1
EXHIBIT 10.12
AMENDED
LICENSE AGREEMENT
between
DIGITAL EQUIPMENT CORPORATION
and
INTELECT VISUAL COMMUNICATIONS CORP.
Formerly Known As Mosaic Information Technologies
for
VIDEO CONFERENCING TECHNOLOGY
AGREEMENT # QR-CLDD2-23
-------------------------------
EFFECTIVE DATE
November 6, 1997
-------------------------------
(On the Date of Last Signature)
DIGITAL CONFIDENTIAL 1 NOVEMBER 5, 1997
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TABLE OF CONTENTS
RECITALS
ARTICLE 1: RESOLUTION OF DISPUTES
AMENDED CONTINUING LICENSE TERMS
ARTICLE 2: DEFINITIONS
ARTICLE 3: TITLE AND LICENSE GRANTS
ARTICLE 4: CONFIDENTIALITY
ARTICLE 5: TECHNICAL ASSISTANCE
ARTICLE 6: ROYALTY PAYMENTS
ARTICLE 7: PAYMENT, REPORTS AND RECORDS
ARTICLE 8: DISCLAIMER OF WARRANTIES AND LIMITATION OF LIABILITY
ARTICLE 9: INDEMNITY
ARTICLE 10: TERM AND TERMINATION
ARTICLE 11: PUBLICITY
ARTICLE 12: REPRESENTATIONS AND UNDERSTANDINGS
ARTICLE 13: GENERAL
APPENDIX A: DESCRIPTION OF LICENSED TECHNOLOGY
APPENDIX B: DEFINITION OF IVC LICENSED PRODUCT(S)
APPENDIX C: LEGAL REQUIREMENTS FOR END USER AGREEMENTS
APPENDIX D: FORMAT OF PAYMENT REPORT
DIGITAL CONFIDENTIAL 2 NOVEMBER 5, 1997
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AMENDED
LICENSE AGREEMENT
between
DIGITAL EQUIPMENT CORPORATION
and
INTELECT VISUAL COMMUNICATIONS CORP.
Formerly Known As Mosaic Information Technologies, Inc.
This AMENDED LICENSE AGREEMENT, dated and effective on the date of the last
signature noted on the Signature Page (the "EFFECTIVE DATE") is entered into by
and between Digital Equipment Corporation, a Massachusetts corporation with
principal offices at 111 Powdermill Road, Maynard, Massachusetts, 01754
("DIGITAL"), and Intelect Visual Communications Corp., a Delaware corporation,
with offices at 1100 Executive Drive, Richardson , Texas 75081 and formerly
known as Mosaic Information Technologies ("IVC").
RECITALS
DIGITAL and Mosaic Information Technologies entered into a License Agreement
dated as of June 13, 1996 with respect to certain DIGITAL proprietary video
conferencing technology ( the "ORIGINAL LICENSE AGREEMENT"); and
Mosaic Information Technologies was acquired and merged into IVC; and
Disputes have arisen between DIGITAL and IVC with respect to the negotiation of
the ORIGINAL LICENSE AGREEMENT and DIGITAL's and IVC's performance and license
fee payments under the terms of the ORIGINAL LICENSE AGREEMENT; and
DIGITAL sent notice of termination of the ORIGINAL LICENSE AGREEMENT to IVC on
April 23, 1997; and
DIGITAL and IVC desire to resolve all disputes between them and to amend and
restate the terms and conditions of and to reinstate the license authority on a
non-exclusive basis only by executing this Amended License Agreement which
shall hereafter be referred to as the AMENDED LICENSE AGREEMENT and which
AMENDED LICENSE AGREEMENT shall amend, restate and supersede the ORIGINAL
LICENSE AGREEMENT; and
DIGITAL and IVC desire to terminate the Non-Disclosure Agreement between them
dated June 1, 1997.
NOW THEREFORE, in consideration of the mutual promises set forth herein, the
resolution of all subsisting disputes in connection with the ORIGINAL LICENSE
AGREEMENT, IVC's payment of the INITIAL ROYALTY PAYMENT and any future
ROYALTIES provided for at Article 6 hereof and IVC's payment for a portion of
and the disposition of the remainder of the products and components inventory
as directed by DIGITAL, DIGITAL and IVC agree as follows:
DIGITAL CONFIDENTIAL 3 NOVEMBER 5, 1997
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ARTICLE 1 - RESOLUTION OF DISPUTES
1.01 IVC agrees that the DIGITAL INTELLECTUAL PROPERTY RIGHTS and the
LICENSED TECHNOLOGY provided by DIGITAL under the terms of the
ORIGINAL LICENSE AGREEMENT were received and accepted and that
although the adequacy of delivery has been in dispute, upon the
execution of this AMENDED LICENSE AGREEMENT, DIGITAL has no further
obligations to deliver any tangible property (including but not
limited to products or components) or intangible property (including
but not limited to know-how, consulting or other services) to IVC
under this AMENDED LICENSE AGREEMENT or the ORIGINAL LICENSE
AGREEMENT.
1.02 IVC represents and agrees that, in connection with the negotiation and
execution of this AMENDED LICENSE AGREEMENT, DIGITAL has made no
representations of or suggestions about the existence or possibility
of future business opportunities either with DIGITAL or with any
DIGITAL subsidiary, affiliate, dealer, broker or representative or
with any public or private enterprise or agency with whom DIGITAL or
any DIGITAL subsidiary, affiliate, dealer, broker or representative
may do business now or in the future to induce IVC to enter into this
AMENDED LICENSE AGREEMENT and that IVC is familiar with the market for
any tangible or intangible product which IVC may develop from the
DIGITAL INTELLECTUAL PROPERTY RIGHTS and the LICENSED TECHNOLOGY.
1.03 IVC represents and agrees that, in connection with the negotiation and
execution of this AMENDED LICENSE AGREEMENT, DIGITAL has made no
representation or warranty with respect to the quality,
characteristics or functionality of the DIGITAL INTELLECTUAL PROPERTY
RIGHTS or the LICENSED TECHNOLOGY including but not limited to whether
it is error-free or will operate in accordance with the performance
requirements of IVC or any of its licensees or transferees. IVC
AGREES THAT THERE ARE NO EXPRESS AND IMPLIED WARRANTIES, INCLUDING ANY
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND
NONE HAVE BEEN CREATED BY THE COURSE OF DEALINGS BETWEEN IVC AND
DIGITAL WITH RESPECT TO THE PERFORMANCE OF THE ORIGINAL LICENSE
AGREEMENT OR WITH RESPECT TO THE NEGOTIATION OR EXECUTION OF THIS
AMENDED LICENSE AGREEMENT.
1.04 IVC and DIGITAL agree that all license fees paid prior to the date of
this AMENDED LICENSE AGREEMENT shall be retained by DIGITAL and that
on the execution of this AMENDED LICENSE AGREEMENT IVC shall have no
further obligation to pay the license fees allegedly due to DIGITAL
from IVC under the terms of the ORIGINAL LICENSE AGREEMENT or license
fees which would have become due in the future under the ORIGINAL
LICENSE AGREEMENT. The license fees paid by IVC to DIGITAL prior to
the date of this AMENDED LICENSE AGREEMENT, however, shall NOT be
credited against any ROYALTY payments reserved to DIGITAL under the
terms of Article 6 of this AMENDED LICENSE AGREEMENT.
