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Exhibit 10.2
OEM AND PATENT LICENSE OPTION AGREEMENT
THIS AGREEMENT ("this Agreement"), dated January 27, 1995, is made
by and between MOTOROLA, INC., a Delaware corporation having its principal place
of business at 0000 Xxxx Xxxxxxxxx Xxxx, Xxxxxxxxxx, Xxxxxxxx 00000-0000, and
AIRNET COMMUNICATIONS CORPORATION, a Delaware corporation having its principal
place of business at 000 Xxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxx, Xxxxxxx 00000.
RECITALS
WHEREAS, pursuant to an Investment Agreement of even date herewith,
Motorola has agreed to make an equity investment in AirNet as specified therein,
as part consideration for this Agreement; and
WHEREAS, AirNet is willing to grant Motorola certain options to
purchase certain AirNet equipment on certain conditions; and
WHEREAS, AirNet is willing to grant Motorola certain options to
take licenses under AirNet's patents on certain conditions; and
WHEREAS, Motorola and AirNet are willing to enter into other mutual
covenants with one another on certain terms and conditions; and
WHEREAS, Motorola and AirNet wish to set forth their agreement
regarding the options for equipment purchases, licenses, and other mutual
covenants in writing as specified herein;
NOW, THEREFORE, in consideration of the foregoing recitals, and the
covenants, representations and warranties set forth herein, and other good and
valuable consideration, the parties hereto hereby agree as follows:
ARTICLE I
Certain Defined Terms
The following capitalized terms used in this Agreement shall have
the following meanings:
1.1 "AirNet" shall mean AirNet Communications Corporation, a
corporation of the State of Delaware having its principal place of business at
000 Xxxxxx Xxxxx, Xxxxxxxxx, Xxxxxxx 00000.
1.2 "AirNet Licensee" shall mean any third party who has been
granted a royalty bearing license to AirNet's intellectual property.
1.3 "Commercial", when used as an adjective to refer to AirNet's
products, shall mean an AirNet product that has been made available for shipment
by AirNet to its regular customers.
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1.4 "Pre-Commercial", when used as an adjective to refer to
AirNet's products, shall refer to an AirNet product that is under development by
AirNet and which is not yet available for shipment by AirNet to its regular
customers.
1.5 "BDR" or "Broadband Digital Radio" shall mean that part of a
BTS that interfaces between a BPU and one or more antenna(s) or linear power
amplifier(s), and which consists of radio frequency (RF) or intermediate
frequency (IF) receiving and transmitting circuits and analog-to-digital and
digital-to-analog conversion circuits.
1.6 "BPU" or "Broadband Processing Unit" shall mean that part of a
BTS that interfaces between a BDR and a base station controller or other
telephone network switching system.
1.7 "BTS" or "Broadband Transceiver System" shall mean the
combination of a BDR and a BPU.
1.8 "Motorola" shall mean Motorola, Inc., and any Non-Competing
Motorola-Owned Company.
1.9 "Motorola, Inc." shall mean Motorola, Inc., a Delaware
corporation having its principal place of business at 0000 Xxxx Xxxxxxxxx Xxxx,
Xxxxxxxxxx, Xxxxxxxx, 00000-0000, and any wholly owned subsidiaries of Motorola,
Inc.
1.10 "Non-Competing Motorola-Owned Company" shall mean any business
enterprise in which Motorola owns at least a 51 % interest and which is not in
direct competition with AirNet. Such a business enterprise shall not be
considered to be in direct competition with AirNet if: (1) the business
enterprise was created for the purpose of satisfying the domestic content
requirements of foreign governments in order to enable Motorola to have its
products manufactured overseas; (2) Motorola, Inc. remains the primary access
point for customers for the products and/or services manufactured and/or sold by
the business enterprise; or (3) the business enterprise is not engaged in
selling wireless base station products or services.
