EXHIBIT 10.20
TECHNOLOGY LICENSE AGREEMENT
THIS AGREEMENT (the "License Agreement") is made this 30th day of
August, 1995 (the "Effective Date"), by and between Milcom International Corp.,
a United States company, with its principal place of business at 00000 Xxxxxxxx
Xxxxxx, Xxxxxx, Xxxxxxxxxx 00000-0000 ("Milcom") and Unique Wireless
Developments, L.L.C., a Delaware limited liability company with principal
offices at 0000 Xxxxxxxx Xxxxxx, Xxxxxx, Xxxxx 00000 ("UWD").
RECITALS
--------
A. WHEREAS, UWD has developed and owns or has rights to certain
technology relating to the design, structure and operation of a wireless
communications link between mobile and/or fixed radio transceivers; and
B. WHEREAS, Milcom is engaged in the development, manufacture and sale of
high-powered radio amplifiers; and
C. WHEREAS, Milcom will be providing UWD with two prototypes of an
amplifier compatible with UWD's Dynamic Channel Multi-carrier Architecture
("DCMA") technology; and
D. WHEREAS, Milcom wishes to obtain a license from UWD to manufacture and
sell such amplifiers and UWD wishes to grant such license on the terms and
conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual covenants and conditions set
forth below, the parties hereto agree as follows:
1. Definitions
-----------
In addition to certain terms defined on first use herein, the following
terms shall have the following meanings:
1.1 "Base Station Amplifier Technology" shall mean any Confidential
---------------------------------
Information provided by UWD to Milcom in connection with the development of
Compatible Amplifiers.
1.2 "Compatible Amplifiers" shall mean any device that can be used with
---------------------
UWD's DCMA technology for application in the Land Mobile Radio (LMR) industry
regardless of frequency and provides direct frequency up-conversion of baseband
quadrature modulated inputs together with the RF Amplification necessary to
boost the output signal to any required level.
1.3 "Confidential Information" shall mean all ideas and information of any
------------------------
kind, whether in written, oral, graphical, machine-readable or other form,
whether or not marked or identified as confidential or proprietary, which are
disclosed or made available by either party hereto to the other, which the
1
disclosing party desires to protect against unrestricted disclosure or
competitive use and which relate to the disclosing party's technology, know-how,
technical data, products, software, works of authorship, assets, operations,
contractual relationships, plans or any other aspect of its business. Without
limiting the generality of the foregoing, Milcom acknowledges that information
relating to or comprising the Base Station Amplifier Technology shall be the
Confidential Information of UWD.
1.4 "Commencement Date" shall mean the first day of the first month in
-----------------
which Milcom sells a Compatible Amplifier.
1.5 "Licensed Trademarks" shall mean the trademarks of UWD listed on
-------------------
Exhibit A as may be amended from time to time.
1.6 "Net Sales" shall mean the gross amount billed by Milcom for all sales
---------
or other dispositions of Compatible Amplifiers (the "gross sales price"), less
credit for the following (to the extent reflected in the gross sales price,
actually incurred by Milcom and appropriately documented);
(a) Trade or quantity discounts actually allowed and taken in such
amounts as are customary in the trade;
(b) Transportation and delivery charges, including insurance
premiums, prepaid or allowed; and
(c) Governmental sales taxes, use taxes and tariff duties imposed
directly on sales of Compatible Amplifiers, provided
Milcom's price is reduced thereby, but not franchise, income, or
other taxes of any kind.
No deduction shall be made for commissions, whether to third parties or to
employees of Milcom. If Milcom uses any Compatible Amplifier itself, or sells
or otherwise disposes of any Compatible Amplifier other than in a bona fide
arm's length sale (including, without limitation, for promotional purposes), the
Compatible Amplifier shall be deemed to have been sold for purposes of the
foregoing and the "gross sales price" shall be deemed to be Milcom's then
current price to dealers for the Compatible Amplifier. In the case of any sale
or other disposition, Compatible Amplifiers shall be considered sold for
purposes of the foregoing when shipped or when the price is invoiced or
otherwise charged, whichever is earlier.
1.7 "Stand-Alone Compatible Amplifiers" shall mean Compatible Amplifiers
---------------------------------
manufactured by a company that does not manufacture base station and terminal
equipment that can be used with Compatible Amplifiers.
2
1.8 "Territory" shall mean the countries listed on the attached Exhibit B.