1.05 IVC ordered and DIGITAL delivered certain product and component
inventory to IVC subsequent to the execution of the ORIGINAL LICENSE
AGREEMENT about which there are disputes. IVC agrees that it accepted
a part of the product and component inventory delivered and represents
that it rejected a part of the product and component inventory
delivered by DIGITAL as non-conforming and damaged. DIGITAL and IVC
agree that IVC has accepted and sold, used or placed in inventory,
products and components for which it is obligated to and agrees to pay
DIGITAL the sum of ONE HUNDRED TWENTY TWO THOUSAND ONE HUNDRED AND
FORTY THREE U.S. DOLLARS (U.S. $122,143.00). IVC shall pay said sum
contemporaneously with the execution of this AMENDED LICENSE
AGREEMENT. IVC represented that it has rejected and refused to pay
for product and component inventory which the parties agree originally
had a value of One Hundred Fifty Four Thousand Five Hundred Twenty
Eight U.S. Dollars (U.S.$154,528.00) and DIGITAL has agreed to such
rejection in good
DIGITAL CONFIDENTIAL 4 NOVEMBER 5, 1997
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faith. IVC agrees to act on DIGITAL's behalf and at DIGITAL's
direction to either (a) engage an equipment salvage broker to acquire
or dispose of the rejected product and component inventory at a price
and upon terms acceptable to DIGITAL, (b) return the rejected product
and component inventory to DIGITAL or (c) destroy it and certify such
destruction.
1.06 In consideration of DIGITAL's execution of this AMENDED LICENSE
AGREEMENT, IVC agrees that it shall and does hereby release, forgive
and forever discharge DIGITAL and each of DIGITAL's present and former
subsidiaries, affiliates, officers, directors, agents, employees,
servants, and representatives, as well as the respective heirs,
personal representatives, successors and assignees of DIGITAL and each
of DIGITAL's present and former subsidiaries, affiliates, officers,
directors, agents, employees, servants and representatives
(collectively, the "Digital Released Parties") from any and all
claims, demands, actions, causes of action, suits, accounts, offsets
and other liability of any kind or character whatsoever, in law,
equity and otherwise, known, suspected or unknown, disclosed or
undisclosed, resulting from any act, omission, representation or
agreement prior to the date of this AMENDED LICENSE AGREEMENT arising
with respect to the terms, conditions, subject matter, events,
circumstances, relationships, performance or non-performance of the
ORIGINAL LICENSE AGREEMENT, any communications, negotiations,
understandings or undertakings related thereto or to the DIGITAL
INTELLECTUAL PROPERTY RIGHTS or the LICENSED TECHNOLOGY, or under any
expressed or implied warranty with respect to the INTELLECTUAL
PROPERTY RIGHTS or the LICENSED TECHNOLOGY which IVC now has or ever
has had against the Digital Released Parties, including but not
limited to those relating to the quality, functionality or fitness of
the DIGITAL INTELLECTUAL PROPERTY RIGHTS or the LICENSED TECHNOLOGY or
relating to the existence of business opportunities for IVC and its
video conferencing products. IVC also agrees not to commence, join
in, prosecute or participate, unless obligated to participate by legal
process, in any suit or other proceeding which is adverse to the
Digital Released Parties, individually and collectively, from any
fact, circumstance or other thing which exists or occurred as of the
date of, or prior to the date of, the execution of this AMENDED
LICENSE AGREEMENT whether or not IVC knows or could know of such fact,
circumstance or other thing.
1.07 In consideration of and upon IVC's execution of this AMENDED LICENSE
AGREEMENT DIGITAL agrees that it shall and does hereby release,
forgive and forever discharge IVC and each of IVC's present and
former subsidiaries, affiliates, officers, directors, agents,
employees, servants, representatives, as well as the respective heirs,
personal representatives, successors and assignees of IVC and each of
IVC's present and former subsidiaries, affiliates, officers,
directors, agents, employees, servants and representatives
(collectively, the "IVC Released Parties") from any and all claims,
demands, actions, causes of action, suits, accounts, offsets and other
liability of any kind or character whatsoever, in law, equity and
otherwise, known, suspected or unknown, disclosed or undisclosed,
arising from IVC's alleged obligation to pay license fees, and in
particular its alleged obligation to pay any guaranteed non-refundable
license fees which DIGITAL now has, would have or ever has had against
IVC under the terms of the ORIGINAL LICENSE AGREEMENT ONLY. DIGITAL
also agrees not to commence, join in, prosecute or participate, unless
obligated to participate by legal process, in any suit or other
proceeding which is adverse to the IVC Released Parties, individually
and collectively, with respect to any claim released hereby. Nothing
contained herein shall be construed to release, discharge or waive any
IVC obligation or DIGITAL right with respect to IVC's obligations to
protect DIGITAL INTELLECTUAL PROPERTY and LICENSED TECHNOLOGY, to
maintain Confidentiality, to notify any end user of DIGITAL
INTELLECTUAL PROPERTY RIGHTS in portions of the HARDWARE, SOFTWARE and
IVC LICENSED PRODUCT(S), to prohibit and enforce the prohibition
against reverse engineering, reverse compilation, disassembly or
decomposition of the SOFTWARE or to disclaim and to limit DIGITAL's
liability, or any other IVC obligation under the ORIGINAL LICENSE
AGREEMENT other than the payment of license fees contained in Article
5 thereof. Payment of the remaining balance of $2,550,000
DIGITAL CONFIDENTIAL 5 NOVEMBER 5, 1997
6
outlined in Article 5 of the ORIGINAL LICENSE AGREEMENT is released,
forgiven, and forever discharged and any future payments shall be
governed by the terms of Articles 6 and 7 hereof. Nothing contained
herein shall be construed to alter, amend, diminish, waive or
discharge any obligation IVC may have to DIGITAL under the terms and
conditions of this AMENDED LICENSE AGREEMENT.
1.08 DIGITAL and IVC agree that the Non-Disclosure Agreement between them
dated as of June 1, 1997 shall terminate and be of no further force
nor effect and DIGITAL and IVC waive any notice or other technical
requirements contained therein which were intended as conditions
precedent to such termination.
AMENDED CONTINUING LICENSE TERMS
ARTICLE 2 - DEFINITIONS
As used in this AMENDED LICENSE AGREEMENT, the following terms shall have the
meanings set forth below:
2.01 DIGITAL INTELLECTUAL PROPERTY RIGHTS shall mean DIGITAL's rights in
its SPINBLASTER BOARD DESIGN and DECSpin SOFTWARE including:
2.01.01 all rights, title interests in all Letters Patent, including
any re-issue, division, continuation or continuation-in-part
applications throughout the world now or hereafter filed;
2.01.02 all rights, title and interests in all trade secrets, and
all trade secret rights arising under common law, state law,
federal law and laws of foreign countries;
2.01.03 all rights, title and interests in all mask work rights, all
copyrights and all other literary property and author
rights, whether or not copyrightable, throughout the world;
and
2.01.04 all rights, title and interests in all know-how and show-how
whether or not protected by patent, copyright or trade
secret.
2.02 DECSpin SOFTWARE shall mean the computer program defined in
Appendix A.
