EXHIBIT 10.6
DEVELOPMENT AND LICENSE AGREEMENT
This Development and License Agreement (the "Agreement") is made and
effective as of the later date signed below (the "Effective Date") by and
between ESL Incorporated, a California corporation and a TRW Company with
offices located at 000 Xxxx Xxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000-0000 ("ESL"), and
PacTel Corporation, a California corporation with offices located at 0000 Xxx
Xxxx, Xxxxxx Xxxxx, Xxxxxxxxxx 00000 ("PacTel")
WITNESSETH:
WHEREAS, ESL wishes to develop, and PacTel wishes to have developed, the
"Licensed Products," as that term is defined below; and
WHEREAS, PacTel has expertise in cellular telephony, including ***
*** , alpha and beta testing, field test facilities, and
FCC and regulatory requirements, such as experimental licenses; and
WHEREAS, ESL has expertise in emitter recognition and identification
technology including, but not limited to, *** , developing
and maintaining a database of authorized and unauthorized emitter security
patterns, emitter recognition, and enabling cellular systems to determine
whether to deliver services depending on certain ***
levels; and
WHEREAS, ESL intends to manufacture, have manufactured, use, market, sell
and distribute the Licensed Products in accordance with the terms hereof; and
WHEREAS, PacTel intends to provide business and technical development
support to ESL in accordance with the terms hereof including, but not limited
to, *** ***
; and
WHEREAS, each party intends to bear the costs associated with it own
efforts in the development of the Licensed Products;
NOW, THEREFORE, in consideration of the foregoing recitals and other good
and valuable consideration, the parties hereby agree as follows:
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Treatment and filed separately with the commission.
ARTICLE 1
Definitions and Priority
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1.1 Definitions. The following words and phrases will have the meanings
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set forth below:
1.1.1 Agreement. The term the "Agreement" means this Development and
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License Agreement between ESL and PacTel, including the following Exhibits
attached hereto, and any amendments thereto:
Exhibit A: The ***
*** . As of the Effective Date, this exhibit is in
*** and the parties ***.
Exhibit B: Statement of Work, Milestones and Functional and
Interface Specifications. As of the Effective Date, this
***
*** .
Exhibit C: Nondisclosure Agreement, dated *** .
1.1.2 Develop or Development. The term "develop" or "development,"
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as used herein, means engineering, design, layout, hardware and Licensed
Software generation, prototyping, characterization, qualification, fabrication,
testing, and preparation of data sheets and application notes.
1.1.3 Licensed Products. The term "Licensed Products" means the
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Cellular Fraud Prevention System to be developed hereunder, and any component
parts thereof, developed in accordance with the functional and interface
specifications set forth in Exhibit B hereto, and made under the Licensed
Patents and the inventions described and claimed therein or by the use of
Licensed Technical Information.
1.1.4 Licenses Patents. The term " Licensed Patents" means the
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United States Patents and patent applications and their corresponding foreign
patents and patent applications relating to the Licensed Products, together
with any continuations, divisions, reissues or foreign-country counterparts
thereof.
1.1.5 *** . The term " ***
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" means PacTel's *** containing ***
, as described in Exhibit A, that is used in the Licensed Products for the
*** telephone usage, together with any
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Treatment and filed separately with the commission.
*** and other intellectual property rights thereto. The
term " *** " does not include any subscriber information.
1.1.6 *** . The term " *** " means the
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*** *** and *** for the
scheduling and *** operations within the Licensed Products, as
described in Exhibit A, together with any *** and other
intellectual property rights thereto.
1.1.7 *** . The term " ***
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" means the information, as described in Exhibit A, that is directly related to
the *** *** and the production, manufacture, use,
operation, repair, maintenance, modification or reconstruction thereof, together
with any *** and other intellectual property rights
thereto. This includes, but is not limited to, information in the form of
blueprints, drawings, plans, photographs, instructions, masks, Licensed Software
and documentation.
1.1.8 Gross Sales Price. The term "Gross Sales Price" means the
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amount that is the price at which each Licensed Product is sold or delivered to
the customer or user. In the event that the Gross Sales Price is less than the
*** , as a result of *** or *** under arrangements
with the customer or user, or in the event Licensed Products are *** or
otherwise *** , then for purposes of this Agreement, the Gross Sales
Price shall be the sales price ***
*** .
1.1.9 Net Sales Price. The term "Net Sales Price" means the Gross
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Sales Price, net of expenses for transportation, shipping, insurance, boxing,
handling or similar charges, taxes and duties, if any, and other costs
incidental to shipment.
1.1.10 Affiliate. The term "Affiliate" means any corporation,
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partnership or other business entity in which either party hereto owns or
controls more than fifty percent (50%) of the voting stock or otherwise has more
than fifty percent (50%) of the right to control the entity.
1.1.11 Equity Partner. The term "Equity Partner" means any
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corporation, partnership or other business entity in which either party hereto
owns or controls between five percent (5%) and fifty percent (50%) of the voting
stock or otherwise has between five percent (5%) and fifty percent (50%) of the
right to control the entity.
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Treatment and filed separately with the commission.
1.2 Priority. In the event of any inconsistency between the text of the
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Agreement and the provisions of any of the Exhibits, the text of the Agreement
shall prevail.