---------
2. License Rights.
--------------
2.1 License Grant to Milcom. On the terms and subject to the conditions
-----------------------
set forth herein, UWD hereby grants to Milcom:
(a) beginning on the Effective Date and for a period that ends on the
earlier of (i) two years after Commencement Date or (ii) the date by which
Milcom has achieved a total of $6,000,000 in Net Sales of Compatible Amplifiers,
an exclusive license in the Territory to use UWD technology pertaining to
Compatible Amplifiers, including applicable patents, trade secrets, and know-
how, to manufacture, use and sell Stand-Alone Compatible Amplifiers; and
(b) beginning at the end of the period set forth in Section 2.1(a)
and continuing on a perpetual basis thereafter, a non-exclusive license in the
Territory to use UWD technology pertaining to Compatible Amplifiers, including
applicable patents, trade secrets, and know-how, to manufacture, use and sell
Stand-Alone Compatible Amplifiers;
(c) during the term of the licenses set forth in subsection 2.1(a)
and (b) hereof, a non-exclusive license in the Territory to use any applicable
Licensed Trademarks in connection with the sale or advertising of Compatible
Amplifiers manufactured and sold by Milcom.
2.2 Certain License Limitations.
---------------------------
(a) Nothing herein shall be construed as granting Milcom, by
implication, estoppel or otherwise, any license or other right under any patent
or other intellectual property right of UWD, except for the licenses expressly
granted in Section 2.1.
(b) Milcom's rights hereunder are limited to the Territory, and
Milcom shall not, directly or indirectly, manufacture, market, promote,
distribute, sell or use any Compatible Amplifiers outside the Territory or for
use outside the Territory. Milcom shall promptly inform UWD of all inquiries
relating to Compatible Amplifiers from outside the Territory or for use outside
the Territory. UWD in its sole discretion may pursue such inquiries itself or
through others or may permit Milcom to pursue such inquiries.
(c) All Compatible Amplifiers marketed and sold by Milcom shall bear
the appropriate Licensed Trademark(s) in visible and legible form, at least as
prominent as any trademarks of Milcom, except as otherwise provided in the last
sentence of this paragraph. In advance of any use of the Licensed Trademarks on
any Compatible Amplifier or in connection with any advertising,
3
marketing, instructional or other material, Milcom shall furnish UWD a sample
for its review and approval. Milcom agrees that all Compatible Amplifiers
manufactured, distributed or sold under any Licensed Trademark shall meet or
exceed the standards of quality established from time to time by UWD, and that
neither the Licensed Trademarks nor any confusingly similar marks shall be used
in connection with any goods or services other than the Compatible Amplifiers.
UWD shall have the right to inspect Milcom's Compatible Amplifiers and premises
upon reasonable notice to ensure compliance with the foregoing requirements.
All rights in the Licensed Trademarks shall remain at all times the sole
property of UWD, and all use of the Licensed Trademarks shall inure to the
benefit of UWD. Milcom agrees to assist in such registration of the Licensed
Trademarks in countries in the Territory in the name of UWD and such
registration of Milcom as a user of the Licensed Trademarks as UWD may
reasonably request from time to time, at UWD's expense. Whenever Milcom uses the
Licensed Trademarks in any manner, Milcom shall indicate UWD's ownership thereof
and shall comply with any marking or notice requirements under applicable law.
In the event Milcom breaches any of the provisions of this Section 2.2(c), in
addition to any other rights or remedies, UWD may terminate the license under
Section 2.1(c) to use the Licensed Trademarks. If either Milcom or UWD
reasonably believes that any use of a Licensed Trademark otherwise required by
this paragraph will infringe any trademark or similar rights of any third party,
then such party shall notify the other and UWD, at this election, shall modify
such Licensed Trademark for such use so that it is not infringing or shall
permit such marketing or sale without the use of such Licensed Trademark.
3. Royalties and Taxes.
-------------------
3.1 Royalties.
---------
(a) In partial consideration for the rights and licenses granted
herein by UWD, Milcom agrees to pay to UWD during the License Term a royalty on
Net Sales in the following amount:
(i) for the first $6,000,000 of Net Sales, a non-refundable up
front royalty payment of $300,000, payable as follows:
Date Payment Amount
---- --------------
August 31, 1995 $100,000
September 17, 1995 $ 50,000
October 17, 1995 $ 50,000
November 1, 1995 $ 50,000
December 1, 1995 $ 50,000
No portion of said up front royalty shall be refundable for any reason other
than the reasons set forth in the second sentence of Section 3.1(b) hereof.
4
(ii) for Net sales from $6,000,001 through $12,000,000, Milcom
shall pay a non-refundable, up front royalty of $300,000, payable in six equal
monthly installments beginning on the date Net Sales exceed $6,000,000.