2.03 OBJECT FILES shall mean the object code version of the DECSpin
SOFTWARE.
2.04 SOURCE FILES shall mean the source code version of the DECSpin
SOFTWARE.
2.05 SPECIFICATION shall mean the specification of the DECSpin SOFTWARE
defined in Appendix A.
2.06 SPINBLASTER BOARD DESIGN shall mean the DIGITAL design (DIGITAL
drawing number AV320), all other existing drawings, specifications,
circuit schematics, logic diagrams, parts lists and process outlines
relating thereto and all board products, including notes on the design
of a PCMCIA board product, provided by DIGITAL to IVC.
2.07 LICENSED TECHNOLOGY shall mean the DECSpin SOFTWARE, any modifications
of the code in the DECSpin SOFTWARE, SPECIFICATION, and SPINBLASTER
BOARD DESIGN, taken in whole or in part.
DIGITAL CONFIDENTIAL 6 NOVEMBER 5, 1997
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2.08 SOFTWARE shall mean all software and documentation developed by IVC
that incorporates any code or modifications to the code from the
LICENSED TECHNOLOGY.
2.09 HARDWARE shall mean all hardware products developed by IVC that
incorporate the SPINBLASTER BOARD DESIGN or any part thereof.
2.10 IVC LICENSED PRODUCT(S) shall mean the products defined in APPENDIX B.
2.11 END USER AGREEMENT shall mean an agreement between IVC and an end
user, which shall incorporate all of the requirements listed in
Appendix C. An end user is a third party authorized by IVC to use IVC
LICENSED PRODUCTS for its internal business, with no right to further
distribute or license IVC LICENSED PRODUCTS.
2.12 IVC INTELLECTUAL PROPERTY RIGHTS shall mean IVC's rights in SOFTWARE
and HARDWARE, including:
2.12.01 All rights, title interests in all Letters Patent, including
any re-issue, division continuation or continuation-in-part
applications throughout the world now or hereafter filed;
2.12.02 All rights, title and interests in all trade secrets, and
all trade secret rights arising under common law, state law,
federal law and laws of foreign countries;
2.12.03 All rights, title and interests in all mask work rights, all
copyrights and all other literary property and author
rights, whether or not copyrightable, throughout the world;
and
2.12.04 All rights, title and interests in all know-how and show-how
whether or not protected by patent, copyright or trade
secret.
2.13 IT IS UNDERSTOOD AND AGREED THAT NOTHING CONTAINED IN THIS AMENDED
LICENSE AGREEMENT, INCLUDING THE RECITAL AND DEFINITION OF DIGITAL
INTELLECTUAL PROPERTY RIGHTS, DECSpin SOFTWARE, OBJECT FILES, SOURCE
FILES, LICENSED TECHNOLOGY, AND SPINBLASTER BOARD DESIGN, SHALL BE
CONSTRUED TO OBLIGATE DIGITAL TO DELIVER TO IVC ANY ADDITIONAL
INTELLECTUAL PROPERTY RIGHTS, DECSpin SOFTWARE, OBJECT FILES, SOURCE
FILES, LICENSED TECHNOLOGY, OR SPINBLASTER BOARD DESIGN. IVC AGREES
THAT DIGITAL HAS MADE NO PROMISE OR REPRESENTATION THAT IT HAS OR WILL
DELIVER ANY ADDITIONAL INTELLECTUAL PROPERTY RIGHTS, DECSpin SOFTWARE,
OBJECT FILES, SOURCE FILES, LICENSED TECHNOLOGY, OR SPINBLASTER BOARD
DESIGN AND THAT NOTWITHSTANDING THE DISPUTE BETWEEN THEM, DIGITAL HAS
DELIVERED ALL THAT IT WILL.
ARTICLE 3 - TITLE AND LICENSE GRANTS
3.01 Subject to the license granted to IVC as expressly set forth in this
Article 3, DIGITAL shall own and shall retain all rights, title and
interests in DIGITAL INTELLECTUAL PROPERTY RIGHTS and the LICENSED
TECHNOLOGY.
3.02 Subject to the payment of the ROYALTY set forth in Article 6, DIGITAL
grants to IVC a non-exclusive, non- transferable, license under
DIGITAL INTELLECTUAL PROPERTY RIGHTS, to:
DIGITAL CONFIDENTIAL 7 NOVEMBER 5, 1997
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3.02.01 modify SOURCE FILES for the sole purpose of developing
SOFTWARE only for use on or with IVC LICENSED PRODUCT(S);
3.02.02 merge the modified or unmodified SOURCE FILES into other
software for the sole purpose of developing SOFTWARE only
for use on or with IVC LICENSED PRODUCT(S);
3.02.03 use and copy the OBJECT FILES for the sole purpose of
developing SOFTWARE for use only on or with IVC LICENSED
PRODUCT(S);
3.02.04 copy SOFTWARE in executable code form only, solely to
manufacture IVC LICENSED PRODUCT(S); and
3.02.05 copy into IVC's end user documentation only those parts of
SPECIFICATION that are necessary for the end user to
effectively use IVC LICENSED PRODUCTS and to distribute such
user documentation only with IVC LICENSED PRODUCTS.
3.03 Subject to the payment of the ROYALTY set forth in Article 6, DIGITAL
grants to IVC a NON-EXCLUSIVE, non-transferable license under
DIGITAL's copyright, trade secret and know-how rights only (AND IVC
ACKNOWLEDGES AND AGREES THAT SAID GRANT IS NON-EXCLUSIVE) to:
3.03.01 use, adapt and modify SPINBLASTER BOARD DESIGN for the sole
purpose of developing HARDWARE for use only with IVC
LICENSED PRODUCTS;
3.03.02 manufacture, directly or through contractors, HARDWARE
solely for use with IVC LICENSED PRODUCTS worldwide; and
3.03.03 sell, rent, and/or lease HARDWARE solely for use with IVC
LICENSED PRODUCTS worldwide.
3.04 Subject to the payment of the ROYALTY set forth in Article 6, DIGITAL
grants to IVC a non-exclusive, non-transferable, license under
DIGITAL's patent rights to:
3.04.01 use SPINBLASTER BOARD DESIGN for the sole purpose of
developing HARDWARE;
3.04.02 make, directly or through contractors, HARDWARE worldwide;
and
3.04.03 sell HARDWARE worldwide.
3.05 Subject to the payment of the ROYALTY set forth in Article 6, DIGITAL
grants to IVC a non-exclusive, non-transferable, license under
DIGITAL INTELLECTUAL PROPERTY RIGHTS only to:
3.05.01 distribute IVC LICENSED PRODUCT(S) worldwide directly to end
users; and
3.05.02 distribute IVC LICENSED PRODUCT(S) worldwide indirectly
through distributors, provided each of such distributors has
entered into a Distribution Agreement with IVC.
3.06 IVC grants DIGITAL a non-exclusive, worldwide, royalty free license,
under all IVC's INTELLECTUAL PROPERTY RIGHTS to make, have made, and
use for DIGITAL's own internal use all SOFTWARE and all products
derived from the SOFTWARE by DIGITAL for its
DIGITAL CONFIDENTIAL 8 NOVEMBER 5, 1997
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own internal use. IVC shall provide to DIGITAL, on a mutually agreed
upon medium, all SOFTWARE, in source code form, within fifteen (15)
days after the time such SOFTWARE is incorporated into IVC LICENSED
PRODUCT(S) or is otherwise available for transfer to DIGITAL. The
SOFTWARE will be provided by IVC on an "AS IS" basis and without
warranty or representation of the quality, characteristics or
functionality of the SOFTWARE including but not limited to whether it
is error-free or will operate in accordance with the performance
requirements of DIGITAL or any of its licensees or transferees.
