EXHIBIT 10.2.1
*** TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4)
and 230.406
COOPERATION AGREEMENT
This Cooperation Agreement (this "Agreement"), effective as of the date of the
last signature hereto (the "Effective Date"), is entered into by and among
ORBCOMM Inc. (hereinafter referred to as "ORBCOMM") having its offices and place
of business at 21700 Atlantic Boulevard, Dulles, VA 20166, Stellar Inc.
(hereinafter referred to as "Stellar") having its offices and place of business
at 21700 Atlantic Boulevard, Dulles, VA 20166 and Delphi Corporation, acting by
and through its Delphi Electronics & Safety Division (hereinafter referred to as
"Delphi"), having its principal place of business at One Corporate Center, P.O.
Box 9005, Kokomo, Indiana 46904-9005. ORBCOMM, Stellar and Delphi are herein
sometimes referred to individually as a "Party" or collectively as the
"Parties".
RECITALS
WHEREAS, ORBCOMM owns and operates a multiple low earth orbit satellite-based
two-way data communication network (the "System") and is licensed to operate in
most developed countries and many developing countries; and
WHEREAS, Stellar, a majority owned subsidiary of ORBCOMM, is the designer and
supplier of modulator/demodulators ("Moderns") used for transmitting and
receiving data streams carried by the System; and
WHEREAS, Delphi Is a manufacturer of electronic products who supplies automotive
original equipment manufacturers ("OEM"s) with hardware that enables two-way
data services and other mobile communications means; and
WHEREAS, Delphi wishes to manufacture or have manufactured for Stellar certain
Modems used for transmitting and receiving Data carried by the System;
WHEREAS, the Parties believe by combining their considerable and complimentary
skills that the existing Modems can be improved upon to create a more
comprehensive and competitive solution to the need for reliable low cost two-way
data connectivity in fixed and mobile applications can be created; and
WHEREAS, the Parties intend to cooperate to create and provide such solutions to
worldwide industrial companies, while creating for each Party a valuable and
sustainable business opportunity; and
WHEREAS, the Parties wish to set forth the details of their agreement to
cooperate to achieve the above objectives.
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THEREFORE, the Parties mutually agree as follows:
ARTICLE 1. DEFINITIONS
1.1 Affiliate
As used in this Agreement, "Affiliate" shall mean any corporation, partnership,
trust or other business entity, which directly or indirectly controls, is
controlled by, or is under common control with a Party. For the purposes of
defining an Affiliate, "control" means ownership of at least fifty percent (50%)
of the shares or other equity interest having power to elect directors or
persons performing a similar function.
1.2 Background Intellectual Property
As used in this Agreement, "Background Intellectual Property" of a Party means
the Intellectual Property of a Party which is owned or controlled by the Party
before the Effective Date of this Agreement or which is otherwise independently
created by a Party completely outside of the Project primarily for use outside
the Project and which is useful in performing the Project.
1.3 Delphi Field
As used in this Agreement, "Delphi Field" shall mean passenger vehicle;
recreational vehicle and truck OEMs; passenger vehicle and recreational vehicle
aftermarkets; and sellers of products to all such markets.
1.4 Foreground Intellectual Property
As used in this Agreement, "Foreground Intellectual Property" means Intellectual
Property resulting directly from and developed, conceived or created by the
employees or contractors of a Party (or their respective Affiliates) during the
performance of the Project or the Cooperation.
1.5 Intellectual Property
As used in this Agreement, "Intellectual Property" shall mean all rights in
ideas, inventions, works of authorship, know-how, trade secrets, pending patent
applications, patents, copyrights, or other proprietary information.
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1.6 Licensed Product
As used in this Agreement, "Licensed Product" means a Product incorporating
Background Intellectual Property of a Party and covered by the terms of the
Cross License Agreement described in Paragraph 4.2 hereof and incorporated in
this Agreement as Attachment 1 hereof.
1.7 Existing Stellar Product
As used in this Agreement, "Existing Stellar Product" means Modems identified in
Attachment 2 hereto that incorporate Background Intellectual Property of
Stellar.
1.8 Project
As used in this Agreement, "Project" means the work conducted according to a
Scope of Work document (as defined below) under the terms of this Agreement.
1.9 Stellar Field
As used in this Agreement, "Stellar Field" shall mean two-way narrow-band
messaging for use on the ORBCOMM satellite network.
1.10 New Product
As used in this Agreement, "New Product" shall mean Modems and devices for
applications that require two-way data communications that are developed
pursuant to the Project or the Cooperation.
1.11 Territory
As used in this Agreement, "Territory" shall mean the regions in which Orbcomm
has secured regulatory approval from the appropriate governing bodies and
Stellar has the required regulatory approvals for Existing Stellar Products
and/or New Products.