(iii) for Net Sales in excess of $12,000,000, Milcom shall pay a
royalty equal to the lowest royalty paid by a licensee of UWD in a position
similar to that of Milcom for similar quantities and similar terms and
conditions, but in no event more than the following:
Prepayment
Net Sales Royalty Rate Royalty Rate
--------- ------------ ------------
$12,000,001-$24,000,000 7.0% 6.3%
$24,000,001-$36,000,000 6.0% 5.4%
In excess of $36,000,000 5.0% 4.5%
The royalty payable pursuant to this subsection (iii) shall be payable as
provided in Section 3.1(c) below unless the royalty on each additional
$6,000,000 increment of Net Sales is prepaid in 6 equal monthly installments
beginning on the date that Net Sales exceeded the previous $6,000,000 increment
(any such prepayment would entitle Milcom to the Prepayment Royalty Rate
referenced above).
(b) In the event that UWD licenses a company to manufacture base
stations and terminal equipment that can be used with Compatible Amplifiers and,
as condition of accepting such license, said company requires the right to
manufacture Compatible Amplifiers, nothing in this License Agreement shall be
deemed to prohibit UWD from granting such licenses in that Milcom's exclusivity
extends only to the manufacturers of Stand-Alone Compatible Amplifiers.
However, in the event that all radio systems utilizing the technology compatible
with the Compatible Amplifiers are manufactured by companies that manufacture
their own Compatible Amplifiers and, as a consequence, there is no market for
Milcom's Compatible Amplifiers, then UWD will refund the sum of $300,000 minus
5% of Milcom's Net Sales.
(c) Running royalties shall be payable by Milcom to UWD for each
calendar quarter during the License Term, on or before the thirtieth (30th) day
following the end of such calendar quarter.
(d) All payments due under this Article 3 shall be made by Milcom
within the United States in U.S. dollars, by check drawn on, or wire transfer
from, a U.S. bank account.
(e) In calculating royalties due on Net Sales made in any foreign
currency, conversion to U.S. dollars shall be at the rate of exchange published
in The Wall Street Journal (or alternative publication mutually agreed by the
parties) for the business day closest to the end of the quarter with respect to
which such royalties are due.
5
3.2 Taxes. In addition to any other amounts due hereunder, Milcom shall
-----
pay all foreign, federal, state, municipal and other governmental excise, sales,
use, property, customs, import, value added, gross receipts and other taxes,
fees, levies and duties of any nature now in force or enacted in the future that
are assessed upon or with respect to the use, manufacture or sale of Compatible
Amplifiers, any payments made or owing hereunder, or otherwise arising in
connection with this License Agreement or any transactions contemplated hereby,
but excluding United States taxes based on UWD's net income. If Milcom is
required by the law of any country to make any deduction, or withhold from any
sum payable to UWD by Milcom hereunder, then the sum payable by Milcom upon
which the deduction or withholding is based shall be increased to the extent
necessary to ensure that, after such deduction or withholding, UWD receives and
retains, free from liability for such deduction or withholding, a net amount
equal to the amount UWD would have received and retained in the absence of such
required deduction or withholding.
4. Reports, Payments and Accounting.
--------------------------------
4.1 Sales Reports. Within thirty (30) days after the end of each calendar
-------------
quarter, Milcom shall deliver a written report certified by a responsible
corporate officer (the "Sales Report") describing in detail the manner in which
the amount credited against the up front royalty or payable as running royalty
was calculated, and separately stating gross sales by Milcom by country, as well
as any permitted amounts deducted in calculating Net Sales. Each Sales Report
also shall set forth all Compatible Amplifiers used by Milcom itself or sold or
otherwise disposed of other than in a bona fide arms' length sale. Milcom shall
provide such additional information concerning the calculation of royalties and
other data in the Sales Reports as UWD may reasonably request from time to time.
4.2 Records; Audit. Milcom agrees to make and maintain detailed, accurate
--------------
books, records and accounts containing the information required to calculate the
royalties due to UWD and to verify the accuracy and completeness of the Sales
Reports and Milcom's compliance with its other obligations hereunder, and to
keep such books, records and accounts for a period of three (3) years after the
relevant reporting period. During the term of this License Agreement and for a
period of two (2) years thereafter, UWD shall have the right from time to time
to audit, through any reputable certified public accounting firm selected by
UWD, such books, records, accounts and customer invoices and other supporting
documentation of Milcom, in order to verify the amount of royalties due, the
Sales Report and Milcom's compliance with this License Agreement. UWD shall
provide Milcom at least ten (10) days' prior written notice of its election to
conduct such an audit. Milcom shall assist the representatives of UWD in
conducting such audit, without charge, and shall make such documents available
for inspection and copying and shall make such
6
personnel available for interviews as may be reasonably necessary to allow UWD
or its representative to perform the audit.
