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EXHIBIT 10.19
AGREEMENT
This Agreement made as of this 20th day of June 1997.
Between INNOVA, Gateway North Bldg. 2, 3325 South 116th Street, SEATTLE,
WASHINGTON 98168 USA and SAT (Societe Anonyme de Telecommunications), 11 rue
Watt, BP 370, 75 626 PARIS CEDEX 13 - FRANCE.
WHEREAS, a cooperation between INNOVA and SAT was initiated in October 1992 in
the field of digital high frequency radio link, on the basis of an INNOVA design
known as "XP3 series" design.
WHEREAS, to implement this cooperation between the Parties, a master agreement
(hereinafter "the Master Agreement") was signed on 23 October 1992, thereafter
followed by an OEM Distributor Agreement (hereinafter "the OEM Distributor
Agreement") dated 9 June 1993, further amended by four amendments thereto,
namely First Amendment dated August 15, 1993, Second Amendment dated April 27,
1994, Third Amendment dated December 7, 1994 and Fourth Amendment dated January
12, 1995 (hereinafter "the Amendments").
WHEREAS, under the OEM Distributor Agreement SAT contributed technology and know
how to INNOVA's XP3 Products and granted INNOVA certain rights in respect of the
use of such contributions as acknowledged by Second Amendment of April 27, 1994.
WHEREAS, INNOVA started in June 1995 the development of digital high frequency
radio links on the basis of a new design known as "XP4 series" design and having
made substantial progress in such development, entered into a new phase of
cooperation with SAT on the basis of said XP4 series design through a
Cooperation Agreement dated October 31, 1996 and decided to discontinue the
manufacture of XP3 series products.
WHEREAS, SAT, using distribution and manufacturing rights granted to it under
the Master Agreement and the OEM Distributor Agreement as amended by the
Amendments, manufactured and/or distributed to its customers substantial
quantities of radiolinks incorporating XP3 series technology as adapted by SAT
and may in the future, face further requirements for the same from its
customers.
WHEREAS, a Memorandum of Understanding on mutual development of Products was
signed between the Parties as of November 17, 1995.
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WHEREAS, considering INNOVA's discontinuation of the XP3 series products, INNOVA
and SAT deem it appropriate to terminate the agreements which relate to their
past cooperation in the field of XP3 series products, provided each Party's
rights to use the technology developed for XP3 series survive such termination.
NOW, THEREFORE, THE PARTIES AGREE AS FOLLOWS:
1. Subject to the surviving of the rights described under Section 2 of this
Agreement, the Parties mutually agree to terminate as of the date hereof
the Master Agreement, the OEM Distributor Agreement as amended by the
Amendments, as well as the Memorandum of Understanding signed as of
November 17, 1995.
2. Effective as of the date of this Agreement, each Party hereby irrevocably
grants to the other Party for all purposes in relation with the
manufacture, sale, lease and maintenance of any digital high frequency
radio links by such other Party, an irrevocable, perpetual, fully paid
up, royalty-free, unconditional, non-exclusive, world-wide license to use
all know how, technical data and information (including software)
pertaining to the XP3 series technology contributed by it and already
made available to such other Party under the Master Agreement and/or the
OEM Distributor Agreement.
Such license includes the right to make any modifications, improvements
and enhancements to such technology.
Such license includes the right to have made products and/or to grant
sublicenses except that as to any portion of such technology which was
patented by the contributing Party, or for which patent applications have
been made by such Party, the other Party shall not be entitled to grant
sublicenses of such portion of the contributing Party's technology in
those countries where it is patented or patents are pending other than to
its then current affiliated companies (any company whose capital is
controlled by the licensed Party or which controls the licensed Party,
control meaning direct or indirect ownership of more than fifty per cent
(50%) of the voting capital stock and equity capital or the voting
control thereof), for so long as they remain affiliated.
However software may be sublicensed in all cases when required for the
marketing of products.
Such license also includes unconditional access to all XP3 series key
components manufacturers or suppliers and any contractual rights with
such manufacturers or suppliers pertaining to XP3 series key components.
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Such license conveys no rights to SAT in respect of the antennas
developed by INNOVA for the XP3 series products.
3. Neither party is committed under this Agreement to make available to the
other Party any know how, technical data and information pertaining to
the XP3 series products in addition to the know how technical data and
information already obtained by such other Party as of the date hereof.
IN WITNESS WHEREOF THIS AGREEMENT has been executed in duplicate.
For and on behalf For and on behalf of SAT
of INNOVA (Societe Anonyme
de Telecommunications)
By /s/ Jean-Francois Grenon By /s/ Marc Mathieu
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(signature) (signature)
Jean-Francois Grenon Marc Mathieu
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(name) (name)
President and CEO Executive V.P.
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(title) (title)
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