ARTICLE 2. ROLES AND RESPONSIBILITIES OF THE PARTIES
2.1 General Objectives of this Agreement
The Parties intend that: i) Delphi will manufacture or have manufactured
Existing Stellar Products for Stellar; and ii) the Parties will form a
cooperative business relationship that would include product development,
licensing of key enabling technologies and buy/sell
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arrangements that would define and make available for sale, modems for two-way
satellite data communications for fixed and mobile applications (the
"Cooperation").
2.2 Joint Roles of the Parties Under this Agreement
a. Define requirements, such as features, functions, timing, target
pricing and the source and amount of development funding for New
Products, in the form of Scope of Work (SOW) documents.
b. Form an on-going business direction group (the "Steering Committee")
to do, among other things:
1) Coordinate and review activities undertaken under the
Cooperation;
2) Arrange for technical information exchanges and consultation
related to meeting the business objectives of the Cooperation;
and
3) Resolve joint business issues related to the Cooperation that may
arise.
2.3 Roles of Delphi Under this Agreement
a. Participate as a member of the Steering Team.
b. Provide commercially reasonable resources and effort to meet the
business objectives of the Cooperation.
c. Provide the relevant technical expertise for the design, development,
validation of New Products, including
1) Circuit board layout
2) Interconnection means
3) Embedded software
4) ASIC designs
5) Antennas
6) Product packaging
7) Human / machine interface, as required
8) Product validation
d. Manufacture the Existing Stellar Products and the New Products
consistent with automotive requirements for quality and reliability.
e. Support Stellar by having manufactured and/or manufacturing Existing
Stellar Products.
f. Sell New Products hardware to Stellar under a separate supply
agreement, between Stellar and Delphi.
g. Sell New Products for use in existing Delphi products, applications
and existing OEM customer base.
h. Licensee of technology (as defined below) from Stellar
i. Licensor of technology to Stellar, if required
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j. Marketing partner to ORBCOMM for ORBCOMM services to Delphi's customer
base.
k. Disclose and document the Foreground Intellectual Property with the
same level of detail and degree of completeness that is customarily
and reasonably required by the automotive electronics industry.
l. Document manufacturing; assembly, calibration, testing, repair and
troubleshooting procedures as well as other knowledge otherwise
required to manufacture New Products and Existing Stellar Products
with the same level of detail and degree of completeness that is
customarily and reasonably required by the automotive electronics
industry.
2.4 Roles of Stellar under this Agreement
a. Participate as a member of the Steering Team.
b. Provide commercially reasonable resources and effort to meet the
business objectives of the Cooperation.
c. Provide necessary technical information and consultation to enable
Delphi to design and develop New Products that are compatible with
System requirements.
d. Provide no-charge access to Delphi to Stellar's development and
simulation tools for New Product development purposes.
e. License to Delphi, under reasonable commercial terms, relevant
intellectual property such as messaging protocols,
encryption/decryption, and related subject areas to enable Delphi to
manufacture and sell New Products.
f. Provide application and development support of New Products with
resellers.
g. Perform type certification of New Products in the US, Canada, Mexico
and the European Union (ETSI).
h. Provide technical support and warranty service for Stellar and ORBCOMM
resellers.
i. Participate in joint marketing activities with, as deemed appropriate
by Stellar in its sole discretion, in support of the objectives of the
Cooperation.
2.5 Roles of ORBCOMM under this Agreement
a. Participate as a member of the Steering Team.
b. Participate in joint marketing activities with Delphi, as deemed
appropriate by ORBCOMM in its sole discretion, in support of the
objective of the Cooperation.
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ARTICLE 3. COMMERCIAL ISSUES RELATED TO PRODUCT DEVELOPMENT AND
PURCHASING
3.1 New Product Development
Each New Product that is identified by the Steering Committee as being desirable
and reasonably included in the business objectives of the Cooperation will be
incorporated into an SOW signed by all Parties, as set forth in Article 2.2 a
hereof, and made part of this Agreement. The terms of this Agreement will apply
to work done under such SOW.
3.2 Purchases of New Modems by Stellar
The Parties agree that Delphi will be given the first right of refusal following
termination of this Agreement to supply Stellar with New Products developed
under the Cooperation on no less favorable terms than Stellar can obtain from
other suppliers.
3.3 Delphi is Sole Supplier of New Products to Stellar
With the exception set forth in Section 3.4 hereof, Delphi shall be the sole
supplier of New Products to Stellar during the term of this Agreement, subject
to Delphi's ability to continuously provide competitive quality, delivery,
service and technology and further subject to Delphi's ability to meet
negotiated annual price points for such products.
