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EXHIBIT 10.16
SALES, LICENSE AND NONCOMPETITION AGREEMENT
SALES, LICENSE AND NONCOMPETITION AGREEMENT, made and entered into as of
June 14, 1996, by and between Electronic Accessory Specialists International,
L.L.C., a Delaware limited liability company ("EASi"), and Extended Systems
Incorporated, a Delaware corporation ("Extended"). EASi and Extended are each
sometimes referred to herein as a "Party" and collectively as the "Parties".
The parties hereto, intending to be legally bound, hereby agree as
follows:
1. SALES OF PRODUCTS
1.1 Joint Development of Products.
(a) The Parties hereby agree to jointly develop the Products
as set forth on Exhibit A attached hereto, and any other products agreed to by
the Parties (which products shall be added to Exhibit A as an amendment to this
Agreement (collectively the "Joint Products"). The specific duties of each Party
with respect to the development of the Joint Products are as set forth on
Exhibit B attached hereto, and such other duties as agreed to by the Parties.
The Products, and all technology, patents, patent applications, intellectual
property and know-how utilized in developing the Joint Products or relating to
or resulting from the development of the Joint Products (the "Product
Technology") shall be considered the joint property of the Parties, except for
any Product Technology which was previously owned or developed by a Party, which
Product Technology shall be considered the property of such Party.
(b) The preliminary timetable for the development of the
Joint Products is as set forth on Exhibit C attached hereto. The Parties shall
develop additional mutually agreeable cost, schedule and performance criteria,
and each Party agrees to use its best efforts to meet or exceed such criteria.
In addition, each Party intends to contribute substantially equivalent time and
effort to the development of the Joint Products.
(c) Each Party shall have the right to manufacture, market
and sell the Joint Products and any other derivative product utilizing the
platform developed with respect to the Joint Products (the "Other Products"), or
upon the mutual agreement of both Parties, to jointly manufacture, market and/or
sell any Joint Product or Other Products.
(d) For each Joint Product or Other Product sold by any
Party or any of its affiliates in any calendar quarter, such selling Party (on
its own behalf and on behalf of its affiliate) shall pay to the other Party,
within [*] days after the end of such calendar [*], a royalty equal to [*]
percent ([*]%) of the sale price actually received by the Party (net of returns
and allowances) of such sold Joint Product, which royalties shall be payable at
such times as Earned Royalties are payable pursuant to Section 2.10 below.
[*] CONFIDENTIAL TREATMENT REQUESTED
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(e) Each Party agrees to keep all proper records and books
of account and all proper entries therein relating to the manufacture and sale
of Joint Products by such Party. Each Party may, at such Party's expense, cause
an audit to be made of the applicable records in order to verify statements
rendered hereunder. Any such audit shall be conducted only by a certified public
accountant (other than on a contingency-fee basis) and shall be conducted during
regular business hours at the other Party's offices and in such a manner as not
to interfere with the other Party's normal business activities. Prompt payment
of any amount found due and owing such Party under subsection (d) above shall be
made by the other Party upon demand by such Party. Each Party hereby agrees to
make available to the other Party, upon reasonable request, and at a reasonable
place and time, its records and reports pertaining to the audit and any such
records and reports prepared for the other Party by third parties, but only in
the event that such Party makes any claim with respect to such audit. The other
Party may, prior to making any additional payments as provided above, review
such records and reports and challenge the audit, in which event such additional
payments shall not be made until the audit issues are resolved.
(f) In the event that EASi manufactures any of the Joint
Products, then Extended shall purchase such Joint Products [*] from EASi,
subject to reasonable quality standards. EASi shall sell such Joint Products to
Extended at the JP Incremental Cost (as hereinafter defined), if applicable,
multiplied by [*]%. "JP Incremental Cost" shall mean the costs of [*]% of
manufacturing the Joint Products. [*] by EASi to Extended with respect to sales
of Joint Products by EASi to Extended.
