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EXHIBIT 10.8
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is by and between REPEATER
TECHNOLOGIES, INC., a California corporation having a place of business at 0000
Xxxxx Xxxxxx, Xxxxxxxxx, XX 00000 ("Repeater") and XXXXXXX XXXXXXX, an
individual residing at 0000 Xxxxxx Xxxxxx, Xxx Xxxxx, XX 00000 ("Fuerter"),
effective this 12th day of May, 1998 (the "Effective Date").
WHEREAS, Fuerter conceived of and has developed, to some extent prior to
his employment by Repeater, and has subsequently jointly developed as an
employee of Repeater, with Repeater, certain receive diversity inventions
relating to the field of CDMA repeater technology for which a patent application
has been filed ("Delay Combiner System for CDMA Repeaters and Low Noise
Amplifiers," Patent Application No. 09/028434, "the Patent") which are the
subject of a separate Patent Assignment between the parties attached hereto as
Exhibit A (the "Patent Agreement") and also agrees to grant certain licenses
hereunder; and
WHEREAS, Repeater wishes to acknowledge the contribution of Fuerter to
the development of the technology related to the subject matter of the Patent
(the "Receive Diversity Technology") in the form of bonuses as set forth herein;
and
WHEREAS, Repeater wishes also to pay to Fuerter a royalty based on net
receipts from Repeater customers purchasing Repeater's "Diversity Option" which
is based in part on Fuerter's work on behalf of Repeater and the Receive
Diversity Technology;
NOW THEREFORE, in consideration of the mutual obligations specified in
this Agreement, the execution of the Patent Agreement, and the amounts paid to
Fuerter hereunder, the parties agree to the following:
1. COMPENSATION, INCENTIVES AND ROYALTIES. In consideration for the services
rendered to Repeater regarding the Receive Diversity Technology, the assignment
of ownership interests under the Patent Agreement and for the licenses set forth
herein, in addition to Fuerter's normal receipt of salary and benefits, Repeater
agrees to compensate Fuerter as set forth below:
(a) A bonus of Fifty Thousand Dollars ($50,000) to be paid within thirty
(30) days following the Effective Date.
(b) An additional bonus of Fifty Thousand Dollars ($50,000) within
thirty (30) days of receipt of notice by Repeater of the issuance ("Patent
Issuance") of the Patent.
(c) In addition, Fuerter will receive quarterly royalties over the life
of the Patent, except for that portion of the Patent embodying the "Tower Top
Low Noise Amplifier Diversity" technology which shall be the subject of a
separate royalty agreement should Repeater decide to pursue completion of its
development and commercialization thereof (the "Excluded Portion"), as follows:
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(i) Until Patent Issuance, seventy-five U.S. dollars
($75.00) per Diversity Option sold;
(ii) After Patent Issuance, three percent (3%) of the Net
Revenue (as defined below) received from sales of units
of the Diversity Option during such calendar quarter or
seventy-five U.S. dollars ($75.00) per Diversity Option
sale, whichever is greater; and
(iii) Five (5) shares of unregistered Repeater common stock
for each unit of Product sold.
(d) Royalties will be payable once per calendar quarter within ninety
(90) days following the end of such calendar quarter in which funds were
actually received and shall be non-refundable once paid. "Net Revenue" means
monies actually received by Repeater in connection with the sale of Diversity
Options, but shall exclude credits, returns, refunds or rebates paid by
Repeater, costs of collection to the extent such costs of collection are not
deducted and retained by any third party prior to payment to Repeater of
applicable invoiced amounts, and any taxes relating to such amounts (exclusive
of any taxes based on Repeater's net income). Royalties and shares owned to
Fuerter for Diversity Options sold prior to the Effective Date shall be paid
within ninety (90) days after the Effective Date.
(e) All payments under subsection (c) above shall cease:
(i) at such time as ten thousand (10,000) Diversity Options
have been shipped; or
(ii) if the Patent's application is rejected by the United
States Patent Office, or the Patent or any portion
thereof is determined to be unenforceable or its
practice is enjoined by any tribunal of competent
jurisdiction.
2. LICENSE. Fuerter hereby grants Repeater an exclusive, perpetual and
irrevocable worldwide license, with right of sublicense, to make, have made,
import, offer to sell and sell products using any and all know-how, processes,
and other methods useful for the practice of the Patent including without
limitation the Excluded Portion, as well as any other intellectual property
rights Fuerter may now have or may hereafter acquire recognized in any
jurisdiction in the world related to the subject matter of the Patent and the
Receive Diversity Technology and agrees not to assert any claim against Repeater
and its licensees with respect to such items, other than claims to enforce the
terms of this Agreement.
3. RESTRICTIONS ON USE. In further consideration for the royalties, Fuerter
agrees that, during the term of this Agreement, he will not license any
intellectual property rights Fuerter may have under or to the Patent or under or
related to the Receive Diversity Technology to any other party without
Repeater's express prior written consent; such consent may be granted or
withheld by Repeater in Repeater's sole discretion.