3.4 Exception to Delphi's Sole Supplier Status
Notwithstanding the provisions of Section 3.3 hereof, European Datacomm Holdings
N.V. shall have the right to manufacture the Existing Stellar Products solely
for its own use.
3.5 Purchasing Agreement between Stellar and Delphi
Delphi's sales of Modems to Stellar will be made according to Stellar's standard
purchasing terms and conditions, as modified by a purchase agreement governing
commercial terms including, but not limited to warranty, delivery schedules,
payment terms, pricing, volume forecasts and related topics.
3.6 Recovery of Delphi's Engineering Expenses
If Delphi requests non-recurring engineering (NRE) funding for a Project and if
Stellar agrees to provide such NRE, the Parties will discuss and mutually agree
upon the amount of NRE that Stellar will provide prior to the start of such
Project. Delphi will amortize such agreed-upon amount of NRE in the selling
price of the New Product developed under such Project. The amount of
amortization per unit of New Product sold will be based upon the number of units
committed by Stellar and their customers in a
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purchase order issued to Delphi. If the committed volumes in the purchase order
are not achieved, then Delphi shall be entitled to be paid the remaining balance
of the unamortized NRE upon completion of such purchase order.
ARTICLE 4. INTELLECTUAL PROPERTY
4.1 Ownership of Background Intellectual Property
Each Party is and remains the owner of its Background intellectual Property.
4.2 Cross Licensing of the Parties' Background Intellectual Property and Solely
Owned Foreground Intellectual Property.
Subject to Section 4.3, the Parties understand and agree that a Party may
require a license to the other Party's Background Intellectual Property in order
to make, have made, use and sell Existing Stellar Products and New Products, if
such Existing Stellar Product or New Product incorporates such other Party's
Background Intellectual Property. The Parties further agree that a commercially
reasonable royalty would be due to the licensor by the licensee in such
circumstances except if Delphi makes Licensed Products for sale to Stellar, in
which case no royalty would be due by Delphi if such Licensed Products are sold
to Stellar. The terms for such cross license are set forth in Attachment 1
hereof.
4.3 Joint Ownership of Foreground Intellectual Property
Foreground Intellectual Property shall be jointly owned by the Parties for all
applications thereof, without any accounting required by one Party to the other,
including the right to grant non-exclusive licenses, provided that during and
after the term of this Agreement: i) Stellar shall not use, shall cause its
Affiliates not to use, and shall not grant the right to any third party to use,
the Foreground Intellectual Property or the other Party's Background
intellectual Property for applications outside the Stellar Field or sell New
Products outside the Stellar Field; and ii) Delphi shall not use, shall cause
its Affiliates not to use, and shall not grant the right to any third party to
use, the Foreground Intellectual Property or the other Party's Background
Intellectual Property for applications outside the Territory outside the Delphi
Field or sell Existing Stellar Products or New Products outside the Territory
outside the Delphi Field; and iii) the Parties may together, but not
individually, grant to European Datacomm Holdings N.V or its Affiliates the
right to manufacture or sell New Products. The Parties shall cooperate with one
another as necessary to apply for patents or otherwise take steps to protect
Foreground Intellectual Property, including deciding which inventions to apply
for protection on, selecting the countries for registration, selecting the Party
that submits and is responsible for preparing the application, and sharing of
costs (which shall be in equal proportions,
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unless otherwise agreed). No Foreground Intellectual Property may be transferred
to any third party without the foregoing restrictions on such use being
conditions of such transfer. Any transfer of Foreground Intellectual Property
without such conditions shall be void.
4.4 Patent Applications for Foreground Intellectual Property
If one of the Parties does not wish to share the costs for filing a patent
application in a particular country for a jointly owned invention, then the
filing Party shall bear all the costs for that particular patent application,
and the Party not wishing to share in such costs shall assign its rights in such
application to the filing Party. The assigning Party and its Affiliates shall
retain a perpetual, nonexclusive, royalty-free license in and to any patent
issuing from such patent application or continuation, continuation-in-part,
divisional, extension, reissue, reexamination or foreign counterparts of such
patent application.
ARTICLE 5. NON-DISCLOSURE
Without limiting the generality of Article 4, information disclosed by one Party
to the other Party under this Agreement shall be considered confidential and
proprietary if in writing and clearly marked with a Confidential, or similar
legend. Both Parties to this Agreement agrees to protect such proprietary
information from disclosure to third parties for five (5) years from the date of
such disclosure, using the same degree of care each Party uses in respect to
information of its own that it does not want disclosed to third parties.
