GigaBeam Proprietary and Confidential
XXXXX INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT
WAS REQUESTED. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
Exhibit 10.21
AMENDED AND RESTATED
STRATEGIC ALLIANCE AGREEMENT
This Amended and Restated Strategic Alliance Agreement (the "Agreement")
is entered into as of the 10th day of December, 2004 ("Effective Date"), by and
between Sophia Wireless Inc., a Delaware C-corporation ("Sophia"), and GigaBeam
Corporation, a Delaware corporation ("GigaBeam").
RECITALS
WHEREAS, GigaBeam and Sophia have previously executed and entered in that
certain Strategic Alliance Agreement, dated February 6, 2004 (the "Strategic
Alliance Agreement"), that provided for a strategic alliance to enable GigaBeam
to market and distribute a wireless communications system utilizing a frequency
range of 57 GHz through 100 GHz and incorporating components procured from
Sophia and that certain First Amendment to the Strategic Alliance Agreement,
dated April 22, 2004 (the "First Amendment") that clarified certain warrants
issued by GigaBeam to Sophia; and
WHEREAS, Sophia and GigaBeam now wish to further amend and restate the
Strategic Alliance Agreement to further define the development of technology by
Sophia and the license of that technology by GigaBeam.
AGREEMENT
NOW, THEREFORE, in consideration for the parties' mutual covenants set
forth below, and for other good and valuable consideration, the parties agree as
follows:
DEFINITIONS
"Product" means any GigaBeam product incorporating Designed Product.
"Designed Product" means any product developed by Sophia as specified by
GigaBeam in a mutually agreeable Statement of Work (as hereinafter defined) for
manufacture, license and use in E-band point-to-point radios deployed by
GigaBeam.
1
"Exclusivity" for the Designed Product will be defined in the negotiated
Statement of Work.
"Intellectual Property Rights" means all past, present, and future rights
of the following types, which may exist or be created under the laws of any
jurisdiction in the world: (i) rights associated with works of authorship,
including exclusive exploitation rights, copyrights, moral rights, and mask work
rights; (ii) trademark and trade name rights and similar rights; (iii) trade
secret rights; (iv) patent and industrial property rights; (v) other proprietary
rights in Inventions of every kind and nature; and (vi) rights in or relating to
registrations, renewals, extensions, combinations, divisions, and reissues of,
and applications for, any of the rights referred to in clauses (i) through (v)
of this sentence.
"Inventions" means any and all useful ideas, concepts, methods,
procedures, processes, improvements, inventions and discoveries, whether or not
patentable, that are (i) in the case of patentable inventions, conceived in the
course of the performance of activities conducted in connection with the
development and manufacture of Designed Product or Products and reduced to
practice either actually or constructively and (ii) in the case of unpatentable
inventions, conceived and made or used in the course of the performance of
activities conducted in connection with the development and manufacture of
Designed Product or Products, in each case under this Agreement.
"Joint Invention" means any Invention that (i) is jointly reduced to
practice (under the patent laws of the United States) by Sophia and GigaBeam
during any collaborative meetings or conferences between the Parties regarding
development or improvement of Designed Product, (ii) is necessary to use in any
Designed Product, and (iii) relates to any process, procedure, or equipment for
manufacturing any Designed Product.
"Joint Technology" means the Joint Inventions and any Intellectual
Property Rights related thereto.
"Pre-Existing Technology" means any and all useful ideas, concepts,
methods, procedures, processes, improvements, inventions and discoveries,
whether or not patentable, and any Intellectual Property Rights thereto, that
are owned or controlled by Sophia or by Gigabeam or Gigabeam's other Alliance
Partners as of the Effective Date.
1. Responsibilities of Parties
1.1 Designed Product Development
1.1.1 From time to time during the term of this Agreement, the
parties may set forth in writing a description of the general
functional and technical requirements of certain Designed
Products that GigaBeam desires for Sophia to develop under the
terms of this Agreement. For purposes of this Agreement, any
such document executed specifically indicating that it is
subject to this Agreement and which is executed by authorized
representatives of both parties shall be referred to as a
"Statement of Work" or "SOW" with respect to the relevant
Designed Product described therein. To the extent that any
term or condition of a Statement of Work modifies or conflicts
with this Agreement, the Statement of Work shall take
precedence as it relates to the Designed Product defined in
that particular Statement of Work. The Parties agree that the
initial Statement of Work under this Agreement is set forth in
Exhibit A (the "Initial Statement of Work").