ARTICLE 2
Scope of Work, Cost Sharing and Payment
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2.1 Development by PacTel. PacTel will enhance its ***
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and *** and will perform such other tasks as are set forth
in Exhibit B. PacTel agrees to provide ESL with access to its spectrum and
network to facilitate ESL's work on the Licensed Products. PacTel will be
responsible for *** including, but not limited to,
*** and *** , in *** , for *** of
the Licensed Products, and in *** localities only, for ***
release of the Licensed Products. PacTel will provide functional system
specifications including operating and support requirements.
2.2 Development by ESL. ESL will develop an *** for
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wireless subscriber systems and perform such other tasks to develop the Licensed
Products as are set forth in Exhibit B.
2.3 Commercialization by ESL. ESL will commercialize the Licensed
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Products to meet the functional and interface specifications in Exhibit B, i.e.,
ESL will *** *** so that the Licensed
Products will be in manufacturable form for worldwide marketing, sales,
distribution and support by ESL to end user customers.
2.4 Cost Sharing. Each party will bear its own costs associated with its
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respective development efforts described above.
2.5 *** Developments. ESL will have the ***
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*** including, without limitation, any upgrades,
modifications, improvements, enhancements, derivatives or other changes to the
Licensed Products. If ESL exercises such rights, it shall have a license in
accordance with *** and ***
, as that term is defined herein. In each instance, ESL will have a reasonable
amount of time to ***
*** its rights under this Section.
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Treatment and filed separately with the commission.
ARTICLE 3
Term
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The term of the Agreement will be five (5) years from the Effective Date,
unless sooner terminated in accordance with Article 9 hereof. Unless a
termination notice is given by either party hereto six (6) months prior to
expiration of such five-year period, the Agreement shall be renewed
automatically for one (1) year from the date of expiration of the said period
under the same terms and conditions. Neither party will make any claims or
demands against the other party for any damages, losses, expenses or costs, if
any, incurred as a result of the expiration, termination without cause, or non-
renewal of the Agreement.
ARTICLE 4
Licenses Granted and Royalties
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4.1 License to ESL. Subject to the terms and conditions of this
Agreement, PacTel hereby grants to ESL a worldwide, royalty-bearing,
exclusive, nontransferable, nonsublicensable right and license under PacTel's
Licensed Patents, Licensed Database Information and Licensed Technical
Information:
(a) to make, have made, copy and/or use the Licensed Products, including
the Licensed Database Information;
(b) to sell the Licensed Products, including the Licensed Database
Information; and
(c) to provide support for the Licensed Products, including the
Licensed Database Information.
4.2 License to PacTel. Subject to the terms and conditions of this
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Agreement, ESL hereby grants to PacTel a *** , non-exclusive, non-
transferable, *** right and license under ESL's *** to
copy and use the *** for PacTel's internal business purposes in
the United States only during the term of this Agreement.
4.3 Royalties. In consideration of the rights, licenses and benefits
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conferred upon ESL hereunder, during the term of this Agreement, *** will pay
to *** a *** in the amount of *** of
the *** of all ***
*** . *** will have no obligation
to pay *** . In
no event will
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Treatment and filed separately with the commission.
more than *** .
Notwithstanding the foregoing, *** will be payable on any
*** , by a customer. In order to maintain the
*** shall pay to *** ***
*** during the *** and
*** *** thereafter,
*** . The first of such
*** later than *** , and every ***
thereafter during the term hereof. Should *** fail to make such
*** , the ***
*** shall retain only a ***
. The amounts of the *** and *** and
*** at the end of the *** of this
Agreement.
4.4 Accounting and Payment. Within *** after every
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anniversary date of the Agreement during the term hereof, from and after the
date both parties agree that Licensed Products may be released for production,
*** will render to *** a certified check (or other form of payment
acceptable to ***) in the amount of all *** *** on account of
activities of *** under the Agreement during the calendar year preceding the
year in which such *** is required to be made. Further, *** will
transmit to *** , accompanying each such payment, an accurate, itemized
statement (certified upon request) setting forth in sufficient detail for
verification, the basis upon which such *** is determined and made. All
*** will be made to the order of *** in *** and will be
payable at *** address as set forth in Article 13.
4.5 Records and Audit. *** will keep complete and accurate books and
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records, containing adequate details for the calculation of the amounts of all
*** from the *** to *** hereunder. All such books and records will be
available for reasonable time periods during regular business hours, for a
period of three (3) years following the end of the calendar year to which they
pertain, for inspection and audit by *** accountants or independent
auditors for the purpose of verifying all *** submitted by ***. The
obligations of *** under this Article 4 will survive any termination or
expiration of the Agreement.
4.6 Product Marketing.
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(a) ESL will at all times have the sole discretion to set and determine
all terms and conditions of sale of all Licensed Products, including price,
position, distribution channels and name (including ESL trademarks, trade names
or logos). ESL will
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Treatment and filed separately with the commission.
be responsible for distribution of the Licensed Products in its sole discretion.
(b) ESL will at all times have the sole discretion to develop and approve
marketing materials and activities for, the Licensed Products. Further, ESL
will at all times during the term of the Agreement be responsible for
manufacturing, assembling and distributing the components that comprise the
Licensed Products.