1.11 "Other Substantial Investor" shall mean any third person or
entity who is not one of the Other Strategic Companies and whom makes an equity
investment in AirNet of at least the same value as the equity investment made by
Motorola in AirNet.
1.12 "Other Strategic Companies" shall mean AT&T Corporation,
Northern Telecom Limited, X.X. Ericsson, and Nokia Oy AB.
1.13 "Other Strategic Partner" shall mean any one or more of the
Other Strategic Companies which may make an equity investment in AirNet.
ARTICLE 2
Equipment Purchase Options
2.1 AirNet hereby agrees to grant Motorola a non-exclusive right to
purchase Commercial AirNet products or components thereof for application in
traditional analog AMPS/NAMPS wireless architectures for deployment in North
America. This right to purchase
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shall be subject to reasonable terms and conditions, including price, to be
mutually agreed upon at the time of a firm order or orders by Motorola.
2.2 AirNet hereby agrees to grant Motorola a non-exclusive right to
purchase Commercial BPUs for DCS 1900/GSM applications for deployment anywhere
in the world, subject to reasonable terms and conditions, including price, to be
mutually agreed upon at the time of a firm order or orders by Motorola.
2.3 AirNet hereby agrees to grant Motorola a non-exclusive right to
purchase up to 10,000 Commercial BPUs for any application, pursuant to firm
orders, with a lead time to be mutually agreed upon, for delivery during the
first twelve months after such units become commercially available, subject to
reasonable terms and conditions, including price, to be mutually agreed upon,
but which terms will be no less favorable than those enjoyed by any other AirNet
customer at that time. Motorola understands that Motorola alone will be
responsible for any integration or software development necessary to integrate
the AirNet BPU into Motorola's application. However, as part of such a later
definitive BPU purchase order, AirNet will agree to provide appropriate
documentation to enable Motorola to develop software for the BPUs, and to
install and maintain the BPUs, with appropriate limits on Motorola's use of such
BPU documentation.
2.5 AirNet hereby agrees to sell to Motorola twenty-five (25)
Pre-Commercial BTS units (with or without digital signal processing decoding),
as agreed to in a definitive order with reasonable terms and conditions,
including price and reasonable lead time, to be mutually agreed upon, and in
accordance with specifications to be agreed upon, for delivery in June, 1995.
ARTICLE 3
Licenses
3.1 In further consideration for Motorola's execution and delivery
of the above-referenced Investment Agreement, AirNet hereby grants Motorola an
option, at Motorola's request, to take a worldwide, non-exclusive, irrevocable,
paid-up, royalty free license under any two of AirNet's patents (including
continuations in part and foreign counterparts thereof) which issue at any time,
subject to the limitations set forth below.
3.2 The patent licenses granted in Section 3.1 above are personal
to Motorola and may not be sold, leased, transferred, assigned, or sub-licensed
in any way. Such patent licenses shall extend only to products manufactured by
Motorola, it being understood, however, that any such patent license will extend
to products manufactured by Motorola and sold directly by Motorola to Motorola's
distributors and Motorola's customers, including any value-added reseller
customers of Motorola. Motorola shall not use any such patent licenses to
knowingly put third parties in direct competition with AirNet. Although AirNet
recognizes that such patent licenses to Motorola may permit Motorola and AirNet
to compete with each other, Motorola shall not be granted any right to
sub-license others under AirNet's patents.
3.3 Motorola's patent license rights granted pursuant to section
3.1 shall be limited to AirNet's digital transceiver technology patent(s), and
AirNet shall not, for example, be obligated to grant Motorola any license to
AirNet's frequency reuse technology, or any technology
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not directly related to cellular or wireless base station operation. Any such
patent license shall be evidenced by a definitive patent license agreement with
mutually acceptable terms. Any such license shall be a patent license only, and
not a license under any other intellectual property right that AirNet may have
in the AirNet Products, such as a copyright, trade secret, know-how, or other
proprietary right. Motorola shall not, for example, be granted any right to
access or copy the confidential aspects of the design of AirNet's products.
