Exhibit 10.12
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This INTELLECTUAL PROPERTY LICENSE AGREEMENT ("Agreement") is entered into as
---------
of the 10th____ day of January, 2001 ("Effective Date") by and between SRI
--------------
International, a California nonprofit public benefit corporation ("SRI"), and
---
SPEEDCOM Wireless Corporation, a Delaware corporation ("SPEEDCOM").
--------
WHEREAS, SRI is the owner of intellectual property rights with respect to fixed
wireless communications; and
WHEREAS, SPEEDCOM desires a license to certain of SRI's intellectual property
rights with respect to certain products and fields of use, in consideration of a
grant of equity in SPEEDCOM to SRI.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants and
premises set forth herein and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties agree as follows:
1. DEFINITIONS
"Confidential Information" means: (i) each party's trade secrets, business
------------------------
plans, strategies, methods, and practices; and (ii) information relating to
either party's personnel, products, services, and all other information clearly
identified as confidential or proprietary.
"Deliverable" means the software delivered by SRI to SPEEDCOM in performance of
-----------
the Project Services.
"Exclusive Period" means a period of six (6) years from the Effective Date,
----------------
unless terminated earlier as provided herein.
"IP" means all inventions, works of authorship, information fixed in any
-----
tangible medium of expression, trade secrets, know-how, ideas, and all other
subject matter that are protected or protectable under patent, copyright, moral
right, trade secret, or equivalent laws of any country or treaty; including
without limitation all new or useful combinations, discoveries, formulae,
manufacturing techniques, technical developments, software, programming,
applets, scripts, and technical designs.
"Licensed Products" means products which use or embody the Licensed SRI IP
-----------------
for: (a) fixed wireless communications gateways, bridge-routers, hubs, relays;
and/or (b) semi-fixed (e.g., within a campus environment: laptops, portable
computers) PacketHop(TM)-enabled non-repeating end-user nodes as illustrated in
Exhibit C, where such products utilize only one or more of the following
---------
frequencies: 2.10-2.79 GHz; 3.40-3.70 GHz; and 5.00-5.90 GHz as governed by Part
15 - "Radio Frequency Devices" of the FCC Code or the applicable foreign
government regulatory body. Licensed Products specifically exclude: (i) direct
connections to, uses of, and embodiments of Licensed SRI IP in Repeating End-
User Devices, and (ii) uses and embodiments of the SRI IP in Public Access
Networks.
"Licensed SRI IP" means (a) any patent rights owned or otherwise controlled by
---------------
SRI that are listed in Exhibit A, and (b) any patent, copyright, and trade
----------
secret rights that are embodied in or necessarily practiced by the software
modules described in Exhibit B (in source code and object code form) and (c) the
---------
SRI-Owned Improvements.
"Liquidity Event" means a stock buyback, sale of company, or secondary
---------------
offering.
"Project Services" means the services to be performed by SRI under the
----------------
Services Agreement.
"Public Access Networks" means the use of wireless infrastructure for semi-
----------------------
fixed and/or mobile roaming uses in areas other than a single-provider campus-
wide application. For example, a network which enables roaming and covers the
entire city of San Francisco would be considered a Public Access Network. For
further distinction, a shopping center in which an individual can enter and use
his personal laptop to connect to the Internet would be a Public Access Network;
whereas if all end-users are either tenants of the shopping center landlord and
use the landlord's network access or else are individuals using computers which
do not leave the shopping center "campus," it is not a Public Access Network.
"Repeating End-User Devices" means mobile or semi-fixed end-user devices that
--------------------------
are PacketHop(TM)-repeater-enabled.
"Services Agreement" means the separate Research Services Agreement between
------------------
SRI and SPEEDCOM of even date with this Agreement.
"SPEEDCOM IP" means any IP provided by SPEEDCOM or its agents to SRI for
------------
incorporation into the SPEEDCOM-Owned Improvements or use in connection with the
Project Services. SRI shall only use the SPEEDCOM IP in connection with this
Agreement. SPEEDCOM hereby grants to SRI, solely for the performance of the
Project Services and for creation of the SPEEDCOM-Owned Improvements, a non-
exclusive, non-transferable limited license to access, operate, and use the
SPEEDCOM IP. Upon expiration of this Agreement or termination of this Agreement
for any reason, (i) this limited license granted to SRI, its agents and
subcontractors in this Agreement shall immediately expire and revert to
SPEEDCOM, and (ii) SRI shall destroy or erase all copies of the SPEEDCOM IP or
derivative works thereof in SRI's or its agents' or subcontractors' possession.
