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EXHIBIT 10.15
CERTAIN CONFIDENTIAL
TREATMENT CONTAINED IN
THIS DOCUMENT, MARKED BY
BRACKETS AND DENOTED BY AN
ASTERISK, HAS BEEN OMITTED
AND FILED SEPARATELY WITH
THE SECURITIES AND
EXCHANGE COMMISSION
PURSUANT TO 17 C.F.R.
SECTIONS 200.80(b)(4),
200.83 and SECTION
230.406.
SOFTWARE LICENSE AND DEVELOPMENT AGREEMENT
This Software License Agreement (the "Agreement") is entered into this 24th day
of November, 1993 (the "Effective Date"), by and between QUALCOMM
Incorporated, a Delaware corporation, with its principal place of business at
6455 Lusk Boulevard, San Diego, California 92121 ("QUALCOMM"), and Coral
Systems, Inc., a Colorado corporation, with its principal place of business at
1500 Kansas Avenue, Longmont, Colorado 80501 ("Coral"), with regard to the
following facts:
RECITALS
WHEREAS, QUALCOMM has developed and is in the process of developing certain
software for use in wireless telecommunications applications;
WHEREAS, Coral has developed certain software known as Home Location Register
(HLR) software which provides seamless roaming capabilities for wireless
telecommunications applications;
WHEREAS, in accordance with the terms of this Agreement, QUALCOMM desires to
obtain the rights to use Coral's HLR software and related design documentation,
to modify and enhance portions of such software, and to create derivative works
based on such software and documentation;
WHEREAS, Coral agrees to grant QUALCOMM such rights to such HLR software and
software documentation in accordance with the terms of this Agreement;
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
QUALCOMM and Coral agree as follows:
1. DEFINITIONS.
The following capitalized terms shall have the meanings ascribed to them below:
"HLR Software" means the source code of Release 1.0 of the Home Location
Register software application owned and developed by Coral which provides
seamless roaming capabilities in wireless telecommunications systems in
compliance with Revision A of the Telecommunications Industry Association
TR45.2 Committee's specifications entitled "Cellular Radio-Telecommunications
Intersystem Operations". The HLR Software shall not include any third party
software or hardware applications.
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"Software Documentation" means the documentation created by Coral for the HLR
Software, as listed in Exhibit A attached hereto.
2. GRANT OF LICENSES; DELIVERY.
2.1 License for Software. Subject to the terms of this Agreement,
Coral hereby grants to QUALCOMM a personal, non-exclusive, non-transferable,
fully paid, royalty free, perpetual and irrevocable license (a) to use and
reproduce the HLR Software for the sole purpose of developing software on
behalf of QUALCOMM ("QUALCOMM Software") by, as examples and not by way of
limitation (i) emulating in such QUALCOMM Software the structure, sequence
and/or organization of the HLR Software, (ii) creating derivative works based
on the HLR Software or otherwise modifying, translating, adapting and/or
enhancing the HLR Software, and/or (iii) incorporating into such QUALCOMM
Software any portion or portions of the HLR Software and/or any such derivative
work; provided however, that in no event shall the QUALCOMM Software contain
more than ten percent (10%) of the total code of the HLR Software as delivered
to QUALCOMM hereunder, and (b) to sublicense any of such QUALCOMM Software
(including the portions of the HLR Software incorporated herein) to any other
parties for any wireless telecommunications systems or applications based in
whole or in part on QUALCOMM's Code Division Multiple Access technology.
QUALCOMM will notify Coral of the completion of the initial release of
the QUALCOMM Software within a reasonable period of time and shall provide a
written certification to Coral stating that the QUALCOMM Software does not
contain more than ten percent (10%) of the total code of the HLR Software.
2.2 License for Documentation. In addition to the license granted
in Section 2.1 above, Coral hereby grants to QUALCOMM the personal,
non-exclusive, non-transferable, fully paid, perpetual and irrevocable license
to copy, use, adapt, translate, enhance and modify the Software Documentation
and the information contained therein, to create derivative works based thereon
and to distribute any such derivative works to any other parties.
2.3 Delivery. Coral shall deliver to QUALCOMM the complete hard
copies of the HLR Software and electronic copies of the Software Documentation
on or before November 30, 1993.
3. WARRANTIES.
3.1 Ownership. Coral represents and warrants to QUALCOMM that it
owns the HLR Software and the Software Documentation and that it has the full
right and ability to grant the licenses granted in this Agreement.
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CONFIDENTIAL TREATMENT REQUESTED
Further, Coral represents and warrants to QUALCOMM that the HLR Software and
Software Documentation is Coral's original work and has not been copied or
derived from any work of any third party.
3.2 No Infringement. Coral represents and warrants to QUALCOMM
that the HLR Software and Software Documentation do not and will not infringe
any patent, copyright, trade secret or other intellectual property right of any
third party. Further, Coral represents and warrants to QUALCOMM that no claim
or action relating to the infringement of any patent, copyright, trademark, or
other intellectual property right has been made or is pending or, to the best
of Coral's knowledge, threatened against Coral with respect to the HLR Software
or the Software Documentation.