2
In consideration for payment by GigaBeam to Sophia of the
Non-Recurring Engineering/Licensing Fees as contemplated in
Section 3.1, Sophia will exercise reasonable efforts to
develop Designed Product meeting the technical and target
delivery schedule requirements set forth in the Initial
Statement of Work.
In addition, Sophia agrees to exercise commercially reasonable
efforts to develop Designed Products meeting the general
requirements set forth in the applicable Statement of Work
(i.e. other than the Initial Statement of Work) that may be
subsequently executed by the parties, for such period(s) of
time as the parties set forth therein .
1.1.2 Upon completion of any prototypes as contemplated in the
preceding Section 1.1.1, Sophia will so notify GigaBeam (the
date of such notice, the "Testing Commencement") and make a
number of units of such prototype available (in such quantity
as required by the applicable SOW) for mutual testing by the
parties for purposes of confirming that such prototype(s)
conform to the requirements of the applicable SOW in all
material respects. In the event that any such Design Product
fails to conform in any material respect to such requirements,
GigaBeam will provide written notice to Sophia identifying
with specificity the relevant non-conformity, and Sophia will
thereafter undertake commercially reasonable efforts to
correct such non-conformity within a reasonable time, and the
parties will repeat such process as appropriate. If, despite
such commercially reasonable efforts, Sophia is unable or
fails to cause such Designed Product to conform to the
requirements of the applicable SOW in all material respects
within the time period identified in such SOW, the parties
will consult with one another in good faith regarding how to
proceed.
1.2 [This subsection reserved.]
1.3 GigaBeam.
GigaBeam shall perform the following duties during the term of this
Agreement:
1.3.1 GigaBeam will Designate a Chief Technical Officer ("CTO") and
Vice President or Director of Engineering to provide
consultation regarding all design and development work.
GigaBeam will be responsible for overall decisions with
respect to final design and production of the Product.
3
1.3.2 Except as may otherwise be provided in the applicable
Statement of Work, as between the parties, GigaBeam will bear
all responsibility for assembly and testing of any Product,
including the contracting and management of any outsourcing or
supply channels of any Product or components thereof,
including the Designed Product, and the manufacturing and
repair of any Product, including the Designed Product.
1.3.3 As between the parties, GigaBeam will bear all responsibility
for any and all sales, marketing, installation and after-sales
service of any Product including, but not limited to, entering
into arrangements with value added resellers, distributors,
agents, installers and providers of after-sales service.
1.4 Sophia
Sophia will designate a program manager to interface with GigaBeam's
representatives. The two counterparts will meet and develop detailed
implementation plans with the following objectives in mind:
1.4.1 As between the parties, Sophia will bear responsibility for
development associated with any Designed Product.
1.4.2 Sophia will exercise reasonable efforts to consult in good
faith with third party companies identified by GigaBeam to
improve the design, performance, manufacturability and reduce
the cost of any Designed Product.
1.4.3 For purposes of manufacturing any Designed Product and for
purposes related to technical support of GigaBeam in the
assembly of Products, Sophia will assist GigaBeam in
transferring the technical design to GigaBeam's contract
manufacturer.
2. [This section reserved.]
3. Payment
3.1 In consideration for Sophia's performance of certain research
and development related to Designed Product, GigaBeam will pay
to Sophia all fees identified as "Non Recurring
Expenses/License Fee" in the applicable Statement of Work,
which fees will be due and payable in accordance with such
Statement of Work, provided that if the relevant Statement of
Work fails to state when such payments are due and no separate
written agreement has been signed with respect thereto, all
such amounts under any particular Functional Requirements
Statement shall be due and payable within thirty (30) days of
the date of Sophia's invoice.