UWD agrees to make and maintain detailed, accurate books, records and accounts
containing the information required to calculate the royalty rates charged to
UWD's licensees and to verify that UWD is charging Milcom the royalty rate
required by this agreement and to keep such books, records and accounts for a
period of three (3) years after the relevant royalty period. During the term of
this License Agreement (after Net Sales have reached $12,000,000) and for a
period of two (2) years thereafter, Milcom shall have the right to from time to
time to audit, through a reputable certified public accounting firm selected by
Milcom, such books, records and accounts and other supporting documentation of
UWD, in order to verify that UWD is charging Milcom the royalty rate required by
this agreement. Milcom shall provide UWD at least ten (10) day's prior written
notice of its election to conduct such an audit. UWD shall assist the
representatives of Milcom in conducting such audit, without charge, and shall
make such documents available for inspection and copying and shall make such
personnel available for interviews as may be reasonably necessary to allow
Milcom or its representatives to perform the audit.
4.3 Audit Expenses. If any audit by UWD reveals that Milcom has
--------------
underpaid UWD (or taken credits against the up front royalty) by an amount equal
to or greater than ten percent (10%) of the amounts owed (or the amounts that
should have been credited) with respect to any reporting period, and that such
underpayment was deliberate, then Milcom shall bear all expenses reasonably
incurred by UWD in connection with the audit. Any underpayment revealed by the
audit shall be paid to UWD by Milcom within ten (10) days of receipt from UWD of
notice of such underpayment.
If any audit by Milcom reveals that UWD has overcharged Milcom by an amount
equal to or greater than ten percent (10%) of the amount owed and that such
overcharge was deliberate, then UWD shall bear all expenses reasonably incurred
by Milcom in connection with the audit. Any overpayment revealed by the audit
shall be paid to Milcom within ten (10) days of receipt from Milcom of notice of
such overpayment.
5. Ownership.
---------
Milcom acknowledges and agrees that UWD is and shall remain the sole and
exclusive owner of the Base Station Amplifier Technology, and all patents,
know-how, trade secrets, Licensed Trademarks, and documentation provided or
licensed pursuant to this License Agreement and that Milcom acquires no rights
in or to any of the foregoing, other than the license rights specifically
granted herein.
7
6. Certain Obligations of Milcom.
-----------------------------
6.1 Marketing. During the period of exclusivity, Milcom shall use its
---------
best efforts to manufacture, promote and sell Compatible Amplifiers in the
Territory. During the period of non-exclusivity, Milcom shall use reasonable
efforts to manufacture, promote and sell Compatible Amplifiers in the Territory.
6.2 Support. Milcom shall provide the purchasers of the Compatible
-------
Amplifiers sold by Milcom with competent maintenance, support and service for
such Compatible Amplifiers through qualified personnel.
6.3 Reports. Milcom shall furnish UWD with reports at least
-------
semi-annually summarizing its marketing and support activities with respect to
Statements of Work, and shall respond to such reasonable inquiries concerning
such activities as UWD may make from time to time.
6.4 Intellectual Property Notices. Milcom agrees to apply, in legible
-----------------------------
form, the label "DC/MA Compatible Product Produced and Sold under License from
Unique Wireless Developments, L.L.C." to all Compatible Amplifiers sold by it.
In addition, Milcom shall (i) xxxx all Compatible Amplifiers and their
containers in accordance with the patent and other intellectual property marking
laws and regulations, if any, of the jurisdictions in which such Compatible
Amplifiers are manufactured, used or sold, and notify UWD in writing prior to
the initial instance of any such marking, and (ii) comply with all reasonable
requests by UWD regarding other notices to protect UWD's intellectual property
rights.
6.5 Notice of Violation. If Milcom becomes aware of any infringement or
-------------------
violation of any UWD patent, Licensed Trademark or other UWD intellectual
property right by any third party (including, without limitation, any customer),
Milcom shall promptly notify UWD and shall cooperate reasonably with UWD, at
UWD's request and expense, to terminate or remedy such infringement or
violation.