ARTICLE 4 - CONFIDENTIALITY
4.01 IVC agrees to maintain the LICENSED TECHNOLOGY confidential and not to
disclose the LICENSED TECHNOLOGY to any third party, except as
provided herein, without the prior written consent of DIGITAL, nor use
the LICENSED TECHNOLOGY for any purposes other than as authorized
herein.
4.02 IVC shall not be obligated to maintain confidential that part of the
LICENSED TECHNOLOGY which:
4.02.01 is or becomes known to the public, other than by breach of
an agreement;
4.02.02 is communicated by DIGITAL to a third party free of any
obligation of confidence;
4.02.03 is information which IVC can demonstrate was developed by it
independently; or
4.02.04 is information that was in IVC's possession without
confidentiality restriction prior to disclosure by DIGITAL.
4.03 IVC shall provide access to LICENSED TECHNOLOGY to its employees or
contractors only on a need-to-know basis in order to exercise its
license hereunder, and shall require such employees or contractors to
comply with the confidentiality provisions of this Article.
4.04 IVC shall keep clear and accurate records with respect to the type,
serial number and location of each designated computer on which a
complete or partial copy of the SOURCE FILES are installed and shall
make such records available to DIGITAL upon request.
4.05 IVC shall only make no more than ten (10) archival copies of the
LICENSED TECHNOLOGY without the written authorization of DIGITAL.
4.06 Except as provided herein, IVC may not otherwise copy, duplicate, or
reproduce the LICENSED TECHNOLOGY, or permit others to copy, duplicate
or reproduce the LICENSED TECHNOLOGY.
ARTICLE 5 - TECHNICAL ASSISTANCE
5.01 DIGITAL shall have no obligation to provide IVC with any technical
assistance. Upon IVC's written request to DIGITAL for technical
assistance, DIGITAL may, in its sole discretion, provide IVC the
requested technical assistance at DIGITAL's commercial rates then in
effect under a separate agreement.
ARTICLE 6 - ROYALTY PAYMENTS
6.01 In consideration of the rights previously granted to IVC under the
ORIGINAL LICENSE AGREEMENT and the rights granted to IVC under this
AMENDED LICENSE AGREEMENT,
DIGITAL CONFIDENTIAL 9 NOVEMBER 5, 1997
10
IVC agrees to pay DIGITAL, Royalty ("ROYALTY") calculated on NET
QUANTITY (as defined below) as follows:
6.01.01 On each unit of Type I IVC LICENSED PRODUCT described at
Appendix B, attached hereto, that is SOLD by IVC, a royalty
of FIVE HUNDRED U.S. DOLLARS (U.S. $500.00).
6.01.02 On each unit in excess of a total of ten (10) units of Type
I IVC LICENSED PRODUCT, described at Appendix B, attached
hereto, USED by IVC, a royalty of FIVE HUNDRED U.S.
DOLLARS (U.S. $500.00).
6.01.03 On each unit of Type II IVC LICENSED PRODUCT described at
Appendix B, attached hereto, that is SOLD by IVC, a royalty
of ONE THOUSAND U.S. DOLLARS (U.S. $1000.00).
6.01.04 On each unit in excess of a total of four (4) units of Type
II IVC LICENSED PRODUCT described at Appendix B, attached
hereto, USED by IVC, a royalty of ONE THOUSAND U.S. DOLLARS
(U.S. $1000.00).
6.02 USE or USED shall mean the use by IVC for purposes other than testing
the unit of the IVC LICENSED PRODUCT itself. IVC may USE ten (10)
units of Type I IVC LICENSED PRODUCT and four (4) units of Type II IVC
LICENSED PRODUCT during the life of this AMENDED LICENSE AGREEMENT,
without paying ROYALTY on any of those units. After this, IVC shall
pay ROYALTY on each additional unit the first time it is USED at rates
specified in Article 6.01. IVC will not be obligated to pay ROYALTY
more than once on any unit USED.
6.03 SOLD or SALE(S), of any IVC LICENSED PRODUCT(S), shall mean any IVC
LICENSED PRODUCT that is leased, sold, exported or otherwise disposed
of for revenue or demonstration purposes by IVC anywhere in the world.
The SALE shall be deemed to have occurred on the date it is shipped or
invoiced by IVC, whichever is earlier.
6.04 NET QUANTITY in a Payment Period, for the purpose of determining IVC's
ROYALTY obligation, shall mean the number of units of IVC LICENSED
PRODUCTS first USED during the Payment Period plus the number of units
of IVC LICENSED PRODUCT(S) SOLD less the number returned and accepted
for return by IVC during that Payment Period.
6.05 IVC agrees that it will market and support the IVC LICENSED PRODUCTS
for at least one year from the EFFECTIVE DATE of this AMENDED LICENSE
AGREEMENT. IVC has made no representations to DIGITAL regarding any
future sales prospects for IVC LICENSED PRODUCTS or any future ROYALTY
payments and there is no agreement that either will reach a certain
level.
6.06 All payments specified herein shall be made in lawful currency of the
United States of America. Any ROYALTY shall be paid to DIGITAL in the
full amount calculated in accordance with this Article 6 and shall not
be reduced for any reason, including foreign withholding taxes
attributable to either party, if any.
ARTICLE 7 - PAYMENT, REPORTS AND RECORDS
7.01 Contemporaneous with the execution of this AMENDED LICENSE AGREEMENT,
IVC shall pay DIGITAL a non-refundable payment of ONE HUNDRED FIFTY
THOUSAND U.S. DOLLARS (U.S.$150,000.00) ("INITIAL ROYALTY PAYMENT").
No part of the INITIAL ROYALTY PAYMENT shall be refundable for any
reason, including a finding of invalidity or unenforceability as to
any DIGITAL INTELLECTUAL PROPERTY RIGHTS.
DIGITAL CONFIDENTIAL 10 NOVEMBER 5, 1997
11
7.02 Within 30 days after the EFFECTIVE DATE of this AMENDED LICENSE
AGREEMENT, IVC shall provide DIGITAL with a written Payment Report, in
the format shown in Appendix D, signed by an officer of IVC certifying
the NET QUANTITY of Type I and Type II IVC LICENSED PRODUCTS, if any,
between June 13, 1996 and the EFFECTIVE DATE of this AMENDED LICENSE
AGREEMENT. The ROYALTY amount calculated in accordance with Article 6
shall represent IVC's accrued ROYALTY obligation as of the EFFECTIVE
DATE of this AMENDED LICENSE AGREEMENT. An amount equal to One
Hundred Thousand U.S. Dollars (U.S.$100,000) of the INITIAL ROYALTY
PAYMENT shall be credited first against this accrued ROYALTY
obligation. In the event that this accrued ROYALTY obligation shall
exceed One Hundred Thousand U.S. Dollars (U.S.$100,000), then IVC
shall pay any unsatisfied amount contemporaneously with the submission
of its Payment Report.