4
4. Term and Termination.
This Agreement shall be effective as of the Effective Date and shall
automatically terminate on the third anniversary of the Effective Date
hereof unless extended by mutual written agreement of the parties
provided, however, that the Agreement may be terminated for any of the
following reasons:
a.) Upon the occurrence of any material breach by either party of the
terms and conditions of this Agreement and failure to cure such
material breach within 30 days after receipt of written notice from
the other party the non-breaching party may, at its option,
terminate this Agreement upon written notice; provided however that
the cure period shall be only 10 days after receipt of notice if the
material breach arises from failure by GigaBeam to pay amounts due
according to Section 3.
b.) [This subsection reserved.]
c.) Upon the occurrence of bankruptcy or reorganization under bankruptcy
laws, cessation of operations, or assignment for the benefit of
creditors of either party, the other party may terminate this
Agreement upon written notice.
d.) This Agreement may be terminated by mutual written agreement of both
parties to terminate.
Notwithstanding the foregoing, upon the occurrence of a material breach by
either Party (the "Breaching Party"), which is not cured within the
appropriate cure period, or other event giving rise to a right for either
Party to terminate this Agreement, without limiting any other rights or
remedies available, the Party which is not in material breach (the
"Non-Breaching Party"), which has the right to terminate this Agreement
may, at its option, terminate its own obligations of exclusivity under
Section 8, such that Section 8 remains binding against the Breaching Party
for the remainder of the term but shall thereafter no longer be binding
against the Non-Breaching Party
5. Ownership of Technology and Intellectual Property
5.1 Ownership of GigaBeam Technology. Without limiting the obligations
of Section 8, GigaBeam will own and hold all right, title and
interest in and to (i) all Inventions and Intellectual Property
Rights, other than Joint Technology or Sophia Technology (as defined
below), embodied in or practiced by any Product developed and/or
sold under this Agreement or embodied in or practiced by any process
or machine in connection with the manufacture of any such Product,
and (ii) all Inventions and Intellectual Property Rights therein
(other than Joint Technology or Sophia Technology) that are derived
from Confidential Information of GigaBeam and (iii) all Pre-Existing
Technology and derivatives or improvements thereof (all of the
foregoing, collectively, "GigaBeam Technology"). In the event that,
by operation of law or otherwise, GigaBeam may not be deemed the
owner of any GigaBeam Technology, Sophia agrees to assign and does
hereby assign to GigaBeam all rights or interests, if any, that
Sophia may have therein, and Sophia agrees to undertake such
measures as reasonably request to evidence or give effect to the
foregoing provisions of this Section 5.1, including, by way of
example, by executing further registrations or documentation for
such purposes.
5
5.2 Ownership of Joint Technology.
(a) All Joint Technology will be owned jointly by Gigabeam and
Sophia, and each party will retain full ownership under any patents
and any trade secret rights therein, with full ownership rights in
any field and, subject to the licenses granted in Section 5.4 below,
the right to sublicense without the consent of the other party,
without obligation to account to the other party. The laws of the
United States with respect to joint ownership of inventions will
apply in all jurisdictions giving force and effect to this
Agreement.
(b) The parties will keep written records describing each
collaborative meeting between the parties and identifying any Joint
Inventions resulting therefrom. The parties will distribute such
records to each other at the end of each meeting but in any event no
later than one month following the meeting, for review by the other
party. Each such record will be final and binding on the parties
unless receiving party provides written notice to distributing party
of its good faith dispute with such written record within 30 days of
receipt. In the event of any such good faith dispute that the
parties are unable to resolve, such record will reflect such
unresolved dispute. All reports created under this Section 5.2(b)
shall be clearly marked as "Confidential" and shall be subject to
the confidentiality provisions of this Agreement.
5.3 Ownership of Sophia Technology. Without limiting the obligations of
Section 8, Sophia will own and hold all right, title and interest in
and to (i) all Inventions and Intellectual Property Rights (other
than Joint Technology or GigaBeam Technology) embodied in or
practiced by any Designed Product developed under this Agreement,
(ii) all Inventions and Intellectual Property Rights therein that
are derived from Confidential Information of Sophia, and (iii) all
Pre-Existing Technology and derivatives or improvements thereof (all
of the foregoing, collectively, "Sophia Technology"). In the event
that, by operation of law or otherwise, Sophia may not be deemed the
owner of any Sophia Technology, GigaBeam agrees to assign and does
hereby assign to Sophia all rights or interests, if any, that
GigaBeam may have therein, and GigaBeam agrees to undertake such
measures as Sophia may reasonably request to evidence or give effect
to the foregoing provisions of this Section 5.3, including, by way
of example, by executing further registrations or documentation for
such purposes.