However, this Agreement does not impose any obligation on a Party receiving
information under this Agreement if that Party can document:
(a) is already known to such Party at the time first received from the
disclosing Party; or
(b) is publicly known through no wrongful act of such Party; or
(c) is received by such Party from a third party without similar
restriction and without breach of this Agreement; or
(d) is independently developed by such Party without access to the
disclosed information; or
(e) is approved for release by written authorization of the Party which
originally disclosed such information; or
(f) is disclosed pursuant to an order of Court, provided that the
receiving Party gives the disclosing Party prompt notice of any
subpoena or application for such order seeking the information.
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ARTICLE 6. LIABILITY
6.1 No Liability for Salaries and Benefits of other Party
No employees of either Party will be considered employees of the other Party,
and each Party (the "Visiting Party") shall be responsible for, and indemnify
the other Party (the "Host Party") against the salaries, employee benefits,
insurance, federal state and local taxes, unemployment claims, and worker's
compensation claims of Visiting Party's employees while on the premises of the
Host Party. Personnel of the Visiting Party, while on the premises of the Host
Party, shall comply with all laws, regulations, and the then regular and
established rules and regulations of the Host Party.
6.2 No Warranty
EXCEPT FOR THE EXPRESS WARRANTIES SET FORTH IN THE SUPPLY AGREEMENT, EACH PARTY
HEREBY DISCLAIMS ANY WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
WARRANTIES OR MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT
TO EXISTING STELLAR PRODUCTS OR NEW PRODUCTS.
6.3 No Consequential Damages
NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY CONSEQUENTIAL, SPECIAL,
INCIDENTAL, ECONOMIC LOSS AS A RESULT OF PERFORMANCE HEREUNDER REGARDLESS IF THE
OTHER PARTY HAS BEEN INFORMED IN ADVANCE OF THE POSSIBILITY OF SUCH DAMAGES.
ARTICLE 7. TERM AND TERMINATION
7.1 Term of the Agreement
The term of this Agreement is until December 31, 2005. This Agreement may be
extended upon the mutual written agreement of both Parties.
7.2 Mutual Termination of this Agreement
The Parties may terminate this Agreement at any time upon mutual written
agreement.
7.3 Termination for Cause
A Party shall have the right to terminate this Agreement upon material breach of
this Agreement by the other Party and such breach is not remedied within sixty
(60) days of
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such Party having been given written notice of such breach. A material breach
includes, but is not limited to, material breach of the terms of the Cross
License Agreement of Attachment 1 hereof. If such breach is remedied within such
sixty (60) period, then this Agreement shall continue in full force and effect
as if such notice had not been given.
7.4 Effect of Termination for Cause Upon the Breaching Party Upon termination
of this Agreement for cause, the following shall apply:
a. The breaching Party shall pay any royalties due the non-breaching
Party under the terms of the Cross License Agreement of Attachment 1
hereof within sixty (60) days after the effective date of termination;
and
b. Subject to Paragraph 7.4(c) below, and notwithstanding any provision
in this or the Cross-License Agreement to the contrary the breaching
Party shall immediately discontinue the manufacture and sale of
Licensed Products; and
c. Notwithstanding the provisions of Paragraph 7.4(b) above, if Delphi is
the breaching Party, Delphi may continue to exercise its rights
hereunder to the extent reasonably necessary to fulfill any binding
sales commitments existing as of the date of notice of breach, but not
undertake to make further sales commitments or renew or extend
existing sales commitments for Licensed Products as of such date, and
to otherwise liquidate any inventory of Licensed Products, subject to
the obligation to remit royalties and reports to the non-breaching
party in accordance with the Cross License Agreement of Attachment 1
hereof;
d. Notwithstanding the provisions of Paragraph 7.4(b) above, if Stellar
is the breaching Party, Stellar may continue to exercise its rights
hereunder for up to twelve (12) months, subject to the obligation to
remit royalties and reports to the non-breaching party in accordance
with the Cross License Agreement of Attachment 1 hereof
e. Regardless of who is the breaching Party, then in addition to the
provisions of Paragraph 7.5, Delphi agrees that it will continue, at
Stellar's request, to manufacture and sell Licensed Products to
Stellar for up to twelve (12) months following the effective date of
termination; and
f. Within ten (10) days after the effective date of expiration or
termination of this Agreement, or such date as the breaching Party
continues to exercise its rights pursuant to Paragraph 7.4(c), the
breaching Party shall return or destroy, as determined by the
non-breaching Party, all copies of all confidential materials provided
by the non-breaching Party under this Agreement.
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7.5 Effect of Termination for Cause Upon the Non-Breaching Party
The license to the Non-breaching Party under the Cross License Agreement of
Attachment 1 hereof shall continue in full force and effect after termination
under Paragraph 7.3 of this Agreement under, subject to the Non-breaching
Party's continuous fulfillment of all its obligations under the Cross License
Agreement. If Delphi is the breaching party, Stellar shall have the right to
continue to access all proprietary and non proprietary hardware and software and
documentation therefor, and Delphi shall continue to provide uninterrupted
supply of products and raw materials to Stellar customers at terms and prices
not different than those existed prior to the breach. If a change of
manufacturing site is required, then such change will follow an uninterrupted
transition period of four (4) months during which Stellar would source another
manufacturing contractor and Delphi will provide commercially reasonable support
to facilitate such change.