(c) PacTel has adopted and owns certain trademarks and service marks used
in identifying and marketing PacTel technology, products and services, logos,
trade names and related acronyms and the like, whether or not registered (the
"PacTel Trademarks"). ESL recognizes and consents for all purposes that the
PacTel Trademarks constitute the exclusive property of PacTel and cannot be used
by ESL pursuant to this license, except as specified in the Agreement, nor will
ESL use any confusing similar trademark, logo, trade name or the like. PacTel
hereby grants to ESL the non-exclusive right to use the following statement in
the marketing of the Licensed Products: " ***
*** ." Nothing contained in the Agreement will be
construed as conferring any additional rights upon ESL to use in advertising,
publicity or other promotional activities any PacTel Trademark, other than
specifically set forth in the preceding sentence, unless PacTel grants to ESL
its prior express written consent. ESL will use the PacTel trade name with such
words qualifying or identifying the relationship of PacTel and ESL as PacTel,
from time to time, may reasonably prescribe. PacTel will have the sole right,
but not the obligation, to register and enforce the PacTel Trademarks and other
marks it adopts, acquires or uses in the United States or in any foreign country
and all rights generated by use of same by ESL will inure directly to the
benefit of PacTel.
(d) The parties will mutually plan and agree upon the contents, form and
manner of publicity with respect to the Licensed Products and will not respond
to inquiries from members of the public media, if such inquiries concern the
contents of the Agreement and details of the transactions contemplated by the
Agreement. In no event will the parties act unilaterally with regard to such
disclosures, unless otherwise required to by law.
(e) PacTel will provide to ESL *** , *** , and such
additional information that ESL may require in order to promote the Licensed
Products. In addition, PacTel will *** for Licensed Product ***
on *** .
(f) ESL reserves the right to ESL-developed trademarks,
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Treatment and filed separately with the commission.
trade names, logos and related acronyms and the like, whether or not registered,
to identify the Licensed Products or other ESL developed technology, products
and services, so long as such trademarks, etc., are not confusingly similar to
the PacTel Trademarks.
ARTICLE 5
Ownership of Inventions and Technical Information
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5.1 Patent Applications. Each party agrees to notify the other party
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within ninety (90) days following the filing of a patent application with
respect to any invention relating to the Licensed Products first reduced to
practice during the term of the Agreement.
5.2 PacTel Inventions. All inventions developed conceived or first
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reduced to practice, as those terms are used before the U.S. Patent
and.Trademark Office, by statute and under common law, solely by PacTel
personnel, will be the sole and exclusive property of PacTel. PacTel will
retain any and all rights to file any patent applications thereon and such
inventions shall be subsumed under ***
*** above.
5.3 ESL Inventions. All inventions developed, conceived or first reduced
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to practice, as those terms are used before the U.S. Patent and Trademark
Office, by statute and under common law, solely by ESL personnel, will be the
sole and exclusive property of ESL. ESL will retain any and all rights to file
any patent applications thereon ***
in ***
with the ***
for the term of this Agreement.
5.4 Joint Inventions.
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(a) Inventions developed, conceived or first reduced to practice, as those
terms are used before the U.S. Patent and Trademark Office, by statute and under
common law, jointly by the parties (the "Joint Inventions"), will be jointly
owned by the parties, each party having an equal and undivided interest therein,
without the duty to account to the other for any use made of such Joint
Inventions. Notwithstanding the foregoing, neither party may use the Joint
Inventions in any way which would harm the other's ownership interest therein.
The parties agree to mutually determine whether a patent application or
applications will be filed on such Joint Inventions, the party which will
prepare and file such application or applications, and the country or countries
in which the same are to be filed. The patent expenses incurred will be divided
equally between the
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Treatment and filed separately with the commission.
parties.
(b) If the parties are not able to mutually agree to file an application
or applications on a Joint Invention, either one of the parties may elect
to assume such expenses (the "Electing Party"). The Electing Party will
control the preparation and prosecution of any such application and all rights
in any patents granted thereon will belong exclusively to the Electing Party.
The party declining to bear its share of the expenses of prosecuting or
maintaining patents covering a Joint Invention (the "Declining Party") agrees
to execute any and all forms, assignments or other documents to effect the
foregoing; provided, however, that the Declining Party will ***
***
*** ; provided further, however,
that such Declining Party will ***
*** or the U.S. Government. Neither party may, without the
prior written consent of the other party (which consent may be withheld for any
reason, in its sole and absolute discretion), assign or otherwise transfer its
interest in any Joint Invention, except as expressly provided herein.
5.5 Protection and Use of *** .
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(a) Each party agrees it will not disclose (unless compelled to disclose
by judicial or administrative process, or in the opinion of such party's
counsel, by other requirement of law), use, or permit the use by others of
such other party's ***
*** , at any time during the Agreement, or at any time
thereafter, for a period of *** after the disclosure thereof.
Without limiting the foregoing, each party agrees to do the following with
respect of any such *** : (i) instruct and require all
of its employees and agents to maintain the confidentiality of such information;
(ii) exercise either at least the same degree of care to safeguard the
confidentiality of such information as that party exercises to safeguard the
confidentiality of its own information of a similar type, or a reasonable degree
of care, whichever is greater; and (iii) restrict disclosure of such information
to those of its employees who have a need to know consistent with the purposes
for which such information was disclosed. Each party further agrees not to
remove or destroy any proprietary or confidential legends or markings placed
upon documentation or other materials which contain or set forth the
*** of the other party.
(b) The party receiving *** will
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Treatment and filed separately with the commission.
obtain the written agreement of any permitted transferee or licenses to hold in
confidence the information transferred to such transferee or licensee in
accordance with terms no less restrictive than those set forth above.