1.2 Purchase of EASi Products. During the Term (as hereinafter
defined), EASi will make available for sale by Extended in its distribution
channels all EASi Products (as hereinafter defined); provided, however, that
Extended shall not be able to sell any EASi Products to customers or groups of
customers identified on Exhibit D attached hereto. The terms of any such sales
will be governed by purchase orders consistent with the terms and conditions
offered by EASi to other similar customers; provided, however, that in all
cases, EASi shall sell to Extended EASi Products [*], including, without
limitation, [*], excluding the Licensed Technology (as hereinafter defined),
plus the Incremental Cost (as hereinafter defined), if applicable, multiplied by
[*]%. "EASi Products" shall mean mechanical docking products (including, without
limitation, port replicator products) which allow the user of portable computers
to physically connect such user's portable computer to various equipment and
mechanical docking station products which incorporate the Licensed Technology
thereby permitting either a physical or infra-red connection (see Exhibit E for
an example thereof). "Incremental Cost" shall mean the costs of [*] of adding
the Licensed Technology to any EASi Product.
1.3 Purchase of Extended Products. During the Term, Extended will
make available for sale by EASi all Extended Products (as hereinafter defined);
provided, however, that EASi shall not be able to sell any Extended Products to
customers or groups of customers identified on Exhibit F attached hereto. The
terms of any such sales will be governed by purchase orders consistent with the
terms and conditions offered by Extended to other similar customers; provided,
however, that in all cases, Extended shall sell to EASi Extended Products [*],
including, without limitation, [*]
[*] CONFIDENTIAL TREATMENT REQUESTED
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"Extended Products" shall mean infra-red products which allow the user of
portable computers to connect such user's portable computer to various equipment
utilizing an infra-red link instead of a physical connection.
2. LICENSE
2.1 Definitions. The following terms as used herein shall have the
following meaning:
(a) IR Products. The "EASi IR Product(s)" shall be the EASi
developed, licensed or otherwise acquired equipment and products which
incorporate the Licensed Technology and are marketed and distributed by EASi
through any of its distribution channels.
(b) Licensed Technology. The "Licensed Technology" consists
of the infra-red technology developed by Extended and described in the
specifications in Exhibit G attached hereto and any and all Extended-developed
additions, improvements, innovations, enhancements, modifications, variations,
changes or the like of or related in any way to the technology described in
Exhibit G (now or in the future).
2.2 License Grants. Extended hereby grants to EASi a royalty
bearing, non-exclusive, limited transferable (i.e., transfer shall be limited to
entities controlled by, controlling or under the control of EASi), [*], to use,
[*] and incorporate the Licensed Technology into EASi IR Products, and to
manufacture, distribute and sell products which incorporate the Licensed
Technology during the Term.
2.3 Ownership of the Licensed Technology. By operation of and
performance under this Agreement, EASi acquires only the right to the Licensed
Technology as specified herein and does not acquire any right of ownership.
Except for the license granted hereunder, all rights, title and interest in the
Licensed Technology, the specifications (Exhibit G) , and updates, developments,
enhancements or modifications thereto made by Extended shall at all times remain
with Extended. All rights, title and interest in any updates, developments,
enhancements or modifications or the like made or related to the Licensed
Technology which may be developed by EASi or its affiliates shall at all times
remain with EASi or such affiliates (as the case may be).
2.4 Product Marketing.
(a) EASi shall at all times have the sole discretion to set
and determine all terms and conditions of sale of all EASi IR Products
incorporating the Licensed Technology. EASi shall at all times have the sole
discretion to develop and approve all such EASi IR Products' marketing materials
and activities.