3.4 In addition, should AirNet ever grant a royalty-bearing
intellectual property license for Commercial AirNet products in whole or in part
to an AirNet Licensee, then AirNet will, at Motorola's request, offer Motorola
the opportunity to take a similar license. The terms and conditions of such a
license shall be more favorable than those received by any such AirNet
Licensees, such that the aggregate payments under any such license to Motorola
shall be at least 20% lower than the lowest aggregate payments required to be
paid by any AirNet Licensee. This discounted license payment right is intended
to be a discount from AirNet's traditional licenses only, and shall not include
cross-licenses, or licenses which may be required for AirNet to satisfy the
domestic content requirements of foreign governments to enable AirNet to have
its products manufactured overseas. This right in favor of Motorola's 20%
discount shall also not apply to any royalty-bearing intellectual property
license granted by AirNet to an Other Strategic Partner or an Other Substantial
Investor, provided, however, that Motorola's aggregate payment discount shall be
at least as favorable as the discount granted to an Other Strategic Partner or
Other Substantial Investor.
3.5 In the event of a potential merger, consolidation or sale of
AirNet (a "Major Transaction"), and if Motorola has not yet exercised its option
to take a worldwide, non-exclusive, irrevocable, paid-up, royalty-free license
under Section 3.1 above under one or two of AirNet's patents, AirNet, at
AirNet's option, by delivery of written notice (the "Sale of Company Notice") to
Motorola, may require Motorola to (a) exercise ("Exercise") such option for two
(or one if only one is still available), of such licenses, which Exercise may,
at Motorola's option, be subject to the closing of such Major Transaction; or
(b) to cancel and terminate ("Cancel") such option with respect to two (or one
if only one is still available) of such licenses in consideration for a payment
from AirNet of $1,000,000 for each option so canceled. Motorola shall elect to
Exercise or to Cancel by delivering written notice (the "Election Notice") to
AirNet within twenty (20) days of Motorola's receipt of the Sale of Company
Notice. In the event that Motorola fails to respond to the Sale of Company
Notice by delivering an appropriate Election Notice within such period, Motorola
shall be deemed to have elected to Cancel, subject to the closing of such Major
Transaction. In the event Motorola elects to Cancel, AirNet's obligation to pay
for such cancellation, and Motorola's obligation to Cancel, shall be subject to
the closing of such Major Transaction. In the event that Motorola elects to
Exercise such option, for each such option still available, Motorola shall have
the right pick a worldwide, non-exclusive, irrevocable, paid-up, royalty-free
license under Section 3.1 to (i) an AirNet patent then issued; (ii) an AirNet
patent application then pending which has not yet issued; or (iii) an AirNet
patent disclosure document which has been filed with a government patent office
but which is not yet pending.
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ARTICLE 4
Patent Infringement Dispute Resolution
4.1 Motorola agrees not to seek an injunction against AirNet for
infringement of any Motorola digital base station transceiver technology patent.
Before filing suit against AirNet, Motorola agrees that it will first attempt to
settle any such claim or controversy based upon infringement of a Motorola
patent through consultation and negotiation in good faith of an appropriate
non-exclusive license in a spirit of mutual cooperation with AirNet. If those
attempts fail, then such dispute will be mediated by a mutually acceptable
mediator to be chosen by the parties within fifteen (15) business days after
written notice by one of the parties demanding mediation. Neither party may
unreasonably withhold consent to the selection of the mediator. By mutual
agreement, however, the parties may postpone mediation. The parties may also
mutually agree to replace mediation with some other form of alternative dispute
resolution ("ADR"), such as neutral fact-finding or a mini-trial.
Any dispute which Motorola and AirNet cannot resolve through
negotiation, mediation, or another form of ADR within forty-five (45) days of
the date of the initial demand for ADR by one of the parties may be submitted to
any federal or state court of competent jurisdiction. The use of any ADR
procedures will not be construed under the doctrine of laches, waiver, or
estoppel to affect adversely the rights of any party. Nothing in this Section 4.