(c) The receiving party may disclose the other party's ***
to its employees, agents, suppliers and subcontractors to the extent that each
such disclosure is reasonably necessary for manufacturing, using, selling,
installing and/or servicing Licensed Products, or procuring goods and services
required in connection therewith; provided, however, that the receiving party
will take all desirable and necessary actions to preserve the confidentiality of
such information including, but not limited to: (i) marking any documents or
other material containing any ***
*** so disclosed to indicate that same contains proprietary data and
***
*** ; (ii) requiring each party to whom same is disclosed to sign a
written agreement limiting the use thereof to authorized purposes, prohibiting
the further reproduction or disclosure thereof and requiring the prompt return
thereof when no longer needed; and (iii) providing that any reproduction, notes
or summaries thereof, immediately upon the making thereof, will become the
property of the disclosing party and will be delivered to the disclosing party
with, and upon the return of, the *** *** .
(d) Each reproduction of any *** , together with
each modification and revision thereof, made by or for the receiving party, will
automatically become the property of the disclosing party, will be deemed the
disclosing party's *** *** for all purposes hereunder and will be
clearly marked accordingly.
(e) Upon *** , the receiving party
will immediately discontinue the use of, and will promptly return to the
disclosing party or its designee, all *** , together
with copies thereof, in the possession or control of the receiving party,
together with all written documentation and/or other materials containing
information relating to the *** . The receiving
party further agrees that it will not, for a period of *** after the
date of any termination or expiration of this Agreement, use or disclose to any
third party any of disclosing party's *** , except
such information an the disclosing party has previously made generally available
to the public.
ARTICLE 6
*** *** Support Services, Minimum Order
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Confidential Treatment and filed separately with the commission.
6.1 *** . ESL will sell the Licensed Products to PacTel
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***
*** . *** that the ***
to *** and
*** as ***
to its
*** of *** , for ***
delivered within ***
*** calendar days before or *** after *** the
*** to *** . Such ***
shall be *** by an additional *** for ***
by *** , taking into account the fact that
*** on *** by *** and *** . In *** of
the *** of *** to the ***
agrees to *** a *** on ***
by *** who were introduced to *** . No *** will be
*** on any *** , but
*** by an *** . Further, *** shall give *** to
*** by *** and/or its *** , and to the extent that
*** after
*** and its *** have *** , *** may make a ***
to *** for *** to *** to *** . *** will have no
obligation to *** with *** and/or *** , if
*** to *** written request within five (5) business days after the
date of such written request. In addition to the foregoing,
*** shall have the *** to conduct all ***
for all new versions of the *** and/or the *** .
6.2 Minimum Order. PacTel shall place a minimum order for ***
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Licensed Products by December 31, 1993, at a *** of
***
*** , *** in accordance with the terms of Section
6.1. It is understood that such Licensed Products will initially be installed by
December 31, 1993, for *** PacTel, and that upon ***
of the finished Licensed Products, ESL shall *** such ***
, *** versions no later than March 31, 1994. ***
of the price is payable upon installation and the balance of ***
is due when such *** pass all acceptance criteria set
forth in Exhibit B. Provided that such initial *** Licensed Products pass
all acceptance criteria no later than March 31, 1994, PacTel shall place a
follow-on order of *** Licensed Products by March 31, 1994,
at a *** *** of *** ,
*** in accordance with the terms of Section 6.1 above. Finished,
*** of the
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Confidential Treatment and filed separately with the commission.
Licensed Products shall be installed *** no
later than August 30, 1994
6.3 Maintenance and Support. ESL agrees to provide maintenance and
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support, including all software upgrades and support, to PacTel and its
Affiliates ***
*** .
ARTICLE 7
Indemnification
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7.1 PacTel Indemnity. PacTel shall, at its own expense, defend, or at its
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option, settle any suit, claim or proceeding brought against ESL insofar as such
suit or proceeding is based on a claim that PacTel does not have sufficient
right, title and interest in PacTel's ***
and/or ***
*** (collectively " *** ") delivered to ESL
under this Agreement for the design, manufacture, use and sale of the Licensed
Products or that such information constitutes a direct infringement of any
United States trade secret, patent, trademark, copyright or any other
proprietary right of any third party, and PacTel shall indemnify and hold ESL
harmless against all costs, expenses and damages arising from such claim
including, without limitation, reasonable attorneys' fees and shall pay all
settlements and costs finally awarded therein against ESL, provided that PacTel
is promptly informed and furnished a copy of each communication, notice or other
action relating to the alleged infringement and is given all authority,
information and assistance necessary to defend or settle such suit or
proceeding.
