CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS
FOR WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
EXHIBIT 10.13
COOPERATIVE DEVELOPMENT AGREEMENT
This Agreement is entered into as of December 5, 1996 (the
"Effective Date"), by and between GlobeSpan Technologies Inc., a Delaware
corporation, with offices at 200 Laurel Ave, Middletown, NJ 07748 (GTI), and
Westell Technologies, Inc. a Delaware corporation with offices at 101 Kendall
Point Drive, Oswego, Illinois 60543 (Company).
GTI has developed certain carrierless amplitude/phase modulation
("CAP") transceiver technology hereafter referred to as GlobespanTM
TRANSCEIVER TECHNOLOGY. Company wishes to develop, manufacture and sell a
GlobeSpan DSL (Digital Subscriber Line) product which incorporates the
GlobeSpan TRANSCEIVER TECHNOLOGY (hereinafter "PRODUCT"), and GTI is willing
to grant to Company certain rights regarding such GlobeSpan TRANSCEIVER
TECHNOLOGY.
In consideration of the mutual promises contained herein, GTI and
Company agree as follows:
1. Grant of Technology Rights: GTI grants to Company a personal, worldwide
and non-exclusive right to use the TECHNICAL INFORMATION solely for the
development of, manufacture of, sale and support of, and use of the
PRODUCT which is designed by Company.
1.1 Patent Licenses and Immunities Granted to Company:
(a) GTI grants to Company on a world-wide basis, a non-transferable
license under all Patents issued and patent applications now or
hereafter issued to GTI (collectively the Patents) which are
necessary for the use of the TECHNICAL INFORMATION to develop,
manufacture, use, sell and support PRODUCT. GTI further grants
immunity for the term of this Agreement, under Lucent Technologies
Inc., CAP Patents listed in Exhibit B only to the extent such
patents are essential patents to the GlobeSpan TRANSCEIVER
TECHNOLOGY and are used specifically in conjunction with the
licensed technology for board and system level PRODUCTs and only to
the extent that if a component is specified in the GlobeSpan
TRANSCEIVER TECHNOLOGY, the component is purchased from GTI or a
vendor approved by GTI. Further, GTI warrants to Company that GTI
has the legal right to license all the patents identified as a part
of this Agreement for the purpose of licensing such technology to
Company.
(b) All such licenses granted herein under any Patents shall continue
only for so long as Company's rights under this Agreement remain in
effect. Nothing herein shall be construed as affecting sales or
use of PRODUCTs manufactured by Company pursuant to this Agreement.
(See 17 for Indemnification)
(c) The licenses granted under Patents are for the convenience of
Company and are effective only for the PRODUCT. Accordingly, GTI
is willing to forego any patent royalty for the use of Patents
under these conditions and no separate royalty shall be payable to
GTI with respect to use of the Patents.
1.2 Subcontracting: The rights to manufacture PRODUCT granted to the
Company pursuant to Sections 1 and 1.1 can be exercised by nominated
subcontractors of Company, as long as such subcontractors are not a
direct competitor of GTI in any SIMILAR TECHNOLOGIES, solely for the
manufacture of, development of, sale and support of, and use of the
Product by Company, provided such subcontractors agree in writing to be
bound by the commitments under Sections 4, 9, 11, 16 and 18 of this
Agreement, and further provided that the laws of the jurisdiction
wherein such subcontractor is located are comparable to the laws of the
United States with respect to the protection of intellectual property.
Company shall provide notification of the intent to use such
subcontractor, and GTI will have 10 days to respond with any objections.
1.3 Procurement of GTI Approved Component Parts:
(a) GTI grants to Company a personal and non-exclusive right, as an
attribute of the right granted in Section 1 and 1.1, to disclose to
any supplier or prospective supplier those portions of the
TECHNICAL INFORMATION which are necessary for the procurement by
Company, of component parts and other materials required to
manufacture the PRODUCT. Company must inform GTI in writing if
procurement of the Phase 3 GlobeSpan VLSI chips (, Starlet, Star,
Slade, and 2 Wire Framer) is authorized by Company to a Company
business entity that operates under a different name than Company,
or to a subcontractor business entity that operates under a
different name than the subcontractor nominated in Section 1.2.
(b) Company agrees that it will not make any part of the TECHNICAL
INFORMATION available to any supplier or prospective supplier of
components identified by GTI in the Bill of Materials as containing
Confidential Material except on the agreement in writing of such
supplier or prospective supplier that it accepts as its own
Company's commitments under Sections 4, 9, 11, 16 and 18 of this
Agreement, that supplier will use all TECHNICAL INFORMATION
received from Company only for the purpose of supplying to Company
items of the type to be procured by Company for manufacture of
PRODUCT, and that it will promptly return or destroy each and every
part of such TECHNICAL INFORMATION as directed by Company.
(c) Under the terms of this agreement GTI will supply to Company the
Phase 3 GlobeSpan Starlet, Star, Slide, and 2 Wire Framer VLSI
chips. GTI reserves the right to similarly furnish the 4 Wire HDSL
Framer VLSI chip to Company at a future date. Use of GTI supplied
framers are optional.
1.4 GTI's Duties:
(a) Delivering the TECHNICAL INFORMATION to support Company in the
mechanical and electrical design, build and test process related to
the GlobeSpan transceiver;
(b) Technical Support per Section 3; and
(c) Provide continuous performance improvements using the defined chip
sets listed in 1.3(c) and transceiver platforms per 18.1.