6.6 Compliance With Certain Laws. If any filing with or notice to any
----------------------------
governmental authority, or any government approval of this License Agreement, is
required to make this License Agreement effective or to make UWD's rights
hereunder enforceable or otherwise to protect UWD's proprietary rights
hereunder, or to permit Milcom to perform any of its obligations hereunder,
Milcom shall promptly so notify UWD in writing and, at UWD's request, Milcom
shall promptly, at UWD's expense, take all actions required to make such filing,
give such notice or obtain such approval. Milcom shall keep UWD currently
informed of its efforts in this regard. Without limitation of the foregoing,
Milcom shall comply with the United States Foreign Corrupt Practices Act, and
shall indemnify UWD from any failure to comply with or violation of such Act by
Milcom. Milcom, at its expense, shall obtain and maintain
8
in effect all permits, licenses and other consents necessary to the conduct of
its activities hereunder.
6.7 Actions Concerning Licensed Trademarks. Milcom shall not contest or
--------------------------------------
take any action that would jeopardize or diminish UWD's exclusive rights in the
Licensed Trademarks, and, if Milcom should acquire any interest therein, it
shall promptly assign and convey such interest and associated goodwill to UWD.
7. Limited Warranties; Disclaimers; Limitations.
--------------------------------------------
7.1 Authority. Each party represents to the other that it has full
---------
corporate power and authority to enter into this License Agreement and to carry
out the provisions hereof.
7.2 No Conflicts. UWD represents and warrants that is has the legal right
------------
to grant the licenses granted herein, and that it has no other outstanding
agreements or obligations inconsistent with the terms and provisions of this
License Agreement.
7.3 Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, UWD
---------- ---------
MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND, WHETHER EXPRESS, IMPLIED, OR
ARISING BY CUSTOM OR TRADE USAGE, WITH RESPECT TO THE COMPATIBLE AMPLIFIERS,
LICENSED PATENTS, LICENSED KNOW-HOW, LICENSED TRADEMARKS, DOCUMENTATION, OR ANY
SERVICES, MATERIALS OR RIGHTS PROVIDED HEREUNDER, OR OTHERWISE IN CONNECTION
WITH THIS LICENSE AGREEMENT. WITHOUT LIMITING THE FOREGOING, UWD EXPRESSLY
DISCLAIMS ANY IMPLIED WARRANTY OR REPRESENTATION (i) AS TO THE VALIDITY OR SCOPE
OF ANY LICENSED PATENTS, (ii) THAT ANY COMPATIBLE AMPLIFIER, OR ITS DEVELOPMENT,
MANUFACTURE, MARKETING, SALE, DISPOSITION OR USE, OR ANY ACTIVITIES OF MILCOM
CONTEMPLATED BY THIS LICENSE AGREEMENT, WILL BE FREE FROM INFRINGEMENT OF ANY
PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHTS OF ANY THIRD PARTY, (iii) AS TO
THE QUALITY OR PERFORMANCE OF ANY COMPATIBLE AMPLIFIER MADE UNDER THIS LICENSE
AGREEMENT, OR (iv) OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
7.4 Limitations of Liability. UNDER NO CIRCUMSTANCES SHALL MILCOM BE
------------------------
ENTITLED TO RECOVER FROM UWD ANY INCIDENTAL, CONSEQUENTIAL, INDIRECT, SPECIAL
OR PUNITIVE DAMAGES (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF
BUSINESS, LOSS OF PROFITS OR LOSS OF USE), WHETHER BASED ON CONTRACT, TORT
(INCLUDING NEGLIGENCE), OR ANY OTHER CAUSE OF ACTION RELATING TO THE COMPATIBLE
AMPLIFIERS, LICENSED PATENTS, LICENSED KNOW-HOW, LICENSED TRADEMARKS,
DOCUMENTATION, OR ANY SERVICES, MATERIALS OR RIGHTS PROVIDED HEREUNDER, OR
OTHERWISE RELATING TO THIS LICENSE AGREEMENT, EVEN IF UWD HAS BEEN INFORMED OR
SHOULD KNOW OF THE POSSIBILITY OF SUCH DAMAGES. EXCEPT WITH RESPECT TO ANY CLAIM
OF INFRINGEMENT COVERED BY SECTION 8.1, IN NO EVENT SHALL THE LIABILITY OF UWD
(WHETHER BASED ON CONTRACT, TORT (INCLUDING NEGLIGENCE) OR ANY OTHER CAUSE OF
ACTION) EXCEED THE AGGREGATE AMOUNT OF ROYALTIES ACTUALLY RECEIVED BY UWD
PURSUANT TO SECTION 3.1.
9
7.5 Certain Additional Limitations. In connection with all sales or other
------------------------------
dispositions of Compatible Amplifiers by Milcom, Milcom shall expressly extend
all limitations of liability benefitting UWD so that they also cover and benefit
UWD's licensors and suppliers.
