Exhibit 2.4
AMENDED AND RESTATED OEM AGREEMENT
This Amended and Restated OEM Agreement (the "Agreement") is entered
into and effective as of December 16, 1998 by and between Unmanned Solutions,
Inc. ("USI") located at 940 Auburn Court, Fremont, California 94538, and Data
I/O Corporation ("DATA I/O") located at 10525 Willows Road NE, P.O Box 97046,
Redmond, Washington 98073-9746.
In consideration of the mutual promises contained herein, it is agreed as
follows:
1. DEFINITIONS. As used herein:
1.1 "Current Specifications" shall mean the functional capabilities
and hardware compatibility, as described in ATTACHMENT 1.1 hereto, of the
Licensed Technology, as defined below.
1.2 "End-User Documentation" shall mean the end-user guides,
technical reference guides, and installation guides relevant to the Licensed
Technology.
1.3 "Licensed Technology" shall mean the current version of USI's
proprietary handler product, commonly known as the AH 400 Handler, and all
related drawings, mechanical drawings, assembly drawings, bills of material,
schematics, MRP database, specifications, purchased component specification
sheets, software, firmware, lasers, printers, input/output media, Autopack
software and technology, designs, documentation and other written material
necessary or useful in the manufacture, modification, or use of the AH 400
Handler (collectively, the "Manufacturing Documentation"), in both Object and
Source Code, as defined below, if available, and other deliverables described in
ATTACHMENT 1.3 hereto. Licensed Technology shall also include the End-User
Documentation.
1.4 "Licensed Technology Modifications" shall mean modifications to
the Licensed Technology in accordance with the terms of this Agreement.
1.5 "Object Code" shall mean the machine readable form of any USI
computer programs contained in the Licensed Technology.
1.6 "Source Code" shall mean the human readable form of any USI
computer programs contained in the Licensed Technology.
2. GRANT OF LICENSE AND DELIVERY OF MATERIALS.
2.1 Subject to the terms and conditions hereof, USI hereby grants to
DATA I/O, under USI's intellectual property rights (including but not limited
to, all patents, patent applications, copyrights, mask works, trade secrets and
works in progress), a fully paid, world-wide and perpetual license (the
"License") to (i) make, have made, reproduce, use, display, market, distribute
and support the Licensed Technology and to modify and create derivative works
from the Licensed Technology and (ii) translate the End-User and Manufacturing
Documentation into foreign languages; provided, however, DATA I/O shall be
solely responsible for the form and content of any such translation made by or
for DATA I/O. The License shall be exclusive in the "IC Programmer Products
Market" and non-exclusive in all other markets. "IC Programmer Products Market"
shall mean the design, development, manufacture, sale or distribution of any
device or system used to program programmable, integrated circuits.
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2.2 USI has delivered to DATA I/O, F.O.B. DATA I/O's place of
business, one electronic copy of the Licensed Technology (or hard copy for items
not available electronically), in accordance with the schedule set forth in
ATTACHMENT 2.2 hereto.
2.3 USI reserves the right, in its sole discretion, to modify,
improve or discontinue any or all of the Licensed Technology at any time or from
time-to-time; provided, however, such activities shall not impact DATA I/O's
rights hereunder.
3. LICENSED TECHNOLOGY MODIFICATIONS. Licensed Technology Modifications
developed by or on behalf of DATA I/O shall be owned by DATA I/O and may be
licensed to USI upon mutual agreement of the parties. Licensed Technology
Modifications developed by or on behalf of USI shall be owned by USI and may be
licensed to DATA I/O upon mutual agreement of the parties. Any Licensed
Technology Modifications developed by or on behalf of USI during the warranty
period, as described below, shall be provided to DATA I/O and included in the
Licensed Technology.
4. RESPONSIBILITIES OF DATA I/O. DATA I/O shall be solely responsible, at its
own expense, for determining whether its customer's requirements and application
will be served by the Licensed Technology, and for providing its customers with
training in the installation and use of, and for providing warranty, technical
support and trouble-shooting services to its customers with respect to, the
Licensed Technology. DATA I/O shall remain fully responsible for the product
knowledge and technical support skills of its staff. All end-user warranty
claims and support inquiries from DATA I/O's customers must be made to DATA I/O.
5. RESPONSIBILITIES OF USI. USI will provide servicing suggestions,
trouble-shooting guides and other service information for the Licensed
Technology. USI will sell Autopack units to DATA I/O for the amounts listed on
ATTACHMENT 5.1 hereto per unit and will deliver such units to DATA I/O within
six (6) weeks lead time of DATA I/O's order. Provided USI meets this six (6)
week lead time, USI will be DATA I/O's preferred source for Autopack units.