1.5 Company's Duties:
(a) Development, manufacture, marketing, sales and support of the
PRODUCT.
(b) Directly source the approved transceiver component parts specified
in the DESIGN GUIDE for use in PRODUCTs manufactured by or for
Company.
(c) Company will provide GTI a five (5) quarter rolling global forecast
for GlobeSpan VLSI chip sets by DSL application (ADSL, RADSL, SDSL,
HDSL) and optional framers to be ordered by Company. The forecast
shall be delivered to GTI in a form reasonably acceptable to GTI
within thirty (30) days following the end of each quarter. This
forecast shall be used by GTI at its discretion for business
planning purposes and is not a binding commitment on the behalf of
Company.
(d) Commensurate with GTI's own activities, Company agrees to support
GlobeSpan TRANSCEIVER TECHNOLOGY which Company uses or intends to
use in its Products in standards bodies (with written and oral
contributions to such bodies as ANSI or ETSI), public forums and
industry publications on a fair and equitable basis to Company's
representation and support for SIMILAR TECHNOLOGY used in Company's
DSL products.
1.6 Company Licensing of Company DSL PRODUCT Technology and Design: Subject
to the conditions in this Section 1.6, nothing shall preclude Company
from licensing Company's DSL PRODUCT technology or PRODUCT designs
incorporating the GlobeSpan TRANSCEIVER TECHNOLOGY to Westell's
customers (hereafter called Westell Customer) for the purpose of design,
manufacture, and/or distribution of DSL PRODUCT by the Westell Customer.
(a) Each Westell Customer must obtain such GlobeSpan TRANSCEIVER
TECHNOLOGY under a GlobeSpan DSL Technology Cooperative Development
Agreement directly from GTI prior to start of design, manufacture,
or distribution of DSL PRODUCT by Westell Customer.
(b) If GTI has a GlobeSpan DSL Technology Cooperative Development
Agreement in effect with Westell Customer prior to Company license
agreement with Westell Customer, no additional agreements between
GTI and Westell Customer are required for Company to license
Company DSL PRODUCT Technology And Design to Westell Customer.
(c) If GTI does not have a GlobeSpan DSL Technology Cooperative
Development Agreement in effect with Westell Customer prior to
Company license agreement with Westell Customer, GTI, at Company's
request, will cooperate with Company in completing a GlobeSpan DSL
Technology Cooperative Development Agreement directly with Westell
Customer prior to start of design, manufacture, or distribution of
DSL PRODUCT by Westell Customer.
1.6.1 GlobeSpan DSL Technology Cooperative Development Agreement Fee:
Company or Westell Customer, at Company's option, will pay GTI a
one time license fee for the GlobeSpan DSL platform(s) specified in
new or revised GlobeSpan DSL Technology Cooperative Development
Agreement with Westell Customer.
The one time license fee will be per the standard fee applicable at the
time the agreement is executed. The current fees are as follows:
[<F*>] for the first DSL platform, [<F*>] for each additional
platform. The above fees are for a single design center. The fee
for each additional design center is [<F*>] per DSL platform.
1.6.2 Restricted Use of GlobeSpan DSL Technology Cooperative Development:
GTI reserves the right to not enter into a GlobeSpan DSL Technology
Cooperative Development, in cooperation with Company as part of
this Agreement, with any company in South Korea; or with any
company that designs, manufactures, or markets DSL transceiver chip
sets which compete with GTI's GlobeSpan DSL technology.
1.6.3 Technical Support: Technical support to Westell Customer will
optionally be the responsibility of Westell or GTI as defined in
the GlobeSpan DSL Technology Cooperative Development Agreement with
Westell Customer. If Westell requires GTI technical support for
Westell Customer's DSL PRODUCT, support at GTI's facilities will be
at a rate of [<F*>] per day.
1.6.4 GTI Relationship With Westell Customer:
(a) If GTI has a GlobeSpan DSL Technology Cooperative Development
Agreement in effect with Westell Customer prior to Company
licensing agreement with Westell Customer, GTI will continue normal
marketing and support activities with Westell Customer, unless GTI
and Westell Customer mutually agree in writing to a specific
marketing and support plan.
(b) If GTI does not have a GlobeSpan DSL Technology Cooperative
Development Agreement in effect with Westell Customer prior to
Company licensing agreement with Westell Customer, and if requested
in writing by Company, GTI thereafter agrees that it will not
independently solicit, or contact for the purpose of soliciting,
Westell Customer without approval by or the request to do so by
Company (which approval shall not be unreasonably withheld), so
long as Company is not in default of its Agreement with GTI.
Company agrees to make its best effort to promote GlobeSpan
technology with Westell Customer and to keep Westell Customer fully
informed on the state of the technology performance and
advancements as so communicated to Company by GTI.
1.6.5 Public Release of Westell Customer Name: GTI has the right to
publicly announce and distribute the company name of Westell
Customer as a licensee of GTI's GlobeSpan DSL technology as defined
in the GlobeSpan DSL Technology Cooperative Development Agreement
with Westell Customer.
2. Technical Information Delivery. TECHNICAL INFORMATION in Exhibit A will
be supplied upon request by Company. GTI will make its best effort to
deliver currently available TECHNICAL INFORMATION within 10 days and
follow-on TECHNICAL INFORMATION per the scheduled target availability
dates shown in Exhibit A.