3.3 Absence of Malicious Components. Coral represents and
warrants to QUALCOMM that, to the best of Coral's knowledge, the HLR Software
does not contain and will not contain any malicious component (e.g., software
virus, software worm, software time bomb, or similar component) which could
damage, destroy, or alter software, firmware, or hardware or which could in any
manner reveal, damage, destroy, or alter any data or other information accessed
through or processed by any software developed from the Software Documentation.
Coral shall immediately advise QUALCOMM, in writing, upon reasonable suspicion
or actual knowledge of any of such conditions.
3.4 Limitation of Warranties. Other than the warranties provide
in Sections 3.1, 3.2 and 3.3 above, CORAL MAKES NO WARRANTY OF ANY KIND,
WHETHER EXPRESS OR IMPLIED, AND SPECIFICALLY DISCLAIMS ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
4. LICENSE FEES.
In consideration for the licenses granted to QUALCOMM under Section 2 above and
the delivery of the HLR Software and Software Documentation, QUALCOMM shall pay
to Coral the sum of [ * ] (the "License
Fee") within ten (10) days after QUALCOMM receives complete hard copies of the
HLR Software and the Software Documentation.
5. OWNERSHIP.
5.1 Coral. The HLR Software and the Software Documentation and
all patents, copyrights and other intellectual property rights contained or
embodied in any of the foregoing shall be and remain the property of Coral.
Except as expressly provided in this Agreement, nothing herein shall be
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construed to transfer or assign to QUALCOMM any right, title or interest
therein.
5.2 QUALCOMM. Notwithstanding any other provision of this
Agreement, any and all QUALCOMM Software (except for those portions of the
source code of the HLR Software which are reproduced in substantially their
original form in the QUALCOMM Software); any modifications, translations,
adaptations and enhancements of the HLR Software or the Software Documentation
which are developed by or on behalf of QUALCOMM; any and all derivative works
created by QUALCOMM which are based on, or incorporate portions of, the HLR
Software and/or the Software Documentation, and all patents, copyrights and
other intellectual property rights contained or embodied in any of the
foregoing shall be and remain the property of QUALCOMM.
6. CONFIDENTIALITY.
QUALCOMM shall protect the HLR Software and Software Documentation in its
possession from unauthorized use or disclosure to any third party with at least
the same level of effort as QUALCOMM has in effect with respect to its other
proprietary computer programs or information, but in no event shall QUALCOMM
exercise less than reasonable care. All tangible materials containing any HLR
Software or Software Documentation, other than QUALCOMM Software developed in
accordance with Section 2.1 above, shall be marked as "proprietary" and shall
contain appropriate copyright notices, and QUALCOMM shall not remove,
obliterate, or alter such notices. Notwithstanding the foregoing, QUALCOMM
agrees that it will place on any QUALCOMM Software which incorporates portions
of the original code of the HLR Software an appropriate copyright notice
indicating Coral's rights in such HLR Software.
7. PUBLICITY.
The parties agree to jointly issue a press release announcing this Agreement
shortly after the Effective Date. Such press release shall be subject to
review and approval by both QUALCOMM and Coral prior to dissemination.
8. INDEMNIFICATION.
8.1 Coral Indemnification. Coral agrees to indemnify, defend and
hold QUALCOMM harmless from and against any claims, actions, losses, expenses,
liabilities, damages and costs, including reasonable attorneys' fees, arising
out of or relating to infringement by the HLR Software, the Software
Documentation, or any portion thereof, of any patent, copyright, trademark,
trade secret, or other intellectual property rights of any other party.
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8.2 Indemnification Procedures. In the event that QUALCOMM
desires to make a claim for indemnification in accordance with Section 8.1
above, QUALCOMM shall (a) provide written notification of any claim for which
indemnity is sought within (30) days after becoming aware of such claim; (b)
cooperate in the defense of such claim, with each party bearing its respective
costs of such cooperation; and (c) receive the prior written approval of Coral
of any settlement or offer of settlement made to the party seeking
indemnification, which approval shall not be unreasonably withheld, and, if
approved, Coral shall pay the amount of such settlement.
8.3 Limitation of Liability. IN NO EVENT SHALL CORAL BE LIABLE OR
RESPONSIBLE FOR ANY DAMAGES UNDER THE FOREGOING INDEMNIFICATION IN EXCESS OF
THE LICENSE FEES PAID TO CORAL UNDER THIS AGREEMENT.
9. DISCLAIMER OF INDIRECT DAMAGES.
Neither party shall be liable to the other party hereto or to any other company
or entity for any incidental, consequential, or any other indirect loss or
damage, including without limitation loss of profits, arising out of this
Agreement or any obligation resulting herefrom or the use of any intellectual
property received hereunder, whether in an action for or arising out of breach
of contract, tort, or any other cause of action.
10. NOTICES.
Any notice, demand, acknowledgment, or other communication made or given by
either party in accordance with this Agreement shall be in writing, and sent
via facsimile (with confirmation) or by registered or certified mail, return
receipt requested, or by courier service and addressed to the other party at
its address as set forth below (or any other address of which the other party
is notified in accordance with this Section):
If to Coral: Coral Systems, Inc.
