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EXHIBIT 10.16
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 AGREEMENT
This Software License Agreement (the "Agreement") is entered into this
19th day of January, 1996 (the "Effective Date"), by and between DSC
Technologies Corporation, a Delaware corporation, with its principal place of
business at 1000 Coit Road, Plano, Texas 75075, 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, DSC has developed and is in the process of developing certain
applications for use in wireless telecommunications;
WHEREAS, Coral has developed certain software known as Home Location
Register software (the "HLR Software") and a Visitor Location Register
Simulator (the "VLR Software") which provides and simulates certain seamless
roaming capabilities for wireless telecommunications applications;
WHEREAS, in accordance with the terms of this Agreement, DSC desires
to obtain the rights to use and sublicense the source code of the HLR Software
and the VLR Software for further development and sublicensing to its end user
customers;
WHEREAS, Coral agrees to grant DSC such rights to such software and
associated documentation in accordance with the terms of this Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, DSC and Coral agree as follows:
1. DEFINITIONS.
The following capitalized terms shall have the meanings ascribed to
them below:
"Affiliate" means an entity controlled either directly or indirectly
by a party.
"Software" means the source code of the VLR Software and the HLR
Software applications owned and developed by Coral, in their present state
which are designed to (i) simulate certain industry standard network messages,
and (ii) provide seamless roaming capabilities in certain wireless
telecommunications systems in substantial compliance with Revision B of the
Standard, respectively. A listing of the files comprising the Software is
attached hereto as Exhibit A. The Software shall not include any third party
software, middleware, firmware or hardware applications, a listing of which
are attached hereto as Exhibit B.
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CONFIDENTIAL TREATMENT REQUESTED
"Software Documentation" means the documentation created by Coral for
the Software, as listed in Exhibit C attached hereto.
"Standard" means the Telecommunications Industry Association TR45.2
Committee's specifications entitled "Cellular Radio Telecommunications
Intersystems Operations."
2. GRANT OF LICENSE; DELIVERY
2.1 License to Software. Subject to the terms of this Agreement,
Coral hereby grants to DSC a non-exclusive, non-transferable,
non-sublicenseable, fully paid, royalty-free, perpetual and irrevocable
license to use, reproduce and sublicense the Software for its further
development and sublicensing the same to its end user customers. In the event
DSC licenses the source code of the Software in connection with a source code
license of any DSC software, DSC shall provide for reasonable restrictions on
the use of such source code to prevent the transfer or sublicensing of the same.
2.2 License for Documentation. Subject to the terms of this
Agreement, Coral hereby grants to DSC the non-exclusive, non-sublicenseable,
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 parties, which derivative works may
be substantially similar to the Software Documentation.
2.3 Delivery. Coral shall deliver to DSC a complete copy of the
Software and the Software Documentation on or before January 19, 1996.
3. FEES.
3.1 Software Fees. In consideration for the licenses granted to
DSC and the delivery of the Software and Software Documentation, DSC shall pay
to Coral the sum of [ * ] within
fifteen (15) days after DSC receives an electronic copy of the Software
containing all of the files in Exhibit A and an electronic copy of the Software
Documentation. In the event Coral possess any files relating to the Software
which are not included in Exhibit "A" Coral shall make reasonable efforts to
promptly deliver such files to DSC.
3.2 Consulting Fees. Coral shall provide consulting services to
DSC to support the Software as reasonably requested by DSC (the "Services") in
accordance with this Section 3.2. The Services shall be billed in accordance
with the rates provided in Exhibit D attached hereto for the calendar year of
1996. Coral shall use reasonable efforts to provide the Services to DSC to the
extent its resources are reasonably available. In the event DSC desires to
continue the Services beyond 1996, the parties shall negotiate a mutually
acceptable agreement to continue the Services prior to January 1, 1997. The
Services shall be made available to DSC during the hours of 9:00 am to 5:00 pm,
Monday through Friday, excluding Coral holidays. Services provided at times
other than the foregoing shall be subject to additional charge. Provided Coral
uses
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reasonable care in providing the Services, it shall have no liability for the
Services or DSC's reliance or use of the Services.
4. WARRANTIES.
4.1 Ownership. Coral represents and warrants to DSC that Coral
owns the Software and the Software Documentation and that it has the full right
and ability to grant the licenses granted in this Agreement. Further, Coral
represents and warrants to DSC that the Software and Software Documentation is
Coral's original work and has not been copied or derived from any work of any
third party.
4.2 No Infringement. Coral represents and warrants to DSC that
the Software and Software Documentation does not infringe any United States
patent, copyright, trade secret, or other intellectual property right of any
third party. Further, Coral represents and warrants to DSC that no claim or
action relating to the infringement of any United States 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
Software or the Software Documentation.
4.3 Limitation of Warranties. Other than the warranties provided
in Sections 4.1 and 4.2, THE SOFTWARE AND SOFTWARE DOCUMENTATION IS PROVIDED
"AS IS", "WHERE IS" AND "WITH ALL FAULTS" AND CORAL MAKES NO WARRANTY OF ANY
KIND, WHETHER EXPRESS OR IMPLIED, AND SPECIFICALLY DISCLAIMS ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
5. OWNERSHIP.
5.1 Coral. The 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
construed to transfer or assign to DSC any right, title or interest therein.
5.2 DSC. Notwithstanding any other provision of this Agreement,
any and all DSC Software (except for those portions of the source code of the
Software which are reproduced in substantially their original form in the DSC
Software); any permissible modifications, translations, adaptations and
enhancements of the Software or any DSC software; any and all permissible
derivative works created by DSC even though they may be based on, or
incorporate portions of, the 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 DSC.