(b) Extended has adopted and owns certain trademarks and
service marks used in identifying and marketing Extended technology, products
and services ("Trademarks"). Extended hereby grants to EASi the non-exclusive
right to use the Trademarks in the marketing of EASi IR Products. EASi
recognizes and consents for all purposes that all Trademarks, logos, trade names
and
[*] CONFIDENTIAL TREATMENT REQUESTED
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related acronyms and the like of Extended relating to the Licensed Technology,
whether or not registered, constitute the exclusive property of Extended and
cannot be used by EASi pursuant to this license, except as specified in this
Agreement, nor shall EASi use any confusingly similar xxxx, logo, trade name or
the like. EASi will, however, be required to identify the Licensed Technology
with the Extended tradename "Jet Eye," although EASi may package the EASi IR
Products in any manner it chooses. Except as provided above, nothing contained
in this Agreement shall be construed as conferring any right upon EASi to use in
advertising, publicity or other promotional activities any Trademark, trade name
or other designation, unless the prior written permission of Extended has been
obtained, which consent will not be unreasonably withheld. EASi shall use the
Trademarks with such words qualifying or identifying the relationship of
Extended and EASi as Extended from time to time reasonably prescribes. Extended
will have the sole right, but not the obligation, to register and enforce its
Trademarks and other marks that it adopts, acquires or uses in the United States
and countries outside the United States.
2.5 Representations and Warranties of Extended. Extended hereby
represents and warrants to EASi as follows:
(a) That it has the full and exclusive right and power to
enter into and perform according to the terms of this Agreement, and that it has
the exclusive right to grant to EASi each of the rights herein granted to EASi.
(b) That no other person or organization or entity has or
will have any right, title or interest in or to all or any portion of the
Licensed Technology which would in any way curtail or impair any of the rights
granted to EASi herein, and that it has not heretofore done or permitted to be
done and will not hereafter do or authorize or permit to be done any act or
thing which is or may be in any way inconsistent with or which may in any way
curtail or impair any right herein granted to EASi.
(c) That it now owns or controls and will, at all times
hereafter own or control all right, title and interest in and to the Licensed
Technology free from any encumbrances which would in any way curtail or impair
any of the rights granted to EASi herein.
2.6 Representations and Warranties of EASi. EASi hereby represents
and warrants to Extended as follows:
(a) That any publication of the Licensed Technology by EASi
shall contain proper patent, copyright and other restricted rights notices in
the name of Extended as requested by Extended.
(b) That EASi shall not use, [*], sell or otherwise
distribute the Licensed Technology except pursuant to the terms of this
Agreement; provided, however, that nothing contained herein shall be construed
or intended to prevent or limit EASi from disclosing the Licensed Technology to,
and allowing the use thereof by, third party subcontractors involved in the
manufacture of EASi IR Products on behalf of EASi, provided that EASi first
obtains from any such subcontractor an agreement to keep confidential the
Licensed Technology and not use the Licensed Technology except for such purpose.
[*] CONFIDENTIAL TREATMENT REQUESTED
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(c) That it has the full and exclusive right and power to
enter into and perform according to the terms of this Agreement.
2.7 Mutual Indemnity.
(a) Extended hereby agrees to indemnify EASi from those
damages finally awarded to EASi against Extended or to a third person against
EASi, or settlement payments made to a third person by EASi with the consent of
Extended (which consent shall not be unreasonably withheld), and save, and hold
EASi harmless from any and all claims or losses (including attorneys' and expert
witnesses' fees) (collectively, the "EASi Damages") arising out of or in
connection with or by reason of or resulting from a breach of any of the
warranties, representations or agreements made by Extended in this Section 2. In
the event Extended rejects a settlement offer in a third person action, Extended
must thereafter assume the defense of such action and promptly reimburse EASi
for the EASi Damages. Prompt notice shall be given to Extended of any third
person action to which the indemnity relates and Extended shall have the right,
at its own expense, to control the defense or settlement thereof with counsel of
its choice, at Extended's expense. EASi shall provide Extended with reasonable
information, authority and assistance necessary to perform under this indemnity.
Reasonable out-of-pocket expenses incurred by EASi for such assistance
(including attorneys' fees) will be promptly reimbursed by Extended.