5.4 Licenses to Joint Inventions.
(a) Sophia hereby grants to GigaBeam, and GigaBeam hereby
accepts, an exclusive (even as to Sophia) and perpetual, worldwide,
royalty-free right and license, with the right to sublicense, under
Sophia's interest in the Joint Technology to exploit the Joint
Inventions for any purpose in the Exclusivity during and after the
term of this Agreement. Sophia reserves all rights in the Joint
Technology as necessary to perform its obligations under this
Agreement. Notwithstanding the foregoing, if GigaBeam is in material
breach of this agreement, then this license will be non-exclusive.
6
(b) GigaBeam hereby grants to Sophia, and Sophia hereby
accepts, an exclusive (even as to GigaBeam) and perpetual,
worldwide, royalty-free right and license, with the right to
sublicense, under GigaBeam's interest in the Joint Technology to
exploit the Joint Inventions for any purpose outside the Exclusivity
during and after the term of this Agreement. Notwithstanding the
foregoing, if Sophia is in material breach of this agreement, then
this license will be non-exclusive.
5.5 Right of First Look. Sophia shall provide GigaBeam with the right of
"first look" at any product Sophia may develop on its own for the
XXXXX market in the 70-76 GHz and 80-86 GHz frequency ranges (the
"Sophia XXXXX Development"). For purposes of this Amendment, "first
look" shall mean that in the event Sophia desires to disclose or
enter into an agreement to develop, license or sell any Sophia XXXXX
Development with another vendor, Sophia shall provide GigaBeam with
not less than XXXXX days prior written notice thereof, detailing the
development, including copies of the relevant documents and
specifications, (the "Notice Period") and GigaBeam shall have the
right to notify Sophia in writing during the Notice Period of its
interest in participating in the development. In such case, the
parties shall attempt to negotiate in good faith a mutually
agreeable Statement of Work for such Sophia XXXXX Development,
including but not limited to, grant of an exclusive manufacturing
license by Sophia in favor of GigaBeam. If GigaBeam fails to deliver
a timely notice of interest or the parties are unable to negotiate a
mutually agreeable Statement of Work for the subject Sophia XXXXX
Development, then the parties shall have no further obligation to
each other with respect the subject Sophia XXXXX Development.
5.6 Technology Escrow. The parties will attempt to negotiate a mutually
agreeable escrow arrangement for any Designed Product or Sophia
Intellectual Property used in the Designed Product in the applicable
Statement of Work. In the event the parties are unable to agree on
such an arrangement, the following provisions shall apply:
(a) Sophia agrees during the term of this Agreement to create
and maintain current copies of any technical drawings or other
technical documents relating to the design and specifications of the
Designed Product developed under this Agreement (such copies the "IP
Materials"). Within 90 days after the Effective Date, Sophia will
enter into binding contractual arrangement with a commercial escrow
agent mutually agreeable to the Parties (the "Escrow Agent")
according to which the Escrow Agent will agree (i) to hold and
safeguard the escrowed intellectual property for the Designed
Product during the term of this Agreement, and (ii) to release a
copy of such escrowed intellectual property materials to GigaBeam if
and when Sophia files for bankruptcy, liquidates or winds up its
business during the term of this Agreement. GigaBeam acknowledges
that the Escrow Agent will not be authorized to deliver or otherwise
provide access to the escrowed intellectual property materials other
than as described above.
7
(b) Subject to the delivery to GigaBeam of the escrowed
intellectual property materials for any Designed Product in
accordance with this Section 5.6, Sophia hereby grants to GigaBeam a
royalty-bearing right and license under any Intellectual Property
Rights of Sophia to use such escrowed intellectual property
materials for the Designed Product.
5.7 Licenses to Manufacture and Copy Documentation.
(a). In consideration of payment by GigaBeam to Sophia of the
"Non-Recurring Expenses/License Fee" and in accordance with the
applicable Statement of Work, Sophia hereby grants to GigaBeam, and
GigaBeam hereby accepts a perpetual, world wide, royalty-free right
and license, with the right to sublicense, under Sophia's interest
in the Design Product (i) to make, manufacture, have manufactured,
test, have tested, use, and sell in GigaBeam's Products during and
after the term of this Agreement, including without limitation, the
right and license to modify the Designed Product exclusively in
order to reduce the cost and expense of the architecture of the
Designed Product or to improve the ability and efficiency of the
manufacture of the Designed Product.