4. ASSIGNMENT OF REPEATER WORK PRODUCT. Except for Fuerter's rights in the
Patent and in
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any technology specifically identified in Fuerter's employment agreement as
owned by Fuerter ("Background Technology"), and except as otherwise set forth in
Section 2 above, Fuerter irrevocably assigns to Repeater all right, title and
interest worldwide in and to all his development and other work product on
behalf of Repeater ("Repeater Work Product"), including without limitation the
Receive Diversity Technology and the Diversity Option, and all applicable
intellectual property rights related to the Repeater Work Product, including
without limitation, copyrights, trademarks, trade secrets, patents, moral
rights, contract and licensing rights (the "Proprietary Rights"). Except as set
forth below, Fuerter retains no rights to use the Repeater Work Product and
agrees not to challenge the validity of Repeater' ownership in the Repeater Work
Product. Fuerter hereby grants to Repeater a non-exclusive, royalty-free,
irrevocable and world-wide right, with rights to sublicense through multiple
tiers of sublicensees, to reproduce, make derivative works of, publicly perform,
publicly display and distribute in any form or medium, whether now known or
later developed, and to make, have made, use, import, offer to sell, and sell
Background Technology and any Prior Work Product incorporated or used in the
Repeater Work Product for the purpose of developing and marketing Repeater
products or otherwise commercializing Repeater' technology, but not for the
purpose of marketing Background Technology or Prior Work Products separate from
Repeater products. Fuerter hereby waives and quitclaims and agrees to waive and
quitclaim in future to Repeater any and all claims of any nature whatsoever,
which Fuerter now or may hereafter have for infringement of any Proprietary
Rights assigned hereunder to Repeater.
5. WAIVER OR ASSIGNMENT OF OTHER RIGHTS. If Fuerter has any rights to the
Repeater Work Product that cannot be assigned to Repeater, Fuerter
unconditionally and irrevocably waives the enforcement of such rights, and all
claims and causes of action of any kind against Repeater with respect to such
rights, and agrees, at Repeater' request and expense, to consent to and join in
any action to enforce such rights. If Fuerter has any right to the Repeater Work
Product that cannot be assigned to Repeater or waived by Fuerter, Fuerter
unconditionally and irrevocably grants to Repeater during the term of such
rights, an exclusive, irrevocable, perpetual, worldwide, fully paid and
royalty-free license, with rights to sublicense through multiple levels of
sublicensees, to reproduce, create derivative works of, distribute, publicly
perform and publicly display by all means now known or later developed, such
rights.
6. ASSISTANCE IN THE ENFORCEMENT OF PROPRIETARY RIGHTS. Fuerter agrees to
cooperate with Repeater or its designee(s) in the procurement and maintenance of
Repeater' rights in the Patent and the Repeater Work Product and to execute,
when requested, any other documents deemed necessary by Repeater to carry out
the purpose of this Agreement. In the event Repeater is unable for any reason,
after reasonable effort, to secure Fuerter's signature on any document needed in
connection with the actions specified above, Fuerter hereby irrevocably
designates and appoints Repeater and its duly authorized officers and agents as
its agent and attorney in fact, which appointment is coupled with an interest,
to act for and in Fuerter's behalf to execute, verify and file any such
documents and to do all other lawfully permitted acts to further the purposes of
the preceding paragraph with the same legal force and effect as if executed by
Fuerter. Fuerter's obligation to assist Repeater with respect to the Patent and
the Proprietary Rights relating to such Repeater Work Product in any and all
countries shall continue beyond the termination of this Agreement, but Repeater
shall compensate Fuerter at a reasonable rate after such termination for
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the time actually spent by Fuerter at Repeater' request on such assistance.
7. CONSEQUENTIAL DAMAGES WAIVER. FUERTER MAKES NO WARRANTY OR REPRESENTATIONS
THAT THE RECEIVE DIVERSITY TECHNOLOGY IS PATENTABLE OR DOES NOT INFRINGE ON ANY
EXISTING PATENTS. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY
FOR ANY LOST PROFITS, INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES,
EVEN IF SUCH PARTY HAS BEEN NOTIFIED OF THE POSSIBILITY OF SUCH DAMAGES. THE
PARTIES ACKNOWLEDGE THAT THIS LIMITATION OF LIABILITY IS A FUNDAMENTAL BASIS OF
THE BARGAIN BETWEEN THE PARTIES AND THAT IN ITS ABSENCE THE ECONOMIC TERMS OF
THIS AGREEMENT WOULD BE SUBSTANTIALLY DIFFERENT.
8. NO OBLIGATION TO COMMERCIALIZE. Fuerter acknowledges and agrees that Repeater
has no obligation to commercialize the Diversity Option and Repeater may at any
time choose not to commercialize the Diversity Option or any other product under
the license grant.
9. NOTICES. All notices and communications to be given for purposes of this
Agreement shall be validly given, made or served only if in writing and shall be
deemed duly given when posted by registered or certified mail, return receipt
requested, postage prepaid, addressed as follows:
If to Repeater:
Repeater Technologies, Inc.