7.6 Residual Obligations of the Parties upon Expiration or Termination of this
Agreement
The Articles 4.1, 4.2, 4.3, 4.4, 5, 6, 7.4, 7.5, 7.6, 8.4, 8.9 and the Cross
License Agreement of Attachment 1 hereof shall survive expiration or termination
of this Agreement.
ARTICLE 8. MISCELLANEOUS
8.1 Notices
All notices, consents, waivers, and other communications under this
Agreement must be in writing and will be deemed to have been duly given
when (a) delivered by hand (with written confirmation of receipt), (b) sent
by facsimile (with written confirmation of receipt), provided that a copy
is mailed by registered mail, return receipt requested, or (c) when
received by the addressee, if sent by a nationally recognized overnight
delivery service (receipt requested), in each case to the appropriate
addresses and facsimile numbers set forth below (or to such other addresses
and facsimile numbers as a Party may designate by notice to the other
Party):
If to ORBCOMM:
ORBCOMM
21700 Atlantic Boulevard
Dulles, VA 20166
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Attention: Marc Eisenberg
Fax: (703) 433-6400
If to Stellar
Stellar Inc.
21700 Atlantic Boulevard
Dulles, VA 20166
Attention: Acting General Manager
Fax: (703) 433-6400
If to Delphi:
Delphi Electronics & Safety Division
One Corporate Center
P.O. Box 9005
Kokomo, Indiana U.S.A. 46904-9005
Attention: Business Line Executive, Wireless
Fax: 1.765.451.9722
Any Party may change its address by a notice given to the other Parties in
the manner set forth above.
8.2 Paragraph Titles
Paragraph titles are intended only for quick reference in finding parts of
this Agreement. They are not to be used in interpreting this Agreement.
8.3 No Party Deemed Drafter
All provisions of this Agreement have been negotiated by the Parties at
"arm's length" and with the full opportunity to discuss these provisions
with their legal counsel. The Parties agree that no Party shall be deemed
to be the drafter of this Agreement and further, that in the event that
this Agreement is ever construed in a court of law, such court shall not
construe this Agreement or any provision of this Agreement against any
Party as the drafter of this Agreement.
8.4 Publicity
Each Party agrees that neither the existence nor the terms of this
Agreement will be disclosed and that neither Party will use the other's
name, either expressed or
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implied, in its publicity, advertising, promotional or product related
literature without the other Party's written consent, whose consent will
not be unreasonably withheld. This provision shall survive the expiration,
termination or cancellation of this Agreement.
8.5 No Authority
This Agreement and the work performed hereunder shall not cause or imply
that there exists among the Parties hereto any partnership, joint venture,
or other combined business organization, and the respective rights and
obligations of the Parties shall be only those expressly set forth herein.
NEITHER PARTY HAS ANY AUTHORITY HEREUNDER TO ASSUME OR CREATE ANY
OBLIGATION OR RESPONSIBILITY, EXPRESS OR IMPLIED, ON BEHALF OF, OR IN THE
NAME OF, THE OTHER PARTY OR TO BIND THE OTHER PARTY IN ANY WAY WHATSOEVER
TO THIRD PARTIES.
8.6 Partial Invalidity
If any provision of this Agreement is invalid or unenforceable under any
statute, regulation, ordinance, executive order or other rule of law, such
provision will be deemed reformed or deleted, as the case may be, but only
to the extent necessary to comply with such statute, regulation, ordinance,
executive order or other rule of law and the remaining provisions of this
Agreement will remain in full force and effect.
8.7 Dispute Resolution
8.7.1. Informal Dispute Resolution
In the event that any dispute, controversy, or claim between the
Parties arises out of the interpretation of, or performance under this
Agreement, the Parties agree to refrain from initiating any legal or
other proceedings until all of the procedures set forth in this
Paragraph 8.7 have been exhausted.
8.7.2. Negotiation
The Parties shall first attempt to resolve amicably and informally any
dispute, controversy, or claim arising out of or relating to this
Agreement, including without limitation the interpretation,
performance, breach, termination or invalidity of this Agreement (the
"Dispute"). A Party shall initiate informal negotiations to resolve
the Dispute by giving the other Party notice ("Request for Informal
Dispute Resolution") of such intent.