(b). In further consideration of payment by GigaBeam to Sophia
of the "Non-Recurring Expenses/License Fee" and in accordance with
the applicable Statement of Work, Sophia hereby grants to GigaBeam,
and GigaBeam hereby accepts a perpetual, world wide, royalty-free
right and license, to copy and/or modify and/or translate the
documentation in recorded form and/or parts thereof provided to
GigaBeam from Sophia as provided in the Statement of Work, for the
sole purpose of executing the rights and licenses granted under
Subsection 5.7(a). Sophia will include a list of the Sophia
exclusive design elements in the documentation package provided to
GigaBeam with each Designed Product. GigaBeam agrees to restrict
disclosure of Design Product documentation to contract manufacturers
or other consultants having executed proper non-disclosure
agreements and non-compete agreements, and a copy of each such
agreement has been provided to Sophia.
8
6. Confidentiality.
6.1 Obligation. Each party agrees to treat all non-public written and
oral information communicated to it by the other party in connection
with the activities contemplated by this Agreement ("Confidential
Information"), including the existence or nature of their
discussions, as confidential, and neither party will use or disclose
such Confidential Information for purposes other than the activities
contemplated by this Agreement; provided however that GigaBeam and
Sophia may disclose such Confidential Information to accountants and
lawyers who are under a processional duty of confidentiality and,
for the purposes of obtaining financing, to entities that the
disclosing party reasonably believes to be a potential source of
such financing, provided that such entity has entered into a binding
written agreement pursuant to which such entity agrees not disclose
such Confidential Information and not to use the same for any
purposes other than consideration of such potential financing. For
sake of clarity, all non-public information embodying related to the
design, features, components, development and manufacture of
GigaBeam's Products, exclusive of any Designed Product therein,
shall be considered GigaBeam's Confidential Information, and all
non-public information embodying related to the design, features,
components, development and manufacture of Designed Product,
including the same as developed hereunder, shall be deemed Sophia's
Confidential Information.
6.2 Exceptions. Confidential Information will not include information
that (i) the receiving party independently developed (as shown by
documentary evidence) or obtained from a source not under an
obligation of confidentiality to the disclosing party, (ii) is or
becomes publicly available through no act or omission of the
receiving party, or (iii) the receiving party receives the prior
written consent of the disclosing party to disclose. Notwithstanding
the foregoing, either Party may disclose Confidential Information of
the other Party to the limited extent required in order to comply
with applicable law or the order of a court or governmental agency;
provided the receiving party promptly notifies the disclosing party
and cooperates with the disclosing party to protect the
confidentiality of the Confidential Information before any tribunal
or governmental agency; provided that only the specific Confidential
Information that meets the exclusion shall be excluded and not any
other Confidential Information that happens to appear in proximity
to such excluded portion (for example, a portion of a document may
be excluded without affecting the confidential nature of those
portions that do not themselves qualify for exclusion). The burden
of proving these exceptions shall rest with the receiving party.
6.3 Termination of Agreement. Upon termination of this Agreement, the
receiving party will return all copies of the other party's
Confidential Information, or, at the disclosing Party's option,
certify to the other party in writing that all copies of the other
party's Confidential Information have been destroyed. The parties
agree that any breach or threatened breach of this Section 6 by a
receiving party may cause irreparable harm to the disclosing party
and that money damages may not provide an adequate remedy. In the
event of a breach or threatened breach of this Section 6 by a
receiving party, the disclosing party shall, in addition to any
other rights and remedies it may have, be entitled to seek
injunctive relief (without the necessity of posting any bond or
surety) restraining the receiving party from breaching the
obligations of this Section 6.