6. LICENSE FEE; PAYMENTS.
6.1 In consideration of the licenses granted herein, DATA I/O has
paid the license fee as described in ATTACHMENT 6.1 hereto as a one-time license
fee ("License Fee") for the License.
6.2 In addition to all other amounts due to USI hereunder, DATA I/O
shall pay to or reimburse USI the amount of any sales taxes which USI is at any
time obligated to pay or collect in connection with or arising out of the
transactions contemplated by this Agreement.
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7. LIMITED WARRANTY.
7.1 Until the later of one-hundred twenty (120) days after delivery
by USI of the Licensed Technology to DATA I/O USI warrants that the Licensed
Technology shall perform substantially in accordance with the Current
Specifications for such Licensed Technology. For purposes of this Agreement, a
"defect" is a failure of the Licensed Technology to perform substantially in
accordance with the applicable Current Specifications. During the warranty
period, USI shall use its best efforts to correct reported defects in the
Licensed Technology provided that USI is given written notice specifying the
defect. All corrections to software contained in the Licensed Technology shall
be delivered to DATA I/O in Source and Object Code form. USI shall have no
responsibility for any defects attributable to improper installation, operation,
misuse or abuse of the Licensed Technology. If USI has not fixed or provided a
suitable work around for a defect within thirty (30) days after its receipt of
notice thereof, DATA I/O shall thereafter have the right to terminate its
license of the Licensed Technology and, AS ITS SOLE AND EXCLUSIVE REMEDY,
RECEIVE A REFUND EQUAL TO THE LICENSE FEE PAID TO USI.
7.2 USI will provide to DATA I/O during the period referred to in
Section 7.1 any bug fixes or work arounds in Object and Source Code form and
related documentation for any bugs reported by USI's customers and repaired by
USI and for any bugs which are reported to USI by DATA I/O during the period
referred to in Section 7.1.
7.3 Except as listed in ATTACHMENT 7.3 hereto, USI warrants that the
Licensed Technology constitutes all of the documentation, software and materials
used by USI to manufacture and support the AH 400 Handler. USI warrants it has
all right, power and authority to grant the License and rights granted under
this Agreement; provided however, the parties acknowledge that third party
rights to those materials listed in ATTACHMENT 7.3 hereto must also be acquired
by DATA I/O. USI will use its best efforts in assisting DATA I/O in acquiring
such rights.
7.4 USI will defend and indemnify DATA I/O for any damages and costs
finally awarded against DATA I/O, or the settlement related thereto, on the
grounds that the Licensed Technology, in the form and condition delivered by USI
to DATA I/O hereunder, infringes any patents, copyrights, trade secrets or
proprietary rights of any third party, provided that DATA I/O notifies USI in
writing of any such claim promptly after learning thereof and that DATA I/O
gives USI full control over the defense and settlement of the claim and
reasonably cooperates with USI with respect thereto. If any such claim is
brought or appears to USI likely to be brought, USI, at its option, may replace
or modify the Licensed Technology to make it non-infringing. Thereafter DATA I/O
shall discontinue all use of any portion of the Licensed Technology that has
been replaced or modified. USI's obligations hereunder shall not apply to any
claim to the extent based on use of the Licensed Technology which has been
modified by DATA I/O, or based on combination of the Licensed Technology with
any products not supplied by USI and where, but for such combination, no
infringement would have occurred. THE FOREGOING STATES USI'S SOLE
RESPONSIBILITY, AND DATA I/O'S SOLE REMEDY, FOR ANY INFRINGEMENT BY THE LICENSED
TECHNOLOGY OF ANY PROPRIETARY RIGHTS OR ANY BREACH OR BREACHES OF ANY WARRANTY
OF TITLE.
7.5 DATA I/O will defend and indemnify USI for any damages and costs
finally awarded against USI, or the settlement related thereto, on the grounds
that the Licensed Technology Modifications developed by or on behalf of DATA I/O
("DATA I/O Licensed Technology Modifications") infringe any valid patents,
copyrights, trade secrets or proprietary rights of any third party, provided
that USI notifies DATA I/O in writing of any such claim promptly after learning
thereof and that USI gives DATA I/O full control over the defense and settlement
of the claim and reasonably cooperates with DATA I/O with respect thereto. THE
FOREGOING STATES DATA I/O'S SOLE RESPONSIBILITY, AND USI'S SOLE REMEDY, FOR ANY
INFRINGEMENT BY THE DATA I/O LICENSED TECHNOLOGY MODIFICATIONS OF ANY
PROPRIETARY RIGHTS OR ANY BREACH OR BREACHES OF ANY WARRANTY OF TITLE.