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The Request for Informal Dispute Resolution shall (1) describe the
Dispute and (2) propose the procedure for its amicable resolution,
including, if appropriate, the hiring of consultants. Within thirty
(30) days of the date of such Request for Informal Dispute Resolution,
the Parties shall attempt to resolve the Dispute amicably, and no
Party shall resort to any other means of dispute resolution for at
least thirty (30) days after such Request for Informal Dispute
Resolution has been delivered.
8.7.3. Management Negotiation
If any Dispute is not resolved pursuant to Paragraph 8.7.2 of this
Agreement, each Party shall designate one or more executives (the
"Executives") to act on behalf of such Party to negotiate to solve the
matter. At the earliest practical time, and in any event, no later
than thirty (30) days after the conclusion of the process set forth in
Paragraph 8.7.2 of this Agreement, the Executives of both Parties
shall endeavor to meet in a mutually agreeable location to discuss the
Dispute. The Executives shall endeavor to negotiate in good faith to
resolve the Dispute, and any resolution shall be set forth in writing
and signed by both Parties. Such a resolution shall be final and
binding on the Parties. No party shall resort to any other means of
resolution for at least ten (10) additional days after the thirty (30)
day period set forth above for the Executives to meet.
8.7.4. Arbitration
Any Dispute not settled amicably or by informal negotiations in
accordance Paragraphs 8.7.2 and 8.7.3 of this Agreement shall be
settled by arbitration in accordance with the Commercial Arbitration
Rules of the American Arbitration Association, and judgment upon the
award rendered by the arbitrator(s) may be entered in any court having
jurisdiction thereof. The language used in arbitration, including the
language of the proceedings, the language of the award and the reasons
supporting it, shall be English. The arbitrator shall be a retired
judge. Arbitration shall take place in New York, New York, United
States of America.
8.8 Waivers
No failure or delay on the part of either party in the exercise of any
right or privilege hereunder shall operate as a waiver thereof, nor shall
any single or partial exercise of any such right or privilege preclude
other or further exercise thereof or of any other right or privilege.
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8.9 Assignment
A Party may not assign this Agreement without the other Party's prior
written approval except to one of its Affiliates, or in connection with the
sale or merger of the business related to the subject matter of this
Agreement. Any assignment in violation of the foregoing shall be void.
8.10 Force Majeure and Compliance with Laws
No party shall be liable for delay in performance or failure to perform in
whole or in part the terms of this Agreement due to labor dispute, strike,
labor shortage, war or act of war (whether an actual declaration is made or
not), insurrection, riot, or civil commotion, act of public enemy,
accident, fire, flood or other act of God, act of any governmental
authority, judicial action, short or reduced supply of fuel or raw
materials, technical failure where such party has exercised ordinary care
in the prevention thereof, or causes beyond the control of such party,
whether or not similar to the matters herein enumerated, and any such delay
or failure shall not be considered a breach of this Agreement provided that
the Party relying on this provision resumes performance as quickly as
possible after such Force Majeure event, and that the other Party has no
obligation to make payment until such performance resumes.
8.11 Governing Law
This Agreement shall be governed by and interpreted in accordance with the
laws of the State of New York, United States of America without giving
effect to the doctrine of the conflicts of laws.
8.12 Entire Agreement
This Agreement supersedes any prior agreements or understandings, written
or otherwise between the Parties relating to the negotiation of this
Agreement. No amendment or modification of terms and conditions of this
Agreement shall be valid or binding upon the Parties unless signed by their
respective authorized officers.
8.13 Counterparts
This Agreement may be executed in one or more counterparts, each of which
will be deemed to be an original copy of this Agreement and all of which,
when taken together, will be deemed to constitute one and the same
agreement.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed on the
dates below.
DELPHI INCORPORATED
DELPHI ELECTRONICS & SAFETY
ORBCOMM INCORPORATED. DIVISION
By: /s/ J. Eisenberg By: /s/ Robert W. Schumacher
--------------------------------- ------------------------------------
Printed Name: J. Eisenberg Printed Name: Robert W. Schumacher
Title: CEO Title: Business Line Executive, Wireless
Date May 18, 2004 Date May 17, 2004
STELLAR INC.
By: /s/ Steven F. Mazur
---------------------------------
Printed Name: Steven F. Mazur
Title: General Manager
Date May 18, 2004
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ATTACHMENT 1
CROSS LICENSE AGREEMENT
This Cross License Agreement (this "Agreement"), effective as of the date of the
last signature hereto (the "Effective Date"), is entered into by and between
Stellar lnc. (hereinafter referred to as "Stellar") having its offices and place
of business at 21700 Atlantic Boulevard, Dulles, VA 20166 and Delphi
Corporation, acting by and through its Delphi Electronics & Safety Division
(hereinafter referred to as "Delphi"), having its principal place of business at
One Corporate Center, P.O. Box 9005, Kokomo, Indiana 46904-9005. Stellar and
Delphi are herein sometimes referred to individually as a "Party" or
collectively as the "Parties".