9
7. Limitation of Liability; Indemnification
7.1 LIMITATION OF LIABILITY. EXCEPT WITH RESPECT TO RIGHTS OR
OBLIGATIONS ARISING OR RECOGNIZED UNDER SECTIONS 5, 6 AND/OR 8, IN
NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY LOSS OF
PROFITS OR ANY INCIDENTAL, INDIRECT, SPECIAL, EXEMPLARY, OR
CONSEQUENTIAL DAMAGES, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. EXCEPT WITH RESPECT TO RIGHTS OR
OBLIGATIONS ARISING OR RECOGNIZED UNDER SECTIONS 5, 6 AND/OR 8, IN
NO EVENT SHALL THE AGGREGATE LIABILITY OF EITHER PARTY, CUMULATIVELY
FOR ALL CLAIMS ARISING UNDER THIS AGREEMENT, EXCEED, IN THE CASE OF
GIGABEAM'S LIABILITY, THE SUM TOTAL AMOUNTS PAID FOR NON RECURRING
ENGINNERING/LICENSE FEES OR, IN THE CASE OF SOPHIA'S LIABILITY, THE
SUM TOTAL AMOUNT OF ALL NON RECURRING/LICENSE FEES FOR WHICH WORK IS
PERFORMED.
7.2 Indemnification by Sophia.
(a) Sophia shall defend, indemnify, and hold GigaBeam harmless
against all costs and reasonable expenses (including reasonable
attorneys' fees), damages, and liabilities arising out of any claim
by a third party that a Designed Product, as provided by Sophia and
used in accordance with this Agreement, infringes any U.S. patent
issued as of the Effective Date or misappropriates any trade secrets
under U.S. law, provided that GigaBeam gives Sophia (i) prompt
written notice of such claim; (ii) control over the defense and
settlement of such claim; and (iii) proper and full information and
assistance to settle and/or defend such claim. Notwithstanding the
foregoing, Sophia shall have no obligation or liability to the
extent that the alleged infringement arises from (1) the
combination, operation, or use of the Designed Products with
products not furnished by Sophia other than GigaBeam Products; (2)
alterations to the Designed Product, which alterations are not made
by Sophia; or (3) use of the Designed Product in a manner for which
it was not designed, as evidenced by any accompanying specifications
or documentation (the foregoing exclusions, "GigaBeam
Responsibilities").
(b) In the event of an infringement action against Sophia with
respect to any subject matter provided by Sophia hereunder, or in
the event that Sophia believes that such an action is likely, Sophia
may, at its option (i) substitute functionally equivalent materials;
(ii) obtain a license to the applicable third-party intellectual
property rights; or (iii) terminate this Agreement on written notice
to GigaBeam. The obligations set forth in this Section 7.2 shall
constitute Sophia's entire liability and GigaBeam's sole remedy for
any actual or alleged infringement or misappropriation.
10
7.3 Indemnification by GigaBeam. GigaBeam shall defend, indemnify, and
hold Sophia harmless against all costs and reasonable expenses
(including reasonable attorneys' fees), damages, and liabilities
arising out of any GigaBeam Responsibilities; provided that Sophia
gives GigaBeam (i) prompt written notice of such claim; (ii) control
over the defense and settlement of such claim; and (iii) proper and
full information and assistance to settle and/or defend such claim.
In any action for which GigaBeam provides defense on behalf of
Sophia, Sophia may participate in such defense at its own expense by
counsel of its choice.
8. Exclusivity.
8.1 Sophia. Exclusivity will be granted per the Statement of Work.
9. Services Rendered and Milestones.
The Parties hereby acknowledge that all obligations of each Party under
the Strategic Alliance Agreement to the Effective Date of this Agreement
have been satisfied and all payments owing to each Party have been
received and no additional payments are due to any Party. In addition, the
Parties hereby agree and acknowledge that they have each issued to the
other the warrants described as follows: GigaBeam has issued Sophia a
warrant to purchase 35,750 shares of GigaBeam common stock at $1 per share
and Sophia has issued GigaBeam a warrant to purchase 40,458 shares of
Sophia Wireless common stock at $2.20 per share. Upon the execution of
this Agreement, no additional warrants shall be issued to any Party
pursuant to Section 9 of the Strategic Alliance Agreement.