7.2 ESL Indemnity. ESL shall, at its own expense, defend, or at its
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option, settle any suit, claim or proceeding brought against PacTel insofar as
such suit or proceeding is based on a claim that ***
*** (collectively "ESL Licensed
Materials")
licensed to PacTel hereunder or that such information constitutes a
*** ***
of any third party, and ESL shall ***
***
*** PacTel, provided that *** and ***
a copy of each communication, *** relating to the
*** and is *** all *** , information and *** to
*** .
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
7.3 PacTel Limitations on Indemnity. PacTel shall not be obligated to
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defend or be liable for costs and damages to the extent that infringement arises
out of a modification of the PacTel *** after delivery by PacTel,
out of combination of the PacTel *** with other goods or devices
not supplied by PacTel, or from other fault or action of ESL.
7.4 ESL Limitations on Indemnity. ESL shall not be obligated to defend or
--- ----------- -- ----------
be liable for costs and damages to the extent that infringement arises out of
compliance with PacTel's specifications, from a modification of the ESL Licensed
Materials after delivery by ESL, out of combination of the ESL Licensed
Materials with other goods or devices not supplied by ESL, or from other fault
or action of PacTel.
ARTICLE 8
Default and Termination
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8.1 Default. An event of default on the part of either party will exist
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under the Agreement if:
(a) Such party fails to perform any material obligation required to be
performed by it under any provision of the Agreement within the time specified
in such provision, or if no time is specified, within *** after written
notice from the other party that such performance has become due.
(b) Such party becomes insolvent, is unable to pay its debts as they
become due, makes an assignment for the benefit of creditors, files a petition
in any state insolvency proceeding or ceases to carry on its business; or
(c) A receiver or liquidator is appointed for any of such party's
properties or assets, or a petition is filed against such party in any state
insolvency proceeding and such petition is not withdrawn within 30 days after
such appointment or filing.
8.2 *** . Subject to any other provisions hereof
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***
the *** hereunder, if *** , as *** in this
*** , exists on the part of either party, then the *** may
***
*** and may *** any other ***
to *** .
8.3 Mutual Termination. The parties may mutually agree to terminate the
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Agreement at any time.
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Confidential Treatment and filed separately with the commission.
ARTICLE 9
Arbitration and Dispute Resolution
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If a dispute arises between the parties relating to the interpretation or
performance of the Agreement or the grounds for the termination thereof, the
parties agree to meet to try to resolve the dispute. Such meeting will be
attended by individuals with decision-making authority to attempt, in good
faith, to negotiate a resolution of the dispute prior to pursuing other
available remedies. If, within thirty days after such a meeting, the parties
have not succeeded in negotiating a resolution of the dispute, either party may
request that such dispute be resolved through final and binding arbitration.
Such arbitration will be conducted by three (3) arbitrators familiar with the
wireless telecommunications industry and will be held in San Francisco,
California, in accordance with the then-current Rules of Conciliation and
Arbitration of the American Arbitration Association. Such arbitrators will be
selected by mutual agreement of the parties, or failing such agreement, each
party will select one arbitrator and the two selected arbitrators will usually
agree upon the selection of a third arbitrator. The arbitrators will be bound to
apply California law, and where applicable, federal statutory law. The parties
will be afforded a reasonable period of time to conduct discovery prior to the
arbitration. A court reporter will be present at all arbitration proceedings in
order to transcribe them and such transcription will be the official record of
such proceedings for purposes of any judicial enforcement or review proceeding.
The arbitrators' decision will be binding on the parties and will specify the
basis for any award and the types of damages awarded. The parties will bear the
cost of such arbitration equally and the prevailing party in any such
arbitration will be entitled to reasonable attorneys fees, in addition to any
other award ordered by the arbitrators. The prevailing party in any judicial
enforcement or review proceeding shall also be entitled to reasonable attorneys'
fees and costs, in addition to any other award ordered by the court. If judicial
enforcement is sought by either party, judgment may be entered in any court of
competent jurisdiction. This Article shall survive any expiration or termination
of the Agreement and shall continue to be enforceable in the event of the
bankruptcy of a party.
ARTICLE 10
Limitation of Liability
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Notwithstanding anything in the Agreement to the contrary, in no event
will either party be liable to the other for loss of profits, or for any
indirect, incidental, special or consequential damages arising from this
Agreement, however
caused, whether as a consequence of the negligence of the one party or
otherwise; and the sole and exclusive liability and maximum liability of one
party to the other hereunder, whether arising in warranty, contract, tort or
otherwise, shall not exceed $ *** .
ARTICLE 11
Licenses and Permits
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PacTel, at its own expense, will obtain from the appropriate agencies or
departments of the government all experimental licenses during product
development and ***
*** the Licensed Products under this Agreement. This obligation of PacTel
is limited to ***
as more specifically set forth in Section 2.1 above.
ARTICLE 12
Miscellaneous Provisions
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12.1 Any notice, demand, request, statement or other writing required
or permitted by the Agreement, will be deemed to have been sufficiently given
when personally delivered or mailed by certified or registered mail, postage
prepaid, addressed as follows:
If to PacTel: PacTel Corporation
000 Xx. Xxxxx Xxxx, Xxxxx 000
Xxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: *** , Director
Technology Transfer
With a copy to: PacTel Corporation
0000 Xxx Xxxx, XX 000
Xxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: General Counsel
If to ESL: ESL Incorporated, MS __/__
000 Xxxx Xxxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
Attn: *** , New Venture Manager
12.2 The Agreement constitutes the entire agreement between the
parties and supersedes all previous agreements and understandings relating to
the subject hereof. The Agreement may not be altered, amended or modified,
except by a written instrument signed by the duly authorized representatives of
both parties.