7.03 Starting with the EFFECTIVE DATE, the ROYALTY shall become due and
owing to DIGITAL for each three month period ending on the last day of
every September, December, March and June ("Payment Period") of each
year. IVC shall pay any ROYALTY due and owing to DIGITAL for IVC's
NET QUANTITY in each Payment Period, within thirty (30) days after the
last day of the corresponding Payment Period ("Payment Due Date").
7.03.01 If IVC's accrued ROYALTY obligation as of the EFFECTIVE
DATE is less than One Hundred Thousand U.S. Dollars
(U.S.$100,000), then the remaining balance of the One
Hundred Thousand U.S. Dollars (U.S.$100,000) shall be
credited against IVC's ROYALTY obligation accrued after the
EFFECTIVE DATE. IVC shall pay ROYALTY accrued after the
EFFECTIVE DATE in excess of such credit.
7.03.02 IVC shall not be entitled to credit any part of the INITIAL
ROYALTY PAYMENT in excess of One Hundred Thousand U.S.
Dollars (U.S.$100,000) against its ROYALTY obligations
accruing after the EFFECTIVE DATE for four years from the
EFFECTIVE DATE of this AMENDED LICENSE AGREEMENT. If,
however, IVC shall have paid its ROYALTY obligations in
accordance with the terms of this AMENDED LICENSE AGREEMENT
for four years from the EFFECTIVE DATE, then IVC shall be
allowed to credit the entire remaining balance of the
INITIAL ROYALTY PAYMENT against ROYALTY obligations accruing
thereafter.
7.04 IVC shall pay interest to DIGITAL from the Payment Due Date to the
actual date of payment upon any and all amounts that are overdue and
payable hereunder at the rate of 2% above the prime interest rate of
Citibank of New York published in THE WALL STREET JOURNAL, on the
Payment Due Date. Said interest rate shall, in no event, exceed any
applicable usury law limitation.
7.05 Within 30 days after the close of any Payment Period, subject only to
Article 7.05.02, IVC shall furnish DIGITAL a report for each Payment
Period ("Payment Report") certifying the NET QUANTITY of Type I and
Type II IVC LICENSED PRODUCTS. Each Payment Report shall be certified
by an officer of IVC and shall specify any ROYALTY payable to DIGITAL
for that Payment Period pursuant to this AMENDED LICENSE AGREEMENT.
The Payment Report shall be in the format of Payment Report attached
hereto as Appendix D. In addition,
7.05.01 Each Payment Report shall be in the English language and
shall be submitted to DIGITAL at the address given in
Article 13 on or before the Payment Due Date. Payment
Reports shall be required and submitted whether or not any
ROYALTY has accrued during the Payment Period.
7.05.02 If IVC shall report that the NET QUANTITY of IVC LICENSED
PRODUCTS is equal to zero (0) for each of four (4)
consecutive Payment Periods, IVC's obligation
DIGITAL CONFIDENTIAL 11 NOVEMBER 5, 1997
12
to provide Payment Reports shall be suspended and IVC shall
not be obligated to submit a Payment Report until and unless
it shall thereafter have USED or SOLD any quantity of IVC
LICENSED PRODUCTS, in which case IVC's reporting obligation
shall resume until and unless it shall once again report
that the NET QUANTITY of IVC LICENSED PRODUCTS is equal to
zero (0) for each of four (4) consecutive Payment Periods.
7.05.03 IVC shall promptly furnish whatever additional information
DIGITAL may reasonably request from time to time to enable
DIGITAL to verify the calculation of ROYALTY due to DIGITAL.
7.06 All payments should be made either by check or electronic funds
transfer in U.S. currency. If payment is made by check, each check
(in U.S. currency), together with a copy of the corresponding Payment
Report, in the format shown in Appendix D, shall be mailed to:
U. S. Cash Applications (Attention: A/R Supervisor
AKO1-2/B13)
Digital Equipment Corporation
100 Nagog Park
Acton, MA 01720
If the payment is made by electronic funds transfer, the funds (in
U.S. currency) should be transferred to:
Citibank, N.A.
399 Park Avenue
New York, NY 10043
Account Number: 40647503
ABA Number: 021000089
or to any other bank or bank account number designated by DIGITAL
clearly stating this AMENDED LICENSE AGREEMENT number. For each
payment, a FAX notification containing this AMENDED LICENSE AGREEMENT
number, amount paid in U.S. currency, the check number or the account
number from which the electronic funds transfer is made, and the date
of such check or transfer, shall be sent to:
Director, Corporate Licensing Office
Digital Equipment Corporation,
at FAX number (978) 493-9007, or any other FAX number designated by
DIGITAL.
7.07 IVC shall make and retain, for at least four (4) years from the
Payment Due Date, records, files and books of account containing all
data reasonably required for the full computation and verification of
any amounts due under this AMENDED LICENSE AGREEMENT.
7.08 IVC shall permit reasonable inspection of such records, files and
books of account, not more than once in six (6) months, by an auditor
appointed by DIGITAL, who shall report to DIGITAL only the amount of
ROYALTY due and payable to DIGITAL. Any such inspections shall be at
DIGITAL's expense; provided however, if as a result of such an
inspection a deficiency in the amount of payments is determined and
the deficiency exceeds ten percent (10%) of the payment actually made
for the period of time investigated, then in addition to paying to
DIGITAL the deficiency so determined, IVC shall pay the fees and
expenses of the auditor conducting such investigation.
DIGITAL CONFIDENTIAL 12 NOVEMBER 5, 1997
13
ARTICLE 8 - DISCLAIMER OF WARRANTIES AND LIMITATION OF LIABILITY
8.01 Nothing contained in this AMENDED LICENSE AGREEMENT, nor in the
ORIGINAL LICENSE AGREEMENT, shall be construed as a warranty or
representation by DIGITAL as to:
(i) the validity or scope of DIGITAL INTELLECTUAL PROPERTY
RIGHTS;
(ii) the quality or accuracy of the LICENSED TECHNOLOGY;
(iii) the usefulness of the LICENSED TECHNOLOGY;
(iv) a requirement that DIGITAL shall file any patent
application, secure any patent, or maintain any patent
in force;
(v) an obligation to bring or prosecute actions or suits
against third parties for infringement;
(vi) a grant by implication, estoppel, or otherwise, of any
of DIGITAL INTELLECTUAL PROPERTY RIGHTS beyond those
covered by the LICENSED TECHNOLOGY; and
(vii) a grant by implication, estoppel, or otherwise, of the
right to sublicense the LICENSED TECHNOLOGY and all
products derived from LICENSED TECHNOLOGY.
8.02 The LICENSED TECHNOLOGY is provided by DIGITAL on an "AS IS" basis and
without warranty or representation of the quality, characteristics or
functionality of the LICENSED TECHNOLOGY including but not limited to
whether it is error-free or will operate in accordance with the
performance requirements of IVC or any of its licensees or
transferees. The LICENSED TECHNOLOGY is the same technology as
DIGITAL offered or planned to offer commercially prior to the
execution of the ORIGINAL LICENSE AGREEMENT. DIGITAL HEREBY DISCLAIMS
AND IVC AGREES THAT IT HAS NOT RELIED ON ANY EXPRESS OR IMPLIED
WARRANTIES, INCLUDING ANY WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE.