1 will prevent either party from resorting to judicial proceedings if good faith
efforts to resolve the dispute under these procedures have been unsuccessful.
4.2 AirNet agrees not to seek an injunction against Motorola for
infringement of any AirNet digital base station transceiver technology patent.
Before filing suit, AirNet agrees that it will first attempt to settle any such
claim or controversy based upon infringement of an AirNet patent through
consultation and negotiation in good faith of an appropriate non-exclusive
license in a spirit of mutual cooperation with Motorola. If those attempts fail,
then such dispute will be mediated by a mutually acceptable mediator to be
chosen by the parties within fifteen (15) business days after written notice by
one of the parties demanding mediation. Neither party may unreasonably withhold
consent to the selection of the mediator. By mutual agreement, however, the
parties may postpone mediation. The parties may also mutually agree to replace
mediation with some other form of alternative dispute resolution ("ADR"), such
as neutral fact-finding or a mini-trial.
Any dispute which AirNet and Motorola cannot resolve through
negotiation, mediation, or another form of ADR within forty-five (45) days of
the date of the initial demand for ADR by one of the parties may be submitted to
any federal or state court of competent jurisdiction. The use of any ADR
procedures will not be construed under the doctrine of laches, waiver, or
estoppel to affect adversely the rights of any party. Nothing in this Section
4.2 will prevent either party from resorting to judicial proceedings if good
faith efforts to resolve the dispute under these procedures have been
unsuccessful.
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ARTICLE 5
Representations and Warranties of AirNet
5.1 Authority. AirNet has all requisite power and authority to
enter into and execute this agreement and to perform its obligations hereunder.
All corporate action on the part of AirNet and its officers and directors
necessary for the authorization, execution, delivery and performance of AirNet
under this agreement has been duly and validly taken.
5.2 Binding Agreement. This agreement constitutes a legal, valid
and binding obligation of AirNet, and is enforceable against AirNet in
accordance with its terms except as enforceability may be limited by (i)
bankruptcy, reorganization, insolvency and other laws affecting the enforcement
of creditor's rights generally, and (ii) general principles of equity, whether
or not the enforceability of this agreement is considered in a proceeding in
equity or at law.
5.3 Intellectual Promptly Warranty. As part of any patent license
granted by AirNet to Motorola pursuant to Article 3 above, AirNet will include a
warranty representing that to the best of AirNet's knowledge at the time such
patent license(s) are entered into, the patent(s) licensed thereby are valid and
enforceable. AirNet also agrees to include with such warranty a provision that
in the event any patent so licensed is later held, by a final decree of a court
of competent jurisdiction or patent office administrative reexamination
proceeding, and after all possibilities of appeal have been exhausted, to be
invalid or unenforceable, and AirNet has breached such warranty to Motorola,
AirNet will grant Motorola another option, at Motorola's request, to take a
license to another of AirNet's patents, to replace such license for the patent
held invalid or unenforceable, such other patent license being subject to the
same limitations as set forth in Article 3 above.
ARTICLE 6
Representations and Warranties of Motorola
6.1 Authority. Motorola has all requisite power and authority to
enter into and execute this agreement and to perform its obligations hereunder.
All corporate action on the part of Motorola and its officers and directors
necessary for the authorization, execution, delivery and performance of all
obligations of Motorola under this agreement has been duly and validly taken.
6.2 Binding Agreement. This agreement constitutes a legal, valid
and binding obligation of Motorola, and is enforceable against Motorola in
accordance with its terms except as enforceability may be limited by (i)
bankruptcy, reorganization, insolvency and other laws affecting the enforcement
of creditor's rights generally, and (ii) general principles of equity, whether
or not the enforceability of this agreement is considered in a proceeding in
equity or at law.