0000 Xxxxxx Xxxxxx,
Xxxxxxxxx, XX 00000
If to Fuerter: Xxxxxxx Xxxxxxx
0000 Xxxxxx Xxxxxx
Xxx Xxxxx, XX 00000
10. GENERAL. Fuerter shall not assign this Agreement without the prior written
consent of Repeater and any purported assignment in violation of this term shall
be void and without effect ab initio. The parties' rights and obligations under
this Agreement will bind and inure to the benefit of their respective
successors, heirs, executors, and administrators and permitted assigns. This
Agreement may not be waived, modified, or amended unless mutually agreed upon in
writing by both parties. In the event any provision of this Agreement is found
to be legally unenforceable, such unenforceability shall not prevent enforcement
of any other provision of this Agreement. This Agreement shall be governed by
the laws of the State of California as between California residents, excluding
its conflicts of laws principles and any action hereunder shall be commenced in
federal court in the Northern District of California or in state court in Santa
Xxxxx county, as appropriate. This Agreement and its Exhibit attached hereto and
hereby incorporated herein constitute the parties' final, exclusive and complete
understanding and agreement with respect to the subject matter hereof, and
supersede all prior and contemporaneous understandings and agreements relating
to its subject matter.
11. NON DEPENDENT ON EMPLOYMENT. This Agreement is separate and distinct from,
and is not dependent upon, the employment relationship between the Parties. The
rights and obligations set
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forth in this Agreement shall survive and remain in full force and effect
notwithstanding the resignation, retirement or termination of Fuerter's
employment relationship with Repeater, with or without cause. Nothing in this
Agreement shall change the nature of the employment relationship between the
parties, which shall remain subject to that certain Employment Agreement dated
May 8, 1997.
12. ATTORNEY FEES. In the event of a dispute arising out of or related to this
Agreement or its breach, the prevailing party in any subsequent litigation or
arbitration regarding said dispute shall be entitled to recover his or its costs
incurred in such litigation and/or arbitration, including reasonable attorney
fees.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first set forth above.
REPEATER TECHNOLOGIES, INC. XXXXXXX XXXXXXX
By: /s/ XXX XXXXXXXX By: /s/ XXXXXXX XXXXXXX
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PRESIDENT & CEO ###-##-####
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[Title] [Social Security Number]
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EXHIBIT A
ATTORNEY DOCKET NO. RPTR0001
ASSIGNMENT
WHEREAS, I, Xxxxxxx X. Xxxxxxx, hereinafter referred to as "ASSIGNOR", have
invented certain new and useful improvements, as described and set forth in the
below-identified application for United States Letters Patent:
Title of Invention: DELAY COMBINER SYSTEM FOR COMA REPEATERS AND
LOW NOISE AMPLIFIERS
WHEREAS, Repeater Technologies, a corporation duly organized under and pursuant
to the laws of the State of California, and having its principal place of
business at 0000 Xxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000, hereinafter
referred to as "ASSIGNEE", is desirous of acquiring fifty percent (50%)
undivided, unrestricted interest in the said invention and application and in
any Letters Patent which may be granted with regard to the same:
NOW, THEREFORE, TO ALL WHOM IT MAY CONCERN: Be it known that for good and
valuable consideration, ASSIGNOR has sold, assigned, and transferred, and by
these presence does sell, assign, and transfer unto the said ASSIGNEE, and
ASSIGNEE'S successors and assigns, fifty percent (50%) undivided, unrestricted
interest in and in said invention, said application for United State Letters
Patent and any Letters Patent which may be hereafter granted on the same in the
United States and all countries throughout the world, including any divisions,
renewals, configurations in whole or part, substitutions, conversions, reissues,
revivals, prolongation, or extensions thereof, and fifty-percent (50%) interest
to be held and enjoyed by said ASSIGNEE as fully and exclusively as it would
have been held and enjoyed by said ASSIGNOR had this assignment and transfer not
been made, for all time.
ASSIGNOR further agrees that he will, without charge to said ASSIGNEE, but at
ASSIGNEE's expense, cooperate with ASSIGNEE in the prosecution of said
application and/or applications, execute, certify, acknowledge, and deliver all
such further papers, including applications for Letters Patent and for the
reissue thereof, and instruments of assignment and transfer thereof, and will
perform such other acts as ASSIGNEE may lawfully request, to obtain or maintain
Letters Patent for said Invention and improvement in any and all countries, and
to vest title thereto in said ASSIGNEE, or ASSIGNEE'S successors and assigns.
IN TESTIMONY WHEREOF, ASSIGNOR has here unto signed his name to the assignment
on the date indicated below.
/s/ XXXXXXX X. XXXXXXX
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Xxxxxxx X. Xxxxxxx
On this 19th day of FEB. in the year of 1998, before me, the undersigned notary
public, personally appeared the above-named ASSIGNORS, known to me (or proved
to me on the basis of satisfactory evidence) to be the persons whose names are
subscribed to the within instrument, and acknowledged that they executed the
same.
STATE OF CALIFORNIA )
) ss. See Attached
COUNTY OF CONTRA COSTA ) -----------------------
NOTARY
PUBLIC