"SPEEDCOM-Owned Improvements" means IP made, conceived, or developed by SRI
---------------------------
after the Effective Date on behalf of SPEEDCOM in performing the Project
Services, provided such IP reflects customized SPEEDCOM requirements as opposed
to bug fixes, porting requirements, and other generic requirements. SPEEDCOM-
Owned Improvements does not include any of the following: (i) SRI IP; (ii)
SPEEDCOM IP; or (iii) Licensed SRI IP.
"SRI IP" means IP made, conceived, or developed by SRI prior to the Effective
-------
Date or independent of the Project Services and contained in, comprising, or
otherwise necessarily practiced by the Deliverable or the Licensed SRI IP.
"SRI-Owned Improvements" means IP (including bug fixes, porting requirements,
------------
and other generic requirements) made, conceived, or developed by SRI after the
Effective Date on behalf of SPEEDCOM in performing the Project Services, in both
source code and object code formats, other than the SPEEDCOM-Owned Improvements.
"Alternate TBRPF Embodiment" means the "second partial-topology embodiment"
--------------------------
described in SRI's United States Patent Application entitled "A System And
Method For Disseminating Topology And Link-State Information To Routing Nodes In
A Mobile Ad Hoc Network ", filed December 1, 2000 (included in the Licensed SRI
IP) at pages 36-41
2. GRANT OF LICENSE
2.1 License Grant. SRI grants to SPEEDCOM a fully paid up, worldwide,
-------------
exclusive (subject to the provisions of section 2.2), perpetual license under
the Licensed SRI IP, to make, have made, use, modify, reproduce, sell, and
distribute the Licensed Products. SRI further grants to SPEEDCOM a fully paid
up, worldwide, non-exclusive, perpetual license under the SRI IP to make, have
made, use, modify, reproduce, sell, and distribute the Licensed Products. The
license granted herein shall commence on the Effective Date and shall continue
in perpetuity, subject to termination under section 2.6 below. These license
rights are transferable only as provided in section 2.4. Except as expressly
provided, no other rights under any SRI intellectual property are implied or
otherwise granted. The license granted in this Section 2.1 is subject to the
rights of the U.S. Government under the ▇▇▇▇-▇▇▇▇ Act, as amended, 35 U.S.C.
Sections 200 et seq., including but not limited to the grant to the U.S.
Government of a nonexclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced any invention conceived or first actually reduced to
practice in the performance of work for or on behalf of the U.S. Government
throughout the world.
2.2 Exclusivity
-----------
2.2.1 Government use / research exception. Notwithstanding any other
-----------------------------------
provision herein, SRI retains an irrevocable, non-exclusive, restricted right at
all times under the Licensed SRI IP to make, have made, use, reproduce, sell,
and distribute all Licensed Products solely for the limited purpose of
government-sponsored research, and to grant limited, government-purpose, non-
commercial licenses to the Licensed IP to the extent required for such
government-sponsored research.
2.2.2 The exclusive license rights provided in Section 2.1 are exclusive
for SPEEDCOM only during the Exclusive Period and only with respect to Licensed
Products. Such exclusivity includes the authority to enforce the Licensed SRI
IP against third party infringement with respect to the Licensed Products, at
SPEEDCOM's sole expense.
2.2.3 SRI covenants that, for the duration of the Exclusive Period, any
licenses (for products other than the Licensed Products) assigned or granted by
SRI, directly or indirectly, under the Licensed SRI IP in SPEEDCOM's assigned
frequencies will include a notice of SPEEDCOM's exclusive rights and a
prohibition against use of high powered (greater than 2 dBi), directional
antennas for the establishment of wireless to wired gateways, to ensure that
SPEEDCOM's intellectual property rights are protected and enforceable by
SPEEDCOM. SPEEDCOM covenants that, for the duration of the Agreement, any
licenses for Licensed Products assigned or granted by SPEEDCOM, directly or
indirectly, under the Licensed SRI IP in SPEEDCOM's assigned frequencies will
include a notice of SRI's retained rights to ensure that SRI's intellectual
property rights are protected and enforceable by SRI.
2.2.4 SRI may terminate the Exclusive Period eighteen (18) months after
the Effective Date or thereafter, in its sole discretion, by providing written
notice of termination to SPEEDCOM, unless by such time SPEEDCOM has successfully
closed a Liquidity Event where SRI had the opportunity to obtain net proceeds of
at least five million dollars ($5,000,000.00) for the equity stake held by SRI.
Such five million dollars ($5,000,000.00) calculation shall include any funds
previously obtained by SRI from the sale of SPEEDCOM stock received under this
Agreement. In the event such five million dollar ($5,000,000.00) milestone
would not otherwise be satisfied, SPEEDCOM may elect to maintain the exclusivity
of its rights by issuing additional equity or cash to SRI sufficient to satisfy
the aggregate requirement of an opportunity to obtain liquid net proceeds of
five million dollars ($5,000,000.00) within the 18-month period.