(b) EASi hereby agrees to indemnify Extended from those
damages finally awarded to Extended against EASi or to a third person against
Extended, or settlement payments made to a third person by Extended with the
consent of EASi (which consent shall not be unreasonably withheld), and save,
and hold Extended harmless from any and all claims or losses (including
attorneys' and expert witnesses' fees) (collectively, the "Extended Damages")
arising out of or in connection with or by reason of or resulting from a breach
of any of the warranties representations, or agreements made by EASi in this
Section 2. In the event EASi rejects a settlement offer in a third person
action, EASi must thereafter assume the defense of such action and promptly
reimburse Extended for the Extended Damages. Prompt notice shall be given to
EASi of any third person action to which the indemnity relates and EASi shall
have the right, at is own expense, to control the defense or settlement thereof
with counsel of its choice, at EASi's expense. Extended shall provide EASi with
reasonable information, authority, and assistance necessary to perform under
this indemnity. Reasonable out-of-pocket expenses incurred by Extended for such
assistance (including attorneys' fees) will be reimbursed by EASi.
2.8 Legal Action to Protect the Licensed Technology. Extended
will, upon the written request of EASi, bring infringement actions or take any
other legal action EASi reasonably deems appropriate to enforce the Licensed
Technology; provided, however, that no such action shall be required to the
extent that it would be commercially unreasonable to take such action.
2.9 Indemnification for Infringement. Notwithstanding anything
herein to the contrary, Extended will defend EASi against a claim that the
Licensed Technology furnished and used within the scope of this Agreement
infringes a patent which is held by someone other than Extended (a "Claim"), and
Extended will indemnify EASi from, and hold EASi harmless against, any damages
finally awarded or final settlement amount based upon a Claim, provided that:
(i) EASi notifies Extended in writing within thirty (30) days after written
notification of a Claim is received by EASi; and (ii) Extended shall have the
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right, in its sole discretion, to assume the defense and all related settlement
negotiations; provided, however, that no settlement may be made which could
infringe upon or impair the rights of EASi to use the Licensed Technology or
otherwise without the prior written consent of EASi.
In the event the Licensed Technology is held or reasonably believed by
Extended to infringe, Extended shall have the option, at its expense, to replace
or modify the Licensed Technology with a version that is non-infringing, or, at
the option of EASi, either: (i) procure for EASi the right to continue the use,
sale and marketing of such Licensed Technology; or (ii) immediately refund all
amounts previously paid by EASi to Extended pursuant to Section 2.10 below.
2.10 Royalties.
(a) In consideration of the license grants made to EASi hereunder,
EASi agrees to pay to Extended royalty payments on EASi IR Products as follows:
Aggregate Number of Royalty
Units of EASi IR Products Sold per Unit
------------------------------ --------
[*] $[*]
[*] $[*]
[*] $[*]
[*] $[*]
[*] $[*]
subject to the remainder of this Section 2.10 (the "Earned Royalties"). No
Earned Royalties shall be due or payable by EASi to Extended with respect to
sales of EASi IR Products by EASi to Extended. Notwithstanding the above, in the
event Extended licenses any or all of the Licensed Technology for a fee or
royalties which are less than the royalties payable hereunder, then the royalty
rate payable hereunder shall thereafter be reduced to such lower fee or rate.
(b) Within [*] ([*]) days after the end of each calendar [*]
with respect to which EASi owes Extended any Earned Royalties, EASi shall
furnish Extended with a statement, together with payment for any amount shown
thereby to be due to Extended. The royalty statement shall be based upon unit
sales of the EASi IR Products during the calendar quarter then ended, and shall
contain information sufficient to discern how the royalty payment, if any, was
computed.
(c) EASi agrees to keep all proper records and books of
account and all proper entries therein relating to the manufacture and sale of
EASi IR Products and the sublicensing of the Licensed Technology. Extended may,
at Extended's expense, cause an audit to be made of the applicable records in
order to verify statements rendered hereunder. Any such audit shall be conducted
only by a certified public accountant (other than on a contingency-fee bass) and
shall be conducted during regular
[*] CONFIDENTIAL TREATMENT REQUESTED
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business hours at EASi's offices and in such a manner as not to interfere with
EASi's normal business activities. Prompt payment of any amount found due and
owing Extended under this Section shall be made by EASi upon demand by Extended.