3. Technical Support: GTI shall, at no cost to Company, provide Company
with development support to assist in the debug and implementation
testing of the PRODUCTs at GTI's facility if the support is necessary
due to GTI's design or documentation deficiencies. However, if the
support is necessary due to any other reasons, the cost will be [<F*>]
per day. Telephone, facsimile and e-mail support are included at no
additional cost. Technical support included in this Agreement is
available to one design center per Transceiver platform. Technical
support for any additional design centers must be negotiated. Company
shall not provide the TECHNICAL INFORMATION to design centers outside
Company other than to its subcontractors without prior written consent
of GTI.
[FN]
<F*> CONFIDENTIAL TREATMENT REQUESTED - MATERIAL OMITTED HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
4. Confidentiality: As used in this Agreement, "Confidential Information"
means this Agreement and any information which is relating to GTI's or
Company's product plans, product designs, product costs, product prices,
product names, finances, marketing plans, business opportunities,
personnel, research, development or know-how, and which is (i) furnished
to the recipient party in intangible form and designated in writing as
"Proprietary" or "Confidential" whether in written or in machine
readable form, or (ii) disclosed orally or visually to the recipient
party, but only to the extent designated by the disclosing party in a
writing as "Proprietary" or "Confidential" within fifteen (15) days of
such oral or visual disclosure. Such information is Confidential
Information whether acquired or developed by GTI or Company during their
performance under this Agreement, obtained from their employees or
otherwise learned. Except as expressly authorized by the other party or
by this Agreement, neither shall directly nor indirectly divulge to any
person or entity or use the other party's Confidential Information.
Company agrees that it will not, during the term of this Agreement,
without GTI's prior written consent, knowingly use the TECHNICAL
INFORMATION, or Confidential Information provided by GTI for the
development of competing technology or transceiver chip sets or for any
reason other than specified in this Agreement.
4.1 Exceptions: The foregoing restrictions will not apply to information
that:
(a) is known to the non-disclosing Party at the time of disclosure to
such party by the other party,
(b) has become publicly known through no wrongful act of such non-
disclosing party,
(c) has been rightfully received from a third party without
restriction,
(d) has been developed by the non-disclosing party independently
without use of the other party's Confidential Information, or
(e) has been approved for release by written authorization of GTI or
Company, as applicable.
5. Term: This Agreement will commence on the Effective Date and will
continue until December 31, 2002 unless earlier terminated as provided
in this Agreement.
6. TERMINATION:
6.1 Termination for Cause by Either Party: Either party will have the right
to terminate this Agreement at any time if:
(a) The other party is in material breach of any warranty, term,
condition or covenant of this Agreement other than those contained
in Section 4 and fails to cure that breach within thirty (30) days
after receiving notice of that breach and the other party's
intention to terminate or if such breach cannot reasonably be cured
within such 30-day period, the breaching party has not within such
30-day period diligently pursued a cure and then cured the breach
in any event within one hundred twenty (120) days after receiving
such notice;
(b) The other party is in material breach of any warranty, term,
condition or covenant of Section 4;
(c) Company begins commercial distribution of any DSL transceiver chip
set, which is not distributed as part of Company's DSL products,
that competes with the GlobeSpan TRANSCEIVER TECHNOLOGY as
specified in Section 1 of this Agreement;
(d) The other party (i) becomes insolvent; (ii) fails to pay its debts
or is subject to its obligations in the ordinary course of business
as they mature; or (iii) admits in writing its insolvency or
inability to pay its debts or perform any voluntary or involuntary
proceeding in bankruptcy, liquidation, dissolution, receivership,
attachment or composition or general assignment for the benefit of
creditors; provided that if such proceeding is commenced
involuntarily it has not been dismissed, bonded or stayed within
sixty (60) days after it begins.
Termination will become effective under Section 6.1(a) automatically
upon expiration of the cure period in the absence of a cure, and under
Sections 6.1(b) and (c) immediately upon the non-terminating party's
receipt of a notice of termination at any time after the specified event
or the failure of the specified proceeding to be timely dismissed.
6.2 Effect of Termination: Upon any termination of this Agreement, each
party immediately will deliver to the other party all TECHNICAL
INFORMATION and Confidential Information of the other party in its
possession and will destroy all documents or electronic media which
contains the Confidential Information of the other Party; provided,
however, that Company shall be allowed to retain sufficient copies of
such materials containing GTI Confidential Information as are reasonably
required to allow Company, to complete work-in-process for PRODUCT and
to support PRODUCT that has already been sold as of the date of
termination of this Agreement or that will be sold as the work-in-
process is completed. Work in process is defined as fulfillment of any
Purchase Order for VLSI and development of PRODUCT which utilizes that
VLSI. Also upon termination of this Agreement, each Party will be
released from all obligations and liabilities to the other occurring or
arising after the date of such termination, except that any termination
of this Agreement will not relieve Company or GTI of their obligations
under Sections 4 and 6 hereof or any purchase order, nor will any such
termination relieve Company or GTI from any liability arising from any
breach of this Agreement. Neither party will be liable to the other for
damages of any sort solely as a result of terminating this Agreement in
accordance with its terms. Termination of this Agreement will be
without prejudice to any other right or remedy of either party.