6. CONFIDENTIALITY.
DSC shall protect the Software and Software Documentation from
unauthorized use or disclosure to any third party with at least the same level
of effort as DSC has in effect with respect
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to its other proprietary computer programs or information, but in no event
shall DSC exercise less than reasonable care. All tangible materials
containing any Software or Software Documentation, other than DSC software
developed in accordance with Section 2.1 above, shall be marked as
"proprietary" or in any other manner which indicates its proprietary or
confidential nature and shall contain appropriate copyright notices, and DSC
shall not remove, obliterate, or alter such notices. Notwithstanding the
foregoing, DSC agrees that it will place on any DSC software which incorporates
portions of the original code of the Software an appropriate copyright notice
indicating Coral's rights in such Software.
7. INDEMNIFICATION.
7.1 Coral Indemnification. Coral agrees to indemnify, defend and
hold DSC 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 Software, the Software Documentation,
or any portion thereof, of any United States patent, copyright, trademark,
trade secret, or other intellectual property rights of any party.
7.2 Indemnification Procedures. In the event that DSC desires to
make a claim for indemnification in accordance with Section 7.1 above, DSC
shall (a) provide written notification of any claim for which indemnity is
sought within thirty (30) days after becoming aware of such claim; (b)
reasonably 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 up to the
limitation provided below.
7.3 Licensee Remedies. If Coral reasonably believes that DSC's
use of the Software will infringe a United States copyright, trade secret or
other proprietary right, or a temporary or final injunction is obtained against
DSC's use of the Software or any portion thereof due to an infringement of a
United States copyright, trade secret or other proprietary right, DSC will
discontinue such use until such time that Coral, at its option and expense,
either (a) procures for DSC the right to continue using the Software, (b)
replaces or modifies the Software or such infringing portion so that it no
longer infringes, or if either of the foregoing are not reasonably commercially
viable, (c) refunds DSC the funds paid to Coral under this Agreement and
terminates DSC's license.
7.4 Exclusion of Liability. Coral shall have no liability to DSC
for any infringement action or claim that is based upon or arises out of the
use of the Software or any component thereof in combination with any other
system, equipment, software or any modification or enhancement to the Software,
in the event that, but for such use, modification or enhancement, the claim of
infringement would not arise.
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8. DISCLAIMER OF INDIRECT DAMAGES; LIMITATION OF LIABILITY.
8.1 Disclaimer or 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.
8.2 Limitation of Liability. IN NO EVENT SHALL CORAL BE LIABLE OR
RESPONSIBLE FOR ANY DAMAGES OR LIABILITIES OF ANY KIND OR NATURE WHATSOEVER
UNDER THIS AGREEMENT IN EXCESS OF THE LICENSE FEES PAID TO CORAL UNDER THIS
AGREEMENT.
9. 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 above (or any other address of which the
other party is notified in accordance with this Section).
10. GENERAL PROVISIONS.
10.1 Governing Law; Venue. This Agreement and all disputes and
related issues shall be interpreted under and governed by the laws of the State
of California.
10.2 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.
10.3 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.
10.4 No Assignment. This Agreement is not assignable by either
party without the prior written consent of the other party, except that either
party may assign this agreement in connection with any merger, consolidation or
sale of all or substantially all of the assets of the
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assigning party hereto. DSC shall be permitted to assign this Agreement in
whole or in part to an Affiliate provided DSC shall remain liable for the
performance of the Affiliate hereunder.
10.5 Attorneys' Fees. In the event litigation is necessary to
interpret or enforce this Agreement, the most prevailing party, as determined
by the court, shall be entitled to recover, along with any award or judgment,
its fees and costs, including reasonable attorneys' fees.
10.6 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 party.
10.7 Hiring Restrictions. Each party agrees that for the period of
two years from the execution of this Agreement, it shall not directly solicit
any then-current employee, individual as a consultant to, or individual working
as a contractor of the other party that contributes to the Software or Coral's
HLR software. This section shall not apply to or be breached by a party
advertising open positions, participating in job fairs and the like, or using
other forms of soliciting candidates for employment, even if responded to by an
employee, individual working as a consultant to, or individual working as a
contractor of the other provided the same is not directly specifically at a
given employee, individual working as a consultant to, or individual working as
a contractor of the other party.
10.8 Amendment; Non-Waiver. This Agreement may only be amended by
a writing executed by an authorized representative 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 of future right or
remedy.
10.9 Publicity. Neither party shall use the name of the other
party in any news release, public announcement, advertisement, or other form of
publicity with the prior, written consent of such other party.
10.10 Entire Agreement. Except with respect to any confidentiality
agreement between the parties 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
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.
DSC TECHNOLOGIES CORPORATION
By: /s/ ALLEN ADAMS
-------------------------------
Allen Adams
Senior Vice President
CORAL SYSTEMS, INC.
By: /s/ ERIC A. JOHNSON
-------------------------------
Eric A. Johnson
President and CEO
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
[ *
]
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CONFIDENTIAL TREATMENT REQUESTED
[ *
]
10
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
[ *
]
11
CONFIDENTIAL TREATMENT REQUESTED
[ *
]
12
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
[ *
]
13
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
[ *
]
14
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
[ *
]
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
[ *
]
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT B
HARDWARE
[ * ]
[ * ]
SOFTWARE
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT C
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 [ * ]
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CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT D
All consulting services provided by Coral under the Agreement for the
calendar year 1996 shall be billed at the rate of [ * ] per person week or
portion thereof. Consulting fees shall be rounded upwards to the nearest
one-half day. DSC shall be responsible for reasonable travel and per diem
expenses associated with on site support and all other out of pocket costs and
expenses incurred by Coral in the providing of consulting services.
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