2.2.5 Notwithstanding any other provision herein, SRI retains an
irrevocable, non-exclusive, restricted right at all times to sublicense the
Alternate TBRPF Embodiment as reasonably necessary for acceptance as part of a
wireless Internet standard by the IETF (or other comparable standards body),
including but not limited to sublicensing manufacturers, vendors, and users as
required for purposes of products and services conforming with such standard.
2.3 Trademark License.
-----------------
2.3.1 License. Subject to the terms of this Agreement (including but not
-------
limited to sections 2.3.2-2.3.6), SRI hereby grants to SPEEDCOM the limited,
non-exclusive, non-transferable right and license to use the trademarks and
trade names set forth in Exhibit D ("Trademarks") on copies of the Licensed
Products made and distributed by SPEEDCOM or its sublicensees pursuant to this
Agreement ("Final Products"), and in any related promotional literature for the
--------------
Final Products or in relation to any promotional activities for the Final
Products in any SPEEDCOM or its sublicensees distribution channel. Such use
shall be in accordance with the Trademark Guidelines in Exhibit D. SRI may from
time to time amend Exhibit D to include additional trademarks or trade names of
SRI. SRI does not imply or otherwise grant any rights other than those
expressly provided hereunder. SPEEDCOM agrees to and recognizes SRI's exclusive
ownership of the Trademarks and acknowledges the renown of the Trademarks
worldwide. SPEEDCOM agrees not to take any action inconsistent with such
ownership and further agrees to take any action, at SRI's cost, including
without limitation, the conduct of legal proceedings, which
SRI deems necessary to establish and preserve SRI's exclusive rights in and to
its Trademarks. SPEEDCOM hereby agrees that any use of the Trademarks shall
inure to the benefit of SRI.
2.3.2 Authorization. SPEEDCOM is authorized to use the Trademarks to
-------------
designate the origin of the Products, in its general publicity, advertising,
signs and other forms of advertising, cartons, packaging, user manuals and other
literature packed with the Final Products. SPEEDCOM shall not use any of the
Trademarks, or any ▇▇▇▇ confusingly similar thereto, as part of or associated
with SPEEDCOM's corporate or trade names, trade dress, forms, etc. SPEEDCOM
shall not obliterate, ▇▇▇▇-over, or combine with or incorporate into any other
trademark or tradename, any of the Trademarks. SPEEDCOM shall do business only
under its own corporate and trade names.
2.3.3 Brand for Final Products. The Trademarks are not intended to be
------------------------
utilized by SPEEDCOM as a product line indicator, and SPEEDCOM shall always use
its own trademarks, tradenames, service marks and other promotional indicators
as the host brand for the Final Products.
2.3.4 Guidelines on Use of Trademarks. SPEEDCOM agrees to comply with
-------------------------------
reasonable Trademark Usage Guidelines set forth from time to time by SRI with
respect to the appearance and manner of use of the Trademarks. The Trademark
Guidelines are as initially set forth in Exhibit D. SRI may modify the
Trademark Guidelines from time to time by providing written notice to SPEEDCOM;
provided that any such modifications shall not materially and adversely effect
SPEEDCOM's right to use and enjoy the Trademarks as contemplated herein.
Subject to the foregoing, any modifications to the Trademark Guidelines must be
implemented by SPEEDCOM on SPEEDCOM's next printing of any product, screen
displays, packaging, labeling, advertising, or promotional materials bearing or
containing the Trademarks, but in any event no later than 120 days after receipt
of such notice.
2.3.5 Governmental Compliance. SPEEDCOM shall comply with all laws and
-----------------------
governmental regulations pertaining to the proper use, designation and
attribution of ownership of the Trademarks.
2.3.6 Termination based on Trademark Misuse. In the event SRI determines
-------------------------------------
that SPEEDCOM's use of the Trademarks in any way impairs or diminishes any of
the Trademarks' values, SRI shall provide written notice thereof to SPEEDCOM.
Thereafter, SRI may terminate this Agreement upon the occurrence of any of the
following events: (i) SPEEDCOM fails to immediately utilize its best efforts to
remedy the impairment or diminishment and provide SRI with details regarding
SPEEDCOM's efforts within 72 hours after receiving such written notice from SRI,
or (ii) SPEEDCOM fails to continue utilizing its best efforts to remedy the
impairment or diminishment to SRI's satisfaction within 30 days after receiving
such notice from SRI. Any dispute relating to this Section 2.3.6 shall be
immediately subject to litigation without any waiting period.