(a) Survival of Company's and GTI's Obligations: Any termination by
GTI pursuant to Section 6.1 of the Agreement shall not affect
Company's rights and obligations with respect to any article made
or in the process of being made with the use of any of the
TECHNICAL INFORMATION prior to such termination. In the event of
such termination, GTI shall have no obligation to make any refund;
subject, however, to GTI's ongoing obligations pursuant to Section
18.4. Company's obligations under Section 1.3(b) hereof and
Company's and GTI's obligations under Section 4, 11, & 16 of the
Agreement shall survive and continue after any termination of
rights under the Agreement.
7. Exclusivity: Company expressly agrees that it will not, during the term
of this Agreement, without GTI's prior written consent, knowingly
manufacture, a CAP based product, either for its own account or for any
third Party, or assist any third Party in doing so without the
technology or the GlobeSpan DSL transceiver chip set specified in
Section 1 of this Agreement.
If and when there will be potentially competing technologies, GTI shall
not unreasonably withhold from Company the opportunity to use
alternative CAP technologies provided that:
(1) Company provides GTI with written notice within 90 days of its
intended introduction of products using alternate CAP technologies.
(2) Mutually agreed upon steps are taken to insure that there is no
market confusion regarding which products use the GlobeSpan
Transceiver technology.
7.1 Notification of Events Impacting Forecast: Company agrees to notify GTI
90 days prior, or as soon as known and allowed by law if less than 90
days, to any pending announcements which might impact the forecast per
Section 1.6(c).
8. Relief from Obligations: Except for the requirement to make any
payments hereunder, neither party will be deemed in default of this
Agreement to the extent that performance of its obligations or attempts
to cure any breach are delayed or prevented by reason of any act of God,
fire, natural disaster, accident, act of government, strikes, shortages
of material or supplies or any other cause beyond the reasonable control
of such party ("Force Majeure"), provided that such party gives the
other party written notice thereof promptly and, in any event, within
fifteen (15) days of discovery thereof and uses good faith efforts to so
perform or cure. In the event of such a Force Majeure, the time for
performance or cure will be extended for a period equal to the duration
of the Force Majeure but not in excess of six (6) months.
9. Advertising and Trademarks: Except as specified below, without the
prior written consent of the other party, neither party may use any
trademarks, service marks, trade names, logos or other commercial or
product designations of the other party, including, but not limited to,
in connection with any press releases, promotions, advertisements or
exhibitions. GTI and Company may make press releases or other
announcements relating to this Agreement and the transactions which are
the subject of this Agreement with the prior written approval of the
other party.
9.1 Advertising and Other Promotion: Company agrees that the GlobeSpan
trademark name and logo will be included in all data sheets and
marketing collateral material which describes and/or references the
PRODUCT or the GlobeSpan DSL transmission technology used in connection
with Company's PRODUCT. Company agrees that it will display the
GlobeSpan trademark only in such form or manner as will be specifically
approved by GTI. GTI must supply Company with the GlobeSpan Trademark
and is responsible for updating the information as appropriate. Company
will cause to appear on all materials or documentation with which the
GlobeSpan trademark is used, such legends, markings and notices as GTI
may request in order to give appropriate notice of any trademark rights
therein. Company agrees to reference the use of GTI's GlobeSpan
TRANSCEIVER TECHNOLOGY in all press releases and formal media
communications which are related to GlobeSpan TRANSCEIVER TECHNOLOGY
based products.
(a) Public Announcement of Company GlobeSpan License Agreement:
Company grants GTI permission to publicly list it as a Licensee of
GlobeSpan xDSL technology and to distribute its name to other GTI
GlobeSpan licensees and prospective customers. With written
approval by Company, Company also grants GTI permission to make
either a joint or independent public announcement regarding the
GlobeSpan licensing agreement between GTI and Company.
10. Assignment: The rights and liabilities of the parties under this
Agreement will bind and inure to the benefit of the parties' respective
successors; provided that, except as provided elsewhere in this
paragraph, neither party may assign or delegate its obligations under
this Agreement, either in whole or in part, without the prior written
consent of the other party. Except for any assignment by GTI to its
parent or any affiliate or successor or successors thereof, or GTI, or
any assignment by Company to its current parent or any current affiliate
thereof, any attempted assignment or delegation without consent will be
void. In addition, GTI has the right to assign this Agreement to any
purchaser, or successor, in whole or in part of its business. Provided
Company has given GTI written notice of its intent to assign to a
specific assignee and has either received written approval thereof or no
response to such request within ten (10) days of GTI's receipt thereof
Company shall have the right to assign this Agreement to any purchaser,
or successor, in whole or in part of its business.
11. Export: Each party shall comply with any applicable, United States
export control laws and regulations applicable to the export of the
PRODUCTs, components, specifications or any written or oral information
related thereto, TECHNICAL INFORMATION, Confidential Information, and
technology, and shall obtain any permits and licenses required for the
export or disclosure of controlled products, information and/or
technology.
12. Notices: All notices, reports, requests, acceptances and other
communications required or permitted under this Agreement will be in
writing. They will be deemed given:
(a) when delivered personally,
(b) when sent by confirmed fax or telex,
(c) five days after having been sent by commercial overnight courier
with written verification of receipt, or
(d) two weeks after having been sent by registered or certified
airmail, return receipt requested, postage prepaid, or upon actual
receipt thereof, whichever first occurs.