8.03 DIGITAL makes no warranty or representation that any making, using,
licensing or other disposition of IVC LICENSED PRODUCT(S) by IVC will
be free from infringement of any intellectual property rights owned by
any third party, and DIGITAL shall have no obligation to defend,
indemnify, or hold harmless IVC from any suit, action or claim
alleging infringement of any third party's property rights. DIGITAL
restates the representation contained in the ORIGINAL LICENSE
AGREEMENT that it was not aware of any claim of intellectual property
infringement against the LICENSED TECHNOLOGY as of June 13, 1996.
DIGITAL has made no further investigation of its records since that
date as to the assertion of any claim.
8.04 In no event shall DIGITAL be liable to IVC or its distributors or end
users for any lost data, lost profits, incidental, consequential,
special, or indirect damages arising from the use of the LICENSED
TECHNOLOGY. DIGITAL's total liability arising out of the licensing of
the LICENSED TECHNOLOGY for breach of this AMENDED LICENSE AGREEMENT,
the ORIGINAL LICENSE AGREEMENT or for any other claim shall not exceed
in total the amount of payments paid by IVC under this AMENDED LICENSE
AGREEMENT ONLY. This limitation of liability shall apply regardless
of the form of action, whether in contract or tort. Any action
against DIGITAL must be brought within eighteen (18) months after such
cause of action arises, or IVC first becomes aware of such cause of
action.
8.05 IVC shall not be liable to DIGITAL for any breach of the terms of any
END USER AGREEMENT unless IVC has willfully or negligently contributed
to, or cooperated in the breach.
DIGITAL CONFIDENTIAL 13 NOVEMBER 5, 1997
14
8.06 IVC shall fully cooperate with DIGITAL in any action DIGITAL may bring
or defend involving any third party alleged to have breached the terms
of an END USER AGREEMENT or Distribution Agreement, or alleged to have
infringed upon DIGITAL's rights in the LICENSED TECHNOLOGY.
ARTICLE 9 - INDEMNITY
9.01 Excepting only claims by third parties against DIGITAL related to
DIGITAL INTELLECTUAL PROPERTY RIGHTS, IVC will hold DIGITAL harmless
against all liabilities, demands, damages, expenses, or losses arising
(i) out of use by IVC or its distributors of LICENSED TECHNOLOGY or
information furnished under this AMENDED LICENSE AGREEMENT or (ii) out
of any use, license, or other disposition by IVC or its distributors
of IVC LICENSED PRODUCT(S).
ARTICLE 10 - TERM AND TERMINATION
10.01 The term of this AMENDED LICENSE AGREEMENT shall commence on the
EFFECTIVE DATE and continue thereafter unless sooner terminated in
accordance with this Article.
10.02 This AMENDED LICENSE AGREEMENT may be terminated by the non-defaulting
party only upon the other party's default and by sending a Notice of
Termination in accordance with Article 13. Any of the following
constitutes a default:
10.02.01 A party defaults in the performance or observation of any
material provision or material condition on its part to be
performed or observed, including a failure to make any
payment due hereunder, and if such defaulting party fails to
cure the default within thirty (30) days after receipt of
written notice of the default from the other party;
10.02.02 A party files a voluntary petition in bankruptcy or is
adjudicated a bankrupt or insolvent or files any petition or
answer seeking any arrangement, composition, liquidation, or
dissolution under any present or future federal, state, or
other statute, law or regulation relating to bankruptcy,
insolvency or other relief for debtors, or seeks or
consents or acquiesces in the appointment of any trustee,
receiver, or liquidator of all or any substantial part of
its properties, or makes any general assignment for the
benefit of creditors, or admits in writing its inability to
pay its debts generally as they become due;
10.02.03 A court enters an order, judgment, or decree approving a
petition filed against either party seeking any arrangement,
composition, liquidation, dissolution or similar relief
under any present or future federal, state or other statute,
law, or regulation relating to bankruptcy, insolvency, or
other relief for debtors, and such order, judgment or decree
remains unvacated or unstayed for an aggregate of thirty
(30) days.
10.03 The termination rights provided herein shall be in addition to and not
in substitution for any right to damages or injunctive relief that may
be available to or exercisable by the party terminating or having the
right to terminate this AMENDED LICENSE AGREEMENT, nor shall such
termination rights relieve either party from liability or damage to
the other party for breach of this AMENDED LICENSE AGREEMENT.
10.04 Upon termination of this AMENDED LICENSE AGREEMENT by DIGITAL, IVC
shall immediately cease to use LICENSED TECHNOLOGY, HARDWARE, and
SOFTWARE and shall at DIGITAL's option, either (a) return to DIGITAL
within sixty (60) days of termination all drawings, specifications,
other documents, software, updates and improvements provided
DIGITAL CONFIDENTIAL 14 NOVEMBER 5, 1997
15
hereunder and all complete and partial copies and derivatives thereof,
in its possession or, (b) destroy all of such material and certify
such destruction to DIGITAL.
10.05 Upon termination of this AMENDED LICENSE AGREEMENT, IVC may retain the
documents and software required by IVC to maintain and repair the IVC
LICENSED PRODUCT(S) that have been marketed to third parties, but only
for this purpose. IVC shall, at DIGITAL's option, either (a) return
to DIGITAL all other documents and software not required for
maintenance and repair within sixty (60) days after such expiration or
termination or (b) destroy and certify the destruction of such
material.
10.06 Termination or expiration of this AMENDED LICENSE AGREEMENT shall not
affect licenses to use IVC LICENSED PRODUCT(S) granted by IVC under
this AMENDED LICENSE AGREEMENT in good faith and for consideration
prior to receiving or giving Notice of Termination.
10.07 Upon expiration or termination of this AMENDED LICENSE AGREEMENT,
DIGITAL may request and IVC shall promptly provide a certificate in
writing that it has not provided the IVC LICENSED PRODUCT(S) to any
third party except in accordance with this AMENDED LICENSE AGREEMENT.
ARTICLE 11 - PUBLICITY
11.01 The existence of this AMENDED LICENSE AGREEMENT is not considered to
be confidential. However, the terms of this AMENDED LICENSE AGREEMENT
are considered to be the confidential information of the parties.
Except as expressly provided in this AMENDED LICENSE AGREEMENT, a
party shall not disclose the terms of this AMENDED LICENSE AGREEMENT
(including its Appendices), or use or refer to this AMENDED LICENSE
AGREEMENT or any provision of or rights granted under this AMENDED
LICENSE AGREEMENT in any publicity, advertising, or promotional
activity, without the written approval of the other party, except as
may be required by law, or regulation, or by the order of any
governmental or judicial authority.
ARTICLE 12 - REPRESENTATIONS AND UNDERSTANDINGS
12.01 Each of the parties expressly represents and warrants that it has full
power and authority to enter into this AMENDED LICENSE AGREEMENT.
12.02 Each of the parties has received independent legal advice from
attorneys of their choice. Each of the parties has contributed to the
drafting of this AMENDED LICENSE AGREEMENT and the parties agree that
the AMENDED LICENSE AGREEMENT shall not be interpreted for or against
any party on the basis that one drafted or contributed to the drafting
of any provision.