8. Indemnification; Insurance.
--------------------------
8.1 Indemnification. Milcom shall indemnify and hold UWD harmless from
---------------
and against any and all claims, demands, actions, losses, liabilities, damages
and expenses (including, without limitation, reasonable attorneys' fees)
(collectively, "Losses") that arise out of or are incurred in connection with
Milcom's development or manufacture of any Compatible Amplifiers or the
marketing, distribution, sale, disposition or use by anyone (including, without
limitation, Milcom, its agents, resellers, and end users) of any such Compatible
Amplifiers or provision by anyone of any related services; provided, however,
in no event shall Milcom be required to indemnify or hold UWD harmless from and
against any Losses that arise our of a) any wrongful or negligent act or
omission of UWD or its agents or representatives b) any claim of infringement
for which Milcom is entitled to indemnification pursuant to the second paragraph
of this Section 8.1. The foregoing shall include, subject to the limitation set
forth in the immediately preceding sentence, without limitation, indemnifciation
of UWD by Milcom against all Losses that arise out of or are incurred in
connection with (i) any representation, warranty or agreement that is made by
Milcom (or any of its agents or resellers) to or with any reseller, end user or
other third party with respect to such Compatible Amplifier or service that
otherwise arises out of any such transaction, or (ii) any claim that any such
Compatible Amplifier or part thereof is defective (whether in design, materials,
workmanship or otherwise) or that otherwise relates to any attribute, condition
or failure of any such Compatible Amplifier, including, without limitation, any
claim of product liability (whether brought in tort, warranty, strict liability
or other form of action) or negligence.
UWD shall indemnify and hold Milcom harmles from and against any and all Losses
that arise out of or are incurred in connection with any wrongful or negligent
act or omission of UWD or its agents or representatives. In addition, UWD hereby
agrees to defend or settle, at its own expense, any claim made against Milcom
that Milcom's use, within the scope of this License Agreement, of the Base
Station Amplifier Technology infringes any patent, copyright, trade secret, or
other proprietary right of any third party, and shall indemnify Milcom and hold
it harmless against any final judgment, including an award of reasonable
attorney's fees, which may be awarded against Milcom as a result of the
foregoing; provided that Milcom shall give UWD prompt written notice of such
claim and shall provide UWD with all reasonable cooperation and information in
Milcom's possession and sole control over the defense and settlement of any such
claim.
10
8.2 Insurance. Milcom will procure and maintain at its expense
---------
comprehensive general liability insurance with a reputable insurer in the
amounts of not less than $2,000,000 per incident and $2,000,000 annual
aggregate. Such comprehensive general liability insurance will (a) provide
product liability coverage, (b) provide broad form contractual liability
coverage extending to Milcom's indemnification under Section 8.1, (c) contain no
products or completed operations exclusions, (d) be in occurrence form, (e) name
UWD as an additional insured, and (f) be primary, and any applicable insurance
maintained by UWD will be excess and non-contributing. Milcom will maintain such
insurance during (i) the period that any product or service relating to, or
developed pursuant to, this License Agreement is being distributed, sold or
provided by Milcom, and (ii) ten years after the end of the period referred to
in clause (i). Milcom will provide UWD with written evidence of such insurance
upon request of UWD, and will provide UWD with written notice at least thirty
(30) days prior to any cancellation, non-renewal, reduction or other material
change in such insurance.
9. Termination.
-----------
9.1 License Term. This License Agreement shall continue in full force
------------
and effect from the Effective Date until terminated pursuant to this section 9
("License Term").
9.2 Termination by Either Party. Notwithstanding anything herein to the
---------------------------
contrary, each party shall have the right, in addition and without prejudice to
any other rights or remedies, to terminate this License Agreement if:
(a) the other party fails to pay any sum of money when due hereunder
or commits any material breach of the terms hereof which, in the case of a
breach capable of remedy, shall not have been remedied within (i) ten (10) days
in the case of nonpayment, or (ii) thirty (30) days in the event of any other
breach, of the receipt by the party in default of notice specifying the breach
and requiring its remedy; or
(b) the other shall dissolve, liquidate, or cease to carry on
business operations.
9.3 Termination by UWD. Without limiting any other rights or remedies of
------------------
UWD, UWD may at its option terminate this License Agreement by giving written
notice to Milcom upon the occurrence of any of the following events:
(a) Milcom becomes insolvent or unable to pay its debts generally as
they mature;
(b) Milcom makes a general assignment for the benefit of creditors;
11
(c) Milcom is adjudicated bankrupt under any involuntary petition for
bankruptcy or similar proceeding;
(d) Milcom files a petition in bankruptcy or a petition or answer
seeking a reorganization, arrangement with creditors or composition or other
similar relief under the bankruptcy laws of the United States or under any other
similar law applicable to Milcom; or
(e) Milcom consents to the appointment of a trustee or receiver for
Milcom or any part of its property.