2.4 Assignment; Sublicensing. SPEEDCOM may not assign this
------------------------
Agreement, except as part of a sale or transfer of substantially all of the
related assets of SPEEDCOM to a purchaser or successor-in-interest.
Notwithstanding the foregoing, SPEEDCOM may sublicense its rights hereunder to
any third party for purposes of having Licensed Products made, sold, used or
distributed in the ordinary course of its business.
2.5 Non-Exclusive Third-Party Branding. If SRI chooses to allow
----------------------------------
Repeating End-User Devices to be sold or distributed under brands other than the
brands of SRI or of an SRI-founded venture ("Third Party Branding") then
SPEEDCOM will be offered a non-exclusive license to manufacture, sell, and
distribute such Repeating End-User Devices under terms at least as favorable as
such Third Party Branding agreements.
2.6 Agreement Termination. Either party may terminate this
---------------------
Agreement (including the license rights granted hereunder), by written notice
without prejudice to any other relief to which such party may be entitled: (a)
upon or after the breach of any material provision of this Agreement by the
other party if the other party has not cured such breach within thirty (30)
days after written notice thereof; or (b) if the other party voluntarily
commences any action or seeks any relief regarding its liquidation,
reorganization, dissolution or similar act or under any bankruptcy, insolvency
or similar law; or (c) if a proceeding is commenced or
an order, judgment or decree is entered seeking the liquidation,
reorganization, dissolution or similar act or any other relief under any
bankruptcy, insolvency or similar law against the other party, without its
consent, which continues undismissed or unstayed for a period of sixty (60)
days. SRI may terminate this Agreement (including the license rights
granted hereunder), by written notice without prejudice to any other relief
to which SRI may be entitled in the event that Speedcom materially fails to
make required payments under the Services Agreement.
2.7 Ownership of SPEEDCOM-Owned Improvements. SRI hereby assigns and
----------------------------------------
agrees to assign to SPEEDCOM, and SPEEDCOM accepts and agrees to accept, SRI's
entire right, title, and interest in and to the SPEEDCOM-Owned Improvements,
including all patents, copyrights, trade secrets, and other proprietary rights
therein. SRI further agrees to execute, or cause to be executed by its
employees, agents, or subcontractors, whatever assignments of IP rights and
ancillary and confirmatory documents that may be required or appropriate so that
title to any SPEEDCOM-Owned Improvements shall be clearly and exclusively held
by SPEEDCOM or any nominee thereof. SRI shall deliver to SPEEDCOM the source
code for the SPEEDCOM-Owned Improvements as provided under the Services
Agreement. The rights conveyed to SPEEDCOM in the SPEEDCOM-Owned Improvements
under this section do not imply or otherwise convey to SPEEDCOM any ownership,
license, or other interest in the Licensed SRI IP, the SRI-Owned Improvements,
or the SRI IP, except as otherwise expressly provided in the license grant of
section 2.1.
2.8 Reservation of Rights. Except as provided herein, each Party
----------------------
reserves all rights in its IP and nothing contained herein shall be construed as
granting the other Party any ownership interest in its IP. Each Party shall
include, maintain, reproduce and perpetuate all notices or markings on all
copies of all tangible media comprising each Party's IP or Confidential
Information in the manner in which such notices or markings appear on such
tangible media or in the manner in which either party may reasonably request.
3. FEES
3.1 Equity Grant. In consideration of the license rights granted
------------
hereunder, SPEEDCOM will tender 325,000 shares of its common stock to SRI upon
the execution of this Agreement, provided that SRI's interest in such shares
will be vested only in accordance with the following schedule:
3.1.1 Upon execution of this Agreement, 100,000 of SRI's shares will
vest.
3.1.2 Three (3) months after the execution of this Agreement, if SRI
has not breached any of its material obligations in performing the Project
Services under the Services Agreement, an additional 75,000 of SRI's shares will
vest.
3.1.3 Six (6) months after the execution of this Agreement, if SRI has
not breached any of its material obligations in performing the Project Services
under the Services Agreement, an additional 75,000 of SRI's shares will vest.
3.1.4 An additional 75,000 of SRI's shares will vest if SRI is
successful, by no later than nine (9) months after the execution of this
Agreement, in modifying the Licensed SRI IP to enable semi-fixed and/or mobile
nodes to be PacketHop(TM) enabled, less the repeating functionality, wherein
such devices will be able to attach and communicate with fixed and semi-fixed
gateways, repeaters, and hubs, but unable to repeat to other PacketHop(TM)
enabled devices, whether mobile or fixed.
3.2 Shareholder Protections. SRI's equity interest will be protected as
-----------------------
provided under the terms of the Subscription and Registration Rights
Agreement separately executed by the parties.