Extended hereby agrees to make available to EASi, upon reasonable request, and
at a reasonable place and time, its records and reports pertaining to the audit
and any such records and reports prepared for Extended by third parties, but
only in the event that Extended makes any claim with respect to such audit. EASi
may, prior to making any additional payments as provided above, review such
records and reports and challenge the audit, in which event such additional
payments shall not be made until the audit issues are resolved.
2.11 Rights and Obligations Under Expiration or Termination of this
Agreement. The provisions of this Section 2 and of Sections 1.1(d), 1.1(e) and 5
below shall survive the expiration or termination of the Term.
3. TERM. Except as provided in Section 2. 11 above, the term of this
Agreement shall commence on the date hereof and shall continue for [*] ([*])
years thereafter (the "Initial Term") and, subject to the remainder of Section
4, shall continue on a year-to-year basis thereafter (the "Renewal Term"). This
Agreement shall not include the Renewal Term if either Party terminates this
Agreement by written notice of termination to the other Party at least ninety
(90) days prior to the expiration of the Initial Term. The Renewal Term may be
terminated by either Party upon written notice to the other Party at least
ninety (90) days prior to the expiration of such Renewal Term. The Initial Term
and Renewal Term, if any, are sometimes collectively referred to as the "Term."
4. COVENANTS NOT-TO-COMPLETE.
(a) EASi agrees that during the Term, neither EASi nor any
of its affiliates shall, directly or indirectly, for itself or on behalf of any
other corporation, person, firm, partnership, association, or any other entity
(whether as an individual, agent, servant, employee, employer, officer,
director, shareholder, manager, member, investor, principal, consultant or in
any other capacity): (i) [*]; or (ii) finance any person or entity in any manner
or in any way inconsistent with the intents and purposes of (i) above.
(b) Extended agrees that during the Term, neither Extended
nor any of its affiliates shall, directly or indirectly, for itself or on behalf
of any other corporation, person, firm, partnership, association, or any other
entity (whether as an individual, agent, servant, employee, employer, officer,
director, shareholder, manager, member, investor, principal, consultant or in
any other capacity): (i) [*]; or (ii) finance any person or entity in any manner
or in any way inconsistent with the intents and purposes of (i) above.
[*] CONFIDENTIAL TREATMENT REQUESTED
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(c) In the event of any Party's breach, or threatened
breach, of any term or provision contained in this Section 4, the breaching
Party agrees that the non-breaching Party and/or its affiliates shall be
entitled to the right of specific performance and/or both temporary and
permanent injunctive relief.
(d) It is the intent of each of the Parties that the
covenants not-to-compete contained in this Section 4 be enforced to the fullest
extent permitted by applicable law. Accordingly, should a court of competent
jurisdiction determine that the scope of any covenant is too broad to be
enforced as written, it is the intent of each of the Parties that the court
should reform such covenant to such narrower scope as it may determine is
necessary to make such covenant enforceable.
(e) Each of the Parties hereto recognizes and agrees that
this Section 4 is necessary and essential to the protection of the business
conducted and to be conducted in the future by the Parties and/or their
respective affiliates, and to enable the Parties to realize and derive all of
the benefits, rights and expectations of this Agreement; that the area and
duration of the covenants herein are in all aspects, under the circumstances of
this Agreement, reasonable; and that good and valuable consideration exists for
such Party agreeing to be bound by such covenants.
5. MISCELLANEOUS PROVISIONS
5.1 Notices. All notices or other communications required or
permitted to be given pursuant to this Agreement shall be in writing and shall
be considered as properly given if personally delivered or if mailed by United
States certified or registered mail, return receipt requested, postage prepaid,
or if sent by facsimile transmission, prepaid telegram or telex or by Federal
Express or similar overnight courier, addressed to the Party at the address
designated herein. A Party may change its address for notices by giving notice
in like manner. Any notice or other communication shall be deemed to have been
given to, or received by, the appropriate party as of the date on which it is
personally delivered or delivered by facsimile transmission or, if mailed, on
the third business day after the date on which it is deposited in the United
States mail, or if telegraphed or telexed or sent by Federal Express or similar
overnight courier, on the business day after it is transmitted.