RECITALS
WHEREAS, the Parties have entered into a Cooperation Agreement (the "Cooperation
Agreement") concurrently with this Agreement; and
WHEREAS, the Cooperation Agreement contemplates that the Parties would license
their respective Intellectual Property to the other Party subject to the terms
of Paragraphs 4.2 and 4.3 of the Cooperation Agreement; and
WHEREAS, the Parties wish to enter into this Agreement to enable the Parties to
obtain such licenses.
THEREFORE, the Parties mutually agree as follows:
ARTICLE 1. DEFINITIONS
The definitions in the Cooperation Agreement are hereby incorporated by
reference.
ARTICLE 2. LICENSES
2.1 Delphi Background Intellectual Property License to Stellar
Delphi grants to Stellar a non-exclusive, non-transferable (except when
transferred together with the Cooperation Agreement), worldwide, royalty
bearing license, without the right to sublicense except to Stellar's
Affiliates, under Delphi Background Intellectual Property to make, have
made, use, sell, lease or otherwise dispose of Licensed Products according
to the terms of Paragraphs 4.2 and 4.3 of the Cooperation Agreement.
Pages 17 of 24
2.2 Stellar Background Intellectual Property License to Delphi
Stellar grants to Delphi a non-exclusive, non-transferable (except when
transferred together with the Cooperation Agreement) worldwide, royalty
bearing (except when Delphi sells Licensed Products manufactured for sale
to Stellar) license, without the right to sublicense except to Delphi's
Affiliates, under Stellar Background Intellectual Property to make, have
made, use, sell, lease or otherwise dispose of Licensed Products according
to the terms of Paragraphs 4.2 and 4.3 of the Cooperation Agreement.
2.3 No Other Licenses
No other licenses under either Party's Intellectual Property are granted to
the other Party except as expressly granted in this Article 2.
ARTICLE 3. CONSIDERATION
3.1 Royalties
A Party selling a Licensed Product under the terms of Paragraphs 4.2 and
4.3 of the Cooperation Agreement (the "Licensee") shall pay the other Party
(the "Licensor") a royalty equal to [***] percent ([***]%) of the invoice
price of such Licensed Product multiplied by the number of units of
Licensed Products sold during the reporting period specified in Paragraph
4.1 hereof. A sale shall have occurred when a Licensed Product is invoiced,
or if not invoiced, when delivered by Licensee to a third party. Unit sales
of Licensed Products shall be determined by the net number of unit sales of
Licensed Products by Licensee in a reporting period, less reasonable
numbers of samples provided gratis to the Licensee's customers and less
warranty returns in that same reporting period.
3.2 Late Payment Fees
Any royalty payment hereunder which shall be delayed beyond the due date
shall be subject to an interest charge of one percent (1%) per month on the
unpaid balance payable in U.S. currency until paid. The foregoing payment
of interest shall not affect Licensor's right to terminate in accordance
with Article 5 of this Agreement.
Pages 18 of 24
3.3 Royalty Payments to Delphi
Royalty payments hereunder are to be made by electronic fund transfer to
the account of Delphi:
The Chase Manhattan Bank N.A.
One Chase Manhattan Plaza
New York, NY, 10081 USA
ABA #021000021
Credit to Delphi Technologies, Inc.
Account Number 323 022 537
By order of Stellar Inc.
3.4 Royalty Payments to Stellar
Royalty payments hereunder are to be made by electronic fund transfer to
the account of Stellar:
Stellar Inc.
21700 Atlantic Boulevard
Dulles, VA 20166
Credit to Stellar, Inc.
ABA# 021200339
Swift # FNBBUS33
Account Number 942 126 5382
By order of Delphi Corporation
ARTICLE 4. REPORTS AND TIME OF PAYMENT
4.1 Unit Sales Reporting
Upon commencement of sales by Licensor of Licensed Products to a third party
customer, and for the duration of its third party sales activity, Licensor shall
submit quarterly reports within thirty (30) days of the end of each calendar
quarter (March, June, September, December), and within thirty (30) days after
any termination of this Agreement. Each report shall set forth, for the
respective report period, the total unit sales of Licensed Products during the
period of the calendar quarter just ended and the revenues obtained from such
sales.
Pages 19 of 24
4.2 Time of Payment
Licensee shall pay any amounts due to Licensor under Paragraph 3.1 hereof
quarterly at the same time as the reports are due under Paragraph 4.1
hereof.