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7.6 USI DOES NOT WARRANT THAT THE LICENSED TECHNOLOGY WILL MEET DATA
I/O'S OR ITS CUSTOMER'S REQUIREMENTS OR THAT OPERATION OF THE LICENSED
TECHNOLOGY WILL BE UNINTERRUPTED OR ERROR FREE. THE WARRANTIES SET FORTH ABOVE
ARE THE ONLY WARRANTIES MADE BY USI, AND THE LICENSED TECHNOLOGY IS OTHERWISE
PROVIDED ON AN "AS IS" BASIS WITH ALL FAULTS. USI EXPRESSLY DISCLAIMS AND
EXCLUDES ALL OTHER WARRANTIES, INCLUDING THE WARRANTIES OF MERCHANTABILITY, AND
FITNESS FOR A PARTICULAR PURPOSE.
7.7 IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY, ITS
CUSTOMERS, OR ANY OTHER PERSON FOR INCIDENTAL, INDIRECT, SPECIAL, CONSEQUENTIAL
OR PUNITIVE DAMAGES, INCLUDING WITHOUT LIMITATION, LOSS OF USE, LOSS OR
ALTERATION OF DATA, DELAYS, LOST PROFITS OR SAVINGS, ARISING OUT OF THE BREACH
OF WARRANTY OR THE PERFORMANCE OR BREACH OF THIS AGREEMENT OR THE USE OR
INABILITY TO USE THE LICENSED TECHNOLOGY, LICENSED TECHNOLOGY MODIFICATIONS, OR
ANY PORTION THEREOF, EVEN IF SUCH PARTY HAS BEEN ADVISED AS TO THE POSSIBILITY
OF SUCH DAMAGES AND EVEN IF THE LIMITED REMEDIES STATED ABOVE ARE FOUND TO FAIL
OF THEIR ESSENTIAL PURPOSE. EACH PARTY FURTHER AGREES THAT, EXCEPT AS STATED IN
SECTIONS 7.4 AND 7.5 HEREOF, THE LIABILITY OF THE OTHER PARTY ON ANY CLAIM OF
ANY KIND, WHETHER BASED ON CONTRACT OR TORT (INCLUDING BUT NOT LIMITED TO STRICT
LIABILITY, PRODUCT LIABILITY, NEGLIGENCE, OR FOR INDEMNIFICATION) OR RESULTING
FROM THIS AGREEMENT OR ANYTHING FURNISHED HEREUNDER SHALL NOT EXCEED $300,000.
7.8 DATA I/O ACKNOWLEDGES THAT USI HAS NOT MADE, AND DATA I/O IS NOT
RELYING UPON, ANY EXPRESS OR IMPLIED WARRANTIES OR REPRESENTATIONS REGARDING THE
VALUE OF THIS AGREEMENT OR THE MARKETABILITY OF THE LICENSED TECHNOLOGY.
7.9 This Section shall survive termination of this Agreement.
8. PROPRIETARY INFORMATION; INTELLECTUAL PROPERTIES.
8.1 See ATTACHMENT 8.1.
8.2 DATA I/O agrees that all rights, title and interest in and to
any trademark, trade name, service mark, patent, copyright or other proprietary
rights in the Licensed Technology are and shall remain vested solely in USI.
DATA I/O shall not attempt to register any name, symbol or mark of USI, nor any
name, symbol or mark confusingly similar thereto. DATA I/O shall in no event use
the word USI or any of the trademarks, trade names or service marks of USI
related to the Licensed Technology as part of its corporate or business name.
DATA I/O may use USI's trademarks related to the Licensed Technology in
connection with the marketing and distribution of the Licensed Technology and
will retain and not obscure or alter in any way the copyrights, proprietary
rights and trademark notices in the Licensed Technology.
8.3 This Section shall survive termination of this Agreement.
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9. TERMINATION.
9.1 Either party may terminate this Agreement immediately upon
notice to the other party if the other party ceases to function as a going
concern, becomes insolvent, makes an assignment for the benefit of creditors,
files a petition or has a petition filed against it under any bankruptcy or
similar law.
9.2 Upon termination of this Agreement, all rights and obligations
of the parties arising under this Agreement shall cease unless otherwise stated
in this Agreement, except that neither DATA I/O nor USI shall be relieved of (i)
its respective obligations to pay any monies due, or to become due, as of or
after the date of termination (ii) any other undischarged, accrued obligations
existing at the date of termination or (iii) any and all provisions of this
Agreement or otherwise with respect to the ownership, protection, and
confidentiality of the Licensed Technology and Licensed Technology
Modifications.