5.2 Governing Law. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware.
5.3 Successors and Assigns. This Agreement and all the terms and
provisions hereof shall be binding upon and shall inure to the benefit of the
Parties and their respective legal representatives, heirs, successors and
permitted assigns. This Agreement may not be assigned by any Party without the
prior written consent of the other Party, which consent shall not be
unreasonably withheld.
5.4 Modification to Be in Writing. This Agreement, together with
the Exhibits attached hereto, constitute the entire understanding of the Parties
with respect to the subject matter hereof and supersedes any and all prior
negotiations, understandings and agreements in regard thereto (including,
without limitation, that certain Confidentiality Agreement, dated as of February
15, 1996, by
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and between the Parties). No amendment, modification or alteration of the terms
hereof shall be binding unless the same is signed by all the Parties.
5.5 No Waiver. Failure or delay of either Party in exercising any
right or remedy under this Agreement will not operate as a waiver hereof. The
express waiver by any Party of a breach of any provision of this Agreement by
the other Party shall not operate or be construed as a waiver of any subsequent
breach by said Party. No waiver will be effective unless and until it is in
written form and signed by the waiving Party.
5.6 No Third Party Rights. This Agreement and the covenants and
agreements contained herein are solely for the benefit of the Parties. No other
person shall be entitled to enforce or make any claims, or have any rights
pursuant to the provisions of this Agreement.
5.7 Heading The captions in this Agreement are inserted for
convenience of reference only and shall not affect the construction of this
Agreement. References in this Agreement to any Article, Section, paragraph,
Subparagraph or Exhibit are to the same contained in or attached to this
Agreement.
5.8 Valid and Severability. If any provision of this Agreement
contravenes any laws and such contravention would thereby invalidate this
Agreement, then such provision is declared to be invalid and subject to
severance from the remaining portions of this Agreement and this Agreement shall
be read and construed as though it did not contain such provision in a manner to
give effect to the intention of the Parties to the fullest extent possible.
5.9 Arbitration. Any dispute or claim arising under or with
respect to this Agreement shall be settled by arbitration in Denver, Colorado.
The Party requesting arbitration shall serve upon the other Party notice
demanding arbitration with the name and address of the arbitrator appointed by
it and describing the issue or issues to be arbitrated; the other Party shall
within 20 days after receipt of that notice, appoint an arbitrator and notify
the first Party of the arbitrator's name and address and of any other issue or
issues to be arbitrated. The two arbitrators so named shall appoint a third
arbitrator within a period of 30 days after which the first Party receives
notice of appointment of the second arbitrator. If the Party upon which demand
for arbitration is served fails to appoint an arbitrator within 20 days, or if
the two arbitrators so named fail to appoint a third arbitrator within 30 days,
then the Party demanding the arbitration in the first case and either Party in
the second case, may apply to an appropriate court to appoint an arbitrator; and
in the case of a Party failing to appoint an arbitrator, the Party demanding
arbitration may at the same time also request the court to appoint its
arbitrator. The decision or award of the three arbitrators will be final and
binding upon the Parties. Any decision or award rendered by the arbitrators may
be entered as a judgment or order in any court having jurisdiction.
5.10 Affiliate. As used herein, an "affiliate" of any Party means
any person, corporation, partnership or other entity controlling, controlled by
or under common control with such Party.
5.11 Cooperation and Assistance. Each Party agrees to use all
commercially reasonable efforts to support the other Party in its efforts under
this Agreement and to agree upon mutually acceptable development
responsibilities with respect to the Joint Products. In addition, if any
provision
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of this Agreement inhibits either Party from remaining competitive in the
marketplace, the Parties agree to negotiate in good faith an amendment to this
Agreement to minimize or eliminate such hindrance to the extent reasonably
acceptable to the Parties.
5.12 Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original for all purposes and all
of which when taken together shall constitute a single instrument.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
as of the date first set forth above.