4. CONFIDENTIAL INFORMATION
4.1 By virtue of this Agreement, the parties may have access to
Confidential Information. The terms and conditions of this Agreement shall be
considered Confidential Information. The Licensed SRI IP shall be considered the
Confidential Information of SRI, subject to SPEEDCOM's license rights hereunder.
Each party agrees to protect the other party's Confidential Information with at
least the same standard of care and procedures that it uses to protect its own
trade secrets and proprietary information, but in no event less than a
reasonable degree of care. The unauthorized distribution of Confidential
Information shall be considered a material breach of this Agreement.
4.2 Confidential Information of either party shall not include information
that: (a) is or becomes a part of the public domain through no act or omission
of the other party; (b) is in the other party's lawful possession prior to the
disclosure and had not been obtained by the other party either directly or
indirectly from the disclosing party; (c) is lawfully disclosed to the other
party by a third party without restriction on disclosure; or (d) is
independently developed by the other party without reference to the other
party's Confidential Information.
4.3 Each party agrees, unless required by law, not to make each the other
party's Confidential Information available in any form to any third party or to
use the other party's Confidential Information for any purpose other than the
implementation of this Agreement.
5. REPRESENTATIONS AND WARRANTIES
SRI hereby represents and warrants that: (i) it holds sufficient title and
interest in the Licensed SRI IP to grant the license rights set forth herein;
(ii) SRI is not aware of any pending or threatened litigation that is reasonably
and likely to materially and adversely affect its obligations under this
Agreement; and (iii) SRI has provided to SPEEDCOM all material documents and
information (if any) identified through patent searches and due diligence,
regarding the patent rights included in Licensed SRI IP, that were conducted for
SRI up to the Effective Date of the Agreement by SRI's patent lawyers/agents or
other personnel substantively involved in the creation of those patent rights.
6. DISCLAIMER OF WARRANTIES
THE REPRESENTATIONS AND WARRANTIES GRANTED IN SECTION 5 ("REPRESENTATIONS
AND WARRANTIES") OF THIS AGREEMENT ARE THE SOLE REPRESENTATIONS AND WARRANTIES
MADE BY SRI. NEITHER PARTY MAKES ANY OTHER REPRESENTATION OR WARRANTY, AND ANY
AND ALL OTHER REPRESENTATIONS AND WARRANTIES, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR
A PARTICULAR PURPOSE, AND NONINFRINGEMENT, ARE EXPRESSLY EXCLUDED AND
DISCLAIMED.
7. LIMITATION OF LIABILITY
THE REMEDIES SET FORTH IN THIS AGREEMENT SHALL BE SPEEDCOM'S SOLE REMEDIES
FOR BREACH OF THIS AGREEMENT. UNDER NO CIRCUMSTANCES WILL EITHER PARTY BE
LIABLE TO THE OTHER PARTY OR ANY THIRD PARTY FOR LOST PROFITS, LOST
OPPORTUNITIES, OR ANY OTHER INDIRECT, SPECIAL, OR CONSEQUENTIAL DAMAGES
IRRESPECTIVE OF THE THEORY UNDER WHICH SUCH ACTION IS BROUGHT, WHETHER IT WAS
CAUSED OR ALLEGEDLY CAUSED BY THE NEGLIGENCE OF SUCH PARTY, OR WHETHER OR NOT
SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. UNDER NO
CIRCUMSTANCE SHALL SRI'S LIABILITY TO SPEEDCOM OR ANY THIRD PARTIES, UNDER ANY
AND ALL PROVISIONS OF THIS AGREEMENT, EXCEED THE TOTAL AMOUNT ACTUALLY PAID BY
SPEEDCOM TO SRI UNDER THIS AGREEMENT. UNDER NO CIRCUMSTANCE SHALL SPEEDCOM'S
LIABILITY TO SRI OR ANY THIRD PARTIES, UNDER ANY AND ALL PROVISIONS OF THIS
AGREEMENT, EXCEED TWICE THE TOTAL AMOUNT ACTUALLY PAID OR PAYABLE BY SPEEDCOM TO
SRI UNDER ALL FEE PROVISIONS OF THIS AGREEMENT.
8. INDEMNIFICATION
8.1 SRI. SRI shall defend, indemnify and hold SPEEDCOM harmless from and
---
against any and all damages, penalties, costs and expenses (including reasonable
attorney's fees) incurred by SPEEDCOM in
connection with any third party suit, claim or proceeding brought against
SPEEDCOM based on a claim, which if true, would constitute a material breach of
SRI's representations and warranties set forth in Section 5.