All communications will be sent to the receiving Party's address as set forth
below or to such
other address that the receiving Party may have provided for purpose of
notice as provided in this Section.
To GlobeSpan Technologies Inc.
GlobeSpan Technologies Inc.
200 Laurel Avenue
Middletown, NJ 07748
Attn: President
Also send copy of all communications (which go to GlobeSpan Technologies
Inc.) to:
Jim L. Slattery, Esq.
PO Box 2826
Largo, FL 33779
To Company:
Westell Technologies, Inc.
101 Kendall Point Drive
Oswego, Illinois 60543
Attn: Bob Lambert, VP Procurement
13. Governing Law: This Agreement shall in all respects be governed by and
construed under the laws of the State of Florida without regard to its
conflict of laws provisions.
14. Arbitration: Except for a breach of the provisions of Section 4 which
may be addressed pursuant to Section 16, all disputes between the
parties arising out of or relating to this Agreement or the breach or
alleged breach hereof, shall be submitted to binding arbitration. The
arbitration shall be conducted in accordance with the Commercial
Arbitration Rules of the American Arbitration Association ("AAA"). Each
party shall bear its own expenses; the parties will mutually share the
AAA administrative fees and the arbitrator's expenses. A single
arbitrator shall be selected by the parties in accordance with the AAA
selection rules. The arbitrator shall determine issues of arbitrability
but may not limit, expand or otherwise modify the terms of this
Agreement. The arbitration shall be conducted in English, in Florida,
or in some other location that is mutually agreed to by the parties.
The arbitrator shall have no authority to modify the GlobeSpan VLSI chip
prices, change the provisions of Section 1.1 or to grant injunctive
relief. The award of the arbitrator shall be in writing, shall state
the reasons for the award and shall explain the breakout of any damages
awarded. Judgment upon an award may be entered in any court having
competent jurisdiction. The Federal Arbitration Act 9 U.S.C.
sectionsectionl-14, shall govern the interpretation and enforcement of
this Section. The parties shall be entitled to conduct reasonable
discovery pursuant to the Federal Rules of Civil Procedure.
(a) Confidentiality: All transcripts, documents, things and other
information produced and the testimony given in or attendant to the
arbitration proceeding(s) shall be used only for purposes of the
arbitration proceeding(s).
(b) Return of Materials: Within 30 days after entry of a judgment of
confirmation, or within 120 days after issuance of the
arbitrator's award where judicial confirmation is not sought, each
party and the arbitrator, at the election of the party furnishing
the same shall destroy or return all documents, transcripts or
other things, and any copies thereof as well as all summaries or
other materials containing or disclosing information contained in,
or directly related to, such documents, transcripts or things.
Each party and the arbitrator shall so certify. Notwithstanding
the above, each party's attorneys may retain a complete pleading
file, subject to the confidentiality provisions of this Agreement.
(c) Time Extensions: The parties may expend any period of time by
mutual agreement. The arbitrator may extend any period of time for
good cause, except for the issuance of the decision.
(d) Attorneys' Fees: If an arbitration action is commenced for breach
of this Agreement, the prevailing party shall be entitled to its
attorneys' fees and costs.
15. Amendments, Modifications and Waivers: No delay or failure by either
party to exercise or enforce at any time any right or provision of this
Agreement will be considered a waiver thereof or of such party's right
thereafter to exercise or enforce each and every right and provision of
this Agreement. No single waiver will constitute a continuing or
subsequent waiver. No waiver, modification or amendment of any
provision of this Agreement will be effective unless it is in writing
and signed by the parties, but it need not be supported by
consideration.
16. Equitable Relief: Because each party will have access to and become
acquainted with confidential and proprietary information of the other,
the unauthorized use of disclosure of which would cause irreparable harm
and significant injury which would be difficult to ascertain and which
would not be compensable by damages alone, each party agrees that the
other party will have the right to enforce this Agreement and any of its
provisions by injunction, specific performance or other equitable relief
without prejudice to any other rights and remedies that it may have for
breach of this Agreement.
17. DISCLAIMER: EXCEPT AS SPECIFIED IN SECTION 17.1 AND 17.2, NEITHER GTI
NOR ITS PARENT OR ANY AFFILIATE THEREOF MAKES ANY REPRESENTATION OR
WARRANTIES, EXPRESSLY OR IMPLIED, BY WAY OF EXAMPLE BUT NOT OF
LIMITATION, MAKES NO REPRESENTATIONS OR WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR ANY PARTICULAR PURPOSE, OR THAT THE USE OF THE GLOBESPAN DSL
TECHNOLOGY WILL NOT INFRINGE ANY PATENT OF ANY THIRD PARTY OR OTHER
INTELLECTUAL PROPERTY RIGHT OF ANY THIRD PARTY. NEITHER GTI NOR ITS
PARENT AND THEIR AFFILIATES SHALL BE HELD TO ANY LIABILITY WITH RESPECT
TO ANY CLAIM BY COMPANY OR ITS CUSTOMERS OR ANY OTHER THIRD PARTY ON
ACCOUNT OF OR ARISING FROM THE USE OF GLOBESPAN TECHNOLOGY.