10. Mutual Release.
Except as expressly provided in this Agreement, the parties, for and on
behalf of themselves and each of their respective future, current and/or
former officers, directors, shareholders, representatives, principals,
agents, employees, trustees, partners, general partners, limited partners,
co-venturers, parents, subsidiaries, affiliates, predecessors, successors,
assigns, beneficiaries, heirs, executors, administrators, insurers,
attorneys and all persons acting by, through, under, in concert with or on
behalf of any of them hereby irrevocably and unconditionally release and
hereby completely and fully remise, release, acquit and forever discharge
each other, each of their respective future, current and/or former
officers, directors, shareholders, representatives, principals, agents,
employees, trustees, partners, general partners, limited partners,
co-venturers, parents, subsidiaries, affiliates, predecessors, successors,
assigns, beneficiaries, heirs, executors, administrators, insurers,
attorneys and all persons acting by, through, under, or in concert with
any of them, from all charges, complaints, claims, demands, liabilities,
obligations, actions, and causes of action of any kind or nature
(including for attorneys' fees, interest, expenses and costs actually
incurred), whether at law, in equity, or by statute, liquidated or
unliquidated, known or unknown, suspected or unsuspected, reasonably
discoverable or not, present, fixed or contingent, arising out of,
concerning or relating, directly or indirectly, to the Strategic Alliance
Agreement, which exist as of the Effective Date of this Agreement.
11
11. Miscellaneous
11.1 Entire Agreement. This Agreement and the First Amendment represents
the entire Agreement between the parties with respect to the subject
matter herein, and supersedes any previous understandings including
the Strategic Alliance Agreement, whether written or oral, with
respect to such subject matter, and may not be amended except
pursuant to a written agreement duly executed by the parties.
11.2 Trademarks, Trade Names and Copyright. Except as expressly provided
herein, this Agreement does not give either party any ownership
rights or interest in the other party's trade name, trademarks or
copyrights.
11.3 Waiver. No failure or delay by either party in exercising any of its
rights or remedies hereunder will operate as a waiver thereof, nor
will any single or partial exercise of any such right or remedy
preclude any other or further exercise thereof or the exercise of
any other right or remedy. The rights and remedies of the party's
provided in this Agreement are cumulative and not exclusive of any
rights or remedies provided under this Agreement, by law, in equity
or otherwise.
11.4 Assignment. Neither party may assign or otherwise transfer any of
its rights, duties or obligations under this Agreement without the
prior written consent of the other party, except either party may,
upon prior written notice to the other party (but without any
obligation to obtain the consent of such other party), assign this
Agreement or any of its rights hereunder to any person or entity who
succeeds (by purchase, merger, operation of law or otherwise) to all
or substantially all of the capital stock, assets or business of
such party, provided such person or entity agrees in writing to
assume and be bound by all of the obligations of such party under
this Agreement. Any attempted assignment or transfer in
contravention of this Section 11.4 shall be void and of no force and
effect. This Agreement shall be binding upon and inure to the
benefit of the parties and their respective legal representatives,
successors and permitted assigns.
11.5 Independent Contractors. This Agreement shall not be construed to
establish any form of partnership, agency, or joint venture of any
kind between the parties; nor to constitute either party as an
agent, employee, or legal representative of the other; and nothing
in this Agreement shall create any relationship between The parties
other than that of an independent contractor. Neither party shall
have any responsibility or liability for the actions of the other
party, except as specifically provided herein. Neither party shall
have any right or authority to bind or obligate the other in any
manner or make any representation or warranty on behalf of the
other. No profits, losses or costs will be shared under any
provision of this Agreement or as a result of either party's efforts
in connection with any joint opportunity and securing an award of
any customer contract. There are no third-party beneficiaries of
this Agreement.
12
11.6 Further Assurances. Without limiting the generality of any provision
of this Agreement, each party agrees that upon request of the other
party, it shall, from time to time, do any and all other acts and
things as may reasonably be required to carry out its obligations
hereunder, to consummate the transactions contemplated hereby, and
to effectuate the purposes hereof.
11.7 Publicity. Except as may be required by state and federal securities
laws, neither party shall issue any press release, public
announcement or advertise or promote this Agreement without the
prior consent of the other party, which consent will not be
unreasonably withheld, conditioned or delayed.
11.8 Expenses. Each party will pay its own expenses and costs incidental
to the negotiation of the transactions contemplated by this
Agreement, including legal and accounting fees.
11.9 Notices. Any notices contemplated hereunder or provided for in this
Agreement shall be made to the following in writing or by facsimile
with confirmation by Express Mail or Federal Express:
GigaBeam:
X. Xxxxxxxxx
CEO
GigaBeam Corporation
000 Xxxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxx, XX 00000
With copy to:
GigaBeam Corporation
000 Xxxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxx, XX 00000
Attn: Legal Department
Sophia:
Xxxxxx Xxxxxxxx
President and CEO
Sophia Wireless Inc.