8.2 SPEEDCOM. SPEEDCOM shall defend, indemnify, and hold SRI harmless
---------
from and against any and all damages, penalties, costs and expenses (including
reasonable attorney's fees) incurred by SRI in connection with any suit, claim,
or proceeding brought against SRI based on any claim: (i) which if true, would
constitute a material breach of SPEEDCOM's obligations under this Agreement; or
(ii) arising out of any warranties or representations made or implied by
SPEEDCOM (or by SPEEDCOM's employees, licensees, or agents) to third parties
which differ from those expressly authorized by SRI; or (iii) made against SRI
as a result of SPEEDCOM's sale, distribution, or use of Licensed Products.
8.3 Indemnification Procedure. Each party's indemnification obligations
-------------------------
set forth in this Section 8 are contingent upon the following: (i) the
indemnified party must take all commercially reasonable measures within its
control to mitigate such costs, losses and damages; and (ii) the indemnified
party: (a) providing prompt written notice to the indemnifying party of any such
claim, (b) giving the indemnifying party complete control of the defense and/or
settlement of any such claim, (c) providing full cooperation, at the
indemnifying party's expense, and (d) having no right to make any settlement or
compromise of any such claim without the express written consent of the
indemnifying party.
9. DISPUTE RESOLUTION
Except for a breach of Section 4 (Confidential Information), any
controversy or claim arising out of or relating to this Agreement, or the breach
thereof, or any failure to agree where agreement of the parties is necessary
pursuant hereto, including the determination of the scope of this Agreement to
arbitrate, shall be resolved by the following procedures:
9.1 Attempt to Resolve Dispute. The parties shall use all reasonable
--------------------------
efforts to amicably resolve the dispute through direct discussions. The senior
management of each party commits itself to respond promptly to any such dispute.
Either party may send written notice to the other party identifying the matter
in dispute and invoking the procedures of this article. If said dispute cannot
be settled through direct discussions, the parties agree to first endeavor to
settle the dispute in an amicable manner by mediation in San Francisco and
administered by the American Arbitration Association ("AAA"), ▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, pursuant to the Commercial
Mediation Rules of the AAA at the time of submission prior to resorting to
binding arbitration.
9.2 Application to Binding Arbitration. If after ninety (90) days from the
----------------------------------
first written notice of dispute, the parties fail to resolve the dispute by
written agreement or mediation, either party may submit the dispute to final and
binding arbitration administered by the American Arbitration Association
("AAA"), ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, pursuant
to the Commercial Arbitration Rules of the AAA at the time of submission.
California Arbitration Law shall govern except in the event a stay is sought
pursuant to the California Code of Civil Procedure (S)1281.2(c), in which event
the parties agree that the issue shall be resolved under the United States
Arbitration Act. The arbitration shall be held in San Francisco, California
before a single neutral, independent, and impartial arbitrator ("Arbitrator").
9.3 Binding Arbitration Procedure. Unless the parties have agreed upon the
-----------------------------
selection of the Arbitrator before then, the AAA shall appoint the Arbitrator as
soon as practicable, but in any event within thirty (30) days after the
submission to AAA for binding arbitration. The
Arbitrator's award shall be a final and binding determination of the dispute and
shall be fully enforceable as an arbitration award by the California courts in
accordance with the California Arbitration Law. The prevailing party shall be
entitled to recover its reasonable attorneys' fees and expenses, including
arbitration administration fees, incurred in connection with such proceeding.
Neither party nor the Arbitrator may disclose the existence, content, or results
of any arbitration hereunder without the prior written consent of both parties.
10. MISCELLANEOUS
10.1 Promotional Reference. SPEEDCOM and SRI may each refer, in their
---------------------
respective promotional materials, to SRI as a co-developer and licensor of
advanced technology for SPEEDCOM; provided, however, that each party will obtain
-------- -------
the other party's advance written consent to the substance of any such
statement, and such consent will not be unreasonably withheld. SRI may refer to
the names of the Final Products in SRI promotional literature and marketing
materials.
10.2 Independent Contractor. In executing this Agreement, the parties
----------------------
intend to create an independent contractor relationship. Nothing herein shall
be construed as creating a partnership, a joint venture, an agency, or any other
relationship.
10. 3 Governing Law. This Agreement, and all matters arising out of or
-------------
relating to this Agreement, shall be governed by the laws of the State of
California without regard to its conflict of laws provisions and without regard
to its location of execution or performance. Any legal action or proceeding
relating to this agreement shall be instituted in any state or federal court in
the Northern District of California. The parties agree to submit to
jurisdiction of, and agree that venue is proper in, the aforesaid courts in any
such legal action of proceeding.