ELECTRONICS ACCESSORY
By: /s/ Xxxxxxx X. Xxxxx
-------------------------------------------
Its: Chief Executive Officer
------------------------------------------
Address:
0000 Xxxx Xxxxx Xxxx, Xxxxx X
Xxxxxxxxxx, Xxxxxxx 00000
Attn: President
EXTENDED SYSTEMS INCORPORATED
By: /s/ Xxxxxx Xxxxx
-------------------------------------------
Its: Vice President, Business Development
------------------------------------------
Address:
0000 Xxxxxx Xxxxxx
-----------------------------------------------
Xxxxx, Xxxxx 00000
-----------------------------------------------
Attn: Contracts Administrator
-----------------------------------------
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EXHIBIT A
JOINT PRODUCTS
Product 1
[*]
Product 2
[*]
The definition of Product 2 will be mutually agreed to by the Parties,
based on market, cost and technical factors.
[*] CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT B
1) Extended will generally be responsible for firmware and software
development of the Joint Products.
2) EASi will generally be responsible for industrial and mechanical design of
the Joint Products and hardware integration and manufacturability of the
Joint Products.
3) Extended and EASi will jointly manage the development of the Joint
Products.
4) The Parties will share on a [*] basis the [*] related to the Joint
Products. Each Party shall bear its own cost for other contributions to
the develop effort. The Parties may elect to offset certain costs, upon
mutual agreement, for contributions outside their general areas of
responsibility.
5) Extended shall have the right to purchase from EASi mutually-developed
plastics at cost plus [*]% of the tooling amortization, for use with its
JetEye products and future derivatives.
[*] CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT C
DEVELOPMENT SCHEDULE
The Parties will use all commercially reasonable efforts to prepare a
mutually acceptable development schedule as soon as practicable after the date
hereof.
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EXHIBIT D
Extended shall not sell any EASi Products to the following:
1. [*]; or
2. [*].
[*] CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT E
EXAMPLE OF EASI IR PRODUCT SALE
PRICE TO EXTENDED SYSTEMS, INC.
[*] $[*]
[*] [*]
[*] [*]
[*] [*]
[*] [*]
[*] [*]
[*] [*]
[*] CONFIDENTIAL TREATMENT REQUESTED
00
XXXXXXX X
XXXXX XXXXXXX ONLY
EASi shall not sell any Extended or Joint Products to any of the
following:
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT G
LICENSED TECHNOLOGY
Extended, through this agreement, grants to EASi a royalty-bearing,
non-exclusive, limited transferable right to use Licensed Technology for the
purposes described in Section 2.2.
The Licensed Technology includes the following elements:
- [*]
- [*]
- [*]
- [*]
- [*]
- [*]
[*] CONFIDENTIAL TREATMENT REQUESTED
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FIRST AMENDMENT
TO
SALES, LICENSE AND NONCOMPETITION AGREEMENT
THIS FIRST AMENDMENT TO SALES, LICENSE AND NONCOMPETITION AGREEMENT (the
"Amendment"), dated as of December 24, 1996, is entered into by and between
Electronics Accessory Specialists International, Inc., a Delaware corporation
("EASi"), and Extended Systems Incorporated, a Delaware corporation
("Extended"). Capitalized terms used herein but not defined herein shall have
the respective meanings ascribed to them in the Agreement (as defined below).
WITNESSETH:
WHEREAS, Extended and Electronics Accessory Specialists International,
L.L.C., a Delaware limited liability company, which has been merged with and
into EASi, are parties to that such Sales, License and Noncompetition Agreement,
dated as of June 14, 1996 (the "Agreement");
WHEREAS, the parties hereto desire to amend the Agreement to the extent
provided herein; and
NOW, THEREFORE, in consideration of the premises and other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties hereto hereby agree as follows:
A. Amendment to Regulations. The Agreement is hereby amended as
follows:
(1) Section 1.2 shall apply to EASi Networking Products to the
same extent as it applies to other EASi Products, except that for EASi
Networking Products the multiplier shall be [*]%, instead of [*]%.