12.03 DIGITAL and IVC respectively warrant and represent to each other that
there has been no assignment or transfer of any of their respective
rights, claims, demands, and causes of action covered by the releases
contained in this AMENDED LICENSE AGREEMENT and further represent and
warrant that there are no liens, or claims for liens, or assignments
in law or equity of or against the claims, demands and causes of
action released hereby.
12.04 DIGITAL and IVC respectively warrant and represent to each other that
they have relied upon their own judgment and that of their legal
counsel regarding the proper, complete and agreed upon consideration
for, and terms and provisions of, this AMENDED LICENSE AGREEMENT, that
they assume the risk of mistake of fact in connection with the true
facts involved; and that they are not relying upon any representation
made by the other party.
DIGITAL CONFIDENTIAL 15 NOVEMBER 5, 1997
16
12.05 IVC represents that it shall not use or incorporate the LICENSED
TECHNOLOGY, in part or in full, or any derivatives (as defined in 17
U.S.C. Section 101 and applied under Section 106) of any copyrighted
portion of the LICENSED TECHNOLOGY, in any way into any products,
including any PC-based video conferencing product that enables
conferencing and communications with any other video conferencing
product both of which only use data compression techniques other than
motion-JPEG, such as, MPEG, H.261, H.263, manifold, wavelet, fractal
or any other algorithm, or any PC-based gateway product that enables
communication between systems both of which only use data compression
techniques other than motion-JPEG, such as, MPEG, H.261, H.263,
manifold, wavelet, fractal, or any other algorithm, except IVC
LICENSED PRODUCTS.
ARTICLE 13 - GENERAL
13.01 Neither this AMENDED LICENSE AGREEMENT nor any rights or benefits
accruing hereunder shall be assigned, in whole or in part, by IVC
and no duty or obligation arising hereunder shall be delegated by
IVC without the written consent of DIGITAL, and any such purported
assignment or delegation shall be null and void, provided, however,
that DIGITAL shall not unreasonably withhold its consent to such
assignment or delegation by IVC.
13.02 Nothing in this AMENDED LICENSE AGREEMENT shall be construed as
making either party the agent of the other.
13.03 The failure of either party to give notice to the other party of the
breach or non-fulfillment of any term, clause, provision or
condition of this AMENDED LICENSE AGREEMENT shall not constitute a
waiver thereof, nor shall the waiver of any breach or
non-fulfillment of any term, clause, provision or condition of this
AMENDED LICENSE AGREEMENT constitute a waiver of any other breach or
non-fulfillment of that or any other term, clause, provision or
condition of this AMENDED LICENSE AGREEMENT.
13.04 Notice to a party hereto shall be in writing and deemed to have been
sufficiently given or served for all purposes hereof if personally
delivered or mailed by first class certified or registered mail,
return receipt requested, postage prepaid, or commercial overnight
delivery service, at the respective addresses set forth below, or at
such other address as the party to whom such notice is directed may
designate from time to time by like notice in writing to the other
party hereto. A notice shall be deemed to have been given on the
date on which it was received.
Notices shall be directed to DIGITAL at:
Director, Corporate Licensing Office
Digital Equipment Corporation
111 Powder Mill Road, MSO2-3/C11
Maynard, MA 01754
Notices shall be directed to IVC at:
President
Intelect Visual Communications Corp.
1100 Executive Drive
Richardson, TX 75081
13.05 If any provision of this AMENDED LICENSE AGREEMENT is held invalid
by any law, rule, order, or by the final determination of any State
or Federal court, it shall not affect any other provisions of this
AMENDED LICENSE AGREEMENT which can be given effect without
DIGITAL CONFIDENTIAL 16 NOVEMBER 5, 1997
17
such invalid provision and to this extent the parties agree that the
provisions of this AMENDED LICENSE AGREEMENT are and shall be
severable.
13.06 IVC recognizes that the transfer of the HARDWARE, SOFTWARE, or IVC
LICENSED PRODUCT(S) from one country to another if authorized
hereunder, may be subject to the approval of the government of the
United States of America and/or other countries that IVC might
operate in, or various agencies thereof, and international control
organizations in which such governments participate. DIGITAL shall
have no obligation to obtain any such approvals as are required by
such governments or bodies before any such transfer is effected.
13.07 IVC shall only distribute IVC LICENSED PRODUCT(S) and related
materials with proper inclusion of any copyright and proprietary
notices, legends, and markings. Related materials and applicable
initialization and configuration screens of the IVC LICENSED
PRODUCT(S) software component, shall also include such notices,
legends and markings. With respect to any document or software
containing a copyright notice and/or a confidential, proprietary,
restricted, or similar legend, provided by DIGITAL under the
ORIGINAL LICENSE AGREEMENT or this AMENDED LICENSE AGREEMENT, IVC
shall agree to include or shall have its distributors include the
copyright notice and/or such legend on all authorized reproductions
it makes of such document or software in the same manner and
location that such notice and/or legend appears in the document or
software provided.
13.08 This AMENDED LICENSE AGREEMENT is governed by the laws of the
Commonwealth of Massachusetts, United States of America.
13.09 This AMENDED LICENSE AGREEMENT sets forth the entire agreement and
understanding between the parties as to the subject matter hereof
and merges all prior discussions and agreements between them, and
neither of the parties shall be bound by any conditions,
definitions, warranties, understandings or representations with
respect to such subject matter other than as expressly provided
herein. This AMENDED LICENSE AGREEMENT may not be modified,
amended, or supplemented except by a document executed by a proper
and duly authorized officer or representative of the party to be
bound thereby.
IN WITNESS WHEREOF, the parties hereto have as of the EFFECTIVE DATE as defined
above caused this AMENDED LICENSE AGREEMENT, which includes Appendices A, B, C
and D to be signed in duplicate by their duly authorized representatives.
DIGITAL EQUIPMENT CORPORATION INTELECT VISUAL COMMUNICATIONS,
CORP.
/s/ Jay Zager /s/ Edwin Ducayet
- ------------------------------ -------------------------------
Signed Signed
Jay Zager Edwin Ducayet
- ------------------------------ -------------------------------
Printed or Typed Printed or Typed
VP, Business Development Treasurer
- ------------------------------ -------------------------------
Title Title
Date: 11/6/97 Date: 11/5/97
------------------------ ------------------------
DIGITAL CONFIDENTIAL 17 NOVEMBER 5, 1997
18
APPENDIX A - DESCRIPTION OF LICENSED TECHNOLOGY
DECSpin SOFTWARE licensed under this AMENDED LICENSE AGREEMENT is the
version of the software marketed by DIGITAL as of June 13, 1996 under
the name DECSpin for Windows as delivered to IVC pursuant to the
ORIGINAL LICENSE AGREEMENT. DECSpin (Digital Equipment Corporation's
Sound Picture Information Network) SOFTWARE is a desk-to-desk, live
audio and video conferencing application, providing real time
communications between personal computers equipped with multimedia and
networking options. One of the options required is the AV320
SPINblaster video conferencing board.
The AV320 SPINblaster board licensed under this AMENDED LICENSE
AGREEMENT is the version of the board marketed by DIGITAL as of June
13, 1996 under the name AV320 as delivered to IVC pursuant to the
ORIGINAL LICENSE AGREEMENT. The AV320 card is a multi-functional, ISA
bus-based card that provides full-duplex audio/video capture/playback
with motion-JPEG compression/decompression.