17.1 GTI REPRESENTS THAT AS OF THE DATE OF THIS AGREEMENT, IT HAS NO
KNOWLEDGE OF CAUSES OF ACTION AGAINST IT ALLEGING THAT THE USE BY GTI OF
THE GLOBESPAN DSL TECHNOLOGY INFRINGES ANY PATENT RIGHTS OF A THIRD
PARTY.
17.2 Indemnification: The following terms apply to any infringement, or
claim of infringement, of any U.S. or Canadian patent, trademark,
copyright, trade secret, or other proprietary interest issued prior to
the date of this Agreement based on the GlobeSpan TRANSCEIVER TECHNOLOGY
as furnished by GTI to Company under this Agreement. GTI shall
indemnify Company and its customers for any loss, damage, expense, or
liability that may result by reason of any such infringement or claim,
except where such infringement or claim arises solely from the
technology contributed by Company in the design, fabrication or
manufacture of PRODUCT in which case Company shall so indemnify GTI.
GTI makes no claim as to any patents, trademarks, copyright, trade
secret or other proprietary interest other than U.S. or Canadian in
which case Company shall defend or settle any infringement or claim of
infringement at its own expense. Each party shall notify the other
promptly of any claim of infringement or which the other is responsible,
and shall cooperate with the other in every reasonable way to facilitate
the defense of any such claim.
18. DSL PLATFORM LICENSE, VLSI PROCUREMENT, AND TERMS:
18.1 GlobeSpan DSL Transceiver Platform License(s) Granted to Company: This
Agreement grants Company the use of the following Phase 3 GlobeSpan DSL
transceiver platforms and transceiver configuration options:
4 Wire HDSL (options for: T1, El)
2 Wire SDSL (options for: 160Kbps, 384Kbps, E1 EC (echo cancellation))
2 Wire ADSL (options for: T1/64K, E1/64K, 6M/64K, 7M/640K)
2 Wire RADSL (options for: 640K to 7M/128K to 1M)
18.1.1 GlobeSpan DSL Transceiver Platform License Fee and Terms: No
upfront license fee is due for the rights granted in this
Agreement.
18.2 GlobeSpan DSL Transceiver VLSI Procurement: GlobeSpan Phase 3 VLSI
suppliers are identified in the DESIGN GUIDE Bill Of Materials. VLSI
prices, procurement terms and conditions are defined by the VLSI
suppliers. Where GTI is the VLSI supplier, prices, terms, and
conditions are defined in the GTI document "GlobeSpan VLSI Procurement"
outside of this Agreement.
(a) Company will receive the benefit of the amount of any general
reduction in the pricing for all of its licensees for the VLSI, of
the like quantity and like terms and conditions that may be made by
GTI during the period of this Agreement.
(b) Company agrees not to sell its GlobeSpan Technology based products
at prices and terms and conditions less fair than those for which
it sells its comparable DMT based products.
(c) Company will receive a [<F*>] price reduction per chip set on
orders placed under this new Agreement for the first X=58,027 chip
sets. This number of chip sets is (231,500 - (Y=14,355 chip
sets)x4)/3.
(d) The pricing of chip sets in the "GlobeSpan Procurement" document is
hereby modified as follows: When Company makes the first volume
order for chip sets, the quantity is increased by 25,000 chip sets
for the purpose of establishing the chip set price (prior to
applying the [<F*>] price reduction) for this first order.
18.2.1 RTU Fees Due Under Previous DSL Agreement: Payment of RTU fees for
Y=14,355 Phase 3 chip sets ordered but not yet sold under the
previous DSL Agreement, including Exhibits A through H, with
Company dated December 18, 1992, is due in full on or before the
Invoice due date of the first VLSI chip sets ordered from GTI under
the "effective date" of this new Agreement per the following terms:
(1) RTU fees for 4Q96 DSL unit shipments will be estimated by Company
and this estimate provided to GTI by December 16, 1996. GTI will
invoice Company at an RTU fee of [<F*>] per unit, payable by wire
transfer by December 31, 1996.
(2) RTU fees for the remaining chip set quantity will be paid on a
quarterly period based on actual DSL unit shipments at a rate of
[<F*>] per unit per the previous Agreement until paid in full, or
payment is due in full on the VLSI invoice due date of the first
VLSI chip sets ordered from GTI under this new Agreement, whichever
occurs first. Should payment of RTU fees not be received in full
by the VLSI invoice due date, subsequent chip set orders will not
be accepted from Company.
[FN]
<F*> CONFIDENTIAL TREATMENT REQUESTED - MATERIAL OMITTED HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
18.2.2 Use of Chip Sets in Specified Transceiver Configuration: Under
this Agreement, Company shall not use transceiver chip sets ordered
for one type of DSL PRODUCT in a different type of DSL PRODUCT
without notifying GTI in writing of the change in use and quantity
of chip sets used. Company will notify GTI of change of use within
30 days after Company makes use change. Upon receiving written
notification, GTI will notify Company of any price adjustments
within ten (10) working days.
18.3 Overdue Payments to GTI: Overdue payments hereunder shall be subject to
a late payment charge calculated at an annual rate of three percent (3%)
over the prime rate (as posted in the Wall Street Journal) on a daily
basis during the delinquency period. If the amount of such charge
exceeds the maximum permitted by law, such charge shall be reduced to
such maximum.