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Confidential Treatment and filed separately with the commission.
12.3 The Agreement may not be assigned to any third party, in whole or in
part, by either party without the prior written consent of the other party. An
assignment to Affiliate of either party will not be deemed a third party and
will not require prior written consent from the other party.
12.4 Failure or successive failures on the part of either party, its
successors and assigns, to enforce any covenant or agreement herein, or any
waiver or successive waivers on its or their part of any covenant or condition
of the Agreement will not operate as a discharge of such covenant, agreement or
condition, render the same invalid or impair the right of either party, its
successors or assigns, to enforce the same.
12.5 Headings included in the Agreement are for convenience only and are
not to be used to interpret the Agreement between the parties.
12.6 Any news release, including photographs, films, advertisements,
publicity, public announcements or confirmation of same, to be released by
either party concerning the activities of the other party or on any part of the
subject matter of the Agreement will be subject to the prior written approval of
the other party. The parties further agree that news releases made by either
party will recognize the participation and contributions of the other party. The
nature of this relationship will remain confidential to both parties.
12.7 No failure or omission on the part of either party to carry out or
observe any of the terms or provisions of the Agreement will be deemed a breach
of the Agreement, if same will arise or result from force majeure or from any
cause reasonably beyond the control of PacTel or ESL. Should such delay occur,
the date or dates of performance by the affected party will be extended for a
period equal to the number of days during which performance is so delayed. The
affected party will give the other party written notice of such delay within
fifteen (15) working days after identification of the delay.
12.8 Notwithstanding anything in the Agreement to the contrary, PacTel has
no obligation under the Agreement to perform any act whatsoever which would
violate the terms of the Modification of Final Judgment in U.S. v. Western
---------------
Electric Co., 552 P. Supp. 131 (D.D.C. 1982) (the "MFJ"). Following written
------------
notice to ESL, PacTel may discontinue performance of any activity required
herein or terminate the Agreement immediately, if in PacTel's sole opinion, such
discontinuation or termination is necessary in order to comply with the MFJ. In
the event that PacTel has determined that only certain activities, but not the
entire Agreement, must be discontinued, ESL will have the option to continue or
terminate the Agreement. In the event that ESL elects to continue the Agreement,
the parties will mutually agree upon royalty or payment terms which will
reasonably compensate ESL for PacTel's inability to perform certain of PacTel's
obligations hereunder.
12.9 Nothing in the Agreement will be construed to constitute ESL as the
partner or agent of PacTel, nor will either party have any authority to bind the
other. Each party will remain an independent contractor responsible only for its
own actions.
12.10 This Agreement has been entered into, will be governed by and
construed in accordance with the substantive laws of the State of California
applicable to agreements made and to be performed wholly within such
jurisdiction.
IN WITNESS WHEREOF, the parties hereto have caused the Agreement to be
executed by their duly authorized representatives as of the Effective Date.
ESL INCORPORATED PACTEL CORPORATION
A TRW COMPANY
By:/s/ Xxxxxx X. Money By:/s/ C. Xxx Xxx
--------------------------- ----------------------------
Name:Xxxxxx X. Money Name:C. Xxx Xxx
------------------------- --------------------------
Title:President Title:President
------------------------ -------------------------
Date:01 October 1993 Date:10/4/93
------------------------- --------------------------
DRAFT
EXHIBIT A
PACTEL
***
***
***
***
Application No:
***
*** to provide input.
***
N/A
***
*** to be provided includes:
. ***
. ***
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
EXHIBIT A
ESL
***
*** has *** under the ***:
***
***
*** software is the *** software which will maintain database
information, apply *** of *** , and
*** .
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
DRAFT
EXHIBIT B
STATEMENT OF WORK
PacTel
Regulatory
PacTel will apply for the *** , tariff modifications and
approvals necessary to *** the ***
product within *** Markets.
Product Specifications
PacTel will translate its market requirements into a complete generic
description of functionality, features, performance and compatibility
characteristics. This will include installation, platform and market location
considerations.
Procurement Requirements
PacTel will provide a description of the procurement procedures, methods and
requirements within its organization.
Field Testing
PacTel will support technology, prototype and product evaluations by providing
ESL access to *** and ***. Evaluations shall include, but
not be limited to, the following: ***
*** .
*** used for evaluation and deployment shall be selected by PacTel based
on technical and business considerations. The *** will allow *** to test its
product under various conditions including extreme *** and ***.
PacTel will assist with the definition of test requirements and conditions.
*** of the product will be based on the *** as
included herein.
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
DRAFT
EXHIBIT B
Operations Training and Support
PacTel will provide documentation specifications including a statement of
requirements and objectives covering installation, maintenance,
repair/replacement and operational procedures. PacTel will assist with
development and implementation of a detailed plan addressing system integration,
FOT training and ongoing vendor support.
***
PacTel will provide *** as described in Exhibit A.
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
EXHIBIT B
STATEMENT OF WORK
ESL
Product Development
ESL will design, develop, and test new technology developments, taking into
account PacTel's requirements, for the advancement of the ***
Product.