ARTICLE 7
Indemnification
7.1 Each party shall indemnify and hold harmless the other party
and its incidental agents, employees, successors, and assigns, from and against
any and all damages, claims, losses, expenses, costs, obligations and
liabilities, including, without limitation, liabilities
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for attorneys' fees suffered or incurred, either directly or indirectly, as a
result of (i) any material breach of any representation or warranty under this
Agreement; or (ii) any material failure to perform or fulfill the duties and
responsibilities under this Agreement. This indemnification shall not, however,
extend to include any incidental, special, or consequential damages.
ARTICLE 8
Confidential Information
8.1 Motorola and AirNet shall maintain in confidence all
proprietary information communicated to one another pursuant to the licenses
which may be granted hereunder, in accordance with the terms of the Reciprocal
Confidentiality Agreement between AirNet and Motorola dated June 24, 1994, as
amended December 14, 1994.
ARTICLE 9
Miscellaneous Provisions
9.1 No Agency or Partnership Between AirNet and Motorola. Nothing
in this Agreement or any of the transactions, obligations or relationships
contemplated hereby shall, in and of itself, constitute an agreement that either
AirNet or Motorola shall have the authority to act as the agent, employee or
legal representative for the other for any purpose whatsoever, nor shall any
party to this Agreement hold itself out as such. This Agreement does not create
and shall not be deemed to create a relationship of partners, joint venturers,
associates or principal-and-agent between AirNet and Motorola, and each of the
parties hereto acknowledges that it is acting as a principal hereunder. Motorola
is one of several equity investors in AirNet and this Agreement is being made in
connection with AirNet's grant of the right to purchase products and other
mutual license rights described herein.
9.2 Costs and Expenses. Unless otherwise specified in this
Agreement, each party hereto shall bear its own costs and expenses (including,
but not limited to, attorney's fees) in connection with the negotiation,
preparation, execution, delivery and performance of this Agreement, and the
consummation of the transactions contemplated hereby.
9.3 Specific Performance. In the event either party shall fail or
refuse to perform its obligations under this Agreement, the other party, after
complying with Section 3.8, if applicable, shall not have any right to specific
performance.
9.4 Further Assurances. From time to time after the date hereof,
AirNet or Motorola shall execute all such additional instruments, licenses and
certificates, and shall take all such other action as AirNet or Motorola, as the
case may be, may reasonably request in connection with the consummation of this
Agreement and effecting the intent and purpose hereof
9.5 Notices. Any notice, demand or other communication ("Notice")
that may be or is required to be given hereunder or with respect hereto shall be
in writing, and shall be given either (i) by personal delivery, (ii) by
certified mail, return receipt requested, (iii) .by facsimile, or (iv) by
overnight delivery service. Any such Notice shall be deemed to have been given
or made when personally delivered, seven (7) days after the date such Notice is
deposited in the mail, first class postage prepaid, on the date on which the
party receiving such Notice given or made by facsimile acknowledges receipt
thereof (as required below), or the next business day
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following the day such Notice is dispatched by overnight delivery service, as
the case may be, addressed as follows:
If to Motorola:
Motorola, Inc.
0000 X. Xxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxx X. Xxxxxx, Esq.
Senior Vice President and Director for
Patents, Trademarks and Licensing
Phone: (000) 000-0000
Fax No: (000) 000-0000
If to AirNet:
AirNet Communications Corporation
000 Xxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxx 00000
Attention: Xxxxx X. Xxxxxxxxx, Xx.
Vice President-General Counsel
Phone: (000) 000-0000
Fax No: (000) 000-0000
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the Effective Date stated above.
MOTOROLA, INC.
By: /s/ Xxxxxxx X. Xxxxxxx
----------------------------------------
Xxxxxxx X. Xxxxxxx
Title: Corporate Vice President and
Motorola Director, Strategy
AIRNET COMMUNICATIONS CORPORATION
By: /s/ Xxxxxxx X. Xxxxxxx
----------------------------------------
Xxxxxxx X. Xxxxxxx
Title: President & CEO
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