10.4 Notices. All notices, including notices of change of address,
-------
required to be sent hereunder shall be deemed to have been given in writing by:
(i) personal delivery; (ii) nationally recognized overnight courier service; or
(iii) registered or certified mail, postage prepaid, return receipt requested,
addressed as follows:
If to SRI, for technical matters: If to SRI, for all other matters:
SRI International SRI International
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ Attn: ▇▇▇▇▇▇ ▇▇▇▇▇▇, IP Dept.
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇ Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
If to SPEEDCOM, for technical matters: If to SPEEDCOM, for all other matters:
SPEEDCOM Wireless International SPEEDCOM Wireless International
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, D-4 ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇-▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ Attn: ▇▇▇ ▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇ Telephone: (▇▇▇) ▇▇▇-▇▇▇▇ ▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
10.5 U.S. Export Laws and Regulations. Each party hereby acknowledges that
--------------------------------
the rights and obligations of this Agreement are subject to the laws and
regulations of the United States relating to the export of products and
technical information. Without limitation, each party shall comply with all such
laws and regulations.
10.6 Entire Agreement. This Agreement, the Services Agreement and
----------------
the Registration Rights Agreement constitutes the complete agreement between the
parties and supersedes all prior or contemporaneous agreements or
representations, written or oral, concerning the subject matter of this
Agreement. This Agreement may not be modified or amended except in a writing
signed by a duly authorized representative of each party; no other act,
document, usage, or custom shall be deemed to amend or modify this Agreement.
10.7 Severability. In the event any provision of this agreement is
------------
held to be invalid or unenforceable, the remaining provisions of this Agreement
will remain in full force.
10.8 Term. The provisions of this Agreement commence on the Effective Date
----
and continue in perpetuity, except as provided otherwise herein. Expiration or
termination of this Agreement or its provisions shall not relieve the parties of
any obligation accruing prior to such expiration or termination.
10.9 Survival. The provisions of Sections 1, 3, 4, 5, 6, 7, 8, 9,
--------
and 10 shall survive the expiration or termination of this Agreement.
The parties have caused this Agreement to be executed by their duly
authorized representatives.
SRI International SPEEDCOM Wireless Corporation
___________________________________ ____________________________________
___________________________________ ____________________________________
United States Patent Application entitled "Method and Apparatus for Updating
Information in a Low-Bandwidth Client/Server Object-Oriented System", filed June
1, 1998.
United States Patent Application entitled "Method and Apparatus for Updating
Information in a Low-Bandwidth Client/Server Object-Oriented System", filed
March 3, 2000 (a c-i-p of the previously listed patent application).
United States Patent Application entitled "A System And Method For Disseminating
=====================================
Topology And Link-State Information To Routing Nodes In A Mobile Ad Hoc Network
===============================================================================
", filed December 1, 2000.
United States Patent Application entitled " An IPv6-IPv4 Compatibility
===========================
Aggregatable Global Unicast Address Format For Incremental Deployment Of IPv6
=============================================================================
Nodes Within IPv4 Networks", filed December 1, 2000.
▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ Patent Application entitled " A Reduced-Overhead Protocol For
================================
Discovering New Neighbor Nodes And Detecting The Loss Of Existing Neighbor Nodes
================================================================================
In A Network ", filed December 1, 2000.
▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ Patent Application entitled "Mobile Ad Hoc Extensions For The
================================
Intenet", filed December 1, 2000.
========
Software Modules
TBRPF
Topology Broadcast based on Reverse Path Forwarding (TBRPF) is an, ad-hoc
network protocol for the reliable broadcast of full topology and link-state
information in a multihop communication network with a highly dynamic topology,
such as a wireless network with mobile nodes. The TBRPF protocol uses the
concept of reverse-path forwarding (RPF) to broadcast link-state updates in the
reverse direction along the spanning tree formed by the minimum-hop paths from
all nodes to the source of the update. TBRPF uses the topology information
received along the broadcast trees to compute the minimum-hop paths that form
the trees themselves, and is the first topology broadcast protocol based on RPF
with this property. The use of minimum-hop trees instead of shortest-path trees
(based on link costs) results in less frequent changes to the broadcast trees
and therefore less communication cost to maintain the trees. Simulations show
that TBRPF achieves up to a 98% reduction in communication cost compared to
flooding (OSPF-based protocols) in a 20-node network. The current
prototype/engineering code version of the TBRPF protocol as it applies to IPv4
networks has been implemented in the FreeBSD V3.2 operating system with the
Merit Multi-Threaded Routing Toolkit daemon (mrtd). The current implementation
has been in use for laboratory and fielded in experiments since June 1999.
Development funding has come from the Office of Naval Research, the US Army
Communications and Electronics Command and the Defense Advanced Research
Projects Agency.