18.4 Taxes: Company shall pay any tax, duty, levy, customs fee, or similar
charge ("taxes"), including interest and penalties thereon, however
designated, imposed as a result of the operation or existence of this
agreement, including taxes which Company is required to withhold or
deduct from payments to GTI, except (1) net income taxes imposed upon
GTI by any governmental entity within the United States (the fifty (50)
states and the District of Columbia), and (2) net income taxes imposed
upon GTI by jurisdictions outside the United States which are allowable
as a credit against the United States Federal income tax of GTI or any
of its affiliates. In order for the exception in (2) to be effective,
Company must furnish GTI any evidence required by the United States
taxing authorities to establish that such taxes have been paid.
19. ENTIRE AGREEMENT:
19.1 Agreement Prevails: The terms and conditions of the Agreement shall
prevail in the event of any conflicting terms or legends which may
appear on the TECHNICAL INFORMATION or any purchase order or other
document used by Company to carry out the terms of this Agreement.
19.2 This is the entire agreement between the parties with respect to the
subject matter hereof. This Agreement supersedes all prior agreements,
proposals, or understandings between the parties, whether oral or in
writing, with respect to the licensing of GlobeSpan TRANSCEIVER
TECHNOLOGY.
19.3 Nothing Construed: Except as specified in the Agreements nothing in
this Agreement or in the TECHNICAL INFORMATION shall be construed as:
(a) an additional obligation upon GTI to furnish any person, including
Company, any assistance of any kind whatsoever, or any information
other than the TECHNICAL INFORMATION, or to revise, supplement or
elaborate upon the TECHNICAL INFORMATION; or
(b) providing or implying any arrangement or understanding that GTI or
its affiliates will make any purchase, lease, examination or test
or give any approval.
20. Non-Solicitation: Unless otherwise mutually agreed to by the Parties,
each agrees not to hire or to solicit the employment of any personnel,
including contractors, of the other Party or its affiliate directly or
indirectly associated with the development or marketing of the TECHNICAL
INFORMATION, or the PRODUCT, or DSL products covered under this
Agreement during the term of this Agreement and for a period of twelve
(12) consecutive months thereafter.
DEFINITIONS:
Any term in capital letters used in the Agreement shall have the meaning
specified below:
DESIGN GUIDE means the material provided as TECHNICAL INFORMATION including
but not limited to the following: GlobeSpan Transceiver Specifications,
Transceiver Power Requirements and Considerations, Transceiver Circuit
Schematics, Transceiver Bill Of Materials, Transceiver Layout Guide,
Transceiver Controller Interface Guide, Transceiver or CAD Design Files,
Transceiver Debugging Guide, and Transceiver DSL Operating Firmware.
GLOBESPAN TRANSCEIVER TECHNOLOGY means the GlobeSpan Technologies Inc.
implementation of DSL CAP transceivers utilizing the Phase 3 transceiver
architecture design and the STARLET and SLADE VLSI chip sets.
GLOBESPANTM is a trademark of GlobeSpan Technologies, Inc.
PRODUCT means a DSL (Digital Subscriber Line) product which incorporates
GlobeSpan TRANSCEIVER TECHNOLOGY.
MANUFACTURED PRODUCT means a DSL (Digital Subscriber Line) product
incorporating GTI's GlobeSpan DSL 2 Wire or 4 Wire transceiver platforms not
used for development or demonstration purposes.
PURCHASED means Company has placed a purchase order for Starlet and Slide
VLSI transceiver chip sets and the chip sets have been shipped to Company for
the manufacture of 2 Wire and/or 4 Wire PRODUCT.
SIMILAR TECHNOLOGY includes, any technology that is or could be utilized in
an implementation to support DSL applications. Examples of SIMILAR
TECHNOLOGY includes, but is not limited to DMT, QAM and 2B1Q.
SUBSIDIARY of a company means a corporation or other legal entity (1) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by
such company either directly or indirectly, or (2) which does not have
outstanding shares or securities but the majority of whose ownership interest
representing the right to manage such corporation or other legal entity is
now or hereafter owned and controlled by such company either directly or
indirectly; but any such corporation or other legal entity shall be deemed to
be a SUBSIDIARY of such company only as long as such control or ownership and
control exists.
TECHNICAL INFORMATION means certain informative material, software and
firmware (including all of the copies derived from material furnished
hereunder) relating to GTI GlobeSpan DSL transceiver and framer technology
and the term also means the information available from said material.
Specific technical material includes, but is not limited to the following:
GlobeSpan Transceiver Specifications, Transceiver Power Requirements and
Considerations, Transceiver Circuit Schematics, Transceiver Bill Of
Materials, Transceiver Layout Guide, Transceiver Controller Interface Guide,
Transceiver or CAD Design Files, Transceiver Debugging Guide, and Transceiver
DSL Operating Firmware.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
Effective Date.
GlobeSpan Technologies, Inc. Company
By: /s/ By: /s/ March H. Hafner
Its: President Its: Corporate Vice President,
Business Development
EXHIBIT A
GlobeSpan DSL Transceiver Platform Scheduled Deliverables
1. ADSL, 1.5, 2 Mbps - 2 Wire
Design Guide 4.0 - Currently Available
Includes:
ADSL Schematics
Bill of Material
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
ADSL debug Guide and debug Firmware to verify transceiver operation
on customer hardware platform
Transceiver Performance Report
Full Feature, Full Performance ADSL Firmware (Release 2) that
supports T1 and E1 speeds.