10. INDEPENDENT CONTRACTORS. DATA I/O and USI are independent contractors as to
each other, and at no time shall either be deemed to be or hold itself out as
the agent, partner or representative of the other.
11. ENTIRE AGREEMENT. This Agreement, including all Attachments hereto, sets
forth the entire agreement between the parties with respect to the subject
matter hereof, and replaces, supersedes and terminates all prior or
contemporaneous discussions or agreements, written or oral, as to the subject
matter, including without limitation, the Letter Agreement between the parties
dated September 21, 1998 and the OEM Agreement between the parties dated
November 4, 1998. Unless otherwise stated in this Agreement, any remedy set
forth in this Agreement is in addition to any other remedy afforded to the
parties by law or otherwise. No modifications or amendments shall be binding
upon the parties unless made in writing and signed by both parties.
12. WAIVER. A waiver of any breach, the acceptance of any order inconsistent
with the terms of this Agreement, or the making of deliveries pursuant to such
order shall not be deemed a modification of this Agreement, nor shall any
failure to enforce any right hereunder or a waiver in one instance constitute a
waiver of that right or of any other right under this Agreement.
13. ASSIGNMENT AND SUBLICENSING.
13.1 USI may at any time assign all or a portion of its rights and
duties hereunder to a company or companies wholly owned by or in common
ownership with USI, or to a buyer of all or substantially all of the assets
relevant to USI's performance under this Agreement and may at any time after the
end of the warranty period described in Section 7.1 assign all or a portion of
its rights and duties hereunder. DATA I/O may at any time assign all or a
portion of its rights and duties hereunder and may sublicense any of its rights
hereunder.
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13.2 Subject to the foregoing restrictions, this Agreement will bind
and benefit the parties and their successors and assigns.
14. ATTORNEYS' FEES. In the event any dispute arising hereunder is submitted for
judicial determination to a court of competent jurisdiction, the substantially
prevailing party therein shall recover its reasonable attorneys' fees and costs
at all levels of proceedings. This Section shall survive termination of this
Agreement.
15. APPLICABLE LAW. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of Washington without regard
to its conflict of law rules. The parties agree that the exclusive jurisdiction
and venue of any lawsuit shall be the state or federal courts sitting in King
County, Washington. This Section shall survive termination of this Agreement.
16. NOTICES. All notices and other communications called for or required by this
Agreement shall be in writing and shall be addressed to the parties at their
respective addresses stated in the first paragraph of this Agreement or to such
other address as a party may subsequently specify and shall be deemed to have
been received (i) five days after mailing if by U.S. certified mail, return
receipt requested and postage prepaid or (ii) upon transmittal if by facsimile.
This Section shall survive termination of this Agreement.
17. SEVERABILITY. If any provision of this Agreement is held to be invalid,
illegal or unenforceable, it shall nevertheless be enforced to the fullest
extent allowed by law and the validity and enforceability of the remainder of
this Agreement shall not in any way be impaired. This Section shall survive
termination of this Agreement.
18. EXPORTS. DATA I/O agrees to obtain all applicable government export licenses
and to comply with all rules and regulations of the U.S. Department of Commerce,
Office of Export Administration and any other applicable export controls and
regulations relating to its export of the Licensed Technology, DATA I/O Licensed
Technology Modifications or any technical information related thereto.
EACH OF THE PARTIES AFFIRMS THAT IT UNDERSTANDS THE TERMS AND CONDITIONS SET
FORTH ABOVE, INCLUDING THE EXCLUSIONS OF WARRANTIES AND LIMITATIONS OF REMEDIES
STATED HEREIN, AND ACKNOWLEDGES THAT THE SAME CONSTITUTE AN AGREED ALLOCATION OF
RISK REFLECTED IN THE PRICING HEREUNDER.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed
by their authorized representatives as of the date written above. This Agreement
may be executed in counterparts.
UNMANNED SOLUTIONS, INC. DATA I/O CORPORATION
BY //S// James Fishman BY //S// David C. Bullis
TITLE President TITLE CEO
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OMITTED SCHEDULES FROM EXHIBIT 2.4
The following Attachments have been omitted from Exhibit 2.4 in accordance with
Item 601(b)(2) of Regulation S-K. The Registrant will furnish supplementally a
copy of any omitted Attachment to the Commission upon request.
Attachment Number Description
1.1 Current Specifications
1.3 Description of Licensed Technology
1.3A Parts List
1.3B Object Code
1.3C Source Code
2.2 Delivery Schedule
5.1 Autopack Pricing
6.1 License Fee and Training and Support Fee
7.3 third Party Materials and Documentation
8.1 Mutual Non-Disclosure Agreement Dated
August 18, 1998
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