IPV4/IPV6 Compatibility Addressing
The IPv6-IPv4 Compatibility Aggregatable Global Unicast Address Format specifies
an IPv6-IPv4 compatibility aggregatable global unicast address format for any
IPv6 host, gateway or router that has at least one globally unique IPv4 address.
Our approach allows for large-scale incremental deployment of IPv6 hosts within
heterogeneous IPv6/v4 domains without incurring aggregation scaling issues at
the border gateways. This address format supports both global routing within the
native IPv6 routing domain and automatic tunneling across IPv4 networks with no
native IPv6 support. Additionally this format specifies a non-globally routable
IPv6-IPv4 compatibility address format for use within private networks with non-
globally unique IPv4 addresses. Finally, we have also developed a method for
global routing of such addresses through a combination of mechanisms applying
both unique approaches and other works in progress in the IETF Next Generation
Transition (NGTRANS) working group.
ReDDE
SRI's Reliable Data Distribution Engine (ReDDE) has been successfully deployed
on mission critical military and civilian applications. It is at the heart of
SRI's family of products for situation awareness and command and control and has
performed exceedingly well under very rigorous conditions. The InCON situation
awareness system (which employs ReDDE) guaranteed data delivery to 200 wireless
client nodes for the Marine Corps Urban Warrior experiments. The system was also
the deployed for the Extending the Littoral Battlefield Advanced Concept
Technology Demonstration for the Office of Naval Research, and the Airborne
Switch Experiment for the Naval Research Laboratory. Additionally, several
servers are under license by the Naval Space and Warfare Command for various
research applications. To work reliably in a wireless environment, a system must
be able to provide efficient wireless communication; the standard Internet
protocol, TCP/IP, was designed for high-speed, wired, reliable networks. In
theory, the TCP portion (which provides a reliable stream of data) will work
over a wireless link; in practice, however, operation is problematic because the
TCP/IP design makes the same assumptions for both wired and wireless
networks--namely, if network dropouts occur, they are due to network congestion.
Assuming network congestion is the cause when, in fact, the problem with many
wireless networks is packet loss due to coverage problems, can cause the network
to degrade to a point where performance is unacceptable.
ReDDE was developed using the connectionless UDP protocol provided in TCP/IP to
overcome many of the performance penalties encountered using standard TCP. As a
result we created a new self-adapting TCP/IP that is tuned for wireless
communications. In addition, the ReDDE
middleware takes advantage of the connectionless behavior to manage the queues
of data by adapting to low- bandwidth communication channels and dealing with
communications outages in an efficient manner.
ReDDE makes dynamic, real-time network measurements and adaptively adjusts the
communications to reflect actual network conditions. This scheme inherently
improves QoS issues associated with:
. With the server hardware. (physical problem)
. With the server software. (no acknowledgement of the receipt of data)
. On the link between the client and primary server (although
communication may still be possible to other servers on the network).
. On the actual communications link between all clients and servers.
(client communication outage)
. On an individual client link.
. Some combination of the above--i.e., the communications link is not
operational AND the server is down.
Data Management and Queuing. ReDDE automatically adjusts to the available
communications bandwidth and optimizes this bandwidth by prioritizing data to
send only the high priority data during network congestion/link failure. In
addition, for the sake of reliability, the data stored on the servers can be
replicated to multiple servers so that the data exist at multiple sites.
Guaranteed Client/Server Synchronization. The PacketHop(TM) system ensures that
all client objects are completely synchronized with one another by tracking how
up-to-date any object in the system is, at any point in time.
Managing Queues. Communications between the server and individual clients can
vary greatly; ReDDE uses a multi-threaded architecture that manages each client
connection in a highly efficient manner, thereby ensuring that valuable CPU and
bandwidth resources are used efficiently when the system is busy and not wasted
when the system is idle.
Recovery After Crashes or Prolonged Communications Outages. ReDDE clients have
the ability to determine how up-to-date they are with regard to the rest of the
system. All data generated by clients are queued at the client end (for locally
generated data) or at the server end (for data generated by other clients).
Whenever a client re-connects to a server, the server either re-connects to the
previously existing queue of data or creates a new queue of data. In the case
of a client migrating to a different server (due to load balancing or the
previous server crashing), some redundant data will be communicated to the
client. Because there is no perfect way of determining this, we err on the side
of guaranteeing 100% data consistency rather than minimizing communication.
PacketHop(TM)
PacketHop(TM) is the combination of all of the above technologies to provide a
multi-level, highly reliable and adaptive system of wireless data
communications.
TRADEMARKS AND TRADEMARK USEAGE GUIDELINES
SRI Trademarks
--------------
SRI International(R) Logo