1500 Kansas Avenue
Longmont, CO 80501
Attention: Eric Johnson
Fax: (303) 772-8230
With a copy to: Howard Kaushansky
If to QUALCOMM: QUALCOMM Incorporated
6455 Lusk Boulevard
San Diego, CA 92121-1617
Attention: Chief Operating Officer
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Fax: (619) 658-2500
With a copy to: Attention: Legal Department
Fax: (619) 658-2503
11. GENERAL PROVISIONS.
11.1 Governing Law. This Agreement and all disputes and related
issues shall be interpreted under and governed by the laws of the State of
California.
11.2 Arbitration. Any dispute, claim or controversy arising out of
or relating to this Agreement or the breach or validity hereof shall be settled
by arbitration in accordance with the arbitration rules of the American
Arbitration Association (the "AAA Rules"). For any such arbitration, there
shall be one (1) arbitrator, who shall be selected in accordance with the AAA
Rules. The arbitration shall be governed by California law. Judgment upon the
award rendered in any such arbitration shall be final and may be entered in any
court having jurisdiction thereof.
11.3 Force Majeure. Other than the obligation to pay money
hereunder, neither party shall be liable for the failure to perform any
obligation under this Agreement where such failure is due to fire, flood, labor
dispute, natural calamity, or acts of governments or if such causes are
otherwise beyond the reasonable control of such party.
11.4 Unenforceability. If any provision of this Agreement is
deemed by a court of competent jurisdiction to be unenforceable or contrary to
any applicable law or regulation, such provision shall be considered deleted
and the remainder of this Agreement shall continue in full force and effect.
In the event that the unenforceable provision is an essential element of the
agreement between the parties hereto, the parties shall promptly negotiate a
reasonable replacement provision consistent with such laws or regulations.
11.5 No Assignment. This Agreement is not assignable by either
party without the prior written consent of the other party, except that this
Agreement may be assigned to a controlled subsidiary of the assigning party,
provided that the assigning party guarantees performance by such controlled
subsidiary. An "assignment" includes any merger, consolidation, spin-off,
split-off, or sale of all or substantially all of the assets of a party hereto.
11.6 Attorneys' Fees. In the event that litigation is necessary to
interpret or enforce this Agreement, the most prevailing party, as determined
by the
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court, shall be entitled to recover, along with any award or judgment, its
fees and costs, including reasonable attorneys' fees.
11.7 Independent Contractor Relationship. The relationship between
the parties under this Agreement is that of independent contractors, and
neither party is an employee or agent of the other party. Neither party is
authorized or empowered to act as an agent for the other party, nor to transact
business, incur obligations or bill goods in the other party's name or for the
other party's account. Neither party shall in any way be bound by any acts,
representations, or conduct of the other party to any third party.
11.8 Hiring Restrictions. For a period of one (1) year after the
date of this Agreement, neither party shall be permitted to recruit or attempt
to hire or retain any employees or independent contractors engaged by the other
and may not, without the prior written consent of the other party, hire any
employee or independent contractor employed or retained by such other party,
until three months after such individual leaves the employ of or is no longer
retained by, such company.
11.9 Amendment; Non-Waiver. This Agreement may only be amended by
a writing executed by authorized representatives of both parties. The failure
or delay of any party to exercise any right or remedy hereunder shall not
constitute a waiver of such right or remedy, and the express waiver of any
right or remedy shall not constitute a waiver of any other or future right or
remedy.
11.10 Entire Agreement. This Agreement, together with all exhibits
attached hereto, which are incorporated herein by this reference, constitutes
the entire agreement between the parties and supersedes all prior negotiations,
representations and agreements between the parties with respect to the subject
matter hereof.
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IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this Agreement as of the Effective Date.
QUALCOMM INCORPORATED
By: /s/ RICHARD P. SULPIZIO
--------------------------------
Richard P. Sulpizio
Chief Operating Officer
CORAL SYSTEMS, INC.
By: /s/ ERIC A JOHNSON
--------------------------------
Eric A. Johnson
President and CEO
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
SOFTWARE DOCUMENTATION
CS93-HLR001 [ * ]
CS93-HLR002 [ * ]
CS93-HLR003 [ * ]
CS93-HLR004 [ * ]
CS93-HLR005 [ * ]
CS93-HLR006 [ * ]
CS93-HLR007 [ * ]
CS93-HLR008 [ * ]
CS93-HLR009 [ * ]
CS93-HLR010 [ * ]
CS93-HLR011 [ * ]
CS93-HLR012 [ * ]
CS93-HLR013 [ * ]
CS93-HLR014 [ * ]
CS93-HLR015 [ * ]
CS93-HLR016 [ * ]
CS93-HLR017 [ * ]
CS93-HLR018 [ * ]
CS93-HLR019 [ * ]
CS93-HLR020 [ * ]
CS93-HLR021 [ * ]
CS93-HLR022 [ * ]
CS93-HLR023 [ * ]
CS93-HLR024 [ * ]
CS93-HLR025 [ * ]
CS93-HLR026 [ * ]
CS93-HLR031 [ * ]
CS93-HLR032 [ * ]
CS93-HLR033 [ * ]
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