Design Guide Maintenance Update - Currently Available
Includes:
Updated Schematic and Bill of Material
Firmware Enhancements
2. ADSL, 6 Mbps/64 Kbps - 2 wire
Design Guide Release 4.1 - Currently Available
Includes:
Schematics with Framer
Bill of Materials
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
Debug Guide
Debug Firmware
Transceiver Performance Report
High performance firmware, Release 1.08.
3. ADSL, 7 Mbps with 640 Kbps Return Channel - 2 Wire
Design Guide Release 3.0 -Currently Available
ADSL Schematics
Bill of Materials
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
Debug Guide
Debug Firmware
Transceiver Performance Report
Final Full Performance Firmware
Design Guide Update Scheduled for 11/22/96*
Including warm-startup, power down mode and cascade Reed-Solomon.
4. SDSL 160 Kbps
Design Guide 3.0 - Currently Available
Includes:
SDSL Schematics
Bill of Material
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
Debug Guide
Debug Firmware
Transceiver Performance Report
Final Full Performance Firmware
5. SDSL 384 Kbps
Design Guide 3.0 - Currently Available
Includes-.
SDSL Schematics
Bill of Material
Interface Control Guide
Design Layout Guide
Specification Sheet
Debug Guide
Debug Firmware
Power Requirements
Full Feature, Full Performance SDSL Firmware (Release 3) for 400
Kbps
Transceiver Performance Report
Maintenance Release Firmware to support microinterruptions.
6. E1 SDSL - 2 Wire without POTS (single Pair E1 HDSL)
Design Guide Release 3.0 - Currently Available
Includes:
Schematics
Bill of Material
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
Transceiver Performance Report
R1 Firmware, Full Performance
7. HDSL, 2 Mbps - 4 Wire
Design Guide 6.1- Currently Available
Includes:
El HDSL Schematics (+-5V line driver supply)
Bill of Material
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
HDSL debug Guide and debug Firmware to verify transceiver operation
on customer hardware platform
Transceiver Performance Report
Full Feature, Full Performance El HDSL Firmware
8. HDSL, 1.5 Mbps - 4 Wire
Design Guide 6.1 - Currently Available
Includes:
T1 HDSL Schematics (+-8V line driver supply)
Bill of Material
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
HDSL debug Guide and debug Firmware to verify transceiver operation
on customer hardware platform
Transceiver Performance Report
Full Feature, Full Performance T1 HDSL Firmware
Design Guide Maintenance Update scheduled for 11/15/96
Includes:
Updated schematic with +-5V supply voltage
9.a RADSL I, - 2 Wire
Design Guide 2.1 - Available Now
Preliminary (R0) Firmware for 340 kBaud downstream and 136 kbaud
upstream. Channel speeds set by the wrapper
RADSL Schematics
Bill of Material
Debug Guide
Debug Firmware
Interface Control Guide
Design Layout Guide
Specification Sheet
Power Requirements
Design Guide 3.0 - November 20, 1996
Updates to Design Guide 2.0
Final (R1) Firmware for 340 kbaud downstream and 136 kbaud Upstream
Channel speeds set by the wrapper
Transceiver Performance Report
Design Guide 4.0 -December 23, 1996*
Updates to Design Guide 3.0
Preliminary (R2) Firmware for multiple downstream baud rates
Design Guide 5.0 -January 28,1997*
Updates to Design Guide 4.0
Final (R3) Firmware for multiple downstream baud rates with speed
selection (coordinated with the wrapper)
9.b RADSL II, (two Starlets at CP) - 2 Wire
Design Guide 6.0 - January 10, 1997*
Preliminary (R4) RADSL II Firmware
Design Guide 7.0 - February 4,1997*
Final (R5) RADSL II Firmware
*GTI will make its best effort to meet these target data.
EXHIBIT B
Lucent Technologies Inc Patent List
Patent Number Title
4,247,940 Equalizer for complex data signals
4,304,962 Data Scrambler
4,464,545 Echo Canceller
4,483,012 Differentially convolutional channel coding
with expanded set of signalling
4,651,320 Inband Coding of Secondary Data
4,682,358 Echo Canceller
4,788,694 Trellis coding with substrates
4,924,492 Method and apparatus for wideband transmission
of digital signals between, for example, a
telephone central office and customer premises
4,995,057 Technique for Achieving the Theoretical Coding
Gain of Digital Signals incorporating Error
Correction
5,052,000 Technique for improving the operation of
decision feedback equalizers in communications
systems utilizing error correction
5,056,117 Decision feedback equalization with trellis
coding
5,442,626 Digital Communications System with Symbol
Multiplexers
RE 31253 Echo cancellation in two-wire, two way data
transmission systems
5,488,633 Intersymbol Interference Channel Coding Scheme
5,483,551 Crosstalk Suppression Technique
5,521,949 Synchronization Scheme for Digital
Communications Systems Transporting Data at a
Customer Controlled Rate
5,528,686 Transformerless Hybrid Circuit having Direct
Powered Line-Side Amplifiers
08/215562 Signal Constellation Time Division Multiplexing
4,800,573 Equalization Arrangement
5,214,656 Multiplexed Code Modulation
5,371,762 Technology using Signal Storing Devices
5,406,586 Signal Correlation Technique
08/322878 Hybrid Equalizer Arrangement for DEI
08/547584 Signal Constellation TDM Arrangement