It is expressly understood and agreed that the description of the
LICENSED TECHNOLOGY is for identification purposes ONLY and is not
intended by DIGITAL or by IVC to constitute a representation of the
character of the LICENSED TECHNOLOGY nor a warranty of the quality or
fitness of the LICENSED TECHNOLOGY for any particular purpose. IVC
has had the LICENSED TECHNOLOGY in its possession for more than 12
months and it is relying on its own investigation and assessment of
the LICENSED TECHNOLOGY.
DIGITAL CONFIDENTIAL 18 NOVEMBER 5, 1997
19
APPENDIX B - DEFINITION OF IVC LICENSED PRODUCTS
IVC LICENSED PRODUCTS means only those products in which the LICENSED
TECHNOLOGY, or any part thereof, is used, consisting only of the Type I and
Type II categories set forth below. Royalty payments described in Article 6
will be based upon IVC LICENSED PRODUCTS only and not on any other products
made by IVC.
Type I IVC LICENSED PRODUCT: Any PC-based video conferencing
product that utilizes motion-JPEG video data compression, enables
conferencing and communications with other video conferencing products
that utilize motion-JPEG video data compression, and incorporates the
LICENSED TECHNOLOGY or any part thereof.
The Type I IVC LICENSED PRODUCT that is currently marketed by IVC as
"LANscape 1.4" or "DL100." This product is a PC-based hardware and
software video conferencing product that uses motion-JPEG video data
compression and uses the Transmission Control Protocol/Internet
Protocol ("TCP/IP") for transmission of the audio and video data.
Type II IVC LICENSED PRODUCT: Any PC-based gateway product that
enables videoconferencing on a Wide Area Network (WAN) by enabling
communication between video conferencing products that utilize
motion-JPEG video data compression on one side and other video
conferencing products that utilize other data compression and
communication protocols on the other side, and that incorporates the
LICENSED TECHNOLOGY or any part thereof.
The Type II IVC LICENSED PRODUCT that is currently marketed by IVC is
"VuBridge." This is a PC-based product that enables the Type I IVC
LICENSED PRODUCT to connect the IP-based, motion JPEG product to any
H.320/H.261 video conferencing system via ISDN lines. This is a
shared gateway resource that allows many users to connect from their
IP-based local network to the Wide Area Network ("WAN"). The Type II
IVC LICENSED PRODUCT translates motion JPEG compressed data into
H.261-compressed data and vice-versa.
Type II IVC LICENSED PRODUCTS also include future products that allow
the Type I IVC LICENSED PRODUCTS to inter-operate with any other
product that utilizes any other compression protocol than motion JPEG
or any other data communications protocol than TCP/IP. (For example,
the H.323 or H.324 communications protocols, the wavelet or fractal
compression algorithms, etc.).
IVC LICENSED PRODUCT does not include:
Any PC-based video conferencing product that enables conferencing and
communications with any other video conferencing product both of which only use
data compression techniques other than motion-JPEG, such as, MPEG, H.261,
H.263, manifold, wavelet, fractal or any other algorithm.
Any PC-based gateway product that enables communication between systems both of
which only use data compression techniques other than motion-JPEG, such as,
MPEG, H.261, H.263, manifold, wavelet, fractal, or any other algorithm.
DIGITAL CONFIDENTIAL 19 NOVEMBER 5, 1997
20
APPENDIX C - LEGAL REQUIREMENTS FOR END USER AGREEMENTS
END USER AGREEMENTS shall, among other things, provide the following:
1. Include a clearly visible END USER AGREEMENT with each of the IVC
LICENSED PRODUCT(S). End user(s) shall acquire the right to use the
IVC LICENSED PRODUCT(S) only if the END USER AGREEMENT with each of
the IVC LICENSED PRODUCT(S) shall be visible to, and readable by, each
end user prior to the end user's use of the IVC LICENSED PRODUCT(S).
2. Specify that DIGITAL has intellectual property rights in the HARDWARE,
SOFTWARE and IVC LICENSED PRODUCT(S).
3. Restrict the use of the HARDWARE, and SOFTWARE solely to IVC LICENSED
PRODUCT(S).
4. Prohibit use of the HARDWARE or SOFTWARE for any purpose outside the
scope of IVC LICENSED PRODUCT(S).
5. Prohibit the reverse engineering, reverse compilation, disassembly or
decomposition of the SOFTWARE.
6. Specify that title of the SOFTWARE does not pass to the end user.
7. Disclaim DIGITAL's liability for any damages, whether direct,
indirect, incidental or consequential arising from the use of the IVC
LICENSED PRODUCT(S).
8. Require the end user, at the termination or expiration of the END USER
AGREEMENT, to discontinue use and destroy or return to IVC all
associated LICENSED TECHNOLOGY and all archival or other copies of the
SOFTWARE.
DIGITAL CONFIDENTIAL 20 NOVEMBER 5, 1997
21
APPENDIX D - FORMAT OF PAYMENT REPORT
Name of Licensee: Intelect Visual Agreement Number:
-----------------------
Communications Payment Period:
-----------------------
- ------------------------------------------------------------------------------------------------------------------------
Model Type of Quantity Royalty Free Quantity Quantity NET Royalty Royalty
Number Product First Quantity of of Returns QUANTITY Rate Payable
(I or II)* USED USED SALES *** ($/unit) (US$)
**
- ------------------------------------------------------------------------------------------------------------------------
(A) (B) (C) (D) (N)=(A- (R) (N) x
B+C-D) (R)
- ------------------------------------------------------------------------------------------------------------------------
- ------------------------------------------------------------------------------------------------------------------------
- ------------------------------------------------------------------------------------------------------------------------
- ------------------------------------------------------------------------------------------------------------------------
TOTAL ROYALTY DUE FOR THE CURRENT PAYMENT PERIOD
- ------------------------------------------------------------------------------------------------------------------------
* See Appendix B - DEFINITION OF IVC LICENSED PRODUCTS
** 10 Units of Type I and 4 Units of Type II over life (Article 6.02)
*** See Articles 6.01, 6.02, 6.03, and 6.04.
ADJUSTMENT OF PREPAID ROYALTIES
(See Article 7.03)
- ------------------------------------------------------------------------------------------------------------------------
US$
- ------------------------------------------------------------------------------------------------------------------------
Balance of Initial Royalty carried forward (B)
- ------------------------------------------------------------------------------------------------------------------------
Total Royalty due for the current Payment Period
(from the table above) (R)
- ------------------------------------------------------------------------------------------------------------------------
Net amount payable during the current Payment Period
(R - B) Nil if B > R
- ------------------------------------------------------------------------------------------------------------------------
Balance of Initial Royalty carried forward to the
next Payment Period (B - R) Nil if R>B
- ------------------------------------------------------------------------------------------------------------------------
If by check: If by electronic funds transfer:
Amount Paid: US$ Amount Transferred: US$
----------- ---------------------
Check Number: Name of Bank from which
--------------- the amount is transferred:
-------------------
Check Date:
----------------- Account Number transferred from:
-------------
Date of Transfer:
--------------------
Signature
------------------------------
Name
------------------------------
(Printed or Typed)
Title
------------------------------
Date
------------------------------
DIGITAL CONFIDENTIAL 21 NOVEMBER 5, 1997