4.3 Records
Licensee shall keep true and accurate records and accounts to show its
sales of Licensed Products in sufficient detail to enable the payments set
forth in this Agreement to be independently determined by Licensor or
Licensor's designated agent. Licensee shall permit such records to be
examined from time to time by authorized representatives of Licensor during
normal business hours to the extent necessary to verify the reports and
payments required hereunder.
ARTICLE 5. TERMINATION
5.1 Termination for Cause
Licensor may terminate this Agreement at any time on thirty (30) days
written notice to Licensee for material failure of Licensee to fulfill any
of its obligations hereunder; provided, however, that if during the thirty
(30) day period Licensee shall have fulfilled such obligations, this
Agreement shall continue in full force and effect as if no such notice had
been given.
5.2 Effect of Termination upon Licensee
Upon termination of this Agreement, the terms of Paragraphs 7.4 and 7.6 of
the Cooperation Agreement shall apply to the Licensee.
ARTICLE 6. ENTIRE AGREEMENT
This Agreement, along with the Cooperation Agreement constitutes the entire
agreement between the Parties hereto with respect to the matter and supersedes
all prior agreements and understandings between them with respect to such
matters.
ARTICLE 7. MODIFICATIONS AND AMENDMENTS
Neither this Agreement nor any of the terms hereof may be amended, supplemented,
waived or modified orally, but only by an instrument in writing signed by the
Parties hereto.
Pages 20 of 24
ARTICLE 8. ASSIGNMENT
This Agreement may not be assigned by either Party hereto except with the prior
written consent of the other party, except that a Party may freely assign this
Agreement to any Affiliate. Any assignment in violation of the foregoing shall
be void.
ARTICLE 9. COSTS AND EXPENSES
Except as provided herein, or unless otherwise mutually agreed in advance in
writing, each Party will bear its own expenses associated with carrying out the
obligations imposed by this Agreement.
ARTICLE 10. GOVERNMENTAL LAWS AND REGULATIONS
Each party hereto is responsible for compliance with and for obtaining such
approvals or permits as may be required under national, local or other
governmental laws, ordinances, regulations and rules as may be applicable to the
performance of its responsibilities and obligations under this Agreement. The
Parties will cooperate in securing any such governmental approvals or permits
required to effect the transactions contemplated by this Agreement.
ARTICLE 11. LIABILITY
Neither party shall have any liability to the other for any claims, including
claims of patent infringement, brought against either Party arising out of the
manufacture, use or sale of Licensed Products under this Agreement.
ARTICLE 12. NOTICES
All notices required or permitted hereunder will be in writing and deemed
effective when delivered as follows:
If to Delphi: Delphi Electronics & Safety Division
One Corporate Center
Kokomo, IN 46905
Attention: Business Line Executive, Wireless
If to Stellar: Stellar Inc.
21700 Atlantic Boulevard
Dulles, VA 20166
Attention: Acting General Manager
Pages 21 of 24
or to such other addresses as either party may hereafter designate in writing by
like notice.
ARTICLE 13. MISCELLANEOUS
13.1 No Warranty
Nothing in this Agreement shall be construed as a warranty or representation by
Licensor that any manufacture, use, sale, lease or any other disposition of the
Licensed Products will be free from infringement of any intellectual property of
a third party, except that the each Party represents that it is aware not of any
such infringement or threatened infringement as of the date hereof.
13.2 No Obligation
Nothing in this Agreement shall be construed as imposing on Licensor any
obligation to register or otherwise protect any intellectual property or to
secure any patent or to maintain any patent or other intellectual property
in force.
13.3 No Waiver
No express or implied waiver by either of the Parties to this Agreement of
any breach of any term, condition or obligation of this Agreement by the
other Party shall be construed as a waiver of any subsequent breach of that
or any other term, condition or obligation.
13.4 Governing Law
This Agreement and the performance of the Parties hereunder shall be
construed in accordance with and governed by the laws of the State of New
York, USA.
13.5 Partial Invalidity
If any term, clause or provision of this Agreement shall be judged to be
invalid, the validity of any other term, clause or provision shall not be
affected; and such invalid term, clause or provision shall be deemed
deleted from this Agreement.
Pages 22 of 24
IN WITNESS WHEREOF, the Parties have caused this Agreement to executed on the
dates below.
DELPHI CORPORATION
DELPHI ELECTRONICS & SAFETY DIVISION STELLAR INC.
By: /s/ Robert W. Schumacher By: /s/ Steven F. Mazur
--------------------------------- ----------------------------------
Printed: Robert W. Schumacher Printed: Steven F. Mazur
Title: Business Line Executive,Wireless Title: General Manager
Date May 17, 2004 Date May 18, 2004
Pages 23 of 24
ATTACHMENT 2
EXISTING STELLAR PRODUCTS
ST 2500 and configurations thereof
STLite and configurations thereof
Pages 24 of 24