.0 is scheduled for the second calendar quarter of 2005 and will
include the same feature set as Alpha release but would be of commercial grade
having undergone more rigorous and complete testing than the Alpha release.
RELEASE 2.0 is scheduled for the fourth calendar quarter of 2005 and will
include new features not previously included in the Alpha and 1.0 Releases and
will be of commercial grade having undergone rigorous and complete testing.
LICENSEE acknowledges and understands that the CSM 6800 Software is not designed
to operate in accordance with each and every provision of the standards set
forth in this Exhibit A.
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