Field Testing & Evaluation
***
*** will be performed at designated PacTel cell sites. With PacTel
assistance, ESL will generate the definition of the test requirements and
conditions for each test and ***
*** of the product. *** of the product will be based upon
the ***
*** as included herein.
Upon *** of the *** units, ESL will manufacture the quantity of
units being procured by PacTel to the agreed upon production configuration and
functionality performance.
Operations Training & Support
ESL will generate product installation and FOT training documentation taking
into consideration PacTel requirements for installation, maintenance,
replacement/repair, and operational procedures.
***
ESL will *** with PacTel in *** of the
***
*** . This will include engineering and manufacturing consideration through
test and evaluation of the *** and *** units.
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
EXHIBIT B
Milestones
.
.
.
.
.
. *** ***
.
.
.
.
.
.
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
PAC(TM) TEL
Corporation
A Pacific Telesis Company
THE *** SYSTEM
GENERIC PRODUCT SPECIFICATIONS
GENERAL EQUIPMENT SPECIFICATIONS
This section describes the physical and electrical specifications that are
important to operation in a ***. Most *** are air conditioned and shielded. To
work in most *** the following specifications are required. If more stringent,
FCC Type Acceptance requirements shall apply.
--------------------------------------------------------------------------------
ITEM SPECIFICATION COMMENTS
--------------------------------------------------------------------------------
*** *** ***
*** ***
--------------------------------------------------------------------------------
*** *** ***
***
--------------------------------------------------------------------------------
*** ***
***
--------------------------------------------------------------------------------
*** *** ***
*** ***
***
***
--------------------------------------------------------------------------------
*** *** No performance degradation
--------------------------------------------------------------------------------
*** *** Normal cell site power
--------------------------------------------------------------------------------
*** *** ***
--------------------------------------------------------------------------------
*** ***
***
--------------------------------------------------------------------------------
*** *** Check FCC specifications
*** ***
--------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
PAC(TM) TEL
Corporation
A Pacific Telesis Company
THE *** SYSTEM
GENERIC PRODUCT SPECIFICATIONS
*** (USING JAMMING)
Additional equipment is required to implement the *** function. This includes a
*** that can be used to terminate in process calls as required. This equipment
is controlled by the *** system.
--------------------------------------------------------------------------------
ITEM SPECIFICATION COMMENTS
-------------------------------------------------------------------------------
*** *** Only mobile receive is needed
***
--------------------------------------------------------------------------------
*** *** Monitor cell site transmit
***
--------------------------------------------------------------------------------
*** *** ***
***
--------------------------------------------------------------------------------
*** *** ***
*** ***
***
--------------------------------------------------------------------------------
*** *** Need to control SAT frequency
*** presence of 10 kHz
--------------------------------------------------------------------------------
*** *** ***
*** ***
***
--------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
PAC(TM) TEL
Corporation
A Pacific Telesis Company
THE *** SYSTEM
PRODUCT SPECIFICATIONS
SYSTEM INTEGRATI
The *** system mto the existing *** and ***
functions.
-----------------------------------------------------------------------------------------------
ITEM SPECIFICATION COMMENTS
-----------------------------------------------------------------------------------------------
*** *** Security features must be in place
-----------------------------------------------------------------------------------------------
*** *** Database must be remotely modified
-----------------------------------------------------------------------------------------------
*** *** Activity must be available for further
analysis at the host site
-----------------------------------------------------------------------------------------------
*** ***
***
***
-----------------------------------------------------------------------------------------------
*** ***
***
***
-----------------------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
*** ACCEPTANCE CRITERIA
DRAFT
TECHNICAL
------------------------------------------------------------------------------------------
PERFORMANCE METRICS EVALUATION METHOD TEST CONDITIONS ACCEPTANCE CRITERIA
--------------------- ----------------- --------------- -------------------
------------------------------------------------------------------------------------------
*** *** *** Must capture information on
*** all registrations and attempts
within test sites
------------------------------------------------------------------------------------------
***
------------------------------------------------------------------------------------------
***
------------------------------------------------------------------------------------------
***
------------------------------------------------------------------------------------------
*** ***
***
------------------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
*** ACCEPTANCE CRITERIA
DRAFT
***
----------------------------------------------------------------------------------------------------------
PERFORMANCE METRICS EVALUATION METHOD TEST CONDITIONS ACCEPTANCE CRITERIA
------------------- ----------------- --------------- -------------------
----------------------------------------------------------------------------------------------------------
Hardware Installation Operations review prior Commercial equipment ***
to ***
final commercial roll-out
***
-
- ***
-
-
d----------------------------------------------------------------------------------------------------------
Software Installation Operations review prior Commercial equipment ***
to
final commercial roll-out
----------------------------------------------------------------------------------------------------------
Installation Documentation Operations review prior Published documentation Must include:
to -
final commercial roll-out - ***
-
-
----------------------------------------------------------------------------------------------------------
Trouble-Shooting Operations review prior Commercial equipment Must include:
Capabilities to - ***
final commercial roll-out