(2) Subsection (a) of Section 2.1 of the Agreement is hereby
amended to read in its entirety as follows:
"(a) IR Products. The "EASi IR Products" shall be the EASi
developed, licensed or otherwise acquired equipment and products
which incorporate the Licensed Technology pertaining or related to
the technology described in Exhibit G attached hereto and are
marketed and distributed by EASi through any of its distribution
channels."
[*] CONFIDENTIAL TREATMENT REQUESTED
20
(3) Subsection (b) of Section 2.1 of the Agreement is hereby
amended to read in its entirety as follows:
"(b) Licensed Technology. The "Licensed Technology" consists
of the infrared and networking technologies developed by Extended
and described in the specifications attached hereto as Exhibits G
and H, respectively, and any and all Extended-developed additions,
improvements, innovations, enhancements, modifications, variations,
changes or the like of or related in any way to the technologies
described in Exhibits G and H (now or in the future)."
(4) A new subsection (c) is hereby added to Section 2.1 of the
Agreement, which subsection shall read in its entirety as follows:
"(c) Networking Products. The EASi Networking Product(s)
shall be the EASi developed, licensed or otherwise acquired
equipment and products which incorporate the Licensed Technology
pertaining or related to the technology described in Exhibit H
attached hereto and are marketed and distributed by EASi through any
of its distribution channels."
(5) Section 2.2 of the Agreement is hereby amended to read in its
entirety as follows:
"2.2 License Grants. Extended hereby grants to EASi a royalty
bearing, non-exclusive, limited transferable (i.e., transfer shall
be limited to entities controlled by, controlling or under the
control of EASi), [*], to use, [*] and incorporate the Licensed
Technology into EASi IR Products and EASi Networking Products, and
to manufacture, distribute and sell products which incorporate the
Licensed Technology."
(6) The second sentence of Section 2.3 of the Agreement is hereby
amended to read in its entirety as follows:
"Except for the license granted hereunder, all rights, title
and interest in the Licensed Technology, the specifications
(Exhibits G and H), and updates, developments, enhancements or
modifications thereto made by Extended shall at all times remain
with Extended."
(7) EASi agrees to pay to Extended royalty payments on EASi
Networking Products equal to [*] percent ([*]%) of the sale price actually
received by EASi (net of returns and allowances) of such sold EASi
Networking Products; provided, however, that [*] with respect to sales of
EASi Networking Products [*]. The payment of royalties for EASi Networking
Products shall be the same as that provided for in subsections 2.10(b) and
(c) of the Agreement for EASi IR Products.
[*] CONFIDENTIAL TREATMENT REQUESTED
-2-
21
(8) Subsections 2.4(b), 2.6(b), 4.1(a) and 4.1(b) of the Agreement
are hereby amended to include the EASi Networking Products to the same
extent as the EASi IR Products are included in such subsections.
(9) A new Exhibit H is hereby added to the Agreement, which
Exhibit H is attached hereto as Exhibit H.
(B) Miscellaneous.
(1) This Amendment shall be governed by the laws of the State of
Delaware.
(2) Except as specifically provided herein, the Agreement shall
remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have executed this Amendment as of
the date first above written.
ELECTRONICS ACCESSORY SPECIALISTS
INTERNATIONAL, INC.
By: /s/ Xxxxxxx X. Xxxxx
-------------------------------------------
Xxxxxxx X. Xxxxx,
Chief Executive Officer
EXTENDED SYSTEMS INCORPORATED
By: /s/ Xxxxxx Xxxxx
-------------------------------------------
Title: Vice President, Business Development
----------------------------------------
-3-
22
EXHIBIT H
LICENSED TECHNOLOGY
Extended, through this agreement, grants to EASi a royalty-bearing,
non-exclusive, limited transferable right to use Licensed Technology in EASi
docking products (EASi Networking Products). This license is restricted to use
exclusively with the EASi networked docking products.
The Licensed Technology includes all of the following elements:
- [*]
- [*]
- [*]
[*] CONFIDENTIAL TREATMENT REQUESTED