9.4 Effect of Termination.
---------------------
(a) Upon any expiration or termination of this License Agreement, all
rights and licenses granted to Milcom hereunder shall terminate.
(b) No expiration or termination of this License Agreement shall
relieve Milcom of any obligation to pay amounts due as a result of any
transaction prior to the date of expiration or termination (including royalties
on Net Sales through such date) nor affect any other rights or liabilities of
the parties which may have accrued prior to the date of expiration or
termination. Notwithstanding anything herein to the contrary, upon any
expiration or termination of this License Agreement, the provisions of Sections
3.2, 4.2, 4.3, 5, 7.3, 7.4, 7.5, 8.1, 8.2, 9.4, and all of Articles 10 and 11
shall survive such expiration or termination and continue in effect.
10. Confidential Information.
------------------------
10.1 Confidentiality Obligation. Each party shall hold in confidence any
--------------------------
Confidential Information disclosed by the other or otherwise obtained by such
party as a result of activities contemplated by this License Agreement, and each
party shall protect the confidentiality thereof with the same degree of care
that it exercises with respect to its own information of a like nature, but in
no event less than reasonable care. Access to Confidential Information must be
restricted to the receiving party's employees, who, in each case, need to have
access to carry out a permitted use and are bound in writing to maintain the
confidentiality of such Confidential Information. The Confidential Information,
and all copies of part or all thereof, shall be and remain the exclusive
property of the disclosing party, and the receiving party shall acquire only
such rights as are expressly set forth under the terms and conditions of this
License Agreement and only for so long as such rights are in effect.
10.2 Exceptions. Notwithstanding any provisions contained herein concerning
----------
nondisclosure and non-use of the Confidential Information, the obligations of
Section 10.1 and 10.3 shall not
12
apply to any portion of the Confidential Information which the receiving party
can demonstrate by legally sufficient evidence:
(a) now or hereafter, through no act or failure to act on the part of
the receiving party, becomes generally known in the electronics industry;
(b) is known to the receiving party at the time of receiving such
Confidential Information without an obligation of confidentiality;
(c) is hereafter furnished to the receiving party by a third party as
a matter of right without restriction on disclosure;
(d) is independently developed by the receiving party without use of
any Confidential Information received from the other; or
(e) is disclosed in response to a valid order of a court or other
governmental body or any political subdivision thereof; provided, however, that
the party making the disclosure pursuant to such an order shall promptly give
notice to the other party and make a reasonable effort to obtain a protective
order requiring that Confidential Information so disclosed be used only for the
purposes for which the order was issued.
10.3 Limitation on Use. Except as provided in this License Agreement, a
-----------------
receiving party shall not use, make, have made, distribute or disclose any
copies of the Confidential Information, in whole or in part, without the prior
written authorization of the disclosing party.
10.4 Termination. Subject to any surviving license rights as determined by
-----------
Section 9.4, each party shall, upon termination of this License Agreement,
immediately discontinue use of the other's Confidential Information. Within a
reasonable time after termination of this License Agreement, but in no event
later than thirty (30) days thereafter, all materials containing such
Confidential Information shall be returned by the receiving party or destroyed
with the disclosing party's written consent, except that the receiving party may
retain a copy of any Confidential Information that is reasonably necessary to
its exercise of any such surviving license right. An officer of the receiving
party shall certify in writing to the disclosing party that the receiving party
has complied with the obligations of this Section 10.4.
10.5 Survival. Notwithstanding any termination of this License Agreement
--------
the obligations set forth in this Article 10 shall survive any termination of
this License Agreement.
13
11. Miscellaneous.
-------------
11.1 Governing Law. This License Agreement shall be governed by and
-------------
construed in accordance with the substantive laws of the State of Delaware,
without regard to its principles of conflicts of laws. Any dispute arising
hereunder or concerning any transaction contemplated hereby shall be resolved
only in a state or federal court located in the State of Delaware, and each of
the parties hereby agrees to submit itself to the exclusive jurisdiction and
venue of such courts for such purposes. The United Nations Convention on
Contracts for the International Sale of Goods shall not apply to this License
Agreement. The English language version of this License Agreement shall be the
official text hereof, despite translations or interpretation of this License
Agreement in other languages.
11.2 Attorneys' Fees. In the event of any legal action to enforce the
---------------
terms and conditions of this License Agreement, the prevailing party in any such
action shall be entitled to its costs and expenses, including reasonable
attorneys' fees, expended in enforcing its rights hereunder.