00000-X Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Fax: 000-000-0000
With copy to:
Xxxxxx Godward LLP
One Freedom Square, Reston Town Center
00000 Xxxxxxx Xxxxx
Xxxxxx, Xxxxxxxx 00000
Attention: Xxx. X. Xxxxxx, Esq. / Xxxx X. Xxxxxx, Esq.
13
11.10 Severability. Any term or provision of this Agreement which is
invalid or unenforceable in any jurisdiction shall, as to such
jurisdiction, be ineffective to the extent of such invalidity or
unenforceability without rendering invalid or unenforceable the
remaining terms and provisions of this Agreement or affecting the
validity or enforceability of any of the terms or provisions hereof
in any other jurisdiction.
11.11 Headings and Interpretation. The headings used in this Agreement are
for convenience of reference only and shall not affect the meaning
or construction of this Agreement.
11.12 Survival. The provisions of Sections 5.4, 5.5, 5.6(b), 5.7, 6, 7, 10
and 11, together with any definitions used therein, shall survive
any termination of this Agreement.
11.13 Governing Law. This Agreement shall be governed by, and construed in
accordance with, the substantive laws (other than the conflicts of
laws provisions) of Virginia.
11.14 Counterparts. This Agreement may be signed in counterparts, each of
which shall constitute an original but all of which shall constitute
one and the same instrument.
11.15 Exhibits. The exhibits and appendices attached hereto are made a
part of this Agreement as if fully set forth herein.
IN WITNESS WHEREOF, the parties, by their duly authorized representatives,
have caused this Agreement to be executed as of the date first written above.
Sophia Wireless Inc. GigaBeam Corporation
By: /s/ Xxxxxx Xxxxxxxx By: /s/ Xxx X Xxxx
----------------------------- ---------------------------
Name: Xxxxxx Xxxxxxxx Name: Xxx X Xxxx
----------------------------- --------------------------
Title: President Title: Vice President, Engineering
----------------------------- ---------------------------
14
EXHIBIT A
---------
INITIAL STATEMENT OF WORK
-------------------------
The initial Statement of Work will cover the period beginning October 15th, 2004
to January 15th, 2005. GigaBeam will pay $300,000 of NRE/License FEE for the
initial product development effort and for the license to manufacture the
product. Sophia will deliver to GigaBeam a XXXXX (as currently designed), a
XXXXX, and a XXXXX. The schedule of payments will be as follows: $100,000 upon
the XXXXX (target date is December 6th, 2004); $100,000 upon the XXXXX (target
date December 15th, 2004); $100,000 upon the XXXXX (target date December 24th,
2004). Final delivery of product and payment will be made no later than January
15th, 2005.
This engagement is for the XXXX. Acceptance of the drawings and payment
constitute product acceptance. Sophia will work with GigaBeam to ensure the
three products are working and transferred to manufacturing. Modifications to
the design beyond January 15th, 2005 could lead to additional costs.
Sophia and GigaBeam acknowledges that the XXXXX and XXXXX. GigaBeam accepts the
products with the XXXXX and XXXXX. If time permits before January 15th, 2005,
Sophia agrees to assist GigaBeam in understanding the source of the XXXXX by
testing the XXXXX. The Initial Statement of Work does not include further
testing or modifications to the delivered products beyond January 15th, 2005.
Sophia will assist GigaBeam in transferring the design to contract manufacturers
for the development of the XXXX, etc.
For the Initial Statement of Work, Sophia Wireless grants 18 month exclusivity
during which time Sophia is restricted from selling the Designed Product. For
the purpose of exclusivity, Designed Product will refer to any XXXXX or XXXXX
which operates in the 70-76 GHz to 80-86 GHz frequency range and contains any of
the XXXXX from the following set of XXXXX. At the end of 18 months, both parties
agree to negotiate in good faith a price for the maintenance of the exclusivity
by Sophia. The price of the exclusivity will be based XXXXX etc.
The Parties will mutually agree to the terms of an escrow arrangement for the
XXXXX and XXXXX