----------------------------------------------------------------------------------------------------------
Alarming Operations review prior Commercial equipment ***
to
final commercial roll-out
----------------------------------------------------------------------------------------------------------
Monitoring Operations review prior Commercial equipment ***
to
final commercial roll-out
----------------------------------------------------------------------------------------------------------
Reporting Operations review prior Commercial equipment ***
to
final commercial roll-out
----------------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
*** ACCEPTANCE CRITERIA
DRAFT
*** SATISFACTION
----------------------------------------------------------------------------------------------------------------
PERFORMANCE METRICS EVALUATION METHOD TEST CONDITIONS ACCEPTANCE CRITERIA
------------------- ----------------- --------------- -------------------
----------------------------------------------------------------------------------------------------------------
Transparency Subjective evaluation *** and commercial roll- ***
through live drive test out ***
----------------------------------------------------------------------------------------------------------------
Billing Records Evaluation of affected Commercial roll-out of ***
customer bills through *** *** configuration
***
----------------------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
*** ACCEPTANCE CRITERIA
DRAFT
**** MITIGATION
---------------------------------------------------------------------------------------
PERFORMANCE METRICS EVALUATION METHOD TEST CONDITIONS ACCEPTANCE CRITERIA
------------------- ----------------- --------------- -------------------
---------------------------------------------------------------------------------------
*** Identification *** *** ***
***
---------------------------------------------------------------------------------------
Review of *** ***
performance
reports ***
---------------------------------------------------------------------------------------
Terminations Review of *** ***
performance
reports ***
---------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------
Work in Progress
***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
EXHIBIT C
NONDISCLOSURE AGREEMENT
-----------------------
THIS NONDISCLOSURE AGREEMENT is made as of this 22 day of April, 1993
("Effective Date"), by and between PACTEL CORPORATION, a California corporation
(hereinafter referred to as "PacTel"), with offices located at 0000 Xxx Xxxx,
Xxxxxx Xxxxx, Xxxxxxxxxx 00000, and ESL INCORPORATED, a California corporation
(hereinafter referred to as "Vendor"), with offices located at 000 Xxxx Xxxxx,
Xxxxxxxxx, Xxxxxxxxxx 00000-0000 (collectively "the Parties") which agree as
follows:
WHEREAS each Party wishes to evaluate and understand its potential
involvement in a project of mutual interest; and
WHEREAS PacTel may find it necessary to disclose to Vendor certain
confidential and proprietary information and intellectual property of PacTel,
relating to PacTel and its operations, which will be used by Vendor only for its
work on PacTel projects; and
WHEREAS Vendor may find it necessary to disclose to PacTel certain
confidential and proprietary information relating to Vendor and its operations
which will be used by PacTel only to evaluate its potential use of Vendor's
services; and
WHEREAS each Party is willing to release such Information to the other
on a confidential basis, and is willing to enter into this Agreement;
NOW THEREFORE, in consideration of the mutual covenants hereinafter
contained, PacTel and Vendor agree as follows:
1. All Information as defined below, provided by one Party (the
"Originator") to the other will be treated as confidential.
"Information" shall include all information in written, oral or other
tangible or intangible forms which may include, but is not limited to,
discoveries, ideas, concepts, know-how, techniques, designs,
specifications, drawings, blueprints, tracings, diagrams, models,
samples, flow charts, data, computer programs, disks, diskettes,
tapes, marketing plans, customer names and other technical, financial
or business information.
2. For a period of ten (10) years following the effective date of this
Agreement, each Party shall:
a. restrict disclosure of the Information solely to those of its
employees with a need to know, and not
-1-
to disclose it to other parties; and,
b. advise its employees of the obligation of confidentiality
hereunder; and,
c. require its employees to use the same degree of care as is used
with that Party's own proprietary information.
3. Notwithstanding anything to the contrary herein, neither Party shall
have any obligation to preserve the confidentiality of any Information
that:
a. was previously known by it free of any obligation to keep it
confidential; or,
b. is distributed to third parties by the Originator without
restriction; or,
c. is or becomes publicly available, by other than unauthorized
disclosure by the Party receiving the Information; or,
d. is wholly and independently developed by the Party receiving the
Information.
4. All Information shall be deemed the property of the Originator, and,
upon request, the other Party will return all Information received in
tangible form to the Originator or destroy all such Information.
5. Nothing contained in this Agreement shall be construed as granting or
conferring any rights by license or otherwise in any Information
disclosed by the Originator.
6. This Agreement shall be governed and construed in accordance with the
laws of the State of California and shall benefit and be binding upon
the Parties hereto and their respective successors and assigns.
7. Since either Party may choose not to do business with the other in the
future, each acknowledges that the other is not responsible or liable
for any business decisions made by either in reliance upon disclosures
made during any meetings between the Parties or in reliance on any
results of the discussions.
-2-
8. This Agreement shall continue until terminated in writing by either
Party. The obligation to protect the confidentiality of Information
received prior to such termination shall survive the termination of
this Agreement.
9. Each Party agrees that it will make no copies or otherwise reproduce
the data provided by the other, and further agrees to remove all such
data from its files and return all data to the other if requested to
do so.
PACTEL CORPORATION ESL INCORPORATED
("PacTel") ("Vendor")
By: /s/ X.X. Xxxxxxx By: /s/ Xxxx Xxxxxxxx
----------------------------- ------------------------------
Xxx X. Xxxxxxx Name: Xxxx Xxxxxxxx
------------------------------
Chief Financial Officer Title: Manager of Contracts
-----------------------------
and Treasurer
-3-