11.3 Notices. All notices and requests required or authorized hereunder
-------
shall be made in writing, shall be effective upon receipt, and shall be
sufficiently given if personally delivered or if sent by courier or certified
mail, return receipt requested, addressed to the President of the party entitled
or required to receive such notice at the address for such party set forth at
the outset hereof, or such other address as such party may specify by such
notice.
11.4 Complete Agreement. This License Agreement and the Exhibits hereto
------------------
constitute and express the final, complete and exclusive agreement and
understanding between the parties with respect to their subject matter and
supersede all previous communications, representations or agreements, whether
written or oral, with respect to the subject matter hereof.
11.5 Export Administration. Where applicable, Milcom shall comply, at its
---------------------
own expense, with the export control laws of the United States of America and
relevant regulations issued by the United States Department of Commerce and
Department of State.
11.6 Independent Contractors. Milcom and UWD are independent contractors
-----------------------
and are not, and shall not represent themselves as, principal and agent,
partners or joint venturers. Neither party shall attempt to act, or represent
itself as having the power, to bind the other or create any obligation on behalf
of the other. Each party shall assume complete responsibility for obligations
under federal and state employers' liability, worker's compensation, social
security, unemployment insurance, tax withholding, occupational safety and
health administration laws and other federal, state and local laws and all
United Kingdom, Canadian and other non-U.S. laws with respect to itself.
14
11.7 Amendment; Waiver. This License Agreement may not be modified,
-----------------
amended, rescinded, canceled or waived, in whole or part, except by a written
instrument signed by the parties; provided, that any unilateral undertaking or
waiver made by one party in favor of the other shall be enforceable if
undertaken in a writing signed by the party to be charged with the undertaking
or waiver. No delay or omission by either party hereto in exercising any right
or power occurring upon any noncompliance or default by the other party with
respect to any of the terms of this License Agreement will impair any such right
or power or be construed to be a waiver thereof. A waiver by either of the
parties hereto of any of the covenants, conditions or agreements to be performed
by the other will not be construed to be a waiver of any succeeding breach
thereof or of any other covenant, condition or agreement herein contained.
11.8 Severability. Whenever possible, each provision of this License
------------
Agreement shall be interpreted in such manner as to be effective and valid under
applicable law. If any provision of this License Agreement is determined to be
invalid or unenforceable, it shall be deemed stricken and the remainder of the
License Agreement shall continue in full force and effect. If practicable, the
parties shall negotiate in good faith to replace the severed provision by a
mutually acceptable valid, legal and enforceable provision that reflects the
intentions of the parties underlying the severed provision.
11.9 Force Majeure. The failure of any party hereunder to perform any
-------------
obligation otherwise due (except for the payment of moneys due hereunder) as a
result of governmental action, law, order or regulation, or as a result of war,
act of public enemy, strike or other labor disturbance, fire, flood, act of God
or other causes of like kind beyond the reasonable control of such party, shall
be excused for so long as said cause exists to the extent such failure is caused
by such event.
11.10 Captions. The captions herein have been inserted solely for
--------
convenience of reference and in no way define or limit the scope or substance of
any provision of this License Agreement.
11.11 Meaning of Certain Terms. As used in this License Agreement,
------------------------
"herein" and "hereof" shall refer to this License Agreement as a whole, and
"including" shall mean "including but not limited to." All dollar amounts
stated herein are expressed in United States dollars. All references herein to
Sections shall be deemed to refer to Sections of this License Agreement unless
specified to the contrary.
11.12 Counterparts. This License Agreement may be executed in
------------
counterparts with the same force and effect as if each of the signatories had
executed the same instrument.
15
IN WITNESS WHEREOF, the parties hereunder have executed this License
Agreement as of this 30th day of August, 1995.
UNIQUE WIRELESS MILCOM INTERNATIONAL CORP.
DEVELOPMENTS, L.L.C.
BY: /s/ XXXXXX X. XXXXXXX BY: /s/ XXXXXXX X. XXXXXXX
----------------------- -----------------------
TITLE: PRESIDENT TITLE: CEO
-------------------- --------------------
16
EXHIBIT A
Licensed Trademarks
The following trademarks of UWD are the Licensed Trademarks:
DC/MA
DCMA
DYNAMIC CHANNEL/MULTI-CARRIER ARCHITECTURE
17
EXHIBIT B
Territory
The Territory shall consist of the following countries:
The entire world except those countries to which the Base Station Amplifier
Technology cannot be exported pursuant to U.S. Export Administration laws or
regulations.
18
